How to Respond to Patent Office Objections in India (With Examples)

Filing a patent in India is just the beginning. Once your application is examined, the Patent Office often raises objections in the First Examination Report (FER). This is a normal part of the process and doesn’t mean your invention is unpatentable.

The key is how you respond. A well-drafted reply can turn objections into a granted patent, while a poor response may lead to rejection.

In this guide, we’ll explain the common types of objections, how to respond effectively, and share practical examples.

What Is a Patent Office Objection?

When you file a patent in India, an examiner reviews your application to ensure it meets the patentability requirements: novelty, inventive step, industrial applicability, and compliance with Indian patent law.

If the examiner finds issues, they issue a First Examination Report (FER) listing objections. You typically have 6 months (extendable to 9 months) to respond.

Common Types of Patent Objections in India

1. Lack of Novelty

Your invention is already disclosed in prior art (existing patents/publications).
👉 Example objection: “Claim 1 lacks novelty in view of IN123456.”

2. Obviousness (Lack of Inventive Step)

Your invention is considered obvious to a skilled person in the field.
👉 Example objection: “The claimed invention is obvious in view of IN987654 combined with US765432.”

3. Non-Patentable Subject Matter (Section 3)

Certain categories, like abstract ideas, algorithms, or methods of business, are excluded.
👉 Example objection: “The claimed invention falls under Section 3(k) as a computer program per se.”

4. Insufficient Disclosure

The description doesn’t enable a skilled person to reproduce the invention.
👉 Example objection: “The specification does not sufficiently describe the working of the invention.”

5. Clarity/Definiteness Issues

Claims are vague, broad, or inconsistent.
👉 Example objection: “The scope of Claim 3 is unclear due to ambiguous wording.”

How to Respond to Patent Objections

Responding isn’t about arguing with the examiner—it’s about showing, with reasoning and evidence, why your invention meets the law’s requirements.

Step 1: Analyze the FER Carefully

Identify each objection and the cited documents.

Step 2: Address Objections Point by Point

Never skip or ignore an objection. Structure your reply in the same order as the FER.

Step 3: Use Legal and Technical Arguments

• For novelty: Highlight differences between your invention and the cited prior art.

• For inventive step: Show how your invention solves a problem in a non-obvious way.

• For Section 3: Argue how your invention produces a technical effect (important for software-related inventions).

• For clarity: Amend claims to remove ambiguity.

Step 4: Amend Claims If Necessary

You may need to modify claim language—narrowing it without losing core protection.

Step 5: Support with Evidence

Use technical data, experimental results, or industry standards to strengthen your arguments.

Examples of Responses

Example 1: Novelty Objection

• Objection: “Claim 1 lacks novelty in view of IN123456.”

• Response: “Claim 1 differs from IN123456 as it includes Feature X, which is neither disclosed nor suggested in the cited document. Feature X enables [specific technical effect], which is absent in prior art.”

Example 2: Section 3(k) Objection

• Objection: “The claimed invention is a computer program per se under Section 3(k).”

• Response: “While the invention uses software, it results in a technical effect of reduced memory usage and faster data processing. As per IPO Guidelines on Computer Related Inventions, inventions demonstrating technical effect are patentable.”

Example 3: Clarity Objection

• Objection: “Claim 3 is unclear due to ambiguous wording.”

• Response: “Claim 3 has been amended to replace the term ‘module’ with ‘data processing module configured to…’ for greater clarity.”

Pro Tips for Drafting Strong Responses

• Be concise but thorough. Avoid generic or emotional arguments.

• Use claim charts (side-by-side comparison of your claim vs prior art) for clarity.

• Always back arguments with Indian patent case law or IPO guidelines, where relevant.

• Seek professional help—an experienced patent agent or attorney knows how to frame arguments effectively.

Final Thoughts

Patent objections in India are not roadblocks—they’re checkpoints. A clear, well-reasoned response often convinces the examiner that your invention deserves protection.

Think of it as a dialogue with the Patent Office: their job is to protect the public domain, your job is to prove your invention truly advances it. With the right strategy, objections can lead to a stronger, more defensible patent.