Patent FER Response in India: A Clause-by-Clause Checklist for Answering the Examination Report

The email from the Patent Office lands on a Thursday afternoon. Attached is a First Examination Report: eleven pages, three citations marked D1 to D3, and objections under sections 2(1)(ja), 3(f) and 10(5). The founder forwards it to her co-inventor with one line: "Have they rejected us?"

They haven't. An FER is a list of objections with a deadline attached, a normal stage of examination rather than a refusal. This guide explains how to prepare an FER response for a patent in India: the dates that start running the day the report issues, the usual objections and how each is answered, what the law lets you amend, and the clause-by-clause checklist we run before any reply goes in.

Quick answer

An FER is the Controller's first statement of objections after you request examination in Form 18 or 18A. You have six months from the date the FER is issued to put the application in order (Rule 24B(5), or Rule 24C(10) for expedited examination), extendable once by up to three months on Form 4. Miss it and the application is deemed abandoned under section 21(1). Since March 2024, updated Form 3 details of foreign filings are due within three months of the FER. A good reply answers every FER paragraph in order, amends only within section 59, argues inventive step in the Delhi High Court's five-step order, and asks for a hearing in time.

What an FER is and when it arrives

Indian applications are not examined automatically. Section 11B requires a request: Form 18 within 31 months of the priority date for applications filed on or after 15 March 2024 (48 months for older ones), or Form 18A for expedited examination if you qualify under Rule 24C(1), for example as a startup, small entity, individual woman applicant or government body.

When its turn comes, the examiner searches the prior art and reports on novelty, inventive step, industrial application, section 3 and compliance with the Act. The Controller then sends you the gist of the objections, the FER (section 14; Rule 24B(3)). Our patent registration guide covers the steps before this.

The FER reaches the email address for service and your agent's e-filing account, and it sits among the application's documents in the IPO's public search, where competitors can read it too. Technical objections usually come first, against citations listed as D1, D2 and so on, then formal requirements.

The dates that run from the FER

The clock starts on the date the FER is issued, not the day someone opened the email.

The Form 4 fee is charged per month. Under the First Schedule as substituted in March 2024, an e-filed extension under Rule 24B(6) costs ₹1,000 a month for a natural person, startup, small entity or educational institution and ₹4,000 a month for others; under Rule 24C(11) it is ₹2,000 and ₹10,000. File the Form 4 before the six months run out. The 2024 amendment reworded this rule in a way some read as allowing a later request; a live application is the wrong place to test that.

Once the deadline passes with requirements unmet, section 21(1) treats the application as abandoned, and no form revives it. The Delhi High Court restored applications in The European Union v. Union of India (2022), where an agent never passed on the FER, but only as an extraordinary case.

The trap we see most is Form 3. Updates used to be due within six months of each foreign filing; now they are due within three months of the FER, half your reply window. See our guide on filing outside India for how those filings interact.

The usual objections and how each is answered

Novelty: sections 2(1)(j) and 2(1)(l)

A novelty objection says one document discloses every feature of your claim. The answer is a feature-by-feature claim chart showing a feature D1 does not disclose. Documents cannot be combined for novelty; if the examiner has read D1 with D2, say so. A document published after your priority date is not prior art by publication, though an earlier-filed Indian application can still be raised as prior claiming under section 13(1)(b).

Inventive step: section 2(1)(ja)

The definition needs a feature involving technical advance or economic significance, or both, that makes the invention not obvious to a person skilled in the art. Economic significance alone will not carry the claim.

The courts have said how this must be reasoned. In Agriboard International LLC v. Deputy Controller of Patents and Designs (Delhi High Court, 2022), a refusal had to discuss the prior art, the invention and how a skilled person would get from one to the other. In Tapas Chatterjee v. Assistant Controller of Patents and Designs (LPA 836/2023, 6 October 2025), a Division Bench of the Delhi High Court called the five-step test from F. Hoffmann-La Roche Ltd v. Cipla Ltd the "gold standard" and held it cannot start at the differences. Identify the skilled person, the inventive concept and the common general knowledge first, then the differences, then ask whether bridging them was obvious, without hindsight. Where features are missing from D1 and D2, the authority must explain why adding them was obvious.

Write your argument in that order, and cite these judgments when an FER combines documents without saying why a skilled person would.

Non-patentable subject matter: section 3

These are answered mostly with claim drafting.

• 3(d), new forms or uses of known substances: a new form needs data showing enhanced efficacy, which the Supreme Court in Novartis AG v. Union of India (2013) read as therapeutic efficacy for medicines. For processes, Tapas Chatterjee confirms the bar does not apply if the process yields a new product or uses a new reactant.
• 3(k), computer programmes per se, algorithms and business methods: show the technical problem, solution and effect, as the CRI Guidelines, 2025 expect. Our section 3(k) guide covers this.
• 3(m), mental acts and schemes: tie the claim to apparatus or physical steps.
• 3(i), methods of treatment: recast as device or composition claims where supported.
• 3(f), mere arrangement of known devices working independently: show the parts interact to produce a combined effect.

The full list is in what can be patented in India.

Unity, clarity and sufficiency: sections 10(4) and 10(5)

Section 10(5) requires claims to relate to one invention or a group linked by a single inventive concept, and to be clear, succinct and fairly based on the description. For unity, elect a group and move the rest into a divisional under section 16, filed before grant.

Clarity objections target words like "substantially" or "adjustable as required", or claims reciting a result instead of the means. Replace them with the specific feature the description gives.

Sufficiency and best method under section 10(4)(a) and (b) are harder, because you cannot add missing detail now. Show, by page and line, where the specification already enables the claim.

