Report on FY2016 Annual User Satisfaction. Survey on Patent Examination Quality. March Japan Patent Office

Transcription

1 Report on FY2016 Annual User Satisfaction Survey on Patent Examination Quality March 2017 Japan Patent Office

2 Abstract I. Introduction Globally reliable, high-quality examination and proper granting of patent rights by the Japan Patent Office (JPO) are keys to supporting domestic enterprises in developing their global business activities, driving innovation, and maintaining sound business practices. In order to grant high-quality patents, it is essential to make efforts to maintain and improve the quality of patent examination 1 based on properly understanding the needs and expectations of users such as applicants and third parties. The JPO released its Quality Policy on Patent Examination (the Quality Policy ), which outlines the fundamental principles of the JPO s quality management policies designed to achieve the utmost examination quality in the world. The Quality Policy states, in one of its six fundamental principles, we meet wide-ranging needs and expectations. Carefully listening to the opinions of users is essential to continuously formulate measures for achieving quality assurance in patent examination. The JPO has conducted its User Satisfaction Survey (the Survey ) annually since FY2012, and has reflected the results of the Survey in its quality management initiatives. Improvements were made on its strategy for the Survey in FY2016, aiming at identifying more specific needs and expectations of users as well as any changes thereof while decreasing the burden on respondents. Since a great number of users took the Survey, invaluable information was derived as a result. The JPO is committed to making continuous efforts to maintain and improve examination quality in view of the results of the Survey. The following is a summary of the Survey results, including the results of an analysis that was conducted, which gives the details and overall findings. 1 In this Report, the term patent examination means examination on inventions including International Search and International Preliminary Examination under the PCT, and establishment of Reports of Utility Model Technical Opinion, as defined in the Quality Policy. Any reference to patent examination in the context of national application means examination on inventions in national applications. i

3 II. Overview of Aggregated Results and Detailed Analysis The following four types of questionnaire sheets were used for the Survey, which are attached to this Report as appendices. The aggregated results and detailed analysis for each questionnaire are provided below. Sheet A: Sheet B: Sheet C: Sheet D: Overall Quality of Patent Examination on National Applications Quality of Patent Examination on Specific National Applications Overall Quality of the International Search and International Preliminary Examination on PCT Applications Quality of the International Search and International Preliminary Examination on Specific PCT Applications ii

4 1. Level of Satisfaction on the Overall Quality; and Results of Survey Analysis i. Overall Quality of Patent Examination on National Applications The positive responses, meaning Satisfied and Somewhat Satisfied with the overall quality of patent examination on national applications during the last one year or so, again exceeded 50% of the total in FY2016. This percentage has increased year by year since the first Survey was conducted in FY2012. Figure 1: applications Level of satisfaction on patent examination quality on national In FY2016, more than half of the respondents were Satisfied or Somewhat Satisfied with description in notifications of reasons for refusal (60%) 1 ; practices related to each item of Article 29(1) (novelty) (52%); domestic patent literature searches (58%); and communication with examiners (such as face-to-face interviews and telephone conversations) (57%). Specifically, the total percentage of Satisfied and Somewhat Satisfied has increased by more than 10% for description in notifications of reasons for refusal and communication with examiners (such as face-to-face interviews and telephone conversations) compared to the first Survey in FY2012. In FY2015, more than 20% of the respondents gave negative responses, i.e., 1 Evaluations on descriptions in decisions of refusal were not included. iii

5 Unsatisfied or Somewhat Unsatisfied, in regard to practices related to Article 29 (2) (inventive step) and Article 36 (4) (i) and Article 36 (6) (descriptive requirements for description and claims). In FY2016, the percentage of negative responses in regard to these evaluation items improved to 15% and 17%, respectively. Although more than 20% of respondents were still Unsatisfied or Somewhat Unsatisfied with consistency of judgements among examiners in FY2016, the y/y change shows some improvement. The y/y change in the level of satisfaction on foreign patent literature search also showed a gradual improvement. ii. Level of Satisfaction on the Overall Quality of the International Search and International Preliminary Examination on PCT Applications Forty-eight percent of the respondents gave positive responses, that is, Satisfied or Somewhat Satisfied, with the overall quality of the International Search and International Preliminary Examination during the last one year or so. The percentage of positive responses has improved since the first Survey was conducted in FY2012. Figure 2: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications In FY2016, four evaluation items on the overall quality of the International iv

