July 23, 2025 by Amit Kumar
Once the Indian Patent Office examines your patent application, it issues a First Examination Report (FER). This report outlines objections or clarifications regarding your invention.
A FER Reply is your official response to this report.
It is a critical step in the patent prosecution process and directly affects whether your patent is granted, amended, or refused.
|
Parameter |
Details |
|
Legal Reference |
Section 14 & 21, Indian Patents Act, 1970 |
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Reply Deadline |
6 months from date of FER issuance |
|
Extension |
Up to 3 months, upon request |
|
Form Used |
Form 13 (for claim amendments) |
If no reply is submitted within this time, the application is deemed abandoned.
A strong FER Reply must address each objection raised in the FER, using legal, technical, and strategic reasoning. It usually includes:
|
Section |
Description |
|
Point-wise response |
Reply to each objection clearly |
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Prior art analysis |
Distinguish your invention from cited prior art |
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Claim amendments |
Narrow or reword claims to overcome objections |
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Technical proof |
Data, examples, or diagrams (if applicable) |
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Revised documents |
Updated specification, drawings, or forms |
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Objection Type |
Strategy |
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Lack of Novelty |
Show how your invention differs from cited documents |
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Obviousness / Inventive Step |
Highlight unexpected advantages or technical challenges solved |
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Insufficient Disclosure |
Add examples or expand the description section |
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Non-Patentable Subject Matter |
Argue legal exceptions (esp. for Section 3(k), 3(d), etc.) |
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Ambiguity in Claims |
Redraft using clear, specific, and structured language |
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Formal Issues |
Submit missing forms, drawings, or clarifications |
Read the FER line-by-line.
Identify:
Formal objections
Technical objections (novelty, inventive step)
Section 3 objections (non-patentable subject matter)
“Claim 1 lacks novelty in view of Document D1 – US20200000001A1.”
Analysis:
You need to compare your claim with the cited document D1 and demonstrate how your invention is different.
Respond to each objection separately, clearly stating the legal and technical reasoning.
Example:Objection:
Claim 1 is not novel under Section 2(1)(j) as the features disclosed are anticipated by US20200000001A1.
Response:
“With due respect, the cited document D1 discloses a system for real-time glucose monitoring using an external patch. However, Claim 1 of the present invention relates to an embedded, implantable device that performs predictive analysis using AI algorithms based on historical patient data — a feature not disclosed or suggested in D1.
Therefore, the claimed subject matter is novel and non-obvious over D1.”
Amend the claims to overcome objection, ensuring they:
Do not introduce new matter
Stay within the scope of the originally filed specification
Resolve the objections (e.g., by narrowing or clarifying)
Original Claim 1:
A wearable device for monitoring blood glucose levels.
Amended Claim 1 (submitted with Form 13):
An implantable device comprising a microprocessor configured to collect glucose data and analyze it using a machine-learning algorithm to predict future blood glucose trends.
Why this works: Narrowing the claim improves clarity and differentiation from prior art.
You can attach:
Experimental results
User data
Technical papers
Diagrams
This is particularly helpful for inventive step or Section 3(d) objections.
Example AttachmentA comparison chart showing accuracy improvement over the cited device
A scientific publication co-authored by the inventor describing the predictive algorithm
FER reply document (point-wise response)
Amended specification or claims (if any)
Form 13 (if claims are amended voluntarily)
Supporting documents
File via: IP India e-filing portal
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Mistake |
Why Avoid |
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Ignoring or skipping an objection |
May lead to refusal of the application |
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Repeating the claim language without explanation |
Fails to address the examiner’s concerns |
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Introducing new subject matter |
Can lead to objection under Section 59 |
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Missing Form 13 with amended claims |
Makes your amendments invalid |
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Tip |
Why It Helps |
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Be Concise Yet Comprehensive |
Avoid repetition; focus on key distinctions |
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Use Clear Technical Language |
Avoid vague or marketing-style phrases |
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Maintain Consistency |
Ensure amended claims align with the original specification |
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Cite Case Laws (if needed) |
Helps in legal reasoning (especially for S.3 objections) |
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Respond Early |
Gives time for revision, hearing, or secondary examination |
Determines Grant Success – The FER Reply is often your only chance to address objections
Reduces Delay – A well-drafted response can fast-track the grant
Prevents Abandonment – Missing deadlines results in automatic application lapse
Strengthens IP Value – Cleanly granted patents attract higher valuation and enforceability
A FER Reply isn’t just a routine response—it’s your strongest legal and technical defense against rejection.
A smart, timely, and well-drafted reply can turn a tentative objection into a successfully granted patent.
Don’t underestimate this step. Use expert guidance and legal strategy to protect your innovation.
Q1. Can I modify claims in the FER reply?
👉 Yes, but only within the scope of the original specification and using Form 13.
Q2. What happens after I file the reply?
👉 The Controller may accept it, issue a hearing notice, or raise a second examination report.
Q3. Can I seek professional help for FER replies?
👉 Absolutely. Drafting a FER reply involves both legal reasoning and technical precision.
Q4. What if I miss the 6-month deadline?
👉 You can request a 3-month extension, but beyond that, your application is deemed abandoned.
Q5. Can I respond only to selected objections?
👉 No. You must address all objections mentioned in the FER for the application to proceed.