Patents : All about FER (First Examination Report)

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First examination report (FER)

First examination report is issued by the IPO (Indian Patent Office) after briefly conducting a patent examination of the claims, along with patent specification filed with the patent office. The examiner of the IPO lays down a list of objections in this examination report, which can be both technical or formal in nature.

Once the patent application has been examined, the patent applicant receives the First examination report (FER) issued by the Patent Office. This report usually encompasses prior art which is analogous to the claimed invention. Here, ‘Prior art’ signifies the documents which are in existence before the date of filing, which is similar/ parallel to the claimed invention. This does not mean that they need to be commercially available, but solely means that the invention is already familiar.

The applicant is given the time span of 12 months within which the reply to objection (if any) and the place of application is to be made. The Applicant should reply to the objections specified in the FER (if any) and place the application for grant within the time span of 12 months from the date of issue of the FER. In case, the applicant fails to act within the prescribed time period of 12 months, the application is deemed to be abandoned. Where, the patent application is found to be in order for grant, the patent is permitted provided there is no pre-grant opposition filed or pending by a third party.

Constituents of First Examination Report (FER) is divided in 4 parts :-

  1. Summary of the Report
  2. Detailed Technical Report
  3. Formal Requirements and;
  4. Documents of Record

1) Summary

This entails generic details of the patent applications. There are certain requirements of the act which the applicant is expected to mandatorily satisfy. The few of the requirements being

  • novelty,
  • inventive step,
  • industrial applicability,
  • if the invention is non-patentable under section 3,
  • if the invention is non-patentable under section 4,
  • if there is unity of invention under section 10(5),
  • if there is any reference to co-pending/foreign application, etc.

2) Detailed Technical Report

This part provides a detailed explanation of the reasons behind the objections mentioned in the summary. Further, it is divided in two segments

  • List of document cited; and
  • Comprehensive observations on the requirements under this Act.

3) Formal requirements

This segment, provides details and mentions the formal requirements. It in envisages the pending forms, official requirements and the correction necessary (if any) in format of specification.

4) Documents on record

List of documents along with the docket number and docket date on which the FER is based, in addition to last date for filing of the response is stated in this segment.

Relevant Sections and Rules Applicable

A) Section 14 of the Patents Act, 1970 – Consideration of the report of examiner by Controller

  • Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.

B) Section 21 of the Patent Act, 1970 – Time for Putting application in order for grant

  • An application for a patent shall be deemed to have been abandoned unless, Within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.

  • Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.

The Government of India had published the Patents (Amendment) Rules, 2016 (Rules), amending the Patent Rules 2003. Amendment was brought forth in Rule 24B (5) of Patent Rules, 2003, according to which 

  • The time for putting an application in order for grant under Section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements.

  • The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form-4 for extension of time along with prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (5).

The Patent Office however clarified that in application wherein, the FERs which have been issued by the Patent Office before the date 16.05.2016; the time span for putting an application for the grant will remain 12 months. On the other hand, where FERs which have been issued by the Patent Office on or after the date 16.05.2016, the provisions of the Rules shall be applied according.

In case the examination report associates with issues present in the client’s application, then it is of uttermost importance that these issues are addressed and responded to within the set timeframe. The includes- amending the specification to discard the matter raised (for example- re- wording the claims to furnish a compact meaning of the invention) and or; furnish arguments as to why the issues raised should not be prevent acceptance.

The examiner will then consider the response and supply another report either accepting the client’s application, or identifying any incomplete or new issues. Therefore, it is necessary to file the response to FER at the earliest, so that it can be reviewed by the Patent Office and another examination report may be issues (if so required). If the FER is responded correctly with respect to all the objections raised, the Patent Grant is possible without hearing.

Plausible objection that can be raised in the FER of a Patent Application are relating to technical aspects of the invention/ or procedural/formal requirements of the Act. These contain :

  • Lack of Novelty, inventive step and industrial applicability.
  • Subject matter of the application relating to a category which falls within the purview of Section 3 and 4.
  • Non-fulfilment of any other requirements under the Act and Rules.

The technical objection are approached by arguing about the technical distinctions between the application and the prior art stated in the FER. The difference between the prior art claims and the existing application claims is determined; this play a significant role in decision making of claim amendment of the application. It is essential that the claim amendment if necessary should be in consonance with what is mentioned in the specification.

The technical arguments in response should be totally based on the difference between the claims of the application & the cited prior arts; it should aim at substantiating and proving the inventive step, novelty and non-obviousness of the client’s application over the prior art cited in the application.

The objections with regards to the Procedural/formal requirements need to be approached and complied completely and there lies no scope of argument here. For example- when there are various novel subject matter the unity of invention need to be determine and because an application may possess only one novel subject matter, another application shall be filed for each new subject matter.

The FER may also consist of certain objections under Section 9,10,57 and 59 of the Patents Act, 1970; which lists down the format related requirements of the specification, drawings and other enclosures of the Patent Application which need to be approach too. Conducting a proper technical study and widen scrutiny aids in drafting a hassle-free legal response to the FER. Improper, Imprecise and delayed response to the FER can prove detrimental for the client’s application; hence it is crucial to address the objections error-free and at the earliest to avail quick patent grants.