6 Search and International Preliminary Examination garnered levels of satisfaction of 45% or more. This means that 45% or more of respondents stated that they were either 5: Satisfied or 4: Somewhat Satisfied. The four items were: IPC accuracy (45%), judgement of novelty/inventive step (45%), description of examiners view on novelty/inventive step (46%) and domestic patent literature searches (60%). On the other hand, three evaluation items received levels of dissatisfaction of 10% or more. This means that 10% or more respondents stated that they were either 1: Unsatisfied or 2: Somewhat Unsatisfied. The three items were foreign patent literature searches (19%), non-patent literature searches (21%), and consistency of judgements between the international phase and the national phase (17%). 1 Although the percentage of positive responses in regard to foreign patent literature searches did not change much y/y, the percentage of negative responses significantly decreased, from 26% to 19% y/y. 1 Fifty-three out of 300 respondents chose Not sure. v

7 iii. Analysis on How the Level of Satisfaction on Each Evaluation Item Affects the Overall Level of Satisfaction Analysis in this section shows how the level of satisfaction on each evaluation item (such as description in notifications of reasons for refusal ) affects the overall level of satisfaction on quality. The degree of influence can be analyzed by using correlation coefficients between the overall level of satisfaction (evaluated by using a 5-point scale on the overall quality of patent examination between 5: Satisfied and 1: Unsatisfied ) and the level of satisfaction on each evaluation item (evaluated by using a 5-point scale on each evaluation item between 5: Satisfied and 1: Unsatisfied ). Figure 3 shows the relation between the average level of satisfaction on each evaluation item and the correlation coefficients in terms of the overall level of satisfaction on national applications (Sheet A). As seen in this figure, the best approach would be to first improve evaluation items which received low levels of satisfaction, in spite of high correlation coefficients with the overall level of satisfaction (i.e., the items seen on the upper left in the figure). The average levels of satisfaction on consistency of judgments, foreign patent literature searches and non-patent literature searches are relatively low among 15 evaluation items. Accordingly, the most appropriate action would be to give a high priority to improving these items. The average levels of satisfaction on judgement of Article 29(2) (inventive step) and description in notifications of reasons for refusal are relatively high. Since these items have a strong correlation with and a great influence on the overall level of satisfaction, the JPO must make continuous efforts to maintain and improve the quality of these items. vi

8 Figure 3: The influence of the average level of satisfaction on each evaluation item on the overall level of satisfaction (national applications) 1 Figure 4 shows evaluation items for which the average levels of satisfaction and correlation coefficients with the overall level of satisfaction significantly changed, compared to those in FY2015. There was no evaluation item that showed an increase in the correlation coefficients with the overall level of satisfaction, while its average level of satisfaction decreased. In other words, there was no evaluation item for which the average level of satisfaction decreased in spite of gaining more attention from users. 1 In this Figure, the plots are colored in accordance with the types of evaluation item: light blue: searches, orange: judgements, green: descriptions in notifications, and deep blue: others. vii

9 Figure 4: Evaluation items which the average level of satisfaction and correlation coefficient significantly changed (national applications) Analysis was also conducted on each evaluation item in terms of the level of satisfaction on the International Search and International Preliminary Examination on PCT applications (such as judgement on novelty/inventive step ) with respect to the correlation coefficients with the overall level of satisfaction, in a similar way to that on patent examination on national applications. Figure 5 shows the relation between the average level of satisfaction on each evaluation item and the correlation coefficients, in terms of the overall quality of the International Search and International Preliminary Examination on PCT applications (Sheet C). Based on this figure, the appropriate response by the JPO would be to give a high priority to the evaluation items which received low levels of satisfaction, in spite of high correlation coefficients with the overall level of satisfaction, i.e., those seen in the upper left part in this figure. viii

10 The correlation coefficient in terms of the overall level of satisfaction of judgement on novelty/inventive step in the International Search and the International Preliminary Examination on PCT applications is relatively high, while the level of satisfaction itself is higher than the average. As a result, the JPO should set a high priority to improve the quality of judgement of novelty/inventive step. In addition, based on the analysis, the JPO needs to improve foreign patent literature searches and non-patent literature searches, which showed levels of satisfaction of 3: Neutral or lower. Figure 5: The influence of the average level of satisfaction on each evaluation item on the overall level of satisfaction (PCT applications) 1 1 In this Figure, the plots are colored in accordance with the types of evaluation item (i.e., light blue: searches, orange: judgement, green: description in notifications, and deep blue: others). ix

11 Figure 6 shows evaluation items for which the average levels of satisfaction and correlation coefficients with the overall level of satisfaction significantly changed, compared to those in FY2015. There was no evaluation item that showed an increase in the correlation coefficient with the overall level of satisfaction, while its average level of satisfaction decreased. In other words, there was no evaluation item for which the average level of satisfaction decreased in spite of gaining more attention from users. Figure 6: Evaluation items which the average level of satisfaction and correlation coefficients with the overall level of satisfaction significantly changed (PCT applications) 1 1 In this Figure, the plots are colored in accordance with the types of evaluation item: light blue: searches, orange: judgement). x

