The First Examination Report (FER) emerges as a pivotal document, serving as the compass through the complex terrain of patentability. Rooted in the provisions of the Indian Patent Act of 1970, the FER encapsulates a meticulous evaluation of an invention’s novelty, inventive step, industrial applicability, and compliance with statutory requirements. As we embark on this exploration, we will delve into the nuanced sections of the FER, deciphering the significance of each aspect in the broader context of securing intellectual property rights. From the assessment of patent claims under specific sections to the detailed technical report and formal requirements, this journey unfolds the intricate dance between innovation and regulatory scrutiny, shaping the destiny of inventions seeking legal recognition and protection. Join us as we unravel the layers of the FER, understanding its role in shaping the destiny of inventive ideas within the contours of the Indian patent landscape.
What is the First Examination Report (FER)?
The first Examination Report (FER) is a report is the gist of the detailed report made by the examiner and sent to the controller. It is the controller who disposes of the report and makes the gist of this repost. This gist is known as the First Examination Report (FER) which is to be sent to the agent or applicant of the invention, by the controller.
Procedure of FER
After conducting the substantive examination, the Indian Patent Office (IPO) issues a First Examination Report (FER). As per section 21 of the Patents Act, 1970, the response to the FER becomes due within 6 months from the date of issuance of the FER. This due date can be extended by a maximum of 3 months upon filing a request for extension by giving Form 4 with the prescribed fee which is 1000 per month in case of RFE made by Form 18 and 2000 per month if the RFE is made with Form 18A. It is pertinent to note here that the request for extension needs to be filed before the expiry of the initial 6-months period provided for responding to the FER. That is the request for extension cannot be filed retrospectively. The request for extension can be filed only once and it is not possible to take repeated extensions.
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The IPO may also issue a Subsequent Examination Report (SER) if required, once a response to FER is filed. The response to SER is also due within 6 months from the date of issuance of FER (not SER) which as explained above can be extended by a maximum of 3 months. Also, SER cannot be issued after the expiry of the extendable FER response period, i.e., 6 + 3 months. There used to be instances where SER was issued so close to the due date that there was not sufficient time for an applicant to respond to SER. The practice of issuing SERs is therefore discouraged by the patent office itself. And according to an estimate, only about 0.33% of patent applications receive SER.
Content of First Examination Report (FER)
The First Examination Report (FER) is divided into 4 parts, namely:
Summary of the Report
i) Novelty:
The examiner assesses whether the invention is novel, meaning it hasn’t been publicly disclosed or patented before. Novelty is a fundamental criterion for the patentability of an invention.
ii) Inventive Step:
This involves evaluating whether the invention involves an inventive step or non-obviousness. In other words, it examines if the invention would be considered obvious to a person skilled in the relevant field.
iii) Industrial Applicability:
The examiner checks if the invention is capable of being utilized in an industry, and if it serves a practical purpose or application. This is crucial to determine its relevance and usefulness in the commercial sector.
iv) If the Invention is Non-Patentable under Section 3:
Section 3 of the Patents Act outlines certain categories that are not considered patentable, such as inventions contrary to public order or morality, discoveries, and scientific theories.
v) If the Invention is Non-Patentable under Section 4:
Similar to Section 3, Section 4 lists inventions that are not considered patentable, including mere methods of agriculture or horticulture and methods of medical treatment.
vi) If There is Unity of Invention under Section 10(5):
Section 10(5) deals with situations where there are multiple inventions in a single application. The examiner determines whether there is unity of invention or if separate applications are needed.
vii) Whether or Not the Patent Specification Disclosure is Sufficient under Section 10(4):
This involves assessing whether the patent specification provides enough detail for a person skilled in the field to understand and reproduce the invention. It ensures that the disclosure meets the statutory requirements.
viii) If There is Any Reference to Co-Pending/Foreign Application:
The examiner looks for any references made to related applications, either pending within the same jurisdiction or in foreign patent offices.
ix) If the Patent Claims under Section 10(5) and 10(4)(c) Have Clarity, are Definitive, Supported by Description, and Scope:
This involves a detailed examination of the patent claims to ensure they are clear, definite, supported by the description, and fall within the appropriate scope allowed by the law.
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Detailed Technical Report
a) List of Documents Cited:
The examiner compiles a list of all documents, including prior art, cited during the examination. These documents are crucial for assessing the novelty and inventive step of the claimed invention.
b) Detailed Observations on the Requirements under the Act:
This section provides a comprehensive analysis of how the patent application aligns with the legal requirements stipulated in the Patents Act. It includes observations on patentability criteria, disclosure, and other statutory provisions.
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Formal Requirements
This section ensures that the patent application complies with all formal requirements, including proper filing procedures, correct documentation, and adherence to established norms and regulations.
Documents on Record
This part comprises all relevant documents forming the basis of the examination. It includes the patent application, prior art references, and any other documents considered during the examination process.
The applicant is expected to respond to the examination report within 6 months from the date of issue of the FER, failing which the patent application status will become ABANDONED.
This is all about the FER under the Indian Patent Act, of 1970.
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Conclusion
Understanding the nuances of the FER under the Indian Patent Act is crucial for applicants seeking patent protection. A diligent and timely response to the FER ensures that the patent application continues through the examination process, moving a step closer to securing intellectual property rights. As the intricate dance between the applicant and the patent office unfolds, navigating these intricacies becomes paramount in the quest for innovation protection.