Report on FY2014 Annual User Satisfaction Survey on Patent Examination Quality

Transcription

1 Report on FY2014 Annual User Satisfaction Survey on Patent Examination Quality May 2015 Japan Patent Office

2 ABSTRACT Ⅰ. Introduction High quality and globally reliable patents granted by the JPO (Japan Patent Office) are key drivers fostering innovation and supporting domestic companies to conduct effective global business activities. To grant high-quality patents, it is essential so that continuous efforts be made for sustaining and enhancing the quality of patent examination 1, based on an accurate understanding of the needs and expectations of its users including applicants and third parties. Therefore, the JPO has conducted the Annual User Satisfaction Survey on Patent Examination Quality since FY In addition, the JPO released its Patent Examination Quality Policy (the Quality Policy ) in April 2014, which outlines the fundamental principles of quality management designed to achieve the utmost examination quality in the world. Out of the six quality management principles, one principle is: We meet wide-ranging needs and expectations. The JPO s ability to gain an appropriate understanding of users needs and expectations is becoming an extremely important aspect with each passing day. In line with this ongoing activity, the JPO conducted the Survey in FY2014, improving its research methods, expanding the scope of the Survey to include foreign users, and then working to understand the level of user satisfaction on the quality of patent examination in order to find out its users wider range of needs and expectations, as well as any changes of them. The Surveys were conducted three times since FY2012, including the Survey in FY2014, had a high response rate around 90%. These high response rates indicate that users have a keen interest in efforts that the JPO has been implementing to sustain and enhance the quality of patent examination, which includes greater input from more users. Having obtained valuable user feedback from the Surveys, the JPO is committed to make continuous efforts for sustaining and enhancing its patent examination quality. The following is a summary of the Survey results in FY2014, including an analysis results of the details and overall findings. Ⅱ. Overview of Aggregation Results and Detailed Analysis Four types of questionnaire sheet were used for the Survey, which are listed below. In the Survey, the questionnaire sheets were distributed and collected between August and November in The aggregation results and detailed analysis for each questionnaire are provided in the following 1-7. Sheet A: Overall Quality in General of Patent Examinations on National Applications Sheet B: Quality of Patent Examinations on Specified National Applications (to which decision to grant a patent or decision of refusal/rejection was issued in 2013) Sheet C: Overall Quality in General of the International Searches and International Preliminary Examinations on PCT applications Sheet D: Quality of International Searches and International Preliminary Examinations on Specified PCT Applications (to which the ISR or IPER was transmitted in 2013) 1. Overall Quality of Patent Examinations on National Applications (See 2.(1) of Page 5) In the Survey in FY2014, the level of satisfaction in regard to the overall quality of patent examinations on national applications was 91.1%, which was the total of all responses of Satisfied, Somewhat Satisfied, and Neutral 3. In the Survey in last FY, the percentage was 92.5 %. 1 The term patent examination means examination of inventions (including the International Searches and International Preliminary Examinations) and establishment of the Reports of Utility Model Technical Opinion as defined in the Quality Policy. Any reference to patent examination in the context of national applications means examination processes for national applications. 2 The JPO s fiscal year runs from April 1 to March 31 of the following year. Therefore, the Survey in FY2014 refers to the Survey that was conducted by the JPO in FY2014, namely, between April 1, 2014 and March 31, The Survey used a 5-point scale (5: Satisfied, 4: Somewhat Satisfied, 3: Neutral, 2: Somewhat Unsatisfied, 1: Unsatisfied). i

3 And the responses with evaluation Satisfied 4 totaled 47.0%, indicating more favorable responses on the whole in terms of the quality of patent examinations on national applications. In the Survey in last FY, the percentage was 45.0%. For each questionnaire item, a still high percentage of the responses with evaluation Unsatisfied were given for judgments without discrepancies among patent examiners or examination divisions (31.3%). Nevertheless, this was an improvement over the 36.6% in the Survey in last FY. In the Survey in FY2014, questionnaire items were added to the above so as to better investigate the reasons for user dissatisfaction. While there were still negative responses in regard to the discrepancy in judgment of inventive step/novelty in the same technical field, there were fewer negative responses in regard to the discrepancy in judgement of unity of invention or amendment changing special technical feature of invention (patent act article 17bis(4)), which improved from the Survey in last FY. After the high negative response rate for the discrepancy in judgment among patent examiners or examination divisions, the following four questionnaire items had high negative response rates around 20%: judgment of inventive step, foreign patent literature searches, non-patent literature searches, and judgment of descriptive requirements. According to the comments written in free format, even though some negative comments were made about judgement of inventive step or descriptive requirements, positive comments were given about communication with examiners (via interviews, phone calls, etc.). According to these comments, communication with examiners is one of the aspects in which users have a great amount of interest. In addition, in the Survey in FY2014, the JPO added questions about other applicants applications, in order to obtain feedback about the quality of patent examination from the standpoints of third parties. As a result, the total of all Satisfied, Somewhat Satisfied and Neutral responses was 77.3%, which differed from the 91.1% for the overall quality of patent examination. In conclusion, in taking user satisfaction with the quality of patent examination into consideration, the JPO needs to consider not only the perspectives of the actual applicants themselves but also the perspectives of third parties. Fig. I: Evaluation on the overall quality of patent examinations on national applications 4 In the Report, as long as there was no particular remark stated, the term Satisfied in italics consists of Satisfied and Somewhat satisfied of 5-point scale and the term Unsatisfied in italics consists of Unsatisfied and Somewhat Unsatisfied of 5-point scale. ii

4 2. Overall Quality of the International Searches and the International Preliminary Examinations on PCT Applications (See 2.(2) of Page 19) In the Survey in FY2014, the level of satisfaction in regard to the overall quality of the International Searches and International Preliminary Examinations was 96.6%, which was the total percentage of all responses of Satisfied, Somewhat Satisfied, and Neutral. In the Survey in last FY, the percentage was 94.6 %. The responses with evaluation Satisfied totaled 40.7%. (It was 41.7% in the Survey in last FY.) According to this result, the overall level of satisfaction with the quality of the International Searches and International Preliminary Examinations has relatively been favorable. On the other hand, the percentages of the responses with evaluation Unsatisfied, still remained high. The percentages for each questionnaire item are as follows: foreign patent literature searches : 20.7 %, non-patent literature searches : 20.8%, judgments without discrepancies among patent examiners or examination divisions : 14.9%, and judgments without discrepancies between international phase and national phase : 13.9%. Fig. II: Evaluation on the overall quality of the International Searches and International Preliminary Examinations on PCT applications 3. Quality of Patent Examinations on Specified National Applications (See 2.(3) of Page 25) The level of satisfaction in regard to the quality of patent examinations on specified national applications was 88.8%, which is the total percentage of all responses of Satisfied, Somewhat Satisfied, and Neutral. The total percentage was 88.2 % in the Survey in last FY. And the total percentage of the responses with evaluation Satisfied was 53.2%, still more than 50%. (It was 59.2% in the Survey in last FY.) According to the results above, it is clear that users were basically satisfied in terms of the level of each patent examination. Nevertheless, there were still some responses with evaluation Unsatisfied in the Survey in FY2014 (11.2%), as there were in the Survey in last FY. Among these reasons, users indicated they were unsatisfied with judgment of novelty/inventive step or that there were insufficient explanations on judgment of lack of novelty/inventive step. Also, in looking at the aggregation results by the types of final decision, the percentage of the responses with evaluation Unsatisfied, i.e., those about applications to which decision of refusal to the notification of reasons for refusal as a result of no response or decision to grant a patent was issued was lower than the percentage for applications to which decision of refusal in spite of written opinions and amendments was issued. To sum up, this result shows that user satisfaction level varies in accordance with the types of final decisions. iii

5 Fig. III: Evaluation on the quality of patent examinations on specified national applications 4. Quality of the International Searches and International Preliminary Examinations on Specified PCT Applications (See 2.(4) of Page 32) The level of satisfaction in terms of the quality of the International Searches and International Preliminary Examinations on specified PCT applications was 90.2%, which is the total of all Satisfied, Somewhat satisfied, and Neutral responses. In the Survey in last FY, the percentage was 88.7%. And the percentage of the responses with evaluation Satisfied ( Satisfied and Somewhat Satisfied ) was 53.0%, still over 50%. (It was 59.3% in the Survey in last FY.) This shows that, overall, there doesn t seem to be huge issues with the quality of the International Searches and International Preliminary Examinations, as the majority of users gave positive responses. On the other hand, the percentage of the responses with evaluation Unsatisfied was 9.8%, which was on a par with the results of the Survey in last FY. The reasons for users responses of Somewhat Unsatisfied and Unsatisfied was because they felt dissatisfied with judgment on novelty/inventive step, insufficient explanation about the reasons for judgement of lacking novelty/inventive step. Fig. IV: Evaluation on the quality of the International Searches and International Preliminary Examinations on specified PCT applications 5. Analysis of the Effects on the Overall Satisfaction Level for Each Questionnaire Item (See 3.(1) of Page 35) From this year s results, the JPO analyzed how the level of user satisfaction for each questionnaire item iv

6 influenced on the overall satisfaction level in terms of the quality of patent examination. Figs. V and VI indicate both the average level of satisfaction based on a 5-point scale (horizontal axis) and the correlation coefficient between the evaluation on each aspect and the evaluation at large (vertical axis). As a result, the closer to the area where the top priority is, the darker the background color becomes, indicating where priority needs to be placed. According to the analysis in Fig. V (for patent examinations on national applications), the results were basically the same as those in the Survey in last FY. Description of the notifications of reasons for refusal, practice of judgement of inventive step and judgment without discrepancies were key factors, significantly affecting the overall satisfaction level by users. In addition, more consideration is needed in this aspect, since the correlation coefficient points to an increase in patent-granted scope and non-patent literature searches. Regarding the items for the International Searches and International Preliminary Examinations (Fig. VI), these should be priority issues: judgment of novelty/inventive step (relatively high correlation coefficient), judgment without discrepancies among patent examiners or examination divisions (relatively high correlation coefficient and relatively low average of points), foreign patent literature searches and non-patent literature searches (relatively low average of points). Especially, compared with the Survey in last FY, judgment of novelty/inventive step and judgment without discrepancies among patent examiners or examination divisions are becoming more important issues due to the decrease in average points and the increase in the correlation coefficient. Fig. V: Current level of satisfaction for each questionnaire item and correlation coefficient with the overall evaluation level (national applications) v

