How to respond to a First Examination Report (FER)
The FER is not a rejection. It is the start of a conversation with the examiner. How to read it, answer each objection and protect your claims within the deadline.
1. Note the deadline the day it arrives
You have six months from the date of the FER to put the application in order, extendable once by three months on request. Miss it and the application is treated as abandoned. Put the date in three calendars.
2. Sort the objections
Group them into formal objections (forms, drawings, missing documents), clarity objections (unclear claims or terms) and substantive objections (lack of novelty, inventive step, or exclusion under Section 3). Formal ones are quick. Substantive ones decide your patent.
3. Read the cited prior art yourself
Do not rely only on the examiner's summary. Read each cited document and mark exactly what it does and does not disclose. Differences the examiner missed are your strongest arguments.
4. Decide: argue, amend or both
You can argue that the objection is wrong, amend the claims to get around it, or do both. Amendments must be supported by what you originally filed and cannot broaden the claims.
5. Write a clear, point-by-point reply
Answer every objection under its own heading, in the order raised. Explain the technical difference from the prior art in plain terms, and show where your specification supports it. Unanswered objections are treated as accepted.
6. File amended claims and specification
Submit a clean copy and a marked-up copy showing every change. Consistency matters: make sure the description still supports every amended claim.
7. Prepare for a hearing
If objections remain, the Controller will offer a hearing, which can be held by video. Prepare a short presentation of the invention, the key differences and your proposed claims. File written submissions within 15 days after the hearing.