Quality Management for Patent Examinations in the JPO

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
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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.
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Quality Management Activities Regarding Patent
Examinations at the JPO
2011.12.19??
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
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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).

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Trilateral Comparative Analysis of Patent
Examinations under PPH or PCT Toward Improved
Quality of Patent Examinations
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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.
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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 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)
Ratio of applications wherein a patent was
granted immediately
100
10.0
80
8.0
60
6.0
40
4.0
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.
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2. Survey on Examination Outcomes with Respect
to Applications under the PPH
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 撤CT-PPH,