7 Fig. VI: Current level of satisfaction for each questionnaire item and correlation coefficient with the overall evaluation level (PCT applications) 6. Detailed Analysis on Specified Applications (See 3.(2) of Page 43) Having done further detailed analysis on specified applications that users were dissatisfied with, many of users gave useful feedback for improving operating procedures in patent examination. As in the Survey in last FY, users mentioned issues with the descriptions in the notifications of reasons for refusal and judgement of novelty/inventive step. Specifically, they related to identification and description regarding identical features and differences, identification regarding cited documents and description of the identification in the notification of reasons for refusal, identification and description regarding reasoning such as combination and the like. Also like in the Survey in last FY, there were some other comments about patent examination made in regard to other applicants applications (especially in regard to patent-granted applications). vi

8 #01 identification of claimed invention #02 identification of cited invention #03 insufficient indication of cited part(s) of cited document(s) #04 identification of well-known (commonly used) art #05 insufficient presentation of well-known (commonly used) art consisting a basis for judgement #06 judgement of identical features/differences #07 insufficient description of identical features/differences #08 judgment of combination/motivation #09 insufficient description of combination/motivation #10 judgment of matters of workshop modification #11 insufficient description of matters of workshop modification #12 judgment of operations/effects #13 insufficient explanation for each claim #14 problems in description or formality other than the items above #15 others Fig. VII: Results of analysis: comments on novelty/inventive step (percentage of comments received) 7. About the Survey (See 6. of Page 58) Users provided a variety of different opinions about the Survey itself. As a result, the JPO will review those comments and consider how it can better conduct the Survey in the future. vii

9 Ⅲ. Main Points of the Results of the Survey in FY2014 (See 4. of Page 54) In the Survey in FY2014, as in the Survey in last FY, the overall satisfaction level was as high as around 90%, which was the total percentage of Satisfied, Somewhat Satisfied, and Neutral responses. Overall, this was a rather favorable level of satisfaction with the quality of patent examination. Also, starting from the Survey in FY2014, the JPO directly polled foreign-resident applicants and domestic-resident representatives in Japan. Based on the responses given by these respondents, the JPO was able to receive,a larger number of responses with the evaluation Satisfied in terms of satisfaction level, compared to the results when the JPO polled only users based in Japan. On the other hand, some of the user requests, which the JPO obtained by compiling and analyzing the results, were similar to most of those that had been submitted in the Survey in last FY. The JPO was able to again acknowledge the significance of their requests. The following is an outline of the main points that were resulted from analyzing the Survey in FY2014. User requests are also included in the main points. The JPO is making continuous efforts to sustain and enhance the quality of patent examination, taking into consideration the user requests submitted in the Survey. 1. Providing Sufficient Explanations in Notifications of Reasons for Refusal regarding Novelty/ Inventive Step As in the Survey in last FY, it was pointed out that there were not enough descriptions written in the notifications of reasons for refusal that had been issued by the JPO. In other words, descriptions was insufficiently given as to how the examination had been processed in terms of identical features/differences, identification of the cited documents, and combination/motivation. Due to this, the JPO will continually improve its level of communication with applicants and especially, will further enhance descriptions in the notifications of reasons for refusal. 2. Judgment of Unity or New Matters User satisfaction has been improving in terms of judgment of unity. Also, complaints about judgments of new matters have been decreasing. This is thanks to the JPO s actively implementing the PDCA Cycle in its Quality Management and reflecting users needs. More specifically, based on users needs, the Examination Guidelines for Patents and Utility Models were revised in July, And consultations among examiners is now mandatory, before the notifications of reasons for refusal are sent based on the violations of unity requirements, in order to properly implement the provisions stated in the revised Examination Guidelines, which has been incorporated into the Quality Management Annual Plan. This positive outcome was the result of the JPO s properly implementing the plan mentioned above. 3. Reducing Discrepancies in Judgments As in the Survey in last FY, users felt that there sometimes were discrepancies in judgments. However, the most common comments were about discrepancies in judgment of novelty/inventive step among patent examiners in the same technical field. Taking these opinions into consideration, the JPO will continually make efforts to ensure that examiners make consistent judgments. 4. Ensuring Sufficient Foreign Patent Literature and Non-Patent Literature Searches According to the results, users were not satisfied with the amount of foreign patent literature and non-patent literature searches, though correlation coefficient of this item affecting the overall evaluation is not necessarily high (points decreased in the overall quality of the International Searches and International Preliminary Examinations on PCT applications). As a result, the JPO will properly respond to this item, in order to grant stable and useful patents worldwide, understanding that the volume of foreign patent literature (i.e. literature written in languages other than Japanese) has been increasing in recent years 5. 5 See Figure in Part 2, Chapter 1 of Patent Administration Annual Report 2014 viii

10 5. Evaluation by Third Parties As in the Survey in last FY, respondents as third parties, i.e. persons evaluating someone else s national applications, responded to the Survey. However, the level of satisfaction by third parties was lower than it was for patent examinations on national applications on the whole. Most of the comments were about lax judgment of prior art searches and technical considerations. Consideration of the perspectives of both applicants obtaining rights and third parties is need. The JPO will continuously enhance the quality of patent examination in this regard. 6. Evaluation by Anonymous Respondents For the Survey in FY2014, to obtain free and open comments from the survey respondents, users could select to respond anonymously, for the first time. It is said that results from anonymous users should not greatly differ from those of identified users. However, the percentage of Neutral responses slightly decreased, and the percentage of Satisfied and Unsatisfied increased. Based on the result, the JPO will keep considering how to conduct its annual survey and improving it to grasp wide-ranging users needs. 7. Enhancing Communication (Interviews, Telephone Conversations, etc.) The level of satisfaction for interviews and telephone conversations was relatively high, with more respondents indicating Neutral or better evaluation. On the other hand, a minority indicated insufficient communication by examiners. As for the third parties points of view, an increased number of respondents indicated that examiners should record contents of interview examinations appropriately because discussions during interview examinations are not transparent. Thus, regarding the result, the JPO will implement improved operations based on the Guidelines for Interviews revised in October Matters Recognized from the Correlation between the Evaluation on Each Questionnaire Item and the Overall Evaluation It seems that users are placing more importance on such as judgment in novelty/inventive step, judgment without discrepancies among patent examiners or examination divisions on PCT applications, which showed an increasing trend in terms of correlation coefficients and lower average evaluation levels. The JPO will watch this trend going forward. 9. Other/Some Important Minor Comments Among some minor comments, opinions requesting disclosure of search scope of prior art searches and search formula, for example, will be regarded as matters for further consideration and those comments will be treated in an appropriate manner to enhance patent examination quality. Ⅳ. Necessary Measures for the Main Points of the Analysis Results (See 5. of Page 58) The Survey in FY2014 itself is considered to be only a process in the Assessment of Patent Examination (CHECK) under the PDCA Cycle designed for sustaining and enhancing patent examination quality, as stated in the Quality Manual. More specifically, after gauging the perceptions of the patent examination quality based on the Survey (CHECK), priority operating procedures to be improved will be determined within limited resources (ACT). Following that, the operating procedures above will be accurately reflected into the future plan (PLAN) and the plan will be implemented (DO). In the end, the JPO will continue to conduct its user-satisfaction survey and announce to users improvements on the issues found out through the results of these main points. In addition, the JPO will announce the implementation of and the state of its quality management system at the JPO on our website and through other media. ix

11 Acknowledgment The JPO expresses its gratitude to all the respondents for their generous time in taking the Survey. To sustain and enhance the quality of patent examination, the JPO continues quality evaluation by users, and based on the results, improves patent examination and operating procedures. The JPO appreciates your continuous support. x

12 Contents ABSTRACT i 1. Overview of the Survey 1 (1) Background 1 (2) Purpose of the Survey 1 (3) Method of Gathering Users Evaluation 1 (4) Questionnaires 1 (5) Respondents 2 (6) Response Rate 3 (7) Definition of Satisfied or Unsatisfied in the Report 4 (8) Changes from Last Fiscal Year 4 2. Aggregation Results 5 (1) Quality of Patent Examinations on National Applications 5 (i) Overall Quality of Patent Examinations on National Applications 5 (ii) Overall Quality of Patent Examinations by the Types of Applicants (based on the Number of Application and Employee) 6 (iii) Evaluation on the Quality of Patent Examinations for Specific Questionnaire Items 7 (iv) Attributes of Discrepancies with which the Respondents were Unsatisfied 12 (v) Comments on/requests for each Questionnaire Item 13 (vi) Comparison with Foreign Patent Offices 15 (vii) Comments on Patent Examinations on Applications by Other Applicants 16 (viii) Other Comments on Patent Examinations on National Applications in Free Description Columns of Questionnaire Sheets 17 (ix) Other Comments Written in Free-Form on the Questionnaire Sheets 18 (2) Quality of the International Searches and International Preliminary Examination on PCT Applications 19 (i) Overall Quality of the International Searches and International Preliminary Examination on PCT Applications 19 (ii) Evaluation on the Quality of the International Searches and International Preliminary Examination for Each Questionnaire Item 21 (iii) Comments on/requests for Each Item above 22 (iv) Comparison with Foreign Patent Offices 23 (v) Other Comments Written in Free-Form from Users on the International Searches and International Preliminary Examinations on PCT Applications 24 (3) Quality of Patent Examinations on Specified National Applications 25 (i) Quality of Patent Examinations on Specified Applications Evaluated in the Survey (Overall) 25 (ii) Quality of Patent Examinations on Specified Applications to be Evaluated in the Survey (by the types of Final Dispositions) 25 (iii) Quality of Patent Examinations on Specified Applications (for the Number of Notifications of Reasons for Refusal: "Decision to Grant" Cases) 26 (iv) Quality of Patent Examinations on Specified Applications ("Decision of Refusal" Cases: for Each Number of Times of Notifications of Reasons for Refusal) 27 (v) Reason for being Satisfied with the Quality of Patent Examinations on t Specified Applications to be Evaluated in the Survey 29 (vi) Reasons for being Unsatisfied with Quality of Patent Examinations on Specified Applications to be Evaluated in the Survey 29 (4) Quality of International Searches on Specified PCT Applications 32 (i) Quality of the International Searches and International Preliminary Examinations on Specified Applications to be Evaluated in the Survey (Overall Quality) 32 (ii) Reasons for being Satisfied with the Quality of the International Searches and International Preliminary Examination on Specified Applications 33 (iii) Reason for being Unsatisfied with the Quality of the International Searches and International

