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Quality Management for Patent Examinations in the JPO

Quality Management for Patent Examinations in the JPO. Quality Management Office, Administrative Affairs Division, First Patent Examination Department, Japan Patent Office May, 2012. Organization of the JPO. General Affairs Department. Japan Patent Office.

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Quality Management for Patent Examinations in the JPO

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  1. Quality Management for Patent Examinations in the JPO Quality Management Office, Administrative Affairs Division, First Patent Examination Department, Japan Patent Office May, 2012

  2. Organization of the JPO General Affairs Department Japan Patent Office Trademark, Design and Administrative Affairs Department Design Division Quality Management Staff Trademark Division Quality Management Staff Commissioner First to Fourth Patent Examination Departments (94 technical units, 205 groups and about 1,700 examiners) DeputyCommissioner Administrative Affairs Division Examination Standards Office (Examination Standards and Comparative Study) Examination Promotion Office Examination Planning Office (International Examiners Conference, Patent Prosecution Highway) ★Quality Management Office (Collects and analyzes quality-related information and provides it to relevant divisions and offices) Appeals Department

  3. Background of growing concern about examination quality • 1. International background of growing concern about examination quality • -- Promotion of international work-sharing • It is vital that the first office provides high-quality search results and examination outcomes. • 2. Internal background of growing concern regarding the quality of examinations • 　　-- Through measures such as PPH and JP-FIRST,Japanese enterprises need support to smoothly obtain industrial property rights abroad. • It is vital that the JPO provides search results and examination outcomes in a timely manner that are acceptable to the public (both at home and abroad). What is required of patent examinations 1. The examination process should be carried out in conformity with laws and within the Examination Guidelines; 2. Judgments made in the examination process should be consistent, with no discrepancies between examiners; 3. The examination process should involve necessary and sufficient research; and 4. The examination process should involve smooth communication with the applicant.

  4. Quality Management Activities Regarding Patent Examinations at the JPO 2011.12.19改訂 Quality Management Office (established in April 2007) - PCT/MIA - Trilateral Offices - Five Offices Patent office abroad Examination outcomes from other patent offices Measurement and analysis of examination outcomes • Sample inspection of examination outcomes; • Collection and analysis of evaluation by users; • Acquisition and analysis of quality-related statistical information and others. Evaluation by users Applicant/Representative (System user) Information on appeals and trials Appeals Department Quality Management Committee Comprised of three members from each of the Patent Examination Departments and a chairperson, 13 people in total Exchange of opinions International examiners conference Support for quality-related measures Analysis of nonconforming factors Extraction of samples Support for quality management Exchange of opinions and feedback Appointed from each of the Patent Examination Departments Established practice of quality management Joint meeting of department heads Each Examination Office • Quality management review • Together with the relevant department and the Committee • Quality objectives setting (approaches) • Quality planning (standard, handbook, training, allocation of resources, etc.) • Corrective and/or preventive measures (a range of improvements) Conduct of examination and quality management First Patent Examination Department [Physics and others] Second Patent Examination Department [Machinery] Third Patent Examination Department [Chemistry] Fourth Patent Examination Department [Electric machinery and com-munications] Examiner (or assistant examiner) Management/decision-maker Consul-tation Planning Examiner (or assistant examiner) Quality improvement measures • Check, decision making and/or consultation • Planning of operations Review

  5. International efforts • The meeting of Trilateral Patent Offices (Japan, U.S. and Europe) and the meeting of the Five Offices (Japan, U.S., Europe, China and Korea) serve as opportunities to exchange views with regard to quality management techniques. • Information thus obtained is used for quality management at the JPO. Strengthening Quality Management of Patent Examinations Efforts involved in the current practice of quality management JPO Efforts • Sample inspection of examined applications under the PCT • Acquisition and analysis of quality-related statistical information and others • Questionnaire for applicants • Exchange of opinions with users • Request for provision of information on individual applications Toward the creation of internationally credible and secure patent rights • Strengthening quality management of patent examinations • Strengthening of the quality management system (Focused priority checks should be introduced in addition to random checks.) • Feedback from users should be increased in terms of quality evaluation. (More information on the quality of patent examinations that is collected from users should be put to practical use.) • Policies with respect to the quality of patent examinations should be developed (over the medium term).

