An Office Action on Merits (OAM)—it is referred to as “First Evaluation Report” (FER) in some jurisdictions— is a formal communication issued by a patent examiner during the substantive examination of a patent application.
The OAM/FER is issued officially to either object to or even reject the claims in the patent application. It focuses on patentability criteria, such as novelty, inventive step (non-obviousness), industrial applicability (utility), and sufficiency of disclosure. Based on the detailed assessment of the examiner, the report may require the applicant to argue against or amend claims to overcome the objections.
The OAM/FER is a crucial phase in the patent prosecution process; it offers the applicant with insights on whether the claimed invention satisfies the requirements of the applicable patent law.
The evaluation typically commences once the applicant files a request for examination. The designated examiner then conducts a prior-art search and legal analysis and compares the claimed invention with existing knowledge and previously published patent documents to determine whether the claims are allowable.
In some jurisdictions, such as the USA, non-provisional patent applications are automatically examined in the order of filing. In such countries, a specific request for examination is not mandated by law; but the fees have to be paid for the examination to begin.
During the examination, the patent office conducts a prior-art search and legal analysis of the claimed invention. The examiner endeavors to analyze whether the invention is novel (new) and non-obvious (not a trivial improvement) compared to existing inventions and technologies (prior art).
The examiner also reviews the application to ensure clear and unambiguous claim language, sufficiency of description, proper claim scope, or patentable subject matter. If the examiner finds deficiencies in the application, they are communicated to the applicant through the Office Action Report (or, First Evaluation Report).
The OAM report represents the examiner’s evaluation of the application in light of statutory requirements. It is comprised of many parts. First, it identifies the relevant statutory provisions under which objections (typically formal issues with the drafted claims) are raised; and, the rejections (such as, non-patentability of the invention and its claims) are based.
The examiner also cites prior-art references such as earlier patents, scientific publications, or other public disclosures that allegedly anticipate the invention or render it obvious. The examiner also provides reasoning explaining how the cited references affect the patentability of the claims.
Finally, the examiner may also raise formal objections relating to claim clarity, broadness of claims, unity of invention, or other specification requirements.
The issuance of the OAM/FER does not imply an outright rejection of the patent application. Instead, it is a standard phase in the process, and patents are routinely approved after applicants address the rejections.
In general, the report seeks the applicant’s response within a prescribed period. Inventors can use the opportunity to respond in a time-bound manner by furnishing amended claims, submitting counter arguments, canvassing legal contentions, or providing clarifications.
In many cases, applicants narrow the scope of their claims or distinguish their invention from the cited prior art to rebut the examiner’s objections. The reply often helps overcome the examiner's objections and leads to final approval.
After receiving the applicant’s response, the examiner reviews the amendments and arguments. If the objections are successfully countered, the application usually gets approved and the patent granted. If not, the examiner may issue yet another office action, which may be designated as “final” based on the procedural rules of the jurisdiction.
Therefore, the OAM/FER plays a cardinal role for ensuring only inventions that conform with the legal standards of patentability are granted protection. It promotes fairness, transparency, and technical rigor in the patent examination process while affording applicants with the opportunity to refine and defend their inventions.
At BLAZE VENTURES, we have elaborate processes and qualified professionals for advising inventors and enterprises on office actions on merits and evaluation reports during the pre-grant patent prosecution phase of the patenting process.