12 2. Evaluation and Analysis on Specific Applications i. Patent Examination Quality on Specific National Applications The percentage of Satisfied or Somewhat Satisfied on patent examination quality on the specific national applications in the Survey has remained around 55% since the first Survey was conducted in FY2012. Thorough and easy-to-understand description in the notifications of reasons for refusal and proper judgement on novelty/inventive step were major reasons for Satisfied or Somewhat Satisfied 1. On the other hand, dissatisfaction with description regarding judgement of lack of novelty/inventive step, or the judgement itself, description regarding judgement of lack of descriptive requirements, or the judgement itself and difficulty in understanding the reasons for or explanation about the examiners judgements in regard to notifications of reasons for refusal/decisions of refusal were major reasons for Unsatisfied or Somewhat Unsatisfied. Specifically, identification of cited documents, description/judgement of identical features/differences and description/judgement of combination/motivation were major reasons for dissatisfaction with judgement of lack of novelty/inventive step 2. In addition, dissatisfaction with description/judgement regarding support requirements and description/judgement regarding clarity requirements were major reasons for dissatisfaction with judgement of lack of descriptive requirements responses were valid. When respondents could select multiple responses, each response was counted. There number of individual responses was 651 for thorough and easy-to-understand description, and 608 for proper judgement on novelty/ inventive step Unsatisfied or Somewhat Unsatisfied responses were given, mainly because of dissatisfaction with identification of cited document(s) (41 responses), description/judgement of identical features/differences (74 responses) and description/ judgement of combination/motivation (51 responses). 28 Unsatisfied or Somewhat Unsatisfied responses were given to description regarding judgement of lack of descriptive requirements, mainly because of description/judgement regarding support requirements (14 responses) and description/judgement regarding clarity requirements (11 responses). One out of 11 responses for description/judgement regarding clarity requirements was referring PBP. xi

13 Figure 7: national applications Level of satisfaction on patent examination quality on specific xii

14 ii. Quality of the International Search and International Preliminary Examination on Specific PCT Applications The percentage of Satisfied or Somewhat Satisfied responses given for International Search and International Preliminary Examination on specific PCT applications in the Survey has remained about 53% since the first Survey was conducted in FY Thorough and easy-to-understand description in ISR and WO/ISA etc. and proper judgement on novelty/inventive step 1 were major reasons for Satisfied or Somewhat Satisfied. On the other hand, dissatisfaction with description regarding judgement of lack of novelty/inventive step, or the judgement itself was the major reason for Unsatisfied or Somewhat Unsatisfied. Specifically, the respondents were Unsatisfied or Somewhat Unsatisfied mainly with description/judgement of identical features/differences, description/judgement of combination/motivation and identification of cited inventions 2. Figure 8: Level of satisfaction on the quality of the International Search and International Preliminary Examination on specific PCT applications responses were valid, with 234 responses given to thorough and easy-to-understand description in notifications of reasons for refusal and 243 responses given to proper judgement of novelty/inventive step. When multiple responses were possible for a single item, the number of responses was counted for each respondents were Unsatisfied or Somewhat Unsatisfied with description on the reasons for judgement of lacking novelty/inventive step. Twenty-eight responses were given to identification of cited documents, 35 responses were given to judgement of identical features/differences, and 34 responses were given to identification of cited inventions. xiii

15 iii. Analysis on the Reasons for Dissatisfaction Analysis was conducted on the responses and opinions on patent examination quality on specific national applications and International Search and International Preliminary Examination on specific PCT applications that were on the Survey. In addition, the analysis includes opinions on specific national applications given by respondents, who could write their opinions in the remarks columns in the Questionnaire Sheets. The chart in Figure 9 below shows y/y change in the responses for novelty/inventive step, descriptive requirements, searches, and consistency in judgement. Figure 9: Breakdown of aspects with which the respondents were Unsatisfied or Somewhat Unsatisfied or found issues Figure 10 shows changes over years in the number of responses for novelty/inventive step, descriptive requirements, searches and consistency of judgements, with which the respondents were Unsatisfied or Somewhat Unsatisfied on national applications and PCT applications. xiv

16 Figure 10 Breakdown of the number of responses by item on national applications (left) and PCT applications (right) 1 1 Since there were so few responses given to descriptive requirements on judgement in PCT applications, it is not shown in the bar graph. xv