13 Preliminary Examinations on Specified Applications to be Evaluated in the Survey Detailed Analysis on the Contents of Response 35 (1) Correlation Analysis between Each Evaluation Item and Overall Evaluation 35 (i) Detail of Analysis 35 (ii) Correlation Coefficients between the Level of Evaluation in each Questionnaire Item and Overall Evaluation (National Applications) 35 (iii) Correlation between Evaluation on Each Questionnaire Item and Overall Evaluation (National Applications) 37 (iv) Correlation Coefficient between Evaluation on Each Questionnaire Item and Overall Evaluation (PCT Applications) 39 (v) Correlation between Evaluation on Each Questionnaire Item and Overall Evaluation (PCT Applications) 40 (2) Analysis on the Comments on Specified Applications 43 (i) Details of Analysis 43 (ii) Indications regarding Novelty/Inventive Step 45 (iii) Findings related to Descriptive Requirements, Unity of Invention, and Amendment Requirements 45 (iv) Indications regarding Searches, Notifications of Reasons for Refusal, Decisions of Refusal, and Decisions to Grant a Patent 46 (v) Indications regarding Discrepancies in Examination, Each Examiner s Behavior and Others 47 (vi) Differences in the Trend of Evaluations/Comments between National Applications and PCT Applications 47 (vii) Differences in Trend of Evaluations/Comments between Applications Commented in Written, Free-Form and Specified Applications 49 (viii) Differences in the Trend of Evaluations/Comments by Industry Type Main Points of Analysis Results 54 (1) Providing Sufficient Description in Notifications of Reasons for Refusal Regarding Novelty/Inventive Step 54 (2) Judgment of Unity or New Matter 56 (3) Decrease in Discrepancies in Examination Judgment 56 (4) Enhancement of Foreign Patent Literature and Non-Patent Literature Searches 56 (5) Evaluation by Third Parties 57 (6) Evaluation by Anonymous Respondents 57 (7) Enhancement of Communication such as Interviews, Telephone Conversations, etc. 57 (8) Matters that can be Recognized from the Correlation between Evaluation on Each Questionnaire Item and the Overall Evaluation 57 (9) Minor, but Notable Other Comments/Requests Necessary Actions in Response to the Issues that have been Identified in Main Points of Analysis Results Future of the User Satisfaction Survey 58 Acknowledgement 58 (APPENDIX) Questionnaire Sheet A - D 60

14 List of Figures and Tables Fig. 1 Evaluation on the overall quality of patent examinations... 5 Fig. 2 Evaluation on the overall quality of patent examinations (anonymous only)... 6 Fig. 3 Evaluation on the overall quality of patent examinations by the types of applicants (based on the number of applications)... 7 Fig. 4 The percentage based on the 5-point scale for each questionnaire item regarding patent examination... 9 Fig. 5 The percentage based on the 5-point scale for each questionnaire item by industrial classification of respondents regarding patent examination Fig. 6 The percentage based on the 5-point scale for each questionnaire item by the types of applicants based on the number of applications, regarding the questionnaire item judgement without discrepancies among examiners or examination divisions Fig. 7 Types of discrepancies for each area to be evaluated Fig. 8 Comments/requests on patent examination regarding each questionnaire item Fig. 9 Evaluation on the overall quality of the International Searches and International Preliminary Examinations Fig. 10 Evaluation on the overall quality of the International Searches and International Preliminary Examinations Fig. 11 Percentages of evaluations on each questionnaire item on the International Searches and International Preliminary Examinations Fig. 12 Comments on/requests for each questionnaire item on the International Searches and International Preliminary Examinations Fig. 13 Evaluation on the quality of patent examinations of specified applications Fig Evaluation on the quality of patent examinations on specified applications (for each types of final disposition) Fig. 15 The percentage of evaluation on the quality of patent examinations on specified applications (patent-granted cases: for each number of times of notifications of reasons for refusal) Fig. 16 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases as a result of no response: for each number of times of notifications of reasons for refusal) Fig. 17 The percentage of evaluation on the quality of patent examinations on specified applications (decision of refusal cases in spite of response: for each number of times of notifications of reasons for refusal) Fig. 18 Evaluation on the quality of International Searches and International Preliminary Examinations on specified applications Fig. 19 Correlation between each evaluation item and overall evaluation (example) Fig. 20 Correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications) Fig. 21 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) Fig. 22 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) (the items which had a great amount of change in average evaluation levels or correlation coefficients compared to those in the last FY can be clearly seen.) Fig. 23 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications) Fig. 24 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications) Fig. 25 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications). (The items which had the greatest amount of change in the average evaluation levels or correlation coefficients compared to those in the last FY can be clearly seen.) Fig. 26 List of classified indication items based on comments in free description columns Fig. 27 The percentage of indications regarding novelty/inventive step Fig. 28 The percentage of indications regarding descriptive requirements, unity, and amendment requirements Fig The percentage of indications regarding searches, decision of refusal, and decision to grant a patent Fig. 30 The percentage of indications on discrepancies in examination, specific examiners, and the like 47 Fig. 31 The percentage of the number of indications for national applications and PCT applications Fig. 32 The percentage of the number of indications for applications indicated in free description columns and specified applications Fig. 33 The percentage of the number of indications by industry type (machinery, chemistry)... 52

15 Fig. 34 The percentage of the number of indications by industry type (electronics, representatives) Table 1 Method of selecting applicants/applications and the number of applicants/applications being subject to Sheet A/B (national applications)... 2 Table 2 Method of selecting applicants/applications and the number of applicants/applications being subject to Sheet C/D (PCT applications)... 3 Table 3 Response rate of questionnaire sheets... 3 Table 4 Breakdown by industrial classifications of respondents (Sheet A and C)... 3 Table 5 Evaluation on the overall quality of patent examinations... 5 Table 6 Evaluation on the overall quality of patent examinations (anonymous only)... 6 Table 7 Evaluation on the overall quality of patent examinations (by the types of applicants based on the number of applications)... 6 Table 8 Evaluation on patent examinations for each questionnaire item... 8 Table 9 Types of discrepancies for each area to be evaluated Table 10 Advantages of the JPO over foreign patent offices (national applications) based on users standpoints Table 11 Advantages of foreign patent offices over the JPO from users standpoints (national applications). 15 Table 12 Degree of satisfaction with patent examinations on applications by other applicants (national applications) Table 13 Users comments on patent examinations on applications by other applicants (national applications) Table 14 Number of respondents for each item by 5-point scale of respondents who indicated lax prior art searches/lax technical considerations on applications by other applicants Table 15 Evaluation on the overall quality of the International Searches and International Preliminary Examinations Table 16 Evaluation on the overall quality of the International Searches and International Preliminary Examinations (anonymous responses only) Table 17 Evaluation on the overall quality of the International Searches and International Preliminary Examinations Table 18 Advantages of the JPO over foreign patent offices from users standpoints (PCT applications) 23 Table 19 Advantages of foreign patent offices over the JPO from users standpoints (PCT applications). 24 Table 20 Evaluation on the quality of patent examination of specified applications Table Evaluation on the quality of patent examination on specified applications (for each types of final disposition) Table 22 Evaluation on the quality of patent examinations on specified applications (patent-granted cases: for each number of times that notifications of reasons for refusal were sent) Table 23 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases as a result of no response: for each number of times of notifications of reasons for refusal) Table 24 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases in spite of response: for each number of times of notifications of reasons for refusal) Table 25 Reasons for being Satisfied with the quality of patent examinations on specified applications29 Table Reasons for being Unsatisfied with the quality of patent examinations on specified applications Table 27 Evaluation on the quality of the International Searches and International Preliminary Examinations on specified applications Table 28 Reasons for being Satisfied with the quality of the International Searches and International Preliminary Examinations on specified applications Table 29 Reasons for being Unsatisfied with the quality of the International Searches and International Preliminary Examinations on specified applications Table 30 The correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications) Table 31 Correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications by industry) Table 32 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) Table 33 Correlation coefficient between evaluation on each questionnaire item and overall evaluation (PCT applications) Table 34 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications)... 41

16 1. Overview of the Survey (1) Background High quality and globally reliable patents granted by the JPO (Japan Patent Office) are key drivers fostering innovation and supporting domestic companies to conduct effective global business activities. As stated, the JPO released its Patent Examination Quality Policy (the Quality Policy ) in April 2014, which outlines the fundamental principles of quality management designed to achieve the utmost examination quality in the world. In addition, in order to ensure unified implementation of quality management, which conforms to the fundamental principles stipulated in the Quality Policy, the Quality Management Manual for Patent Examination (the Quality Manual ) was released in August 2014 as documentation for the quality management system. In the Intellectual Property Policy Vision 2013, in FY2013 to FY2014, it was required to consider the ideal situation for quality management on patent examination based on user s demands and establish a system for users to evaluate the JPO s quality management. Further, in the Intellectual Property Policy Vision 2014, in accordance with the Quality Policy and Quality Manual, it was required to implement measures for further sustaining and enhancing the quality of patent examination. In the Quality Policy, one of the six quality management principles states We meet wide-ranging needs and expectations, and further, the JPO understands and respects broad-ranging needs of and expectations for patent examination that it may contribute to the benefit of Japanese society and the satisfaction of people connected with the patent system. As a part of quality management complying with the principle, the JPO has conducted the Annual User Satisfaction Survey on Patent Examination Quality since FY2012, for the purpose of identifying matters to be improved in patent examination and obtaining necessary information in order to consider how the evaluation on patent examination quality from the users perspective should be. This report provides a summary of the FY2014 Survey results, the results of the JPO s analysis of the responses from users, and overall findings on the Survey. (2) Purpose of the Survey In view of the aforementioned background, the Survey aims at gathering evaluations, opinions, and the like from users on the quality of patent examination as well as the International Searches and International Preliminary Examination, so as to generate data to identify the current status of patent examination quality, and further to utilize the data to improve the quality of patent examination as well as the International Searches and International Preliminary Examination. The Survey falls under the process of Evaluating Patent Examination Procedure (CHECK) under the PDCA Cycle for Sustaining and Enhancing the Quality of Patent Examination, as stated in the Quality Manual. The JPO will utilize the Survey to continuously improve patent examination and related operating procedures, in order to ensure the statement: We continually improve operations, which is one of the principles stated in the Quality Policy. (3) Method of Gathering Users Evaluation In order to conduct the Survey, questionnaires (see (4) below) were sent by to respondents, who had been extracted in the way explained in (5) below, after asking them to cooperate on the Survey via phone-call or . Respondents were given about one month to respond. The respondents were asked to fill in and return the questionnaires via or postal service. The questionnaires of the Survey were distributed and the responses were received between August and November As for Sheet A and C (see (4) below), users could arbitrarily choose to respond either onymously or anonymously, i.e., they could choose to submit their responses by providing/not providing their names). (4) Questionnaires The following four types of questionnaires (see APPENDIX) were used for the Survey. Sheet A: Overall Quality in General of Patent Examinations on National Applications (1 sheet for each respondent) 1

