Examination is where most of the work in an Indian patent application happens, and where most of the risk sits. The examiner’s report is rarely a rejection, but the deadline to answer it is short, unforgiving, and the point at which applications are most often lost.
Quick reference
| Trigger | A request for examination, after publication |
| The report | First Examination Report — objections on merits and form |
| Reply window | Six months from the date of the report |
| Extension | Three more months, on request within nine months of the report |
| If not in order in time | Application deemed abandoned |
| If objections remain | Hearing, then a decision |
| Refusal | Appealable to the High Court |
What the examiner checks
Once the request is filed and the application has been published, it is referred to an examiner, who searches the prior art and reads the specification against the requirements of the Act. The examiner reports to the Controller, and the Controller issues the First Examination Report to the applicant.
Expect objections under some combination of:
- Novelty — the invention, or part of it, is already disclosed in a document the examiner has found, in India or elsewhere
- Inventive step — it would have been obvious to a person skilled in the art from what was already known
- Not patentable subject matter — it falls within one of the categories the Act excludes, which in India catches computer programmes as such, business methods, methods of treatment, new forms of known substances without enhanced efficacy, plants and animals, and a good deal else
- Unity — the application claims more than one invention
- Clarity and sufficiency — the claims are not clear, or are broader than the description supports, or the description would not let a skilled person work the invention
- Formal requirements — a missing declaration, an out-of-date statement of foreign applications, proof of the right to apply, a power of attorney, drawings in the wrong form
The report is a starting position, not a verdict. Most applications receive one. Most objections are answerable.
The reply window
Six months from the date of the report to put the application in order for grant. That means every objection dealt with — not merely responded to.
The six months can be extended by up to three months. Since 2024 the request for the extension can be made at any point within nine months of the report, rather than having to be filed before the original six expired — a sensible change, but the extension still has to be asked for and paid for. It does not happen on its own.
If the application is not in order when the period ends, it is deemed abandoned. There is no administrative route back. The courts have restored abandoned applications where the failure was the agent’s rather than the applicant’s, but that is litigation with an uncertain outcome, not something to rely on.
Answering the report
A good reply does three things.
It argues. Where the examiner’s prior art does not actually disclose what the claim covers, or where the combination the examiner proposes is hindsight, say so, specifically, with reference to what the documents actually teach.
It amends. Where an objection is well founded, narrow the claim to what survives it. Amendments are constrained: the Act allows amendment only by way of disclaimer, correction or explanation, and nothing can be added that was not in the specification as filed. A claim can be narrowed; it cannot be broadened, and new matter cannot be introduced.
It completes the file. Formal objections are the cheapest to clear and the most embarrassing to lose on. The updated statement of foreign applications, in particular, is due in the same window and should go in with the reply.
Hearing
Where objections survive the reply, the Controller lists a hearing and tells the applicant which objections remain. The hearing can be attended by video, and the applicant can file written submissions afterwards, normally within fifteen days.
Written submissions carry real weight. The Controller’s decision is written from them, and a clear, structured submission that answers each outstanding objection in turn is often more persuasive than what was said on the day.
Grant, refusal and appeal
If the objections are cleared, the application proceeds to grant. If they are not, the Controller refuses the application by a reasoned order.
Refusal is not necessarily the end. The order is appealable to the High Court, and the appeal is heard on the merits. The time limit is short, and it runs from the order, so an applicant who wants to appeal should take advice as soon as the order arrives rather than when the deadline is close.
Two things that run alongside
Pre-grant opposition. From publication until grant, anyone can file a representation opposing the application. Since 2024 an application facing an opposition that survives the Controller’s first look is examined on the expedited track, so an applicant can find themselves answering an opposition and an examination report in the same few weeks.
The second report. An examiner can issue a further report after the reply, if the amendments raise new points. The overall deadline does not restart; the application still has to be in order within the original period.
Frequently asked questions
How long do I have to reply to a First Examination Report in India? Six months from the date of the report, extendable by up to three months on a request made within nine months of the report. The application must be in order for grant — every objection resolved — by the end of that time.
What happens if I miss the deadline to respond to the FER? The application is deemed abandoned. There is no administrative route to restore it; the only option is an application to court, which succeeds in limited circumstances.
What objections does an Indian examination report usually raise? Lack of novelty and inventive step against cited prior art, non-patentable subject matter, lack of unity, unclear or unsupported claims, insufficient description, and formal defects such as a missing declaration or an out-of-date statement of foreign applications.
Can I amend my claims in response to the examination report? Yes, but only to narrow, correct or explain. Nothing can be added that was not in the specification as filed, and a claim cannot be broadened beyond its original scope.
What is a hearing in patent examination? Where objections remain after the reply, the Controller lists a hearing on the outstanding points. It can be attended by video, and written submissions are filed afterwards, normally within fifteen days.
Can I appeal if my patent application is refused? Yes. A refusal order is appealable to the High Court on the merits. The time limit is short and runs from the date of the order.
Useful official resources
- IP India — patents — the Act, the Rules and the fee schedule
- InPASS — patent search — read examination reports on any published application
See our related notes on requesting examination and the expedited track and every stage from filing to grant.
Holding an examination report with the six months running? Talk to us. The reply is the part of the process that most rewards being done properly.