What to do when patent office objects to your application?

by Nov 28, 2022Patent

Inventor 1: Hey! I have filed a patent application for our invention. Let’s celebrate the patent.

Inventor 2: Wait. There is still a long journey before we actually are granted a patent for our invention, such as office action, FER, hearing, interviews, and so on.

Inventor 1: Oh! Tell me more about it.

A patent, which is an IPR (Intellectual Property Right) and is, only, provided to the inventor after the patent registration, is given to innovation or creation made by the real inventor that is a patentable subject matter, non-obvious, distinct, and suitable for industrial application.

It is not possible to obtain a patent just by filing. Even after the most thorough drafting and filing, there is a very small chance that a patent will be granted straight away. Before rejecting a patent application that has been submitted, a patent examiner checks for prior art that might conflict with the invention and other errors in the filing documentation. It is the applicant’s responsibility to persuade the examiner in an Office Action Response by providing justifications or by amending the patent claims as necessary.

When a patent application is submitted and sent for assessment of its validity, the Patent Office examiner examines for formal requirements and the application’s eligibility under the laws of each country. A preliminary judgment is then reached and is known as the First Examination Report (FER).

After reviewing a patent application, a patent examiner will often write an Office Action to convey his or her opinion on whether part or all of the claims are admissible. The applicant has the chance to respond to the Office Action if it states that some or all of the claims are not admissible. For example, the applicant may contend that the examiner is mistaken or may change the claims to try to satisfy his or her objections.

Within six months of the date of the request for examination or the date of publication, whichever comes later, the controller must send the applicant the examination report with supporting objections and requirements. In India, this examination report is known as the First Examination Report. Within six months of the FER’s issuance, the applicant is required to send a response to the examination report; otherwise, the status of the patent application would change to ABANDONED.

The Patent Act, 1970

Section 11B of the Patents Act, 1970 states “No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period”. For the purpose to initiate the examination proceeding of an application, the applicant has to file a request with the Indian Patent Office (IPO) in Form 18 along with the prescribed fee as present in the first schedule of the Patents Act. The time period for filing the request for examination is 48 months from the date of priority of the application or the date of filing of the application whichever is earlier.  

The most common objections raised in an office action

Rejection of claims in view of prior art

Only claims may be “rejected,” as a patent is only intended to protect claims. Prior art may serve as a basis for rejection. The Patent Examiner may identify one or more publicly accessible materials as revealing the features claimed in your patent application before the filing date of your patent application as prior art (or priority date, when your application claims benefit to a previously filed application). If there are several claims pending, some of them may be rejected while others may be accepted or objected to.

Other claim rejections

There are other grounds for rejecting claims besides prior art disclosures. The Patent Examiner may make these rejections as a result of the claims’ format and/or conformity with relevant patent laws. For instance, the Patent Examiner will reject a claim if it refers to an invention that is not within the scope of the patent application or if it is focused on any non-patentable subject matter.

Objection to claims

A patent application often contains a number of dependent claims as well as one or more independent claims. Independent claims do not relate to any other claims; they stand alone. Dependent claims include or inherit all the restrictions and components of the claim, or chain of claims, to which the dependent claim refers by referencing (or “depending” on”) an independent claim or another dependent claim. 

Obviousness or Inventive Step 

As per section 2(1)(ja) of the Indian Patent Act 1970, “inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.”

The majority of obviousness-type rejections are based on the combination of two or more references, including the justification for the combination of the listed references (for instance, patents and published patent applications). However, a single reference obviousness denial may be given in specific circumstances. A person skilled in the art should be able to arrive at the present invention by combining the cited documents provided by the Examiner. In other words, the invention should not be obvious to a person skilled in the art under the light of the cited documents.


Sections 29 to 34 of the Patents Act, of 1970 list the things that are not anticipations rather than defining anticipation. The Indian Patents Act contains exceptions, under which a patent application may be submitted despite public publication, which will not be regarded as anticipated.

Rejections based on anticipation are those made in response to a single reference disclosure or publication that was made or published more than a year prior to the patent application’s filing date (or priority date).  This is in accordance with the guiding idea that anything that was previously in the public domain (i.e., everywhere) is not an original or innovative invention, regardless of who later claims it to be.