  6. Trilateral Comparative Analysis of Patent Examinationsunder PPH or PCT: Toward Improved Quality of Patent Examinations

  7. 1. Recent Changes in Matters Affecting the Patent System • Expansion and spread of Patent Prosecution Highway (PPH) • Promotion of the Use of PCT (Changes in the number of patent applications filed throughout the world) (Unit: Ten thousand) 191 ten thousand 200 Applications filed by nonresidents Application filed by residents Of which applications filed by nonresidents account for 40%. • Support for the smooth acquisition of patens overseas by business enterprises • Promotion of cooperation with foreign patent offices to reduce the burden of patent examinations therein. 150 100 50 0 (The year in which the application was filed) 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 • How are the examination outcome and search results under PPH or PCT utilized? • What can be done to improve the availability of the examination outcome and search results? The number of patent applications filed throughout the world increased 1.5 times between 1999 and 2008. The number of patent applications filed by non-residents increased from 520,000 in 1999 to 840,000 in 2008, accounting for 44% of the total number of patent applications filed throughout the world. A survey was conducted concerning applications made under PPH and PCT.

  8. 2. Survey on the Availability of Examination Outcomes with Respect to Applications made under the PPH PPH requires that an application filed therein should involve the same claim(s) as that or those determined to be patentable in normal proceedings. Some users of PPH anticipate that such use increases the probability of a patent being granted. However, observers say that such an application is more likely to be rejected at the FA. A survey was done on the ratio of applications that led to a decision to grant a patent for applications under PPH from the U.S. to Japan, and those filed with the U.S. as the base for right of priority. A survey was done on the reasons for rejection for applications filed under PPH from the U.S. to Japan that were immediately rejected (at the first stage). Ratio of applications wherein a patent was granted immediately Ratio of applications wherein a patent was granted at the final disposal stage Ratio of reasons for rejection cited in the notice of rejection for applications that were immediately rejected (at the first stage) 10.0% 100% 8.0% 80% 60% 6.0% 4.0% 40% 20% 2.0% 0% 0.0% Applications under PPH(from the U.S.) Applications with the U.S. as the base for right of priority Applications under PPH(from the U.S.) Applications with the U.S. as the base for right of priority Differences in criterion for judgment regarding inventive step or obviousness and in search techniques between the U. S. and Japan could influence the outcome of the examination.

  9. 2. Survey on Examination Outcomes with Respect to Applications under the PPH 6% 10% 38% 20% 30% 1% 71% 2% 19% 3% Availability of outcome documents from the international phase of proceedings under PCT in an application under PPH (Multilateral Working-level Meeting on PPH in May 2009) Are outcome documents from the international phase of proceedings under PCT available in an application under PPH to a favorably comparable degree with the examination outcome at the first office as the foundation for an application under PPH? Component ratio comparison between a group of applications made under PPH and a group of applications made under PCT based on the examination outcome at the JPO by types of FA at the JPO (b) Internally transferred applications under PCT (a) Applications under PPH Types of FA Types of FA Decision to immediately grant a patent Decision to immediately grant a patent Indication of reason(s) for refusal/rejection (with no cited document indicated) Indication of reason(s) for refusal/rejection (with no cited document indicated) Indication of reason(s) for refusal/rejection (Only with A-type document indicated) Indication of reason(s) for refusal/rejection (with only documents referenced by the first office indicated) Indication of reason(s) for refusal/rejection (with documents referenced by the first office + newly cited documents indicated) Indication of reason(s) for refusal/rejection (with A-type document + newly cited documents indicated) Indication of reason(s) for refusal/rejection (only with newly cited documents indicated) Indication of reason(s) for refusal/rejection (only with newly cited documents indicated) * Target applications 168 applications which were subject to examination from December 1, 2008 to August 31, 2009 (only for those under PPH from the U.S. to Japan) * Target applications 127 randomly selected applications filed in 2004 and 2005 under PCT and for which the USPTO produced an ISR • For both groups, applications which were rejected by the JPO on the ground of prior art documents accounted for 60 to 70%, which indicates that the availability of examination outcomes and search results from other patent offices in PPH is almost the same for both groups. • An agreement was reached on “PCT-PPH,” a pilot program (at the Trilateral Conference by the head of the three offices in November 2009)

  10. 3. Survey on the Availability of ISRs • Growing concern about the availability of ISRs • The JPO conducted a survey on the availability of outcome documents from the international phase of proceedings under PCT in an application under PPH and presented the results at a Trilateral Meeting. The Japan-U.S.-Europe Trilateral Meeting in November 2009 A report was made on the findings of a survey on the status of citation of prior art documents in international and national phases of examination. [See next page] Brief outline of survey results (i) In cases where an international search and its national phase first action are carried out by different offices, the national phase first action by an office other than the international searching authority leads to rejection based on newly cited documents at a constant rate. (A different judgment may be made between the international phase and the national phase.) (ii) Even in cases where international search and the national phase first action are carried out by the same office, the national phase might lead to notice of rejection/refusal based on newly cited documents by the JPO and the USPTO.

