Response to First Examination Report (FER) — How to Draft

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

Application No.      : [XXXXXXXXX]/[YYYY]
Date of Filing       : [DD/MM/YYYY]
Applicant            : [Applicant Name]
Title of Invention   : [Title of the Invention]
FER Reference        : [FER No.]
Date of FER          : [DD/MM/YYYY]
Due Date for Reply   : [DD/MM/YYYY]  (6 months u/r 24B; extendable 3 months on Form 4)

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

Sub: Reply to the First Examination Report dated [DD/MM/YYYY] under
     Section 12 & 13 of the Patents Act, 1970 read with Rule 24B(6)
     of the Patents Rules, 2003.

Sir/Madam,

We, [Applicant / Agent Name, Reg. No. IN/PA-XXXX], the authorised patent
agent for the Applicant, submit the following response to the objections
raised in the First Examination Report. This reply is filed together with a
marked-up and a clean set of amended claims/pages. Each objection is
reproduced (in brief) and answered point-wise.

A. FORMAL / PROCEDURAL OBJECTIONS
---------------------------------------------------------------
Objection 1: [e.g. Form 3 (statement & undertaking) not up to date /
             Priority document / verified English translation not filed.]
Reply      : The requisite documents are enclosed herewith — updated
             Form 3 dated [__], certified priority document and its
             verified English translation. Objection is respectfully
             requested to be treated as complied with.

Objection 2: [e.g. Proof of right u/s 7(2) / assignment on Form 6 pending.]
Reply      : The assignment deed / Form 6 establishing proof of right is
             enclosed. Kindly take the same on record.

B. SUBSTANTIVE OBJECTIONS
---------------------------------------------------------------
Objection 3 — Novelty (Section 2(1)(j) r/w Section 13):
The claimed invention is said to be anticipated by D1 [Publication/Patent
No., relevant paragraphs/figures].
Reply: D1 discloses [summarise what D1 actually teaches]. It does NOT
disclose the feature "[distinguishing feature X now recited in amended
claim 1]". The claimed combination of [feature X + feature Y] is nowhere
present in D1 either expressly or inherently. Hence the amended claim 1 is
novel over D1.

Objection 4 — Inventive Step (Section 2(1)(ja) r/w Section 13):
The invention is alleged to be obvious over D1 in combination with D2.
Reply: (i) D1 and D2 are from unrelated fields and there is no teaching,
suggestion or motivation to combine them; (ii) even if combined, they do
not arrive at "[technical feature]"; (iii) the invention solves the
technical problem of [problem] and yields the technical effect/advantage
of [e.g. 30% lower power consumption / improved yield], which is a
non-obvious contribution. The person skilled in the art would not, without
hindsight, arrive at the claimed subject-matter. The claims therefore
involve an inventive step.

Objection 5 — Non-patentable subject-matter (Section 3 / 4):
[e.g. Claims held to fall under Section 3(k) — computer programme per se /
3(i) — method of treatment / 3(d) — new form of known substance.]
Reply: The invention is not a computer programme "per se"; it provides a
technical effect/technical contribution beyond mere software, namely
[hardware interaction / improved memory management / real-world technical
result], and is directed to a [system/apparatus] and a computer-implemented
method producing a technical effect. [OR, for 3(d): the claimed [new form]
shows enhancement of known efficacy as evidenced by data at Annexure __.]
The subject-matter therefore does not fall within the excluded categories.

Objection 6 — Clarity, Support & Definiteness (Section 10(4)/(5)):
Reply: The claims have been amended to be clear and fully supported by the
specification. The term "[unclear term]" has been amended to "[clear
term]" with antecedent basis at page [__], lines [__].

Objection 7 — Unity of Invention (Section 10(5) r/w Rule 13(2)):
Reply: All claims now share the single inventive concept of "[special
technical feature]" and therefore satisfy the requirement of unity.
[If a divisional is needed: A divisional application u/s 16 will be filed
for the second invention.]

Objection 8 — Sufficiency / Enablement (Section 10(4)(a)-(b)):
Reply: The specification enables the invention across the claimed scope;
see the worked examples at page [__] and Figures [__]. Best method is
disclosed at page [__].

C. STATEMENT OF AMENDMENTS
---------------------------------------------------------------
The claims have been amended as follows (nature of amendment u/s 59 — by
way of disclaimer, correction or explanation, and within the scope of the
claims as filed):
 - Claim 1: amended to incorporate feature "[X]" (basis: page [__],
   lines [__]).
 - Claims [__]: deleted / renumbered accordingly.
No new matter has been added. A marked-up copy and a clean copy of the
amended claims are enclosed.

PRAYER
---------------------------------------------------------------
In view of the above submissions and amendments, it is respectfully prayed
that all objections be treated as satisfactorily met and the application be
put in order for grant under Section 43. A hearing under Section 14 may
kindly be granted before any adverse order is passed.

Enclosures:
 1. Amended claims — marked-up copy and clean copy.
 2. Updated Form 3 dated [__].
 3. [Priority document / Form 6 / efficacy data at Annexure __ / D1
    analysis chart].
 4. Form 4 (if extension of time claimed) with fee.

                                        Yours faithfully,

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