Reading a patent examination report line by line
The First Examination Report has a structure. Learn it once and you will never again spend a day working out what the examiner actually wants.
A First Examination Report arrives as a few pages of dense text, a list of cited documents, and a deadline. The deadline is the only part most people read carefully. This is how to read the rest, in the order that makes the response write itself.
Start with the dates, then stop thinking about them
Note three things before anything else.
- The date of issue of the FER. Your response is due six months from this date, not from the date you received it.
- Whether the six months can be extended. It can, by up to three months, on Form 4 with the fee, as long as the request is filed before the original deadline expires. Diarise both dates now.
- Whether this is a response to an expedited examination request. If so, the timelines in the rest of the file are compressed and the client's expectations are too.
Then put the dates away. The content of the response does not depend on them, and reading the report with the deadline in your head makes you skim.
The report has two halves
Every FER separates into formal objections and substantive objections, even when the layout does not.
Formal objections are about the file, not the invention. Missing or outdated Form 3 details of corresponding foreign applications under Section 8. Form 5 declaration of inventorship not matching the applicants. Proof of right not filed. Title too long. Abstract over the word limit. Reference numerals in the drawings not matching the description. Each of these is cleared by filing a document or a one-line amendment. List them, clear them, and do not let them occupy the first page of your response.
Substantive objections are about whether the claims should be granted. This is where the response is won or lost, and where the rest of this article lives.
The substantive objections, in order of difficulty
Read the technical section of the report and sort every objection into one of these bins.
| Objection | Where it comes from | What the response must do |
|---|---|---|
| Lack of novelty | Section 2(1)(j), against a cited document D1 | Show one claimed feature that D1 does not disclose, or amend to add one |
| Lack of inventive step | Section 2(1)(ja), usually D1 combined with D2 | Show why combining them was not obvious, or that the combination still misses a feature |
| Non-patentable subject matter | Section 3, most often 3(k) or 3(d) | Reframe what the claim is to, and back it with the specification |
| Lack of clarity or support | Section 10(4)(c), Section 10(5) | Amend the claim language, or point to the exact paragraph that supports the term |
| Lack of unity | Section 10(5) | Argue a single inventive concept, or divide the application |
| Insufficient disclosure | Section 10(4)(a) and (b) | Point to the embodiments; this one is rarely curable by argument alone |
Novelty is the easiest to answer and the one most often answered badly. The examiner has said D1 discloses every feature of claim 1. Your response is a table: each feature of claim 1 in the left column, where it appears in D1 in the middle, and for at least one row, "not disclosed" with an explanation on the right. If you cannot fill in a "not disclosed" row honestly, you are amending the claim, and the sooner you accept that the better the amendment will be.
Inventive step is harder because it invites argument, and argument without structure loses. The Indian test asks for a technical advance over existing knowledge or economic significance, or both, and that the invention is not obvious to a person skilled in the art. Build the response in that order. What is the advance? Why would the skilled person reading D1 not have reached for D2? What in D2 teaches away? Only then say the word "obvious".
Section 3 objections are a different animal. The examiner is not saying your claim is anticipated. They are saying it is the kind of thing that cannot be patented at all. For 3(k), the response reframes the claim around a technical effect or a hardware interaction and shows where the specification describes it. For 3(d), you are usually looking for efficacy data that may or may not exist, and the client needs to hear that early.
The cited documents are the response
Before you write a word, read D1 and D2 in full. Not the abstract. Not the examiner's summary. The whole document, with claim 1 of your application next to it.
Two things happen when you do this. First, you find the feature the examiner missed, because examiners work fast and D1 is long. Second, you find the parts of D1 that are worse for you than the examiner noticed, which tells you how far the amendment has to go before the hearing.
What the response looks like
- Formal objections, cleared in a numbered list, with the documents enclosed.
- Amended claims, if any, as a clean set and a marked-up set, with a one-paragraph statement of where in the specification each amendment finds basis. This matters under Section 59.
- Novelty: the feature table, then two paragraphs.
- Inventive step: advance, non-obviousness, teaching away.
- Section 3: the reframing, with specification paragraph references.
- Clarity, support, unity: short and specific.
- A closing request for grant, and a request for a hearing if any objection is maintained.
Six to ten pages, excluding the claims. If it is longer, you are arguing something you should have amended.
The part nobody tells you
If the examiner is not satisfied with the response, the next step is a hearing notice under Rule 28, usually with ten days' notice or so, and written submissions due within fifteen days after the hearing. The response you file now is the document the hearing officer reads first. Write it as the hearing brief, because it is one.
The Patent Drafting and Prosecution course takes two real applications from FER to hearing, with the responses and the marked-up claims.