17 III. Main Points of the Results of the Survey in FY2016 The percentage of positive responses, namely Satisfied or Somewhat Satisfied, on the overall quality of patent examination on national applications has been increasing year by year, ever since the first Survey was conducted in The overall level of satisfaction exceeded 50% both in FY2015 and FY2016. The level of satisfaction on each evaluation item, such as description in notifications of reasons for refusal, was either improved or at least maintained. Specifically, the percentage of positive responses, Satisfied or Somewhat Satisfied, to the questions asking the level of satisfactions on practices related to Article 29 (2) (inventive step) and Article 36 (4) (i) and Article 36 (6) (descriptive requirements for description and claims) increased in FY2016, and in turn, the percentage of negative responses, Unsatisfied or Somewhat Unsatisfied, fell down below 20% in FY2016. Although more than 20% of respondents were still Unsatisfied or Somewhat Unsatisfied with consistency of judgements among examiners in FY2016, the changes over years show a stable improvement (see II.1.i.). The percentage of positive responses, Satisfied or Somewhat Satisfied, has been increasing year by year since the first Survey, also in the overall quality of the International Search and International Preliminary Examination on PCT Applications. The percentage of positive responses, Satisfied or Somewhat Satisfied, increased to 48% in FY2016 from 43% in the last FY. The level of satisfaction on each evaluation item (such as IPC accuracy ) of the International Search and International Preliminary Examination on PCT applications was improved or at least maintained. Specifically, the percentage of negative responses to foreign patent literature searches decreased from 26% to 19%, while the percentage of positive responses to the aspect does not show a significant change from that in the last FY (see II.1.ii). These results show that the measures and initiatives for examination quality improvement taken by the JPO surely lead to improvement in user satisfaction. In addition to the current measures and initiatives to improve the quality of examination practices, the JPO has to identify issues or problems to be addressed from the comprehensive viewpoints from the analysis of the User Satisfaction Survey in FY2016 on how the level of satisfaction of each evaluation item affects the overall level of satisfaction (see the II.1.iii) as well as the other analyses conducted by the JPO. xvi

18 Furthermore, the JPO should make continuous efforts to solve any issues that have been identified through the Survey in FY2016 in prior art searches (including foreign patent literature searches on PCT applications) and consistency of judgements, while maintaining and improving the quality of judgement of novelty/inventive step and description in notifications of reasons for refusal, for example. The JPO will continue to conduct the Survey and announce to users the improvements on the issues that have been found out through the results of the Survey. Further, the JPO will announce its quality management system and the current status of the system on our website and through other media. Acknowledgment The JPO expresses its gratitude to all the respondents for their generous time in taking the Survey, and appreciates everyone s continuous support. In order to maintain and further enhance the quality of patent examination, the JPO will continue to conduct its survey on examination quality with users, and based on the results, make utmost efforts for continuous enhancement of its patent examination practices and operating procedures. xvii

19 Abstract... i 1. Overview of the Survey... 1 (1) Background... 1 (2) Purpose of the Survey... 1 (3) Method of Gathering Users Evaluation... 2 (4) Questionnaire Sheets... 2 (5) Respondents... 3 (6) Results... 4 (7) Definition of Satisfied and Unsatisfied in this Report... 6 (8) Changes from Last Fiscal Year Aggregated Results... 7 (1) Satisfaction Levels on the Quality of Patent Examination on National Applications... 7 (i) Satisfaction Levels on the Overall Quality of Patent Examination on National Applications... 7 (ii) Satisfaction Levels on Each Evaluation Item on Patent Examination on National Applications... 8 (iii) Comparison to Foreign Offices (iv) Comments in the Free Description Columns (2) Satisfaction Levels on the Quality of on the International Search and International Preliminary Examination on PCT Applications (i) Satisfaction Levels on the Overall Quality of on the International Search and International Preliminary Examination on PCT Applications (ii) Satisfaction Levels on Each Evaluation Item on the International Search and International Preliminary Examination on PCT Applications (iii) Comparison to Foreign Offices (iv) Comments on the free description columns (3) Quality of Patent Examination on Specific National Applications (i) Overall Quality of Patent Examination on the Specific National Applications that were Subject to the Survey (ii) Reasons for the Positive Responses to the Questions asking the Satisfaction Level on Patent Examination Quality on Specific National Applications that were Subject of the Survey (iii) Reasons for the Negative Responses to the Questions asking the Satisfaction Level on Specific National Applications that were Subject of the Survey a

20 (4) Quality of the International Search and International Preliminary Examination on Specific PCT Applications (i) Quality of the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey (ii) Reasons for the Positive Responses to the Questions asking the Satisfaction Level on the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey (iii) Reasons for the Negative Responses to the Questions asking the Satisfaction Level on the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey Detailed Analysis on the Responses (1) Analysis on the Correlation between the Levels of Satisfaction on Each Evaluation Item and the Overall Levels of Satisfaction on Quality (i) Details of the Analysis (ii) Analysis on how the Levels of satisfaction on Each Evaluation Item Affects the Overall Levels of Satisfaction on Examination Quality (National Applications) (iii) Analysis on how the Levels of satisfaction on Each Evaluation Item Affects the Overall Levels of satisfaction on Examination Quality of PCT Applications (2) Analysis on Opinions Given on Specific Applications (i) Details of Analysis (ii) Overall Trends in Opinions (iii) Opinions on Novelty/Inventive Step (iv) Opinions on Requirements for Description, Unity of Invention, and Amendment 46 (v) Opinions on Searches (vi) Opinions on Consistency in Judgement among Applications, Examiners, and the Others (vii) Comparison in Judgements between National Applications and PCT Applications Main Points of the Results of the Survey in FY Measures to Address to the Issues Identified from the Results of the Survey Future of the User Satisfaction Survey Acknowledgment APPENDIX: Questionnaire Sheets b

