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IP India guide

How to respond to a First Examination Report (FER)

By , Co-founder and CEO, PatentAssist.ai
Updated

The First Examination Report (FER) lists every objection the examiner has to your Indian patent application. You have a fixed period to answer them and put the application in order, or it is deemed abandoned. This guide covers the deadline, the objections that come up most, and how to structure a reply.

Quick answer

  • Deadline: 6 months from the date the FER is issued (rule 24B(5)).
  • Extension: up to 3 more months on Form 4 (rule 24B(6)), at ₹1,000 / ₹4,000 a month.
  • The reply: answer every objection point by point, with amended claims where needed and a marked copy of the changes.
  • Hearing: request one at least 10 days before the deadline (rule 28(2)).
  • If you miss it: the application is deemed abandoned (section 21).

The FER deadline

Section 21(1) gives the applicant a prescribed period, from the date the first statement of objections is sent, to comply with every requirement. Rule 24B(5) sets it at 6 months, and rule 24B(6) allows one extension of up to 3 months on Form 4. Under expedited examination the periods are the same (rule 24C(10) and (11)), but Form 4 costs ₹2,000 / ₹10,000 a month.

Since 2024 the extension request has to be made "before expiry of the period specified herein" rather than before the 6 months end. Filing Form 4 before the 6 months run out avoids any doubt. Note that the period is for putting the application in order, not only for filing a reply, so reply early enough to leave room for a hearing and any further amendments.

Common FER objections and how to answer them

Common objections in an Indian First Examination Report
Objection What it means and how to answer
Lack of novelty s.2(1)(j), s.2(1)(l) A cited document discloses every feature of a claim. Show a feature the document does not disclose, or amend the claim to add one that the specification supports.
Lack of inventive step s.2(1)(ja) The claim is said to be obvious to a person skilled in the art from one or more documents. Explain the technical advance over them and why the combination would not have been obvious.
Not an invention under section 3 s.3, often 3(d) or 3(k) 3(k) covers mathematical and business methods, computer programmes per se and algorithms: show the claim is not to the programme or method as such, for example by the technical effect it produces. 3(d) covers new forms of known substances: show enhanced efficacy.
Clarity and sufficiency s.10(4), s.10(5) The claims are unclear, not fairly based on the description, or the description does not enable the invention. Reword the claims or point to the passages that support them.
Lack of unity s.10(5), s.7(1) The claims cover more than one invention. Restrict the claims, and file a divisional application under section 16 for the rest if you want it.
Formal requirements s.8, rules 12, 13, 15 Missing or outdated Form 3, Form 5 or Form 26, drawings or abstract not in the prescribed format. File the document or the corrected page.

Section 2(1)(ja) defines an inventive step as a feature that involves technical advance over existing knowledge or has economic significance, or both, and that makes the invention not obvious to a person skilled in the art. Read every cited document in full, not only the passages the examiner quotes. A free Indian patent search pulls up cited Indian applications with their claims.

How to structure an FER reply

  1. Header: application number, FER date, and the deadline you are replying within.
  2. Amended claims: the full claim set as amended, if you amend.
  3. Objection-by-objection response: repeat each objection in the FER's order and answer it. Say what you amended and where the specification supports it, or why the objection does not apply.
  4. Prior art analysis: for novelty and inventive step, compare each claim feature with each cited document and name the features they do not disclose, with the technical effect those features give.
  5. Formal documents: an updated Form 3, Form 26 or replacement drawings if the FER asks for them.
  6. Hearing request: ask to be heard if the Controller does not accept the reply.
  7. Marked copy: every amended page with the changes marked, plus a statement of where each change is and why it was made (rule 14(2)).

Amendments: what you can and cannot change

Section 57 lets the Controller allow amendments to the application and specification, and a formal application to amend is made on Form 13 (rule 81(1)). Section 59(1) limits every amendment:

  • it must be by way of disclaimer, correction or explanation;
  • the specification as amended cannot claim or describe matter not in substance disclosed before the amendment; and
  • every amended claim must fall wholly within the scope of a claim before the amendment.

In practice, narrow the claims using features already in the description or dependent claims. You cannot add a new embodiment or broaden a claim at this stage.

The hearing

Before refusing an application, the Controller must give the applicant an opportunity to be heard if the applicant asks for it (section 14). Rule 28A applies the procedure in rule 28:

  • request the hearing at least 10 days before the end of the period to put the application in order (rule 28(2));
  • the Controller normally gives 10 days' notice, and the hearing can be held by video conference (rule 28(4) and (6));
  • written submissions and documents are due within 15 days after the hearing (rule 28(7));
  • an adjournment can be requested at least 3 days before the hearing, on a fee, with no more than two adjournments of up to 30 days each (rule 129A).

After the hearing the Controller either allows the application to proceed to grant, requires further amendment, or refuses it under section 15. An appeal against a refusal lies to the High Court (section 117A).

Deemed abandonment

If the requirements are not met within the period, the application is deemed abandoned under section 21(1). The status shows as "Deemed abandoned" on the IP India status page. Diarise the FER date as soon as it arrives, and see the patent timeline for the deadlines that follow grant.

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FER response: frequently asked questions

What is the time limit to respond to an FER in India?

Six months from the date the First Examination Report is issued, under rule 24B(5). It can be extended once by up to three months on Form 4 (rule 24B(6)). The same periods apply under expedited examination (rule 24C(10) and (11)).

What happens if I do not respond to the FER in time?

Under section 21(1) the application is deemed abandoned if the applicant has not complied with all the requirements within the prescribed period, counted from the date the first statement of objections was sent.

What does it cost to extend the FER deadline?

Form 4 costs ₹1,000 a month for a natural person, startup, small entity or educational institution and ₹4,000 a month for others, for up to three months. Under expedited examination it is ₹2,000 or ₹10,000 a month.

Can I amend the claims in an FER reply?

Yes, within section 59(1). Amendments must be by way of disclaimer, correction or explanation, cannot add matter not in substance disclosed before, and each amended claim must fall wholly within the scope of a claim before the amendment. File a clean copy and a marked copy that shows each change and the reason for it (rule 14).

How do I request a hearing on an FER?

Ask for one in the reply or by a separate request made at least 10 days before the deadline to put the application in order (rule 28(2), applied by rule 28A). The Controller normally gives 10 days' notice, the hearing can be held by video conference, and written submissions are due within 15 days after it (rule 28(7)).

Do I need to file Form 3 again after an FER?

Since the Patents (Amendment) Rules, 2024, details of corresponding foreign applications under section 8 are due within 3 months of the first statement of objections (rule 12(2)). Check whether your Form 3 is up to date when the FER arrives.

Can the Controller refuse the application after my reply?

Yes. If the application still does not meet the Act or the rules, the Controller can refuse it or require amendments under section 15, after giving you the opportunity to be heard under section 14. An appeal against a refusal lies to the High Court under section 117A.

Sources: Patents Act, 1970, sections 2, 3, 10, 14, 15, 21, 57 and 59; Patents Rules, 2003, rules 14, 24B, 24C, 28, 28A and 129A; Patents (Amendment) Rules, 2024. This guide is general information, not legal advice. Every FER turns on its own facts, so have a registered patent agent review your reply.