Almost every patent application receives at least one office action: an examiner's report raising objections such as lack of novelty, lack of inventive step, insufficient disclosure or unclear claims. In India, the first examination report must be answered within six months, extendable by up to three months, and an application not answered in time is treated as abandoned. The response decides not only whether a patent is granted but how much protection it keeps. A response that concedes too much can leave a patent that is easy to design around.

What We Offer

• Ready-to-file responses prepared by our patent attorneys, or responses ready for review by your external counsel.

• Technical review of responses drafted by your in-house team, with specific recommendations.

• Claim charts comparing the application with each cited prior art reference.

• Claim amendments and supporting arguments, negotiated with the examiner.

• Advice on disclosed but unclaimed subject matter that may be worth protecting through amendments or divisional applications.

• Responses in several jurisdictions, including India, the USA, Europe and Japan, through our partner attorneys.

Our Approach

1. Break down the objections. We review every objection and every cited reference, and separate the substantive objections from those a formal amendment can resolve.

2. Map the prior art. We compare the claims with each reference, often in a claim chart, to find the distinguishing features.

3. Build the response. Arguments and amendments are set out point by point, aiming for the broadest claims the prior art permits.

4. Flag what was left out. We tell you about any disclosed but unclaimed subject matter that could still be protected.

Why Khurana & Khurana

• Two ways to work. Hand us the full response, or keep drafting in-house and use us for technical review, depending on your budget and team.

• Claims that keep their value. Our goal is a granted claim set that is not unduly narrow, because a patent that is easy to design around is worth little.

• Close work with inventors. Our techno-legal team works directly with inventors and in-house counsel to find the technical arguments that persuade examiners.

Have an office action to answer?

Share the report and its due date with us info@khuranaandkhurana.com. We will review the objections and set out how we would respond.