Filing a patent application in India is only the first step toward securing intellectual property rights. The First Examination Report (FER), issued by the Indian Patent Office (IPO), is a crucial milestone. It provides a detailed evaluation of the application, highlighting both procedural and substantive objections and offering insight into how the invention meets the criteria for patentability. While the legal language and objections may seem daunting, the FER also provides an opportunity to refine the application and strengthen the case for patent protection.
When is the FER Issued?
- the FER is issued after filing a Request for Examination (RFE).
- for applications filed on or after March 15, 2024, the RFE must be submitted within 31 months from the priority or filing date; and
- the FER identifies procedural issues (e.g., missing forms, unpaid fees, incomplete applicant details) and substantive objections (e.g., lack of novelty, obviousness, vague claims, or non-patentable subject matter under Section 3 of the Patents Act).
However, substantive objections are more complex, questioning the heart of the invention.
- Is it novel compared to existing knowledge?
- Does it involve an inventive step that isn’t obvious to someone skilled in the field?
- Are the claims clear, concise, and supported by the description?
The examiner may cite prior art, existing patents, or publications that appear to overlap with the invention or argue that the claims are unclear or fall under non-patentable subject matter as defined in Section 3 of the Patents Act.
The FER is generated as part of the patent examination process, which begins only after specific steps are taken:
Filing the Patent Application
The process starts with filing a patent application (provisional or complete) with the Indian Patent Office, establishing a filing date or priority date (if claiming priority from an earlier application).
Request for Examination (RFE):
The applicant must file a Request for Examination (Form 18) to trigger examination. For applications filed on or after March 15, 2024, the RFE must be filed within 31 months from the priority or filing date (whichever is earlier), as per the Patents (Amendment) Rules, 2024. For applications filed before this date, the deadline remains 48 months. Without an RFE, the application is not examined and is deemed withdrawn u/s 11B(4).
Publication
The application is typically published 18 months after the filing or priority date, unless early publication is requested via Form 9. Publication makes the application details public and allows pre-grant opposition.
Examination and FER Issuance
Once the RFE is filed, the application enters the examination queue. The Indian Patent Office assigns an examiner to review the application for compliance with the Patents Act, 1970, assessing novelty, inventive step, industrial applicability, and procedural requirements. The FER is issued within a few months to a year after the RFE, depending on the office’s workload and whether expedited examination is requested. The FER outlines the examiner’s findings, identifying procedural (e.g., missing forms, formatting errors, incomplete applicant details) and substantive objections (e.g., lack of novelty, obviousness, unclear claims).
Responding to the FER
Applicants have 6 months from the FER issuance date to respond, addressing each objection through amendments, clarifications, or arguments. Under Rules 24B(6) and 24C(11), a three-month extension may be granted if applied for within nine months from the issuance of the First Examination Report. Extensions of up to 6 months are available under Rule 138 (fees: INR 50,000/month for large entities, INR 10,000/month for others). Failure to respond risks abandonment. A hearing with the examiner can be requested for complex issues.
Post-Response Process
After reviewing the response, the examiner may issue a subsequent examination report, grant the patent, issue a hearing notice, or reject the application.
Crafting an effective response to the FER requires strategy. A compelling response doesn’t merely address each objection; it strengthens the case for the invention’s patentability. This might involve:
- amending claims to narrow their scope; and
- clarifying technical details in the specification, or presenting arguments to differentiate the invention from prior art.
Tackling FER Objections: A Simple Guide
| Type | Objection | What It Means | How to Fix It | Section/Rule |
| Procedural | Missing Forms | Forms (e.g., Form 1, Form 5) are missing or wrong. | Submit correct forms; check names and details. | Rule 7 (Form 1), Rule 13 (Form 5) |
| Procedural | Claim Format Issues | Claims are unclear or not numbered correctly. | Rewrite clearly, number in order, use proper format. | Rule 14 (Claims format) |
| Procedural | Unpaid Fees/Missing Docs | Forgot to pay fees or send documents. | Pay fees (check rules); submit missing papers. | First Schedule (Fees), Rule 24B (Priority documents) |
| Procedural | Publication Problems | Abstract or drawings don’t follow rules. | Fix abstract (under 150 words); correct drawings. | Rule 13 (Abstract), Rule 15 (Drawings) |
| Procedural | Title Issues | Title is vague, too broad, or doesn’t reflect the invention’s nature. | Amend title to be concise, specific, and aligned with claims/specification; submit via response statement with reasons (no new matter). | Section 10(1)(g) (Title requirements), Section 59 (Amendments), Rule 27A (Title amendment) |
| Procedural | Proof of Right | No evidence that applicant has rights from true inventor (e.g., assignment missing). | Submit assignment deed, endorsement on Form 1 signed by inventors, or declaration; for national phase, file within 6 months of entry; condone delay under Rule 137 if needed. | Section 7(2) (Proof of right), Rule 10, Section 68 (Assignments) |
| Procedural | Section 8 Non-Compliance | Failure to disclose foreign corresponding applications or updates. | File Form 3 (initial within 6 months of Indian filing; update within 3 months of FER); provide prosecution details only if requested; condone via Rule 137 for irregularities before grant. | Section 8(1) & 8(2) (Corresponding applications details, allowed claims & specification), Rule 12 (Form 3) |
| Substantive | Not New (Novelty) | Idea is already known from prior art. | Show what’s unique; tweak claims; provide proof. | Section 2(1)(j) (Novelty), Section 59 (Amendments) |
| Substantive | Not Inventive | Idea seems too obvious to experts. | Prove it’s special; focus claims on unique features. | Section 2(1)(ja) (Inventive step), Section 59 (Amendments) |
| Substantive | Vague Claims | Claims are unclear or too broad. | Make claims clear, specific; match description. | Section 10(4)(c) (Claims clarity), Section 59 (Amendments) |
| Substantive | Not Patentable | Idea falls under banned categories (e.g., mere discovery, methods of treatment). | Explain technical effect (e.g., for 3(d)); remove banned parts; cite precedents. | Section 3 (e.g., 3(d), 3(i)) |
Act Fast! Respond as soon as possible within 6 months or extend with Form 4 (Rule 24B(6) or Rule 24C(11))!
