Patent Objection Reply —
Argue Against the FER &
Defend Your Claims
The First Examination Report (FER) is not a rejection — it is the start of a negotiation. Every objection raised by the Indian Patent Office examiner can be responded to with prior art arguments, claim amendments, Section 3 rebuttals, and technical explanations. TaxClue's registered patent agents draft FER responses that maximise the scope of what gets granted.
Reply to Patent FER / Objection
Response drafted within ✅ 2–3 weeks
6 Categories of Patent Objection — How TaxClue Responds to Each
The Indian Patent Office raises different categories of objections in the FER. Each requires a distinct response strategy — factual arguments, legal submissions, or strategic claim amendments.
📚 Lack of Novelty — Prior Art Anticipation
The examiner cites a prior art document that allegedly discloses all features of your claim
🔬 Lack of Inventive Step — Obviousness
Examiner argues the invention is obvious to a person skilled in the art
🚫 Section 3 — Not Patentable Subject Matter
Examiner objects that the invention falls within an excluded category
📝 Insufficient Disclosure / Enablement
Examiner says the specification doesn't fully enable the invention as claimed
🔀 Unity of Invention
Application claims more than one invention — examiner objects to multiplicity
📋 Formal / Administrative Objections
Errors in forms, claims numbering, abstract, drawings, or fee payments
Anatomy of the First Examination Report
The FER is a structured document issued by the IPO examiner. Understanding every section is the first step in crafting an effective response. TaxClue reads and categorises every objection before drafting the reply.
The FER identifies prior art, raises Section 3 objections, points to formal defects, and may question inventive step or enablement. Each objection requires an individualised response — a blanket counter-statement without specific technical argument is almost never effective.
First Examination Report Structure
How TaxClue Builds the FER Response
Every FER response TaxClue drafts follows a 6-element structure — covering arguments, amendments, evidence, and fallback positions simultaneously.
Step 1: Prior Art Analysis
Every cited prior art document is analysed element by element against each claim. A detailed comparison table is prepared showing what is and is not disclosed — the foundation for all novelty and inventive step arguments.
Step 2: Legal Argument Construction
Section 2(1)(l) novelty arguments, Section 2(1)(ja) inventive step arguments, and Section 3 rebuttals drafted with reference to case law, IPO examination guidelines, and the specific facts of the invention.
Step 3: Claim Amendment Strategy
Where arguments alone may not overcome an objection, targeted claim amendments are proposed — narrowing only what must be narrowed, preserving maximum scope. Dependent claims used as the amendment baseline.
Step 4: Technical Evidence
Where the examiner raises enablement or efficacy objections (particularly Section 3(d) for pharma), experimental data, comparative studies, or expert affidavits are marshalled to support patentability.
Step 5: Amended Specification / Drawings
Formal corrections made to specification, abstract, and drawings where procedural objections are raised. All amendments clearly marked to show what has changed — IPO requires tracked-changes format.
Step 6: Hearing Preparation
If the examiner maintains objections after the written response, a hearing is scheduled with the Controller. TaxClue prepares oral arguments and represents the applicant at the hearing — included in the service.
The Most Challenging Objections — Section 3 Expertise
Section 3 objections are the most technically and legally demanding to overcome. They require deep knowledge of the specific sub-section, the judicial interpretation of that exclusion, and a carefully constructed rebuttal strategy.
Section 3(d) — Pharma / Enhanced Efficacy
Section 3(k) — Software / AI / Algorithms
Section 3(i) — Methods of Treatment
Section 3(e) — Mixture Without Synergy
Section 3(j) — Plants / Animals / Biological
Section 3(m) — Aesthetic Creations / Other
Amending Claims Without Surrendering Scope
Every amendment to a patent claim during prosecution can affect what you can enforce later. TaxClue's amendment strategy is designed to overcome objections while preserving the maximum possible claim scope.
Argue First — Amend Only If Needed
Before amending any claim, TaxClue first exhausts all arguments for why the claim as written should be allowed. Claim history estoppel means amendments can limit the doctrine of equivalents in future litigation — unnecessary amendments should be avoided even if they would overcome the objection.
Distinguish — Don't Concede
The response carefully distinguishes the invention from cited prior art without conceding that the cited art is relevant to the claims. Admissions made in FER responses become part of the prosecution history and can be used against the patentee in infringement proceedings — TaxClue drafts every argument with litigation in mind.
Narrow Only What Must Be Narrowed
When amendment is unavoidable, TaxClue amends independent claims only to the minimum extent required to overcome the objection — drawing from dependent claims as a reservoir of narrowing language. Often the amendment involves adding one distinguishing feature from a dependent claim to the independent claim.
Maintain Dependent Claims as Fallback
Even if the broad independent claim cannot be maintained, dependent claims often survive. A granted patent on dependent claims covering the commercially most important embodiment can still be highly valuable. TaxClue ensures the amendment strategy preserves dependent claims covering the core commercial product even when the broadest independent claim must be narrowed.
