What happens after I request examination of my patent application

Question

I filed a request for examination of my patent application and want to understand the FER process and how to respond. I would rather settle this without going to court if the law allows it, but I need to know my rights before I sign anything. Please tell me what to do first and what document to keep.

MyVakeel Legal Desk · Accepted Answer

Under Indian law, Patents Act, 1970, Section 12 is the starting point for this intellectual property question. What follows is the position in substance, together with the steps that usually make the difference in practice.

Section 12 of the Patents Act, 1970 requires the Controller to refer the application to an examiner once a request for examination is filed under Section 11B, who conducts a search for prior art and assesses novelty, inventive step and industrial applicability of the claimed invention.

Section 13 requires the examiner to check whether the invention has already been published or claimed in any earlier application in India, and the results of the examination, including any objections, are communicated to the applicant as the First Examination Report, commonly called the FER.

Section 21 requires the applicant to comply with all requirements raised in the FER within a prescribed period, currently six months from the date of the FER (extendable by three months on request), failing which the application is treated as deemed to be abandoned, a strict and commonly missed deadline.

Responding to an FER typically involves amending the claims to overcome cited prior art, arguing distinguishing technical features, addressing Section 3 objections if any, and complying with formal requirements; if the Controller remains unsatisfied, a hearing under Rule 129 may be offered before a final decision to grant or refuse the application.

What to do next: 1) Track the six-month statutory deadline for responding to the FER carefully; 2) Amend claims to distinguish the invention from the cited prior art; 3) Address any Section 3 patentability objections with technical arguments; 4) Request a hearing if the response does not resolve all objections.

If you are unsure whether your facts fall inside Patents Act, 1970, Section 12, that is worth checking with an advocate before you commit to a route, because switching later costs time. You can post the details on the MyVakeel forum for a practising advocate to review, or book a paid consultation with a Bar Council verified lawyer in intellectual property.