All amendments must align with the original disclosure, as Indian patent law prohibits adding new matter beyond what was initially filed. In some cases, requesting a hearing with the examiner can be more effective than written responses, allowing you to present the case in person and address complex issues directly.
Timing is crucial. You have six months from the FER’s issuance to submit the response, with the option to request a three-month extension by filing Form 4 and paying the required fee. Failing to respond within this nine-month window risks the application. A timely, well-crafted response keeps the application active and can expedite the process, minimizing delays in a system where patent grants often take years.
The FER is not a barrier but a roadmap. It highlights areas for improvement and provides a clear path to strengthen the application. A thoughtful response, supported by technical evidence or legal arguments, can transform objections into opportunities. By addressing the examiner’s concerns thoroughly and leveraging options like expedited examination, you can navigate the patent process efficiently, bringing the invention closer to the protection it deserves.
Key Amendments from Patents (Amendment) Rules, 2024
Effective March 15, 2024, the Patents (Amendment) Rules, 2024, streamline the patent process. The deadline for filing a Request for Examination is now 31 months for applications filed on or after this date.
The FER response period is extended to 12 months (allotted 6 months + 3 months extension (minimum penalty) + 3 months extension (with higher penalty)), under Rule 138. Foreign application updates (Form 3) are required within 3 months post-FER, extendable by 3 months, with prosecution details submitted only if requested within 2 months.
Form 3 before and after foreign filing: Before a foreign application is filed, Form 3 is submitted with the Indian application to disclose any existing foreign applications for the same or substantially the same invention, or, if none exist, an undertaking to update the IPO once foreign filings occur. Additionally, following the issuance of the First Examination Report (FER), the IPO may request updated foreign application information, which must be submitted within three months from the FER (extendable by three months), and if foreign prosecution details are specifically requested, these must be provided within two months. This ensures compliance with Section 8 of the Patents Act and allows the IPO to assess patentability in light of foreign filings.
A 12-month grace period for public disclosures before filing is formalized via Form 31 and Rule 29A, requiring evidence of the earliest use or publication date.
Addressing the Three-Month Extension Request Post-Six Months
If the six-month mark since the FER issuance has passed, and an applicant seeks a three-month extension beyond the 6 months, they must file a request under Rule 24B(6) or Rule 24C(11) and Rule 138.
- Extension Request: Submit a request for a three-month extension via the Indian Patent Office e-filing portal, specifying the need to extend the FER response deadline beyond the 6 months.
- Filing Requirement: The request can be made anytime within the six-month extension period (i.e., up to 9 months from FER issuance).
- Consequence of Non-Compliance: Failure to respond by the extended deadline (up to 12 months total) risks the application being deemed abandoned under Section 21 of the Patents Act.
Note on Rule 24B Relevance
Since Rule 24B primarily deals with the RFE and examination process, it does not directly govern FER response extensions. However, it indirectly impacts the timeline, as the FER is issued only after the RFE is filed. If the concern is about missing the RFE deadline, Rule 24B(1)(v) allows condonation of delays under Rule 138, subject to a petition and the same fees (INR 50,000/month for large entities, INR 10,000/month for others). This must be done within the six-month extension window. To ensure the response addresses all FER objections to avoid abandonment. For issues related to Rule 24B (e.g., late RFE filing), a similar Rule 138 petition applies with the same fees.
If no response is filed by the end of the extended period (up to 12 months from FER issuance), the application is deemed abandoned under Section 21 of the Patents Act.
Alternatively, if the examiner raises a novelty objection in the FER, citing a public disclosure within the 12 months before filing, the applicant can invoke the grace period by referencing Form 31 (if already filed) or submitting it during the FER response period (within 9 months from FER issuance, extendable by up to 3 months under Rule 138). The response should include arguments and evidence (via Form 31) to confirm the disclosure qualifies for the grace period under Section 31.
When to File Form 31:
- Ideally, file Form 31 at the time of filing the patent application to proactively protect against potential novelty objections.
- If not filed initially, it can be submitted during the FER response period if a relevant disclosure is cited as prior art, provided the disclosure falls within the 12-month grace period before the filing date.
- Form 31 requires details of the disclosure (e.g., date, nature, and evidence like publications or affidavits) to establish eligibility for the grace period.
- Relevance to FER: While Form 31 is not a mandatory requirement during the FER stage, it becomes critical if the examiner cites a pre-filing disclosure as prior art affecting novelty.
- Filing Form 31 with supporting evidence helps address such objections by proving the disclosure qualifies for the grace period, thus preserving the invention’s patentability.
Fee for Form 31: As per the First Schedule of the Patents (Amendment) Rules, 2024, the fee for filing Form 31 is INR 500 for individuals, start-ups, small entities, or educational institutions, and INR 2,500 for large entities (for e-filing; physical filing fees are slightly higher).