17 Sheet B: Quality of Patent Examinations on Specified National Applications (1 sheet for each application) Sheet C: Overall Quality in General of the International Searches and the International Preliminary Examinations on PCT applications (1 sheet for each respondent) Sheet D: Quality of the International Searches and International Preliminary Examinations on Specified PCT applications (1 sheet for each application) For foreign-resident applicants, Sheet A and B, which had been translated into English when necessary (see APPENDIX), were sent. (5) Respondents Table 1 shows the method of selecting applicants/applications and the number of applicants/applications being subject to Sheet A/B (national applications). Table 2 shows the method of selecting applicants/applications and the number of applicants/applications being subject to Sheet C/D (PCT applications). It should be noted that the respondents of Sheet A and C overlap. The number of respondents was 709 if the overlap were excluded. Up until the Survey in the last FY, the JPO had requested main representatives of foreign-resident applicants to respond to the questionnaires. When their main representatives were at subsidiaries in Japan, the JPO sent the requests to the subsidiaries. However, from the 2014 Survey, the JPO directly asked foreign-resident applicants for responses in order to establish a reliable high-quality patent examination nationally and internationally. In the previous Surveys, the JPO only asked main representatives of foreign-resident applicants to respond to the questionnaires. In response to the change above, the JPO, this FY, asked the representatives who handled a large number of applications for responses based on the standpoints of representatives, regardless of whether they represented foreign-resident applicants or not. Table 1 Method of selecting applicants/applications and the number of applicants/applications being subject to Sheet A/B (national applications) Sheet A Sheet B method of selecting applicants/applications non-individual, domestic-resident applicants who filed 50 or more national applications as leader applicant in 2012 and also one or more copy of final decision was transmitted in 2013 non-individual, foreign-resident applicants who filed 120 or more national applications as leader applicant in 2012 and also one or more copy of final decision is transmitted in 2013 applicants with a small number of applications and/or employees [*1] number of applicants/applications 592 representatives [*2] 51 randomly selected national applications of which leader applicant is an applicant being subject to Sheet A, and to which decision to grant a patent or decision of refusal was issued in 2013 [*3] *1 Randomly selected from domestic-resident applicants being enterprises capitalized at 300 million yen or less with employees (manufacturers only) who filed 5 or more but less than 50 national applications as leader applicant in 2012, based on the record of interviews and/or discussions with the JPO *2 Top representatives who filed a large number of applications in 2012 *3 An additional condition was set in order to lighten the burden on respondents. This means that the number of subject applications was limited to 2 at minimum to 5 at maximum. 2-5 questionnaire sheets were sent to each applicant in accordance with the number of national applications as leader applicant in

18 Table 2 Method of selecting applicants/applications and the number of applicants/applications being subject to Sheet C/D (PCT applications) Sheet C Sheet D method of selecting applicants/applications non-individual, domestic-resident applicant who filed 18 or more PCT applications as leader applicant in 2013 and also one or more International Search Report (ISR) or International Preliminary Examination Report (IPER) was transmitted in 2013 applicants with a small number of application and employee [*1] number of applicants/applications 296 representatives [*2] 29 randomly selected PCT applications of which leader applicant is an applicant being subject to Sheet C, and to which the ISR or IPER was transmitted in 2013 [*3] *1 Randomly selected from domestic-resident applicants being enterprises capitalized at 300 million yen or less with 300 or less employees (manufacturers only) who filed 3 or more but less than 18 PCT applications as leader applicant in 2013, based on the record of interviews and/or discussions with the JPO *2 Top representatives who filed a large number of applications in 2013 *3 An additional condition was set in order to lighten the burden on respondents. This means that the number of subject applications was limited to 2 at minimum to 5 at maximum. 2-5 questionnaire sheets were sent to each applicant in accordance with the number of PCT applications as leader applicant in 2013 (6) Response Rate Since the fiscal year before last, the JPO has been achieved a high response rate of around 90%. This high rate indicates a keen interest by users in the Survey. Table 3 shows the response rate to Sheet A, B, C and D, respectively. Table 4 shows the breakdown in accordance with industrial classification of respondents (Sheet A and C). Table 3 Response rate of questionnaire sheets distributed number of Sheets number of Sheets with responses response rate response rate in the last FY (for reference only) 335 response rate in FY before last (for reference only) Sheet A % 91.8% 91.4% Sheet B % 90.6% 91.7% Sheet C % 90.6% 91.8% Sheet D % 90.1% 93.0% Table 4 Breakdown by industrial classifications of respondents (Sheet A and C) Sheet A Sheet C percentage industrial number of in relation number of classification [*1] respondents to the respondents whole percentage in relation to the whole metal % % construction 9 1.5% 0 0% machinery % % chemistry % % food/medicine % % electronics % % 3

19 other industries % 6 2.0% others % 8 2.7% institutes/public research org % 8 2.7% representatives % % foreign applicants % - - anonymous % % total % % *1 Industrial classifications of respondents are sorted into 9 sector indices in reference to the following. (When foreign-resident representatives, applicants, and the anonymous are included therein, the classification above is 12 sector indices): TOPIX Sector indices (33 sectors), Teikoku Databank industry classification table, Japan Standard Industry Classification, Research Report on Practice of Patent Examination so as to Enhance User s Convenience ( ), and Research Report on Quality Management System that Takes into Consideration the Evaluations Made by Patent Applicants and Agents ( ). Note that the term other industries indicates industries such as stationaries, toys, sporting goods etc. and excludes the manufacturers named above, and the term others indicates non-manufacturers such as service, transportation, finance, etc. (7) Definition of Satisfied or Unsatisfied in the Report In the questionnaire sheets (see APPENDIX), a 5-point scale was used for evaluation, in which 5 indicates Satisfied, 4 indicates Somewhat Satisfied, 3 indicates Neutral, 2 indicates Somewhat Unsatisfied and 1 indicates Unsatisfied. In the Report, as long as there were no particular remark stated, the term Satisfied in italics consists of 5 Satisfied and 4 Somewhat Satisfied and the term Unsatisfied in italics consists of 1 Unsatisfied and 2 Somewhat Unsatisfied. (8) Changes from Last Fiscal Year In this year s Survey, the following points were changes to the Survey strategies, in addition to those stated above. 1. Users can arbitrary choose to respond either onymously or anonymously on Sheet A and C, i.e., they could choose to respond by providing/not providing their names. 2. The JPO asked the representatives, who handled a large number of applications, for responses from the standpoints of representatives, regardless of whether they represented foreign-resident applicants or not. 3. In order to reflect a significant number of complaints and the evaluation Unsatisfied with discrepancies in judgement to the content of questionnaire item until last year, in this year s Survey, the description of questionnaire items regarding judgment without discrepancies (Sheet A [1] (2) 3 and Sheet C [1] (2) 8, 9) was modified so as to better investigate the reasons for the discrepancies and make improvements in the future. In addition, explanations on the questionnaire items, the layout of answer column, and the like were improved so as to help better users understand the intention of the questionnaire. 4

20 2. Aggregation Results (1) Quality of Patent Examinations on National Applications (i) Overall Quality of Patent Examinations on National Applications The evaluation percentage of Neutral or better 6 regarding the overall quality of patent examinations on national applications was as high as 91.1% (92.5 % in the last FY). In particular, the percentage of Satisfied totaled 47.0% in relation to the whole (45.0% in the last FY). Table 5 and Fig. 1 show the aggregated results in terms of the 5-point scale on the overall quality of patent examinations on national applications within past 1 year. Table 5 Evaluation on the overall quality of patent examinations 5-point scale number of responses percentage reference (last FY) 5: Satisfied % 1.5% 4: Somewhat Satisfied % 43.5% 3: Neutral % 47.5% 2: Somewhat Unsatisfied % 7.3% 1: Unsatisfied 3 0.5% 0.2% Total % 100% Fig. 1 Evaluation on the overall quality of patent examinations Table 6 and Fig. 2 show the aggregated results in terms of the 5-point scale on the overall quality of patent examinations on national applications only from the users who chose responded anonymously. 6 Evaluation of Neutral or better consists of Satisfied, Somewhat satisfied, and Neutral. 5

21 Table 6 Evaluation on the overall quality of patent examinations (anonymous only) 5 point scale number of responses percentage 5: Satisfied 2 3.0% 4: Somewhat Satisfied % 3: Neutral % 2: Somewhat Unsatisfied % 1: Unsatisfied 1 1.5% Total % Fig. 2 Evaluation on the overall quality of patent examinations (anonymous only) (ii) Overall Quality of Patent Examinations by the Types of Applicants (based on the Number of Application and Employee) Table 7 shows the number of responses based on the 5-point scale by the types of applicants according to the number of applications and employees. Fig. 3 shows the percentage of the 5-point scale by the types of applicants based on the number of applications. Here, applicants who filled 1,000 or more national applications in 2013 are referred to as applicants with a large number of applications, applicants who filed 100 to 999 applications in 2013 are referred to as applicants with a semi-large number of applications, and applicants who filed fewer than 100 applications in 2013 are referred to as applicants with a small/medium number of applications. The number and percentage of representatives and foreign-resident applicants (foreign applicants) based on the 5-point scale are shown separately, regardless of the number of applications. Table 7 Evaluation on the overall quality of patent examinations by the types of applicants (based on the number of applications) 4: 2: 5: 3: 1: Somewhat Somewhat Satisfied Neutral Unsatisfied Satisfied Unsatisfied Total applicants with a large number of applications applicants with a semi-large number of applications applicants with a small/medium number of applications representatives foreign applicants total