21 Figure 1: Over-year changes in the satisfaction levels on the overall quality of patent examination on national applications... 7 Figure 2: Satisfaction levels on description in notifications of reasons for refusal Figure 3: Satisfaction levels on communication with examiners such as face-to-face interviews, telephone conversations etc Figure 4: Satisfaction levels on judgement of inventive step Figure 5: Satisfaction levels on judgement of descriptive requirements Figure 6: Satisfaction levels on examiners expertise in technical details Figure 7: Satisfaction levels on patent-granted scope after examination Figure 8: Satisfaction levels on consistency in judgement Figure 9: Satisfaction levels on foreign patent literature search Figure 10: Satisfaction levels on non-patent literature search Figure 11: Satisfaction levels on the overall quality of the International Search and International Preliminary Examination Figure 12: Satisfaction levels on foreign patent literature search in the International Search and International Preliminary Examination Figure 13: Satisfaction levels on non-patent literature search in the International Search and international Preliminary Examination Figure 14: Satisfaction levels on consistency in judgement in the International Search and international Preliminary Examination Figure 15: Satisfaction levels on consistency in judgement in the international phase and national phase Figure 16: Satisfaction levels on patent examination quality on specific national applications 26 Figure 17: Satisfaction levels on the quality of the International Search and International Preliminary Examination on specific PCT applications Figure 18: Correlation between the satisfaction level on each evaluation item and the overall satisfaction level Figure 19: Influence of the average levels of satisfaction on each evaluation item on the overall levels of satisfaction with national applications Figure 20: Evaluation items of which the average levels of satisfaction and correlation coefficient significantly changed in terms of national applications Figure 21: Influence of the average levels of satisfaction on each evaluation item on the overall levels of satisfaction with PCT applications Figure 22: Evaluation items which showed a significant change in the average levels of satisfaction and the correlation coefficients with the overall levels of satisfaction with PCT c

22 applications. 42 Figure 23: Aspects of opinions Figure 24: Year-over-year change in the number of negative opinions on examination quality on the specific national applications and the specific PCT applications for each aspect 45 Figure 25: Breakdown of the number of opinions on novelty/inventive step Figure 26: Breakdown of the opinions on descriptive requirements Figure 27: Breakdown of the number of opinions on searches Figure 28: Breakdown of opinions on consistency in judgement among examiners Figure 29: Breakdown of the number of negative opinions on examination quality on national applications (left) and PCT applications (right) for each aspect d

23 Table 1: Method of selecting applicants / applications and the number of applicants / applications being subject to Sheets A and B (national applications)... 3 Table 2: Method of selecting applicants / applications and the number of applicants / applications being subject to Sheets C and D (PCT applications)... 4 Table 3: Response rate to each Questionnaire Sheet... 5 Table 4: Breakdown by type of industry of respondents for Sheets A and C... 5 Table 5: Satisfaction level on each evaluation item on patent examination... 9 Table 6: The aspects at which the respondents found advantage(s) of the JPO over any foreign patent Offices Table 7: Foreign Offices at which the respondents found advantage(s) over the JPO Table 8: The aspects at which the respondents found advantage(s) at foreign Offices over the JPO 16 Table 9: The number of checks on each satisfaction level on each evaluation item on PCT applications Table 10: The number of aspects at which the respondents found advantage(s) at the JPO over the other foreign Office(s) Table 11: The foreign Offices at which the respondents found advantage(s) over the JPO 24 Table 12: The number of aspects at which the respondents found advantage(s) at foreign Offices over the JPO Table 13: Breakdown of the satisfaction levels on patent examination quality on specific national applications by the types of final disposition in 5-point scale Table 14: Breakdown of the reasons for the positive responses to the questions asking the satisfaction levels on patent examination quality on specific national applications Table 15: Breakdown of the reasons for the positive responses by the types of final disposition on specific national applications Table 16: Reasons for the negative responses to the questions asking the satisfaction level on specific national applications Table 17: Breakdown of the reasons for the positive responses to the questions asking the satisfaction levels on the International Search and International Preliminary Examination on Specific PCT Applications Table 18: Breakdown of the reasons for the negative responses to the questions asking the satisfaction levels on the International Search and International Preliminary Examination on Specific PCT Applications e