  11. JP US US EP Status of Citation of Prior Art Documents in the National Phase First Action • Even if an international search authority determines that the invention is patentable, the national phase first action might lead to a notice of rejection based on newly cited documents. International search (Japan) Result of examinationat the FA International search (Japan) Result of examinationat the FA 1% 6% 127 applica-tions 89 applica-tions 12% 1% 20% 12% JP 48% 71% 27% 2% International searching authority International searching authority 118 applica-tions 55 applica-tions 11% JP 31% 38% 16% US 51% 7% 8% Of applications for which the national phase of proceedings was started in 2004 and 2005 by the JPO, those for which an ISR only covering A-type documents was prepared by the USPTO. 15% 19% Applications for which an ISR only covering A-type documents was prepared by the JPO in 2004 and 2005 4% 45 applica-tions 16 applica-tions 7% Examination outcome at the FA 13% Decision to immediately grant a patent EP 25% 36% 50% 48% Indication of reason(s) for refusal/rejection (with no cited documents) Indication of reason(s) for refusal/rejection (with only A-type documents indicated) 9% 12% Indication of reason(s) for refusal/rejection (with A-type documents + newly cited documents indicated) Indication of reason(s) for refusal/rejection (only with newly cited documents indicated)

  12. 4. Possible Related Factors and Issues 1 The largest proportion of prior art documents newly cited in the national phase of proceedings by the patent office in each country was accounted for by prior art documents of the country. • The coverage of the database available at each patent office; standardization of search tools • Development of a common classification system. Differences in search environments 2 Discrepancy in judgment and/or the manner of operation arising from different examiners’ taking charge of the international phase and the national phase Even if the same examiner takes charge of examination in the international and national phases at the patent office, different examiners taking charge of these phases may open up possibilities for differences in the examination outcome. (1) Within the JPO • Sharing of information by examiners in the same technical field; • Prevention of discrepancies in judgments by enforcing rigorous consultation between examiners (2) Between the patent offices at home and abroad • Remove discrepancies in judgment between the patent offices at home and abroad by enhancing mutual understanding and the various parties’ manner of operation through consultations by examiners and the PPH 3 Differences in the manner of operation of laws and regulations and standards, etc., between patent offices Any difference in the manner of operation of laws and regulations and standards, etc. between patent offices has a direct influence on the examination outcome. • Cooperation with other patent offices in a range of areas, including harmonization of operation of laws and regulations, standards and business practice 4 Even if an international searching authority prepares an ISR only covering A-type documents, there is the possibility that a prior art document of less validity will be newly cited in the national phase. • Efforts to carry out thorough quality management by the patent office of each country Validity of newly cited documents in the national phase of proceedings

  13. 5. Future Efforts (1) Efforts by the Five Offices • Promote Common Hybrid Classification (CHC) under the auspices of the Five Offices • Improve the search database environment so that examiners at the Five Offices can have access to the same range of document information (the “Common Document Data” project) • Improve examination/search tools which would enable examiners at the patent offices to obtain the same examination outcome (the “Common Search/Examination Support Tools” project) (2) Efforts by the JPO • Development of foreign patent document retrieval systems based on machine-aided translation (Chinese, Korean, etc.) Grant of internationally credible andsecure patent rights Improvement of the search environment (1) Efforts toward quality management • To complete the quality management system, including evaluation by users; increase the quality of examinations at the JPO by consolidating the systems for that purpose; and reduce the differences in practices (2) Trilateral joint research study of evaluation index of the quality of examination • Comparative Study of Discrepancies between ISR prepared by the Trilateral Offices and Judgments made in the National Phase Quality management (1) Comparative study of examination standards and practice • Comparative study of examination standards and practices at the patent office under the auspices of the Five Offices; and an analysis of the possible effect and difficulty of the harmonization thereof on a practical level (the result of which is to be presented no later than spring of 2012) (2) International Examiners Exchange • International Examiners Exchange aimed at deepening understanding of examination practices and standards • International Examiners Workshop aimed at sharing information and discussing search/examination methods employed by any of the Five Offices (3) Mutual dispatch of participants in training programs • Patent office sends its examiners to join examiner training programs held by its counterparts on a reciprocal basis. Mutual understanding of examination practices at the counterpart

  14. Thank you for your attention.

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