22 Fig. 3 Evaluation on the overall quality of patent examinations by the types of applicants (based on the number of applications) (iii) Evaluation on the Quality of Patent Examinations for Specific Questionnaire Items As for each questionnaire item, the percentage of Unsatisfied with judgment without discrepancies among patent examiners or examination divisions was still as high as 31.3 %, though it improved from that in the last FY (36.6 %). As for each questionnaire item, the percentage of Unsatisfied with judgement of inventive step, foreign patent literature searches, non-patent literature searches, and judgement of descriptive requirements was approximately 20%, respectively. According to the breakdown of responses by industrial classification of respondents, a larger number of applicants from chemistry or food/medicine tends to be Unsatisfied with judgement of descriptive requirement, compared to applicants from machinery or electronics. Meanwhile, a larger number of applicants from machinery or electronics tends to be Unsatisfied with foreign patent literature searches compared to applicants from chemistry or food/medicine. A larger number of representatives are Unsatisfied with judgement of descriptive requirement, while a smaller number of representatives are Unsatisfied with foreign patent literature searches or non-patent literature searches. Table 8 shows the number of responses based on the 5-point scale for each questionnaire item. Fig. 4 shows the percentage based on the 5-point scale for each questionnaire item, in which the response Not Sure in Table 8 is excluded. Fig. 5 shows the percentage of response based on the each 5 point scale for each questionnaire item, in which the response Not Sure in Table 8 is excluded, by industrial classification of respondents shown in Table 4. Fig. 6 shows the percentage based on the 5-point scale for each questionnaire item, in which the response Not Sure in Table 8 is excluded, by the types of applicants based on the number of applications, regarding the questionnaire item judgement without discrepancies among examiners or examination divisions. 7

23 Table 8 Evaluation on patent examinations for each questionnaire item Somewhat questionnaire item Satisfied Neutral Satisfied description of notifications of reasons for refusal (excluding decision of refusal) Somewhat Unsatisfied Unsatisfied Not Sure description of decision of refusal judgement without discrepancies among examiners or examination divisions practice of Article attributes of discrepancies with which users are unsatisfied judgement discrepancies in the 117 same technical field judgement discrepancies between 77 foreign patent offices and the JPO judgement discrepancies between Examination Division and Appeals 51 Department judgement discrepancies between different technical fields the main paragraph of Article 29 (1) (judgement of industrial applicability and as to whether a claimed subject falls under invention ) each item of Article 29 (1): novelty Article 29 (2): inventive step Article 36 (4)-1 and Article 36 (6): Descriptive requirements of the specification, scope of claims, and the like Article 37: Unity of invention Article 17 bis (3)-(6): Amendment of the specification, scope of claims, and the like domestic patent literature searches searches foreign patent literature searches non-patent literature searches examiners technical expertise communication with examiners (interview, telephone conversations, etc.) patent-granted scope through examination

24 Fig. 4 The percentage based on the 5-point scale for each questionnaire item regarding patent examination 9

25 practice of descriptive requirements practice of inventive step judgement without discrepancies among examiners or examination divisions foreign patent literature searches 10

26 non-patent literature searches Fig. 5 The percentage based on the 5-point scale for each questionnaire item by industrial classification of respondents regarding patent examination Fig. 6 The percentage based on the 5-point scale for each questionnaire item by the types of applicants based on the number of applications, regarding the questionnaire item judgement without discrepancies among examiners or examination divisions 11

27 (iv) Attributes of Discrepancies with which the Respondents were Unsatisfied Many responses indicated discrepancies in the same technical field, and in particular, a high percentage of respondents were Unsatisfied with the discrepancies in terms of judgement of novelty/inventive step. The number of responses indicating Unsatisfied with judgement of unity/ amendment changing special technical features of invention (Patent Act Article 17bis(4)) dramatically decreased to 0.2% in total from 6% in total in the Survey in the last FY. Table 9 shows the aggregated results of the areas where users found discrepancies and the types of discrepancies. Fig. 7 shows the types of discrepancies for each area evaluated. Table 9 Types of discrepancies for each area to be evaluated types and areas discrepancie s in the same technical field discrepancie s among different technical fields discrepancie s between Examination Division and Appeals Department discrepancie s between foreign patent offices and the JPO others total overall 23 (15.0% ) 9 (19.1% ) 12 (16.7% ) 15 (15.5% ) 3 (7.3%) 62 (15.1% ) judgement of novelty/inventiv e step 60 (39.2%) 16 (34.0%) 27 (37.5%) 43 (44.3%) 17 (41.5%) 163 (39.8%) judgement of descriptive requiremen t 36 (23.5%) 10 (21.3%) 14 (19.4%) 19 (19.6%) 7 (17.1%) 86 (21.0%) descriptio n of reasons for refusal 12 (7.8%) 6 (12.8%) 4 (5.6%) 5 (5.2%) 5 (12.2%) 32 (7.8%) judgement of unity/ amendmen t changing special technical features of invention (Patent Act Article 17bis(4)) 0 (0%) 0 (0%) 0 (0%) 1 (1.0%) 0 (0%) 1 (0.2%) others 22 (14.4% ) 6 (12.8% ) 15 (20.8% ) 14 (14.4% ) 9 (22.0% ) 66[*3] (16.1% ) total [*1] 153 (100% ) 47 (100% ) 72 (100% ) 97 (100% ) 41[*2] (100% ) 410 (100% ) *1 193 comments were valid. The number of comments was counted for each type/area if more than one type/area is included in one comment. *2 An example of others : comments on specific examiners (discrepancies among examiners) *3 Examples of others : prior art document searches, judgement of new matter, examiners technical understanding, judgement of the main paragraph of Article 29 (1), and courteous communication 12

28 Fig. 7 Types of discrepancies for each area to be evaluated (v) Comments on/requests for each Questionnaire Item According to additional responses in free-form written comments from users, many commented on the descriptions of notifications of reasons for refusal (68 comments), inventive step (76 comments) or descriptive requirements (59 comments). Similar to the Survey in the last FY, positive comments (28 comments) were given about communication with examiners, in which users showed a great amount of interest. Also, many positive comments were given regarding the revisions to the Examination Guidelines (revised in July, 2013), including the revision about judgement of unity/ amendment changing special technical features of invention (Patent Act Article 17bis(4)). Fig. 8 shows classifications of comment/request (response in the columns for free-form written comments) regarding each questionnaire item, in which the comments are classified into positive/negative comments, so as to be aggregated. Negative comments were given such as: a request to have appropriate and sufficient indications of cited parts in cited documents regarding descriptions of notifications of reasons for refusal, a comment stating that descriptions on reasoning are too concise to understand the examiner s intent or thinking about inventive step, and a comment regarding descriptive requirements (specifically, enablement requirements/requirement of support in description) stated in the notifications of reasons for refusal that require limitations to the level of embodiments or identify unclearness of claims, regardless of the description in the application concerned or common general technical knowledge. Many positive comments made about communication with examiners, stating that examiners were courteous and gave ready consent to telephone conversations and interviews. 13

29 Fig. 8 Comments/requests on patent examination regarding each questionnaire item 14

30 (vi) Comparison with Foreign Patent Offices Many users praised the JPO, compared to other foreign patent offices, in terms of prior art document searches, examiners technical understanding, judgment of novelty/inventive step, and judgment without discrepancies. Meanwhile, many users considered the EPO to be excellent in terms of prior art document searches and description of notifications of reasons for refusal, and thought the USPTO was excellent in terms of descriptions of notifications of reasons for refusal. Table 10 shows the number of responses that praised the advantages of the JPO over foreign patent offices in terms of the quality of patent examinations on national applications, based on the users standpoints. Their free-form written comments were classified into the prescribed items. Table 10 Advantages of the JPO over foreign patent offices (national applications) based on users standpoints advantages of the JPO over foreign patent offices, based on the users standpoints number of responses [*1] prior art document searches [*2] 104 examiners technical understanding 90 judgement of novelty/inventive step 79 judgement without discrepancies 62 speed of examination 37 description of notifications of reasons for refusal 31 judgement of descriptive requirement of the specification 12 communication with examiners 9 suggestion of amendment 7 judgment of unity 1 others [*3] 41 *1 302 comments were valid. The number of comments was counted for each advantage if more than one advantage is indicated in one comment. *2 There were16 comments that praised domestic patent literature searches in particular. *3 Specific examples: overall quality of examination and cost-savings Table 11 shows the number of responses that praised the advantages of foreign patent offices over the JPO in terms of the quality of patent examinations on national applications, based on the users standpoints. Their free-form written comments were classified into the prescribed items. Table 11 Advantages of foreign patent offices over the JPO from users standpoints (national applications) advantages of foreign patent offices number of responses [*1] over the JPO from users standpoint EPO USPTO SIPO KIPO others[*2] description of notifications of reasons for refusal prior art document searches (particularly in foreign patent literature searches) (particularly in non-patent literature searches) speed of examination judgement of novelty/inventive step examiners technical understanding sufficient opportunities for stating opinion such as interview judgement without discrepancies suggestion of amendment judgement of descriptive requirement

31 of the specification judgment of unity others [*3] *1 200 comments were valid. The number of comments was counted for each advantage if more than one advantage is indicated in one comment. *2 A specific example of others : easy-to-be-granted in examination for IP Australia *3 Specific examples of others : overall patent examination quality and courteous examination As shown in Table 11 above, many comments praised the EPO in terms of its prior art searches. Specifically, these responses commented that the EPO presented literatures from countries outside Europe (foreign literature for the EPO) at the same time, and that non-patent literature searches were appropriately conducted. Further, as shown in Table 11 above, many comments praised the EPO and USPTO in terms of description of notifications of reasons for refusal, as in the Survey in the last FY. Taking a look at the details, as in the Survey in the last FY, most of the comments stated that descriptions were sufficient, detailed, and clear, compared to those by the JPO, especially in the descriptions comparing claimed inventions to prior art and/or description for each claim. (vii) Comments on Patent Examinations on Applications by Other Applicants In terms of the quality of patent examinations on applications by other applicants, the responses for Neutral or better were 77.3%. This percentage was lower than the 91.1% for the overall quality of patent examinations on national applications. Many responses indicated lax prior art searches and lax technical considerations, and inappropriate judgments on numerical limitations. An increased number of respondents indicated that examiners should record interview examinations appropriately because discussions during interview examinations are not transparent. Table 12 shows the aggregated results of the 5-point evaluation about patent examinations on applications by other applicants. Table 12 Degree of satisfaction with patent examinations on applications by other applicants (national applications) 5-point scale number of percentage reference responses [*1] (last FY) 5: Satisfied 3 0.6% 0.8% 4: Somewhat Satisfied % 7.4% 3: Neutral % 66.7% 2: Somewhat Unsatisfied % 22.5% 1: Unsatisfied 8 1.6% 2.5% Not Sure total % 100% *1 The response Not sure is excluded from the rate. Table 13 shows the aggregated results of the comments on patent examinations on applications by other applicants. For aggregation, similar free-form written comments from users were classified into prescribed aspects. 16