From FER to Response — 5 Steps
FER Review
TaxClue receives and analyses the FER in full — categorising every objection by type, severity, and response strategy. A case assessment is shared with the applicant within 3 days.
Day 1–3Prior Art Analysis
Every cited prior art document obtained and studied. Element-by-element comparison prepared. Arguments for novelty and inventive step constructed. Counter-evidence sourced if needed.
Day 3–10Response Drafted
Complete written response drafted — prior art arguments, Section 3 rebuttals, claim amendments, specification corrections, and supporting affidavits. Shared with applicant for review.
Day 10–18Applicant Review
Applicant reviews the draft response for technical accuracy. One round of revisions incorporated. Amended claims and specification finalised. All documents prepared for filing.
Day 18–21Filed on IPO Portal
Response filed on IPO e-filing portal with all amended documents. Filing acknowledgement received. If examiner maintains objections, hearing scheduled — TaxClue represents at the hearing.
Day 21–25❓ Frequently Asked Questions
No — the First Examination Report is not a final rejection. It is the examiner's initial assessment of the application after conducting a prior art search and review of the specification. Every objection raised in the FER can be responded to with arguments, amendments, or evidence. The vast majority of patent applications receive at least one FER with objections — receiving an FER is a normal and expected part of the prosecution process, not a signal that the patent will be refused. Many applications ultimately granted have received multiple rounds of examination responses before the examiner was satisfied.
Under Rule 24B(6) of the Patents Rules, 2003, the applicant has 12 months from the date of the First Examination Report to file a written statement of response. If no response is filed within 12 months, the application is deemed abandoned. While the Controller has discretion to allow a delayed response on showing "sufficient cause," this is not automatic and should not be relied upon. TaxClue tracks the FER response deadline from day one and typically files the response well in advance of the deadline, with the applicant review period built into the timeline.
If the examiner maintains one or more objections after reviewing the written response, the Controller schedules a hearing — an oral proceeding where the applicant's agent presents arguments directly to the examining officer. The hearing is typically conducted at the relevant IPO branch office (Delhi, Mumbai, Chennai, Kolkata) or increasingly by video conference. TaxClue prepares detailed oral arguments for the hearing and represents the applicant before the Controller. After the hearing, the Controller issues a decision to grant, refuse, or require further amendments. If refused, the applicant has the right to appeal to the High Court.
Yes — you can submit post-filing evidence with your FER response, including experimental data, comparative studies, and expert affidavits. This is particularly important for Section 3(d) objections (pharma) where the examiner questions enhanced efficacy, and for inventive step objections where secondary indicia of non-obviousness (commercial success, long-felt need, failure of others) are argued. However, you cannot add new matter to the specification that was not disclosed in the original filing — only claims and the description that was already there can be amended or clarified. New experimental results that demonstrate properties already described in the specification are generally permissible.
Yes — if during prosecution you were required to remove certain claims (for example, due to a unity of invention objection, or because you narrowed independent claims and some embodiments are no longer covered), you can file a divisional application under Section 16 of the Patents Act covering the subject matter that was removed from the parent. The divisional application retains the priority date of the parent application. Divisional applications must be filed while the parent application is still pending — they cannot be filed after the parent is granted or abandoned. TaxClue advises on divisional strategy throughout prosecution.
⚠️ FER Response Mistakes That Risk Patent Rights
These errors are made by applicants who respond to FERs without specialist assistance — and cost patents:
- Missing the 12-month FER response deadline — application deemed abandoned with no automatic remedy
- Making unnecessary admissions in the response that the prior art is relevant — binding prosecution history estoppel
- Over-narrowing claims beyond what is needed to overcome the objection — surrendering scope that a carefully worded argument could have preserved
- Responding to Section 3(d) objections without comparative efficacy data — bare legal argument rarely succeeds alone
- Responding to Section 3(k) software objections without restructuring claims to emphasise technical effect
- Amending the specification to add new matter — amendments that go beyond what was originally disclosed are not permissible and will be rejected
- Filing a response without reading the cited prior art — generic arguments not tailored to each cited document are dismissed by examiners
Complete Patent Prosecution with TaxClue
Examination Request (Form 18)
Trigger examination before the 48-month deadline — standard or expedited.
Learn More →Provisional Patent Filing
Lock the priority date — give yourself 12 months to perfect the spec.
Learn More →The FER Is Not a Rejection — It's a Negotiation
Every objection in the First Examination Report can be argued, amended, or overcome with the right strategy and evidence. TaxClue's registered patent agents build responses that fight for the broadest possible grant — and represent you at the hearing if needed.
🔒 Confidential · Free FER Review · 4.9★ · 12-Month Deadline Tracked · Hearing Representation Included · Registered Patent Agents