Non-patentable subject matter

There are several inventions that, according to the Patent Law, cannot be patented. These innovations are detailed in Section 3 (a-p) of the Patents Act, of 1970. Atomic energy-related inventions are not patentable per Section 4 of the Indian Patents, 1970. The inventions which fall under Sections 3 and 4 of the Patents Act, 1970 are not allowable by the Examiner.   

Other rejections

Other types of rejections can be for claiming multiple patentable distinct inventions in a single patent application (unity of invention), for failing to clearly state and assert the invention (generally that the claim is unclear), for a specification failing to enable or support the claim, for a claim failing to recite an element or limitation necessary for the enablement of the invention, and for resubmitting the application.

What strategies are required to overcome objections raised by the Patent Office?

Drafting a response for an office action varies with the invention and raised objections. The strategy generally depends on the technology the invention is based on, the cited documents by the examiner, the type of objections raised by the examiner, and so on. In general, a few approaches can be listed which are common to almost all inventions.

Understanding the patent law, the invention (technology), and the prior art that the examiner mentioned in preparing the Office Action response is essential. It is necessary to employ highly qualified techno-legal specialists with years of expertise not only in drafting excellent responses but also in discussing the nature of the claims with the examiners. You have to make sure that the final draft claims should not too narrow.

The Counter-Intuitive (CI) Approach is a strategy for supporting the applicant’s reasons based on “Prior art Teachings and Motivation” to overcome the objection under inventive step or non-Obviousness. This method establishes the status of inventive step or non-obviousness using the constraints of a combination (or combinations) of the various prior arts. Such arguments help convince the controller that it “would not be clear to a person skilled in the art to go against the well-known facts and integrate the prior arts,” and they also enable the applicant to circumvent the controller’s rationale for merging the prior arts by arguing against the well-known disadvantage(s) of the asserted combination.

Anatomy of First Examination Report (FER)

The First Examination Report (FER) is divided into 4 parts, namely:

1. Summary of the Report

2. Detailed Technical Report

3. Formal Requirements

4. Documents on Record

1.     Summary

The fundamental information about the patent applications is presented in this section of the report. The patent application is anticipated to mandatorily comply with certain Patent Act conditions. As a result, a brief summary of the status of the patent application’s compliance with Act requirements is provided. These specifications relate to:

i) Novelty

ii) Inventive step

iii) Industrial Applicability

iv) If the invention is non-patentable under Section 3

v) If the invention is non-patentable under Section 4

vi) If there is Unity of Invention under Section 10(5)

vii) Whether or not the patent specification disclosure is sufficient under Section 10(4)

viii) If there is any reference to co-pending/foreign application

ix) If the patent claims under Section 10(5) and 10(4) (c) have clarity, is definitive, and are supported by description and scope. 

2.     Detailed Technical Report

The detailed justifications for the objections listed in the summary (section above) are provided in the second portion of the Examination report. It is further separated into two sections:

 a) List of documents cited; and

b) Detailed observations on the requirements under the Act.

The patent and non-patent literature (prior arts) that are comparable to the current patent application (to be reviewed) are referenced in the list of documents cited section along with their priority and publication dates, respectively.

The reasons for the patent application’s opposition are listed in the section “detailed observations,” along with an explanation and any pertinent previous art, such as D1, D2, and so on. The sections deal with inventive steps, non-patentability, adequate disclosure, and definitiveness challenges. Both the section’s specifics and the recommended course of action are mentioned.

3. Formal Requirements: 

This section demonstrates the detail of the formal specifications. This section includes a list of forms that are still pending, formal requirements, and any corrections that must be made to the specification format.

4. Documents on record

This section includes a list of the documents that the examination report is based on, together with their docket number, docket date, and the deadline for filing a response to the FER.


In conclusion, the response to the First Examination Report (FER) should be submitted as soon as possible in order to technically refute any issues by rebutting. Analyzing the concerns, determining the technical solution, presenting arguments and changes, etc. are all steps in the process of responding to FER. Therefore, it is crucial to comprehend the fundamental ideas in order to analyze the FER and provide a substantial response, which would ultimately issue the patent.

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