24 1. Overview of the Survey (1) Background Globally reliable high-quality examination and proper granting by the Japan Patent Office (JPO) are keys to supporting domestic enterprises in developing their global business activities, driving innovation, and maintaining sound business practices. The JPO released the Quality Policy on Patent Examination (the Quality Policy ) in April 2014, which outlines the fundamental principles of quality management designed to achieve the utmost examination quality in the world. The Quality Policy has six fundamental principles. One of the principles states we meet wide-ranging needs and expectations. The principle further states the JPO understands and respects broad-ranging needs of and expectations for patent examination so that it may contribute to the benefit of Japanese society and the satisfaction of people connected with the patent system. Carefully listening to the opinions of users is essential to continuously formulating measures for achieving quality assurance in patent examination. The JPO has conducted its User Satisfaction Survey (the Survey ) annually since FY2012. This Report gives a summary of the Survey results in FY2016, the results of an analysis, the details and overall findings. (2) Purpose of the Survey In view of the background above, this Survey aims at identifying the level of satisfaction and listening to the opinions of users on patent examination, the International Search and International Preliminary Examination in order to identify the current status of patent examination quality, as a means for improving the quality of patent examination and the International Search and International Preliminary Examination in the future. The Survey falls under the Check part of the PDCA (Plan, Do, Check, Act) Cycle outlined in the Quality Management Manual for Patent Examination, which was created for maintaining and improving the quality of patent examination, since the Survey evaluates patent examination procedures. The Survey results are used to continuously improve patent examination and practices based on the principle we continually improve operations, which is one of the principles of the Quality Policy on Patent Examination. 1

25 (3) Method of Gathering Users Evaluation Questionnaire Sheets (see (4) below) were sent by to the respondents who had been selected based on (5) below, after they had agreed to take the Survey when the JPO contacted them by phone-call or . The respondents were given about a month for response. The respondents were asked to complete the Questionnaire Sheets via or postal service. The Questionnaire Sheets were distributed and the responses were received between July and October, Users could arbitrarily choose to respond either onymously, i.e., name made known to the JPO; or anonymously, i.e., name not made known to the JPO, on Sheets A and C as in (4) below. (4) Questionnaire Sheets The following four types of questionnaire sheets were used for the Survey, which are attached to this Report as APPENDIX. Sheet A: Sheet B: Sheet C: Sheet D: Overall Quality of Patent Examination on National Applications Quality of Patent Examination on Specific National Applications Overall Quality of the International Search and International Preliminary Examination on PCT Applications Quality of the International Search and International Preliminary Examination on Specific PCT Applications Sheets A and B, which had been translated into English when necessary (see APPENDIX), were sent to foreign-resident applicants. 2

26 (5) Respondents Table 1 shows the method of selecting applicants / applications and the number of applicants / applications to be the subject to Sheets A and B (national applications). Table 2 shows the method of selecting applicants / applications and the number of applicants / applications to be the subject to Sheets C and D (PCT applications). It should be noted that the respondents to Sheets A and C have some overlap with each other. The number of respondents was 732 when the overlap was excluded. The foreign-resident applicants being subject to the Survey were increased to 59 applicants (50 applicants last FY). Representatives with a large number of applications were also subject to the Survey. The JPO asked them for the responses from the standpoint of representatives. Table 1: Method of selecting applicants / applications and the number of applicants / applications being subject to Sheets A and B (national applications) Method of selecting applicants / applications being subject to the Survey number of applicants / applications non-individual, domestic-resident applicants who filed 50 or more national applications as leader applicants in FY2014 and also one or more copies 566 of final decision were sent in FY2015 non-individual, foreign-resident applicants who Sheet A filed 120 or more national applications as leader applicant in FY2014 and also one or more copy of final decision was transmitted in FY applicants with a small number of applications and/or employees 2 12 representatives 3 50 Sheet B randomly selected national applications of which leader applicant is respondent being subject to Sheet A, and to which decision to grant a patent or decision of refusal was issued in FY The applicants were arbitrary extracted from the top who filed a large number of applications. 2 The applicants were arbitrary extracted from the enterprises (manufacturers only) who filed 49 or fewer national applications as leader applicant in FY 2014, in view of the previous interview or opinion-exchange with the JPO. 3 The top representatives who filed a large number of applications in FY2014 were selected. 4 The number of subject applications was from a minimum of 2 and maximum of 5, in order to make it easier for respondent to take the Survey. 2-5 Questionnaire Sheets were sent to each of the respondents in accordance with the number of national applications as leader applicant in FY