32 Table 13 Users comments on patent examinations on applications by other applicants (national applications) aspects of the comments number of responses[*1] unsatisfied with lax prior art searches/lax technical considerations 45 unsatisfied with examinations on numerical limitations (inventive step/clarity) 15 demands for examiners to record interview examinations appropriately because discussions during interview examinations 14 are not transparent unsatisfied with examinations on applications by foreign-resident applicants 13 unsatisfied with unclear and vague claims (unclear and vague patent scope) of patent rights 12 demands for submission of observations from third parties (wishes to utilize the observations in examinations or to ensure 11 opportunities to submit observations) unclear reasons for decision to grant a patent 9 unsatisfied with judgements in accelerated examinations 6 positive comments such as nothing specially inappropriate 12 others [*2] 28 *1 165 comments were valid. The number of comments was counted for each aspect if more than one aspect is included in one comment. *2 Specific examples of others : lax examination, judgement discrepancies between the applicant itself and other applicants Taking a look into evaluation on each item of 45 respondents who comment unsatisfied with lax prior art searches/lax technical considerations in Table 13,, the high percentage of respondents who were Unsatisfied with judgement of inventive step or foreign patent literature searches, percentage as shown in Table 14 below, seems to be main basis for the comments. Table 14 Number of respondents for each item by 5-point scale of respondents who indicated lax prior art searches/lax technical considerations on applications by other applicants Satisfied Somewhat Somewhat Neutral Satisfied Unsatisfied Unsatisfied Not Sure practice of novelty judgement practice of inventive step judgement domestic patent literature searches foreign patent literature searches non-patent literature searches The number of comments increased, which stated that examiners should record interview examinations appropriately because discussions during interview examinations are intransparent. (More demands are being made for enhanced records of interview examinations.) This was an increase compared to the Survey in the last FY (5 respondents). Thus, further enhancement of transparency is needed when communication with examiners is becoming more important in patent examination. (viii) Other Comments on Patent Examinations on National Applications in Free Description Columns of Questionnaire Sheets Many comments on patent examinations on national applications were made about various items to be considered. Other examples of comments were: Wish to have a patent without potential invalidity (8 comments), Faster examination is better (6 comments), Placing high expectation on post-grant opposition procedures (6 comments) Demand for more opportunities to respond to reasons 17

33 for refusal (5 comments), and Wish to disclose the reasons for granting patent so as to be understood by the third parties (4 comments). (ix) Other Comments Written in Free-Form on the Questionnaire Sheets Many positive comments about the Survey were given, such as The Survey is a good effort and hope it will be continued. (11 comments), Hope the results to be reflected to the future initiatives (1 comment), and Expecting the results to be disclosed (3 comments). Detailed suggestions for improving the Survey were also given, such as the method for selecting the specific applications (19 comments), the content of the questionnaire (15 comments), the layout and content of questionnaire sheets (13 comments) and the schedule and timing of the Survey (6 comments), for example. 18

34 (2) Quality of the International Searches and International Preliminary Examinations on PCT Applications (i) Overall Quality of the International Searches and International Preliminary Examinations on PCT Applications The percentage of Neutral or better evaluations about the overall quality of the International Searches and International Preliminary Examinations on PCT applications was 96.6% (94.6 % in the last FY), including Satisfied (40.7%). According to the result, it seems that the percentage of Satisfied with the overall quality of the International Searches and International Preliminary Examinations has been relatively favorable. Table 15 and Fig. 9 show aggregated results based on the 5-point scale on the overall quality of the International Searches and International Preliminary Examinations on PCT applications during the recent one year. Table 15 5-point scale Evaluation on the overall quality of the International Searches and International Preliminary Examinations number of responses percentage reference (last FY) 5: Satisfied 3 1.0% 3.1% 4: Somewhat Satisfied % 38.6% 3: Neutral % 52.9% 2: Somewhat Unsatisfied % 5.0% 1: Unsatisfied 0 0% 0.4% total % 100% Fig. 9 Evaluation on the overall quality of the International Searches and International Preliminary Examinations Table 16 and Fig. 10 show aggregated results based on a 5-point scale on the overall quality of the International Searches and International Preliminary Examinations on PCT applications during the recent one year, per the anonymous responses. 19

35 Table 16 Evaluation on the overall quality of the International Searches and International Preliminary Examinations (anonymous responses only) 5-point scale number of responses percentage 5: Satisfied 2 6.1% 4: Somewhat Satisfied % 3:Neutral % 2:Somewhat Unsatisfied 3 9.1% 1: Unsatisfied 0 0% total % Fig. 10 Evaluation on the overall quality of the International Searches and International Preliminary Examinations 20

36 (ii) Evaluation on the Quality of International Searches and International Preliminary Examinations for Each Questionnaire Item Among the questionnaire items, the highest total percentage of Satisfied was 53.1% for national patent literature searches (54.3% in the last FY). Meanwhile, for foreign patent literature searches, non-patent literature searches, judgment without discrepancies among patent examiners or examination divisions, and judgment without discrepancies between the international phase and the national phase, a higher percentage of users responded Unsatisfied compared to other items. However, compared to the Survey in the last FY, a lower percentage of users responded Unsatisfied with foreign patent literature searches and judgments without discrepancies between the international phase and the national phase. Table 17 shows the number of responses for each questionnaire item. Fig. 11 shows the percentage for each questionnaire item from which the response Not Sure on Table 17 has been excluded. Many comments were given about judgement without discrepancies between the national phase and the international phase. For example, more strict judgements had been made in the national phase compared to that made in the international phase. Table 17 Evaluation on the overall quality of the International Searches and International Preliminary Examinations questionnaire item Satisfied Somewhat Somewhat Not Neutral Unsatisfied Satisfied Unsatisfied Sure accuracy of international patent classification judgement of exclusion from searches judgment of violation of unity judgement of novelty/inventive step description of written opinion as to novelty/inventive step domestic patent literature searches searches foreign patent literature searches non-patent literature searches judgment of descriptive deficiency judgement without discrepancies among examiners or examination divisions attributes of discrepancies with which users are unsatisfied discrepancies in the same technical field 16 discrepancies between different technical fields 4 discrepancies between foreign patent offices and the JPO 33 judgement without discrepancies between the international and national phase

37 Fig. 11 Percentages of evaluations on each questionnaire item on the International Searches and International Preliminary Examinations (iii) Comments on/requests for Each Item above According to additional comments written in free-form by users, a relatively large number of comments were made in regard to the consistency between the international phase and the national phase (consistency between foreign patent offices and the JPO) (total 21 comments) and prior art document searches (14 comments for foreign patent literature searches out of total 18 comments). Fig. 12 shows aggregated results of classified comments, requests, and the like (response in the columns for free-form written comments) for each questionnaire item above, classified into positive/negative comments. Many respondents pointed out especially for prior art searches, that foreign patent searches seemed insufficient, on the ground that an insufficient number of foreign patent documents were presented in the international phase or that foreign patent documents were first presented during the national phase. 22

38 Fig. 12 Comments on/requests for each questionnaire item on International Searches and International Preliminary Examinations (iv) Comparison with Foreign Patent Offices Many respondents found advantages of the JPO over foreign patent offices in terms of prior art searches. Many responses given in regard to prior art searches by the EPO were favorable, indicating the advantages of the foreign patent offices over the JPO. Table 18 shows aggregated results of the comments on advantages of the JPO over foreign patent offices in terms of International Searches and International Preliminary Examinations on PCT Applications. The comments written in free-form were classified into the prescribed items. Table 18 Advantages of the JPO over foreign patent offices from users standpoints (PCT applications) advantages of the JPO over foreign number of patent offices from users standpoints responses[*1] prior art document searches [*2] 41 judgement without discrepancies 12 judgement of novelty/inventive step 8 speed of searches 6 examiners technical understanding 5 description in written opinions 5 communication with examiner 1 judgement of descriptive requirement of the specification 0 others [*3] 8 *1 72 comments were valid. The number of comments was counted for each advantage if more than one advantage is indicated in one comment. 23

39 *2 10 comments stating that domestic patent literature searches are excellent are included *3 Examples of others : reasonable search fee, high patent examination quality in general, etc. Table 19 shows aggregated results of the comments on advantages of foreign patent offices over the JPO in terms of International Searches and International Preliminary Examinations on PCT Applications from users standpoint, in which the comments in free description column from users have been classified into the prescribed items. Table 19 Advantages of foreign patent offices over the JPO from users standpoints (PCT applications) advantages of foreign patent offices number of responses[*1] over the JPO from users standpoints EPO USPTO SIPO KIPO prior art document searches (especially for foreign patent literature searches) (especially for non-patent literature searches) judgement of novelty/inventive step description in written opinions examiners technical understanding speed of searches judgement of descriptive requirement judgement without discrepancies others [*2] *1 62 comments were valid. The number of comments was counted for each advantage if more than one advantage is indicated in one comment. *2 An example of others : comments indicating that, in many cases, documents in the ISRs established by the EPO are cited also in the national phase in designated states. (v) Other Comments Written in Free-Form from Users on International Searches and International Preliminary Examinations on PCT Applications Various comments were given on International Searches and International Preliminary Examinations on PCT applications. Many comments (8 comments), in particular, requested that the ISRs established by the JPO should be used more also in the national phase, as a result of cooperative practice of systems/judgement with foreign patent offices, and prior art searches involving foreign patent literature, for example). 24

40 (3) Quality of Patent Examinations on Specified National Applications (i) Quality of Patent Examinations on Specified Applications Evaluated in the Survey (Overall) The percentage of Neutral or better responses regarding the quality of patent examinations on specified national applications evaluated in the Survey was 88.8%. (88.2 % in the last FY). Specifically, the percentage of "Satisfied application exceeded 50% and totaled 53.2% (59.2% in the last FY). Table 20 and Fig. 13 show aggregated results of 5-point scale on the quality of patent examinations of specified national applications to be evaluated in the Survey. Table 20 Evaluation on the quality of patent examinations of specified applications 5-point scale number of responses percentage (reference) last FY 5: Satisfied % 17.8% 4: Somewhat 41.4% % Satisfied 3: Neutral % 29.0% 2: Somewhat 9.8% % Unsatisfied 1: Unsatisfied % 2.0% total % 100% Fig. 13 Evaluation on the quality of patent examinations of specified applications (ii) Quality of Patent Examinations on Specified Applications to be Evaluated in the Survey (by the types of Final Dispositions) The percentage of Satisfied were high in the order of decision to grant a patent > decision of refusal as a result of no response > decision of refusal in spite of response (a written opinion), and the difference therebetween are approximately 15 points, respectively. Meanwhile, the percentage of Unsatisfied were as high as 35.2 % with decision of refusal in spite of response (a written opinion). However, Unsatisfied and Somewhat Unsatisfied for decision of refusal as a result of no response and decision to grant a patent were as low as approximately 10 %, which indicates that user were greatly satisfied with decisions. Table 21 and Fig. 14 show aggregated results of evaluations on the quality of patent examinations on specified national applications to be evaluated in the Survey by the types of final disposition. The term definitions are as follows: Decision of refusal as a result of no response : Decision of refusal that is made without any response such as written opinion or amendment to the notification of reasons for refusal immediately before final decision by the applicant Decision of refusal in spite of response : Decision of refusal that is made though response such as written opinion or amendment to the notification of reasons for refusal immediately before final decision by the applicant has been made 25

