Responding to an office action: Insights into Indian Patent Practice

The role of a junior patent associate in a Patent law firm is very different from what appears from the bay. As a first-year patent associate, you will not be dealing with high profile patent lawsuits from the very first day – and applying what you studied as a part of “patent law” course at your law school (case laws and what not!) – perhaps because there are a very few ongoing patent lawsuits in India and, whichever are ongoing, are being argued by senior counsels with “face-value”. Even if you are an active part of an ongoing patent dispute, as a first-year patent associate, like in any other domain, you will only be asked to research and prepare briefs – forget about arguing a case, you won’t even argue an opposition. Period.

The real practice in patents is totally different and none of the books teach or even suggest what is happening out there!

So, what is the work that one gets in a patent law firm in India?

One of the many works that you’d be required to do is to draft a response to a First Examination Report (FER). The Indian Patent Office (IPO) issues a first office action, also known as the First Examination Report, after the patent applicant makes a request for examination in the requisite format (Form 18 or 18A) by paying the requisite fee. The entire Indian patent procedure may be viewed here, here and here.

This is how one can prepare in order to effectively respond to an FER:

  • Set everything aside, and start reading the invention. Read it unless you have totally understood the invention and can explain it to a five-year-old. You may additionally discuss it with people to have a better clarity of the invention.
  • Once you have understood the invention, start writing about the invention (as per your understanding) and do not copy the content of the specification, for it is not written in a lucid way. After you have written a short brief of the invention, move on to the prior arts.
  • Once you have understood the invention, start reading the prior art. Note that many people refrain from reading the prior art and blatantly state the characterizing feature of the invention in the response. This should not be made a practice. Reading and understanding the prior art is imperative.
  • Write down what all similar features (similar to your invention) are disclosed in the prior arts. You have to specifically identify the features in the prior document.
  • Then, start writing the differences (specifically mentioning the line, column, para) between your invention and the prior arts.

For how to undertake novelty analysis see here.

This may seem to be fairly easy, but it is not the case in practice. Believe me! Understanding a patent document is not a child’s play and takes a chunk out of an attorney’s (billable) time. As a junior patent associate, one of your works will also include explaining the invention and all the related prior arts to the senior counsels. In a patent firm, although you’d be appreciated for effectively linking technology and law, however, your value is in your technical skills.

“Your USP in being a Patent lawyer is not only the fact that you know the patent procedure, but, the fact that you are capable of acknowledging the technical aspect of an invention – the fact that you can read and appreciate the technicalities of a patent document (the technology behind the patent) – the document on which a company has spent thousands of dollars.

Even a paralegal/secretary in a patent law firm knows the procedure, form, and fee – Ask yourself what do YOU contribute to the practice? What do you bring in? You bring in knowledge, you bring in the analytical and scientific bent of mind, to say the least. Anyone can copy the arguments made in an office action from a corresponding foreign application and reply to an objection in a FER. However, think about the fact that you have only one document to draft in an entire patent application (because generally, all instructions are provided by the client), if this is the case then DRAFT IT RIGHT!” (emphasis added)

– Mr. Rohit Rangi, Indian Patent Attorney

So, read the prior art again and again and AGAIN. Take a day or even two! But don’t neglect the prior art because “your case is not to explain what your invention says, but to explain what the prior art does not say.”

A difference in being a patent associate lies in the fact that the research that you’d be expected to do will not solely include legal research, but technical research as well – the technical research carries more importance in the patent domain. As a patent lawyer, you calling is in at least polishing your technical knowledge, for this is why you are known as a PATENT associate.

Image from here.

Siddhant Sharma

Siddhant is a Patent and Intellectual Property lawyer. He finds joy in exploring and writing about niche areas of law. He is finding better ways to describe the patent profession to a five-year old and a sixty-five year old.

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