Office Action Response

Response to Office Action/Reply to Examination Report & Hearing

After filing patent application with complete specification, a patent application gets published. A patent application is examined only after filing a request for examination along with prescribed fee. The request for examination has to be filed within a strict timeline of four years (48 months) from the priority date or earliest filing date of the patent application.

A patent application is examined for preliminary defects as well as for the patentability. The preliminary defects cover procedural compliance and submission of all requisite documents. For ascertaining patentability, a thorough patentability search is conducted by the Indian Patent Office (IPO) and an examination report (generally called as first examination report (FER)) is issued. Normally, time taken by the Indian Patent Office (IPO) to issue the first examination report (FER) varies from few months to a year or two. The timeline also depends upon type of request for examination whether it’s ordinary or expedite.

First examination report (FER) contains detailed search report containing objections along with relevant documents and reasoning. The first examination report (FER) also contains formal objections. A reply has to be filed against such first examination report (FER) along with amended claims and reasoning for justifying patentability of claims. In case the reply filed against first examination report (FER) is satisfactorily then a patent application is allowed and the claims are granted. In case of any outstanding objection, a personal hearing is granted. In few cases a subsequent examination report (SER) is also issued after replying first examination report (FER) and before granting hearing. The process of issuing first examination report (FER), subsequent examination report (SER) and personal hearing is called as prosecution or office action. The term “office action” is generally used to refer actions taken by the Patent Offices with respect to the patent applications.

A well-drafted reply containing thorough analysis of cited documents, comparison with claimed invention and justifications for patentability of original/amended claims along with amended documents have to be filed for positive outcome. A well-drafted reply needs thorough understanding of the claimed invention, relevant documents cited by the Indian Patent Office (IPO) and legal justification for the claims in light of cited documents.

Similarly, a written-submission after the personal hearing also needs thorough understanding of the claimed invention, relevancy of documents discussed during the personal hearing and legal justification for the claims in light of discussed documents.

We at Delhi IP have Patent Agents/Attorneys who have relevant scientific/technical background along with their skillset to prepare replies to examination reports and hearings to get the best possible claims in our clients favor within a minimum timeframe.

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