41 Table 21 Evaluation on the quality of patent examinations on specified applications (for each types of final disposition) 5-point scale decision to grant a patent Decision of refusal as a result of no response Decision of refusal in spite of response 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total Fig. 14 Evaluation on the quality of patent examinations on specified applications (for each types of final disposition) (iii) Quality of Patent Examinations on Specified Applications (for the Number of Notifications of Reasons for Refusal: "Decision to Grant" Cases) Even for "decision to grant" cases, there was a tendency that the greater the number of times that notifications of reasons for refusal was, the greater the procedural burden on applicants was, and thus the higher the percentage of Unsatisfied becomes. This refers to the number of times that notification of reasons for refusal: none compared to notifications of reasons for refusal: twice were sent. When notifications of reasons for refusal were sent three or more times, the percentage of Unsatisfied responses is lower than that when notifications of reasons for refusal were sent twice, while the percentage of Satisfied is also lower than when notifications of reasons for refusal were sent twice. In other words, the number of times that notifications of reasons for refusal were sent, the greater the evaluation tends to be divided. Table 22 and Fig. 15 show aggregated results of evaluation on the quality of patent examinations in terms of patent-granted cases in final decisions, for each number of times that notifications of reasons for refusal were sent. 26

42 Table 22 Evaluation on the quality of patent examinations on specified applications (patent-granted cases: for each number of times that notifications of reasons for refusal were sent) 5-point scale notification of notification of notification of notification of reasons for reasons for reasons for reasons for refusal: three refusal: none refusal: once refusal: twice or more times total 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total Fig. 15 The percentage of evaluation on the quality of patent examinations on specified applications (patent-granted cases: for each number of times of notifications of reasons for refusal) (iv) Quality of Patent Examinations on Specified Applications ("Decision of Refusal" Cases: for Each Number of Times of Notifications of Reasons for Refusal) Table 23 and Fig. 16 show aggregated results of evaluation on the quality of patent examinations for decision of refusal cases as a result of no response in final decision, for each number of times of notifications of reasons for refusal. Table 24 and Fig. 17 show aggregated results of evaluation on the quality of patent examinations for decision of refusal cases in spite of response in final decision, for each number of times of notifications of reasons for refusal. Table 23 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases as a result of no response: for each number of times of notifications of reasons for refusal) 5-point scale notification of notification of notification of reasons for reasons for reasons for refusal: three or refusal: once refusal: twice more times total 5: Satisfied : Somewhat Satisfied : Neutral

43 2: Somewhat Unsatisfied : Unsatisfied total Fig. 16 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases as a result of no response: for each number of times of notifications of reasons for refusal) Table 24 Evaluation on the quality of patent examinations for specified applications (decision of refusal cases in spite of response: for each number of times of notifications of reasons for refusal) 5-point scale notification of notification of notification of reasons for reasons for reasons for refusal: three or refusal: once refusal: twice more times total 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total

44 Fig. 17 The percentage of evaluation on the quality of patent examinations on specified applications (decision of refusal cases in spite of response: for each number of times of notifications of reasons for refusal) (v) Reason for being Satisfied with the Quality of Patent Examinations on Specified Applications to be Evaluated in the Survey Many of the Satisfied evaluations were given because of appropriate judgment of novelty/inventive step or sufficient description in notifications of reasons for refusal/decision of refusal to enable easy understanding of the details. Table 25 shows aggregated results of the reasons for Satisfied (5 or 4 based on the 5 point scale) with the quality of patent examinations on specified national applications to be evaluated in the Survey. Table 25 applications Reasons for being Satisfied with the quality of patent examinations on specified reason for being Satisfied sufficient description in notifications of reasons for refusal/decision of refusal to help understanding of the details number of responses [*1] appropriate judgment of novelty/inventive step 584 appropriate scope of searches/search results 290 effective communication with examiners (interview, 31 telephone conversations) (e.g. suggestion for amendment) others [*2] 130 *1 959 comments were valid. The number of comments was counted for each reason if more than one reason is included in one comment. *2 Examples of others : decision to grant a patent without any notification of reasons for refusal, quick to initiate examination, sufficient technical understanding by examiners, examination that is courteous and easy to understand, similar judgement to related applications, and clear indication of the claims without reasons for refusal, etc. (vi) Reasons for being Unsatisfied with Quality of Patent Examinations on Specified Applications to be Evaluated in the Survey

45 The greatest number of being Unsatisfied was given because of unsatisfied with judgement of novelty/inventive step, and the second greatest number of the reasons for being Unsatisfied was given because of insufficient explanation for the reason for judgement of lacking novelty/inventive step. Table 26 shows aggregated results of the reasons for being Unsatisfied (1 or 2 in 5-point scale) with the quality of patent examinations on specified national applications to be evaluated in the Survey, for each type of office action. Further analysis was conducted on these Unsatisfied applications (see 3. (2)) Table 26 Reasons for being Unsatisfied with the quality of patent examinations on specified applications number of response [*1](rate of indication [*2]) first second third reason for being Unsatisfied notification notification notification decision decision of of of of to grant a reasons for refusal reasons for refusal reasons for refusal refusal patent difficulties in understanding examiners judgment or intentions in spite of notifications of reasons for 28(1.9%) 3(1%) 0(0%) 11(2.4%) 0(0%) refusal/decision of refusal insufficient explanation for the reason for judgement of lacking novelty/inventive step 66(4.5%) 4(1.3%) 0(0%) 16(3.5%) 0(0%) unsatisfied with judgement of 1(0.1%) 71(4.8%) 20(6.4%) 2(6.5%) 46(10%) novelty/inventive step [*3] too many cited documents presented 16(1.1%) 2(0.6%) 0(0%) 4(0.9%) 0(0%) unsatisfied with the judgement of industrial applicability and as to whether the claimed subject falls under the invention (the main paragraph of Article 29 (1)) insufficient explanation of the reason for the judgement that descriptive requirements are not satisfied (Article 36 (4)-1 and Article 36 (6)) unsatisfied with the judgement of descriptive requirements (Article 36 (4)-1 and Article 36 (6)) unsatisfied with judgement of violation of unity (Article 37) unsatisfied with search scope/search results unsatisfied with communication with examiners (interview, telephone conversation, etc.) 1(0.1%) 0(0%) 0(0%) 1(0.2%) 0(0%) 5(0.3%) 1(0.3%) 0(0%) 2(0.4%) 0(0%) 12(0.8%) 6(1.9%) 1(3.2%) 3(0.7%) 0(0%) 5(0.3%) 1(0.3%) 0(0%) 1(0.2%) 0(0%) 10(0.7%) 3(1%) 0(0%) 2(0.4%) 1(0.1%) [*4] 0(0%) 0(0%) 0(0%) 1(0.2%) 0(0%) others [*5] 13(0.9%) 3(1%) 0(0%) 11(2.4%) 5(0.4%) [*6] *1 202 comments were valid. The number of comments was counted for each reason if more than one reason is included in one comment. *2 The rate of indication represents the value calculated by dividing the number of response for each item by the total number of each OA in 1804 applications to be evaluated in the Survey. The total number of each OA is as follows: the first notifications of reasons for refusal: 1464, the second notification of reasons for refusal: 311, the third or later notification of reasons for refusal: 31, decision of refusal: 458, and decision of granting a patent: 1346, respectively. *3 Comments stating that a decision of granting a patent was issued for the claim corresponding to the claim that had been refused because there are no reasons for refusal found. *4 Comments stating that the range of IPC stated in the scope of search for the application that has been granted a patent is very narrow, and disclosure of specific FI/F term etc. that has been used in the search is required. 30

46 *5 Comments stating that the information offer form should be used in examination after the reliability thereof is ensured, judgement of novelty/inventive step should be made in the first notification of reasons for refusal, the communication of reasons for refusal that should not be regarded as the final reasons for refusal is regarded as the final reasons for refusal, the communication should be notification of reasons for refusal, instead of decision of refusal, a new cited document is added at the time of decision of refusal, etc. *6 The basis for granting a patent are unclear, and it is doubtful that the decision is based on appropriate examination, It takes a long period from the first action to decision of granting a patent, etc. 31

47 (4) Quality of International Searches on Specified PCT Applications (i) Quality of the International Searches and International Preliminary Examinations on Specified Applications to be Evaluated in the Survey (Overall Quality) The percentage of Neutral or better responses regarding the quality of the International Searches and International Preliminary Examinations on specified PCT applications to be evaluated in the Survey was 90.2% (88.7% in the last FY). The percentage of Satisfied totaled 53.0%, which exceeded 50%. (59.3% in the last FY). Table 27 and Fig. 18 show 5-point scale on the quality of International Searches on specified PCT applications which were subject to this Survey. Table 27 Evaluation on the quality of the International Searches and International Preliminary Examinations on specified applications 5-point scale number of responses percentage (reference) last FY 5: Satisfied % 13.8% 4: Somewhat Satisfied % 45.5% 3: Neutral % 29.4% 2: Somewhat Unsatisfied % 10.0% 1: Unsatisfied 9 1.3% 1.3% total % 100% Fig. 18 Evaluation on the quality of International Searches and International Preliminary Examinations on specified applications 32

