Response to FER (First Examination Report) — Draft Template

BEFORE THE CONTROLLER OF PATENTS
THE PATENT OFFICE, [Delhi / Mumbai / Chennai / Kolkata]

RESPONSE TO THE FIRST EXAMINATION REPORT
(Under Section 12 & 13 of the Patents Act, 1970 read with
 Rule 24B(6) of the Patents Rules, 2003)

Application Number   : [XXXXXXXXX]/[YYYY]
Filing Date          : [DD/MM/YYYY]
Applicant            : [Applicant Name]
Title                : [Title of Invention]
FER Dated            : [DD/MM/YYYY]
Reply Due On         : [DD/MM/YYYY]
Agent                : [Patent Agent Name], Reg. No. IN/PA-XXXX

To,
The Controller of Patents,
The Patent Office, [Branch].

Sir/Madam,

With reference to the First Examination Report ("FER") dated [DD/MM/YYYY],
the Applicant submits the following point-wise response. Amended claims
(marked-up and clean copies) are enclosed. Each requirement/objection of
the FER is reproduced in brief and answered.

PART I — REQUIREMENTS UNDER THE FIRST STATEMENT OF OBJECTIONS
--------------------------------------------------------------------
Req. 1 [Form 3 / Form 5 / priority document]:
   Reply: The document is enclosed / has been updated as required.

Req. 2 [Proof of right u/s 7(2)]:
   Reply: Enclosed as Annexure [__].

PART II — SUBSTANTIVE OBJECTIONS
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Obj. A — Novelty [Section 2(1)(j), cited doc D1: ______]:
   Reply: D1 does not disclose "[distinguishing feature]" now in amended
   claim 1. The invention is therefore novel. [Basis for amendment:
   page __, lines __.]

Obj. B — Inventive Step [Section 2(1)(ja), D1 + D2]:
   Reply: There is no motivation to combine D1 and D2; even combined they
   do not teach "[feature]". The invention yields the technical effect of
   "[effect]" and is non-obvious to the person skilled in the art.

Obj. C — Section 3 / Section 4 (non-patentable subject-matter):
   Reply: The subject-matter does not fall under Section 3([k]/[d]/[i]/[c])
   because [technical effect / demonstrated enhanced efficacy / it is not a
   computer programme per se but a technical system].

Obj. D — Clarity & Support [Section 10(4)/(5)]:
   Reply: Claims amended for clarity; term "[__]" replaced by "[__]" with
   antecedent basis.

Obj. E — Unity [Rule 13(2)]:
   Reply: All claims share the single inventive concept "[__]".
   [A divisional u/s 16 will be filed for the remaining subject-matter, if
   applicable.]

Obj. F — Sufficiency [Section 10(4)(a)/(b)]:
   Reply: The specification enables the full claimed scope; see examples at
   page __ and Figs __.

PART III — STATEMENT OF AMENDMENTS (Section 59)
--------------------------------------------------------------------
The amendments are by way of disclaimer/correction/explanation and fall
wholly within the scope of the claims as filed. No new matter is added.
  - Claim 1 amended (basis: page __, lines __).
  - Claims [__] deleted; remaining claims renumbered.

PRAYER
--------------------------------------------------------------------
It is respectfully prayed that the objections be treated as met and the
application be put in order for grant under Section 43. If any objection is
maintained, a hearing under Section 14 may kindly be fixed.

Enclosures:
  1. Amended claims — marked-up and clean copies.
  2. Updated Form 3 / other forms as cited.
  3. Annexures [__].
  4. Form 4 with fee (if extension of time is availed).

                                        Yours faithfully,

                                        ____________________________
                                        [Patent Agent Name]
                                        Reg. No. IN/PA-XXXX
                                        For and on behalf of [Applicant]
                                        Place: [City]   Date: [DD/MM/YYYY]