Office action and FER Response

An Office Action response, also called a First Examination Report (FER) response in some
jurisdictions, is a critical step in the patent application process. After a patent application is submitted, a patent examiner at the patent office reviews the application to assess its patentability. The examiner may issue an Office Action or FER, detailing objections, rejections, or questions regarding the application. The applicant must respond to these issues within a specified time frame to keep the application alive. Here’s how the process works:

The examiner might raise concerns regarding:

Novelty:

The invention may not be considered new (prior art cited).

Inventive Step (Obviousness):

The invention may be seen as an obvious variation ofexisting technology.

Clarity and Specification Issues:

The claims or the description might be unclear or incomplete.

Patentable Subject Matter:

The invention might not fit into the categories of patentable inventions.

The examiner will typically cite prior patents or publications (prior art) that are believed to be relevant to the claimed invention.

Responding to the Office Action or FER:

Amendment of Claims:

The applicant can amend the claims to overcome the examiner’s objections. This might involve narrowing the scope of the claims to distinguish them from prior art.

Argument Submission:

The applicant may present legal arguments and explanations showing that the claims are, in fact, novel, inventive, and patentable. This includes:

Arguing that the prior art cited by the examiner does not apply.

Demonstrating how the invention solves a problem differently or more effectively than the cited references.

Explanation of the Invention:

Sometimes, the examiner may have misunderstood the technical aspects of the invention. In such cases, the applicant may provide additional clarification or explanation.

Deadlines:

The applicant is typically required to submit the response within a fixed time period, which varies by jurisdiction. Failure to respond in time can lead to the abandonment of the application.

Outcomes:

Acceptance:

If the examiner is satisfied with the response, the application can proceed to allowance, meaning it will be granted a patent.

Further Office Actions:

If the examiner is not convinced, they might issue another Office Action, which could require additional responses.

Rejection:

If the examiner continues to find issues with the application, the application may ultimately be rejected. However, applicants can appeal such decisions or request continued examination.

A well-prepared Office Action response can significantly improve the chances of obtaining a patent.