27 Table 2: Method of selecting applicants / applications and the number of applicants / applications being subject to Sheets C and D (PCT applications) Method of selecting applicants / applications being subject to the Survey number of applicants / applications non-individual, domestic-resident applicants who filed 18 or more PCT applications as leader applicant in FY2015 and also one or more International Search 290 Sheet C Report (ISR) or International Preliminary Examination Report (IPER) was transmitted in FY applicants with a small number of applications and/or employees 1 12 representatives 2 27 Sheet D randomly selected PCT applications of which leader applicants is an applicant being subject to Sheet C, and to which the ISR or IPER was transmitted in FY (6) Results The response rates for Sheets A, B, C, and D slightly increased to about 90 % (about 89% - 93%, respectively) compared to those in last FY (see Table 3). These high rates indicate a keen interest by users in the Survey. Table 4 shows the breakdown by type of industry of respondents on Sheets A and C. Anonymous response to Sheet A accounted for 48% to the total (41% in last FY). Anonymous response to Sheet C accounted for 53% to the total (47% in last FY). 1 The applicants were arbitrary selected from the domestic-resident enterprises (manufacturers only) who filed 17 or fewer PCT applications as leader applicant in FY2015, in view of the previous interview or opinion-exchange with the JPO. 2 The top representatives who filed a large number of applications in FY The number of subject applications was from a minimum of 2 and maximum of 5, in order to make it easier for respondent to take the Survey. 2-5 Questionnaire Sheets were sent to each of the respondents in accordance with the number of PCT applications as leader applicant in FY2015 were extracted. 4

28 Table 3: Response rate to each Questionnaire Sheet number of response response response response response number of Sheets rate in rate in rate in rate in rate in responses distributed FY2016 FY2015 FY2014 FY2013 FY2012 Sheet A % 85.5% 86.8% 91.8% 91.4% Sheet B % 85.1% 87.5% 90.6% 91.7% Sheet C % 87.4% 88.7% 90.6% 91.8% Sheet D % 89.1% 90.4% 90.1% 93.0% Table 4: Breakdown by type of industry of respondents for Sheets A and C attributes Sheet A Sheet C percenta number percenta type of industry 1 number of ge in of ge in respondents relation to responde relation to total nts total metal % 7 2.3% construction 8 1.3% 0 0.0% machinery % % chemistry % % domestic-re food / medicine 7 1.1% 4 1.3% sident electronics % % applicant other industries 8 1.3% 2 0.7% others % 6 2.0% institutes / public research organization % 3 1.0% representatives % % foreign-resident applicants % 0 0.0% anonymous respondents % % 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 10 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. 5

29 (7) Definition of Satisfied and Unsatisfied in this Report In the Questionnaire Sheets (see APPENDIX), 5-point scale was used for representing the satisfaction level for each evaluation item, in which 5 indicates Satisfied, 4 indicates Somewhat Satisfied, 3 indicates Neutral, 2 indicates Somewhat Unsatisfied, and 1 indicates Unsatisfied. In this Report, as long as there is no particular remark stated, the positive response(s) consists of 5: Satisfied and 4: Somewhat Satisfied, and the negative response(s) consists of 1: Unsatisfied and 2: Somewhat Unsatisfied. (8) Changes from Last Fiscal Year stated above. The Survey was changed in terms of the following points, in addition to those According to the Survey in last FY, the top three items that should be the focus of improvement were practices related to inventive step, practices related to descriptive requirements, and prior art searches. Therefore, the questions asking which item should be the focus of improvement were changed into those asking why the respondents were Unsatisfied or Somewhat Unsatisfied with these aspects in detail. The question asking whether judgement without discrepancies had been conducted was changed into that asking consistency in judgement, in the overall quality of patent examination on national applications. The question asking whether judgement without discrepancies in the international phase had been conducted was changed into that asking consistency in judgement in the International Search and International Preliminary Examination, in the questions asking the overall quality of the International Search and International Preliminary Examination on PCT applications. The question asking whether judgement without discrepancies between the international phase and the national phase had been conducted was changed into that asking consistency between the international phase and the national phase, in the questions asking the overall quality of the International Search and International Preliminary Examination on PCT applications. Further, the questions asking the detail of discrepancies in the Questionnaire Sheets on the overall quality were, in turn, provided in the Questionnaire Sheets asking the quality of specific applications. 6

30 2. Aggregated Results (1) Satisfaction Levels on the Quality of Patent Examination on National Applications (i) Satisfaction Levels on the Overall Quality of Patent Examination on National Applications The positive responses 1 exceeded 50% of the total as in the last FY, which has increased year by year since the first Survey in FY2012. Figure 1: Over-year changes in the satisfaction levels on the overall quality of patent examination on national applications 1 In the chart showing the over-year change of the satisfaction levels between 5: Satisfied and 1: Unsatisfied, the percentages of Not sure and the cases without any check are not included. 7

