Prosecution Response
An office action is not a rejection — it is an opening argument. How you respond determines whether your patent emerges with the scope you need or the scope that remains after concessions you didn't have to make. Prism IP's prosecution practice is built on the conviction that every response should strengthen, not just defend.
What Is Patent Prosecution?
Patent prosecution is the process of communicating with the Patent Office after filing — responding to examination reports, defending claims against objections, amending where necessary, and arguing where possible. In India, the examination process typically involves one or more office actions before grant or refusal.
The quality of prosecution has a direct impact on the final scope of your patent. Applicants who respond defensively — making unnecessary claim amendments, conceding novelty without argument, accepting examiner positions without challenge — often receive patents that are narrower than they need to be. Prism IP's prosecution philosophy is to push back intelligently on every position that deserves challenge.
Our team brings both technical and legal expertise to every response. Understanding why an examiner has raised an objection — technically, not just formally — is the foundation of an effective reply. We analyse the cited prior art deeply before deciding whether to argue, distinguish, or amend.
Our Prosecution Services
The first office action is the most important — the positions taken here shape the rest of prosecution. We invest the most care in getting the FER response right.
If prosecution continues, we maintain strategic consistency — building on arguments already made rather than abandoning positions without reason.
Third-party pre-grant oppositions require a different kind of response — we handle both filing and defending opposition proceedings at the Indian Patent Office.
Where an examiner hearing is required or beneficial, Prism IP represents applicants directly — presenting arguments in person for the most complex objections.
If examination reaches an impasse, we manage appeals to the Intellectual Property Appellate Board — with the same technical and legal depth that characterises our prosecution practice.
For international portfolios, we coordinate prosecution strategy across jurisdictions — ensuring consistent claim scope and avoiding damaging prosecution history estoppel.
Get Started
Share the examination report and your application. We'll analyse it and tell you exactly what the right response strategy is — before the deadline becomes a problem.
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