Formal requirements

• Form 1: correct applicant and inventor details. An assignee also needs proof of right under section 7(2), due within six months of filing (Rule 10).
• Form 3: the section 8 statement, updated within three months of the FER.
• Form 5: inventorship declaration where Rule 13(6) requires it.
• Form 26: the agent's authorisation, due within three months of filing (Rule 135(1)).
• Priority documents: certified copy and verified English translation when the Controller asks.

What you can and cannot amend

Amendments are made under section 57, and section 59(1) sets the limits. An amendment must be by way of disclaimer, correction or explanation, and only to incorporate actual fact. The amended specification must not claim or describe matter not in substance disclosed before, and every amended claim must fall wholly within the scope of a claim as it stood before.

In practice, narrowing claim 1 with a feature from a dependent claim, or one clearly disclosed in the description, is the normal answer to novelty and inventive step. Broadening a term, adding a claim category no original claim covered, or importing a feature from your latest prototype is where amendments get refused.

Rule 14 requires retyped pages and a marked copy showing each change, with page and line references and reasons. Amendments meeting the Controller's objections go in with the reply (section 57(6)); a voluntary amendment beyond them needs Form 13.

The clause-by-clause method

This is how we prepare a reply, whatever the technology.

1. Number the FER. Split it into separate objections, even where the examiner bundles them.
2. Build the objection map. One row per objection: FER paragraph, objection, cited document, our response, amendment or evidence, status. It becomes the reply's skeleton.
3. Chart claim 1 against each citation. Mark each feature as disclosed, partly disclosed or absent, with paragraph references.
4. Decide whether to argue or amend. A clear gap means argue. A near miss means amend to a supported feature that opens real distance.
5. Write inventive step in the five-step order, then state the technical advance in measurable terms from the specification: less breakage, lower power draw, fewer parts. Economic significance supports; it does not lead.
6. Add evidence where argument is not enough: comparative data for 3(d), or a skilled person's signed declaration. Evidence explains the specification; it cannot add to it.
7. Draft the reply in FER order, with a clean claim set, marked copy and a hearing request.

Worked example: a groundnut decorticator with two citations

Illustrative only. The facts are invented.

A Saurashtra MSME applied for a manual groundnut decorticator. Claim 1 recites (a) a hopper, (b) an oscillating sector arm over (c) a concave sieve, and (d) a lever-operated cam that changes the concave clearance while the machine runs. Claim 4 adds three detent positions, one per kernel grade. The FER issued on 12 May 2026, citing D1, an earlier Indian application for an oscillating decorticator, and D2, a foreign utility model with a screw-adjusted concave.

Dates first: Form 3 update by 12 August 2026; reply by 12 November 2026, or 12 February 2027 with one Form 4. The applicant had filed a PCT application in March, so Form 3 went in straight away.

The objection map behind the reply:

Novelty followed from the chart. For inventive step we named the skilled person (a farm machinery engineer), the inventive concept (changing clearance under load, so one machine handles mixed kernel sizes without stopping) and the common general knowledge (fixed or screw-set concaves). The difference was adjustment during operation at set positions, which neither document suggests. Folding in claim 4 anchored that argument in a described feature.

Hearings and written submissions

Under section 14, the Controller must hear you before refusing if you ask in time, and the Patent Office manual says no patent is refused without that opportunity. Rule 28(2) wants the request earlier than ten days before the final date. We put it in every reply, conditional on any objection surviving.

If objections remain, the hearing notice lists them, normally with ten days' notice (Rule 28(4)), and Rule 28(6) allows video hearings. Under Rule 129A, an adjournment needs reasonable cause and a request with fee at least three days ahead, and you get at most two, of up to thirty days each.

Prepare one page: each remaining objection, your answer, and a fallback claim set already within section 59. Then watch the deadline that catches people: written submissions are due within fifteen days of the hearing (Rule 28(7)), with any amended claims you offered. A refusal under section 15 must be reasoned, and can be appealed to the High Court under section 117A within three months.

Final checklist before you file the reply

• Every FER paragraph has a numbered answer, in the same order.
• Deadlines run from the FER issue date; Form 3 is updated; any Form 4 is filed before six months end.
• Citation dates are checked against each claim's priority date, and claim charts are in the reply.
• Clean and marked claims show support for each change, and every amended claim falls within an original claim (Rule 14; section 59(1)).
• Inventive step follows the five steps, and the technical advance is stated from the specification.
• Section 3 objections are met with claim language, not only argument.
• Form 1, Form 5, Form 26, proof of right and priority documents are on record.
• Declarations are signed, dated and state the declarant's qualifications.
• A hearing is requested well over ten days before the final date.
• Someone who did not draft the reply has checked it against the FER.

How MYCrave can help

MYCrave Consultancy & Services prepares FER replies within its patent registration practice:

• FER review and objection map: the FER read against your specification and every citation, with a dated plan for Form 3, Form 4 and the reply.
• Reply drafting and claim amendments within section 59, with claim charts and declarations, filed by a registered patent agent.
• Hearing preparation, appearance and written submissions.
• Freedom-to-operate review when the citations raise a commercial question as well as a patentability one.
• Portfolio docketing for universities, IP cells and companies tracking FER dates across many applications.

Answer the question the examiner asked

An FER tells you exactly what the examiner thinks is wrong. The replies that succeed answer each point in the order it was raised and hand the Controller a clean claim set that can be granted without anyone rewriting it.

Diarise three dates the day the report arrives: three months for Form 3, six months for the reply, and the Form 4 date if you need it. Everything else is about using the time between them well.

Frequently asked questions

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