Before responding to an examination report

Run this in the first week after the report arrives, not the last.

CriticalDuring examinationInventorFounder

Everything you say in a reply is public and permanent. The two ways to lose value here are missing the date and conceding more than you needed to.

Tick anything that is true. Each tick opens a short note on why it matters. Nothing you tick is sent anywhere - it stays in this browser tab.

Do you know the exact deadline, counted from the date of issue?Six months from issue, extendable by three on a request in Form 4 - and the six months runs from issue, not from when you read it.
If yes: Diarise both dates now, and note that since 2024 the extension request may be made during the extension period.
Have you split the report into formal and substantive objections?Formal objections carry the same deadline and can end an application just as effectively.
If yes: Deal with the formal ones in week one - some depend on foreign offices and take weeks to obtain.
Can you state, for each cited document, the specific feature it does not disclose?That sentence, with a page and line reference, is the core of the reply.
If yes: If you cannot write it, the technical work has not been done yet.
Is the proposed amendment supported by the specification as filed?You may narrow, correct and explain. You may not add.
If yes: Find the passage that supports it. If there is none, the amendment is not available whatever its technical merit.
Does the amendment narrow to your commercial product?A patent narrowed to what you already sell tells competitors exactly which feature to change.
If yes: Amend to the narrowest limitation that answers the objection - which is often much wider than your product.
Have you read the reply as your future opponent would?A defendant will quote your concessions back at you years later.
If yes: Delete any sentence characterising the invention as essentially or fundamentally something.
Are there section 3 objections, and do you know which clause is relied on?Each clause requires different evidence, and answering the wrong one wastes the reply.
If yes: Match the evidence to the clause: efficacy data for 3(d), synergy for 3(e), technical effect for 3(k), claim category for 3(i).
Is a divisional worth filing before the parent is granted?The window closes at grant, and anything described but not claimed is otherwise lost.
If yes: Decide now, not at allowance. It can always be abandoned later.

A reply is an argument submitted to a decision-maker, not a form to be completed. Time spent on it is the best-value time in the whole process.

Sources & further reading

The Patents Rules, 2003, as amended (e-version updated to 15 March 2024) — Official IP India text
The Patents (Amendment) Rules, 2024 - G.S.R. 211(E), 15 March 2024 — Gazette text via WIPO Lex
The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text

CriticalCriticality

The reply that quietly gave the patent away

A first examination report is an opening position, not a rejection. The two ways applicants lose value here are missing the date, and buying a grant by conceding mor…

During examinationIntermediate

HighCriticality

What you said to the examiner is a public document

Every argument, amendment and concession made to get a patent granted sits on a public file that anyone can inspect. It is the first thing an opponent's counsel read…

During examinationAdvanced

HighCriticality

The divisional you could no longer file

A divisional application must be filed before the parent is granted. That is a moving target you do not control - and it is the single most common way that valuable …

During examinationAdvanced

Guided answer

I received an examination report. What do I do?

Working out what the objections mean and what a good reply looks like.

Holding an examination report?

A reply is an argument, not a form. What you concede now shapes what your patent is worth later.

Get help with your FER Read the journey

Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.

Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.