48 (ii) Reasons for being Satisfied with the Quality of International Searches and International Preliminary Examinations on Specified Applications Many of the evaluation of being Satisfied were given because of sufficient description of ISRs/written opinions appropriate judgment of novelty/inventive step, and appropriate scope of searches/search results. Table 28 shows aggregated results of the reasons for being Satisfied (5 or 4 in 5-point scale) with the quality of International Searches and International Preliminary Examinations on specified PCT applications to be evaluated in the Survey. Table 28 Reasons for being Satisfied with the quality of International Searches and International Preliminary Examinations on specified applications number of reason for being Satisfied responses[*1] sufficient description of ISRs/written opinions to enable 215 easy understanding of the details appropriate judgment of novelty/inventive step 240 appropriate search scope/search results 153 others [*2] 24 *1 358 comments were valid. The number of comments was counted for each reason if more than one reason is included in one comment. *2 Errors in the description were appropriately indicated, Cited parts in the cited documents were appropriately indicated, etc. (iii) Reason for being Unsatisfied with the Quality of International Searches and International Preliminary Examinations on Specified Applications to be Evaluated in the Survey Many of the evaluation of being Unsatisfied were given because of unsatisfied with judgement of novelty/inventive step, insufficient explanation for the reason for judgement of lacking novelty/inventive step, or insufficient indication of the cited part(s) of cited document(s). Table 29 shows aggregated results of the reasons for being Unsatisfied (1 or 2 in 5-point scale) with the quality of International Searches and International Preliminary Examinations on specified PCT applications to be evaluated in the Survey, for each of ISRs, the written opinions of ISA and IPERs. Further analysis was conducted on the applications on which such evaluation was made (see 3. (2)). Table 29 Reasons for being Unsatisfied with the quality of International Searches and International Preliminary Examinations on specified applications number of responses [*1] reasons for being Unsatisfied (rate of indication [*2]) ISRs, written IPERs opinions of ISA insufficient explanation for the reason for judgement of lacking novelty/inventive step 28(4.1%) 1(2.2%) unsatisfied with judgement of novelty/inventive step 35(5.2%) 0(0%) difficulty in identifying the cited part of the cited document due to insufficient indication thereof 17(2.5%) 0(0%) too many cited documents presented 7(1%) 0(0%) unsatisfied with judgement of exclusion from searches 0(0%) 0(0%) unsatisfied with judgement of unity 2(0.3%) 0(0%) insufficient explanation provided for the reason of judgement of deficiency in the description etc. 0(0%) 0(0%) unsatisfied with judgement of deficiency in the description 2(0.3%) 0(0%) 33

49 unsatisfied with search scope/search results 5(0.7%) 0(0%) unsatisfied with IPC that has been assigned 0(0%) 0(0%) others [*3] 6(0.9%) 0(0%) *1 66 comments were valid. The number of comments was counted for each reason if more than one reason is included in one comment. *2 The rate of comments represents the value calculated by dividing the number of response by the total number of ISR/the written opinion of ISA (675 cases) or the total number of IPER (46 cases), respectively. *3 It is not sure whether the judgement is appropriate or not, due to insufficient explanation for the basis of novelty/inventive step, etc. 34

50 3. Detailed Analysis on the Contents of Response (1) Correlation Analysis between Each Evaluation Item and Overall Evaluation (i) Detail of Analysis In an attempt to enhance the evaluation (degree of satisfaction) on the quality of patent examinations, the Survey was conducted so as to identify the areas where priorities need to be placed, in terms of how the level of evaluation for each questionnaire item (description of the notifications of reasons for refusal, practice of inventive step, etc.) has an effect on the level of evaluation in terms of overall quality (overall evaluation). Similar to common, general user satisfaction surveys, such a degree of influence can be analyzed based on the correlation coefficient between the overall evaluation level (5-point scale on the overall quality of patent examinations) and the evaluation on each evaluation item (5-point scale on each questionnaire item). Fig. 19 shows an example of the correlation coefficient between the evaluation on each evaluation item (description of reasons for refusal) and the overall evaluation. The diameters represent the number of responses corresponding to each level of evaluation, and the solid line indicates a regression line. Fig. 19 Correlation between each evaluation item and overall evaluation (example) (ii) Correlation Coefficients between the Level of Evaluation in each Questionnaire Item and Overall Evaluation (National Applications) The key factors significantly affecting users overall levels of satisfaction are description of reasons for refusal, practice of judgement of inventive step judgment without discrepancies among patent examiners/examination divisions and national patent literature searches. The evaluation levels on these items significantly correlate to the overall evaluation level and tend to have a large influence on the overall level of evaluation. Accordingly, these items, including the items that gained higher levels of evaluation, need particular consideration. Both evaluation levels for each item and evaluation items with higher correlation coefficient vary by industry of respondents. This suggests that significant items vary among industries. Table 30 and Fig. 20 show the correlation coefficients between the evaluation on each evaluation item and the overall evaluation on national applications (Sheet A). Table 31 shows the correlation coefficients between the evaluation on each evaluation item and the overall evaluation based on industry. (This is for industries with a larger number of respondents, such as machinery, chemistry, and electronics.) The maximum value of correlation coefficients is set to 1. It is generally considered that a correlation coefficient value of approximately 0.5 or more indicates an adequate (intermediate level of) correlation, though it is not exact. 35

51 Table 30 The correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications) correlation evaluation item coefficients to reference reference the overall (last FY) (FY before last) evaluation description of notifications of reasons for refusal (other than decision of refusal) practice of inventive step judgement without discrepancies among examiners or examination divisions national patent literature searches patent-granted scope examiners level of expertise description of decision of refusal practice of novelty practice of descriptive requirements non-patent literature searches practice of amendment requirements in description communication with examiners practice of unity foreign patent literature searches judgement of Article 29 (1) Fig. 20 Correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications) 36

52 Table 31 Correlation coefficients between the evaluation on each evaluation item and the overall evaluation (national applications by industry) evaluation item description of notifications of reasons for refusal (excluding decision of refusal) correlation coefficient with overall evaluation (machinery) correlation coefficient with overall evaluation(chemistry) correlation coefficient with overall evaluation(electronics) practice of inventive step national patent literature searches description of decision of refusal judgement without discrepancies among examiners or examination divisions examiners level of expertise practice of descriptive requirements practice of novelty granted patent scope communication with examiners practice of amendment requirements in description practice of unity judgement of the main paragraph of Article 29 (1) foreign patent literature searches non-patent literature searches (iii) Correlation between Evaluation on Each Questionnaire Item and Overall Evaluation (National Applications) Regarding the questionnaire items showing significant changes from the average evaluation level or correlation coefficients in the last FY ( scope of patent-granted right, descriptions in decision of refusal non-patent literature searches, practice of amendment requirements of description, practice of judgement of unity of invention, and judgement of the main paragraph of Article 29 (1) of the Patent Act ), all the average evaluation levels of questionnaire items shifted toward Satisfied. Among the items, practice of judgement of unity of invention shows the greatest shift toward Satisfied. Further, because the correlation levels of scope of patent-granted right and non-patent literature searches have been increasing, their importance as issues seems to have increased. Table 32 and Fig. 21 indicate both the average level of satisfaction on each item and the values of the above-mentioned correlation coefficients. In Fig. 21, items with especially low current evaluation levels and high correlation coefficients to overall evaluation (upper-left items with a darker background color nearer the title text box Issues with High Priority Level ) seem to be useful indications as to where priorities should be placed for improving and enhancing examination. Fig. 22 shows the items that clearly had the greatest amount of change in average evaluation levels or correlation coefficients, compared to those in the last FY in Fig

53 Table 32 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) evaluation item evaluation level (average) correlation coefficient with overall evaluation description of notifications of reasons for refusal (excluding decision of refusal) practice of inventive step judgement without discrepancies among examiners or examination divisions national patent literature searches granted patent scope examiners level of expertise description of decision of refusal practice of judgement of novelty practice of judgement of descriptive requirements non-patent literature searches practice of amendment requirements in description communication with examiners practice of unity foreign patent literature searches judgement of the main paragraph of Article 29 (1) Fig. 21 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) 38

54 Fig. 22 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (national applications) (the items which had a great amount of change in average evaluation levels or correlation coefficients compared to those in the last FY can be clearly seen.) (iv) Correlation Coefficient between Evaluation on Each Questionnaire Item and Overall Evaluation (PCT Applications) Regarding PCT applications, the key factors significantly affecting users overall levels of satisfaction are judgment of novelty/inventive step, description of novelty/inventive step accuracy of IPC and national patent literature searches. The evaluation levels on these items significantly correlate to the overall evaluation level and tend to have a greater influence on the overall evaluation level. Accordingly, these items, including the items that gained higher levels of evaluation, need particular consideration. Table 33 and Fig. 23 show the correlation coefficient between evaluation on each questionnaire item and overall evaluation regarding the Survey on PCT applications (Sheet C). The maximum value of correlation coefficients is set to 1. It is generally considered that a correlation coefficient value of approximately 0.5 or more indicates an adequate (intermediate level of) correlation, though it is not exact. Table 33 Correlation coefficient between evaluation on each questionnaire item and overall evaluation (PCT applications) correlation evaluation item coefficient with reference reference overall (last FY) (FY before last) evaluation judgement of novelty/inventive step description on judgement of novelty/inventive step IPC accuracy national patent literature searches judgement without discrepancies among examiners or examination divisions 39

55 judgement without discrepancies between international phase and national phase foreign patent literature searches non-patent literature searches judgement of descriptive deficiency judgement of requirements for unity of invention judgement of exclusion from searches Fig. 23 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications) (v) Correlation between Evaluation on Each Questionnaire Item and Overall Evaluation (PCT Applications) Regarding PCT applications, the following issues should be addressed with a high priority: judgment of novelty/inventive step, which highly correlates to the whole evaluation relatively; judgment without discrepancies among examiners/examination divisions, which highly correlates to the whole evaluation relatively and of which average evaluation level is relatively low; and foreign patent literature searches ; and non-patent literature searches, of which average evaluation levels are relatively low, though their correlation to the whole evaluation level had decreased compared to the Survey in the last FY. In particular, judgment of novelty/inventive step and judgment without discrepancies among patent examiners/examination divisions are becoming more important issues due to the lowered average evaluation levels and the increased correlation coefficient, compared to the Survey in the last FY. Table 34 and Fig. 24 show the average evaluation levels on each questionnaire item and the values of correlation coefficient. In Fig. 24, it seems that the items with a lower current evaluation level 40

56 and a greater correlation efficient (upper-left items near the title text box Issues with High Priority Level ) are useful indications where priorities need to be placed for improving and enhancing examination. Fig. 25 clearly shows the items which had the greatest amount of change in average evaluation level or correlation coefficient from the Survey in the last FY in the Fig. 24. Table 34 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications) evaluation item correlation evaluation coefficient with point overall (average) evaluation judgement of novelty/inventive step description on judgement of novelty/inventive step IPC accuracy national patent literature searches judgement without discrepancies among examiners or examination divisions judgement without discrepancies between international phase and national phase foreign patent literature searches non-patent literature searches judgement of descriptive deficiency judgement of requirements for unity of invention judgement of exclusion from searches

57 Fig. 24 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications) Fig. 25 Correlation coefficients between evaluation on each questionnaire item and overall evaluation (PCT applications). (The items which had the greatest amount of change in the average evaluation levels or correlation coefficients compared to those in the last FY can be clearly seen.) 42