31 (ii) Satisfaction Levels on Each Evaluation Item on Patent Examination on National Applications Table 5 below shows the number of check for each satisfaction level on each evaluation item. Figure 2 through Figure 10 show the over-year changes in the satisfaction levels between 5: Satisfied and 1: Unsatisfied on each evaluation item. More than half of the respondents were Satisfied or Somewhat Satisfied with description in notifications of reasons for refusal (decision of refusal is not included) (60%), and practices related to each item of Article 29(1): novelty (52%), and domestic patent literature search (58%), and communication with examiners such as face-to-face interviews, telephone conversations etc. (57%). Specifically, the total ratio of Satisfied and Somewhat Satisfied has increased by more than 10% in description in notifications of reasons for refusal (decision of refusal is not included) and communication with examiners such as face-to-face interviews, telephone conversations etc. compared to the first Survey in FY2012. Last FY, more than 20% of the respondents gave the negative response Unsatisfied or Somewhat Unsatisfied with each of practices related to Article 29 (2): inventive step and Article 36 (4) (i) and Article 36 (6): descriptive requirements for description and claims. This FY, the negative response ratios to these evaluation items improved to 15% and 17%, respectively. Further, the satisfaction levels on examiners expertise on technical details and patent-granted scope after examination showed a stable improvement. More than 20% of respondents were still Unsatisfied or Somewhat Unsatisfied with consistency in judgement 1 this FY, though the over-year change showed a stable improvement. 1 The wording of the corresponding evaluation item until last FY was judgement without discrepancies. 8

32 Table 5: Satisfaction level on each evaluation item on patent examination evaluation item Satisfied Somewhat Satisfied Neutral Somewhat Unsatisfied Unsatisfied Not Sure response without any check description in notifications of reasons for refusal (except for decisions of refusal) description in decisions of refusal main paragraph of Article 29 (1) (industrial applicability and judgement of whether the subject matter falls under the concept of application of legal wordings invention ) items of Article 29 (1): novelty Article 29 (2): inventive step Article 36 (4) (i) and Article 36 (6): descriptive requirements for description and claims Article 37: unity of invention Article 17-2 (3) through Article 17-2 (6): amendment of description and claims consistency in judgement searches domestic patent literature search foreign patent literature search non-patent literature search examiners expertise in technical details communication with examiners such as face-to-face interviews and telephone conversations etc. patent-granted scope after examination

33 Figure 2: Satisfaction levels on description in notifications of reasons for refusal Figure 3: Satisfaction levels on communication with examiners such as face-to-face interviews, telephone conversations etc. 10

34 Figure 4: Satisfaction levels on judgement of inventive step Figure 5: Satisfaction levels on judgement of descriptive requirements 11

35 Figure 6: Satisfaction levels on examiners expertise in technical details Figure 7: Satisfaction levels on patent-granted scope after examination 12

36 Figure 8: Satisfaction levels on consistency in judgement 1 The respondents who were Satisfied or Somewhat Satisfied with foreign patent literature search and non-patent document search increased by 2% or so respectively, compared to those in the last FY. The over-year change in the satisfaction levels on foreign patent literature search has gradually improved since FY Each of the evaluation item practices related to inventive step (correlation coefficient: 0.5), examiners expertise on technical details (correlation coefficient: 0.46), description in notifications of reasons for refusal (correlation coefficient: 0.43), and patent-granted scope after examination (correlation coefficient: 0.43) showed a continuous improvement. The correlation coefficients of these items with consistency in judgement were great, i.e., these items strongly correlated with the satisfaction levels on consistency in judgement. Accordingly, it seems that the quality improvement in these evaluation items was a factor of improvement in consistency in judgement. 13

37 Figure 9: Satisfaction levels on foreign patent literature search Figure 10: Satisfaction levels on non-patent literature search 14

38 (iii) Comparison to Foreign Offices Table 6 shows the aggregated results of the aspects at which the respondents found advantage(s) of the JPO over any foreign patent Offices 1 on patent examination quality. As seen from Table 6, the respondents highly appreciated examiners understanding of technical details, prior art searches, judgement of novelty / inventive step, and description in notifications of reasons for refusal at the JPO, compared to foreign Offices. Table 6: The aspects at which the respondents found advantage(s) of the JPO over any foreign patent Offices alternatives number of valid number of indication in the check 2 last FY 3 examiners understanding of technical details prior art searches judgement of novelty / inventive step description in notifications of reasons for refusal consistency in judgement time length required for examination communication with examiners such as face-to-face interviews and telephone conversations suggestion of amendments etc. 1 5 others Although the comments in the free description columns were analyzed and sorted into the aspects in Table 5 last FY, the alternatives with checkboxes were prepared this FY for the major aspects based on the Survey in the last FY responses were valid. When multiple checks were in a single response, the number of check was counted for each responses were valid. When multiple checks were in a single response, the number of check was counted for each. 4 Others includes accurate application of laws/regulations and proper understanding of the written opinions by applicants or representatives, for example. 15

39 Table 7 shows the aggregated results of the aspects at which the respondents found advantage(s) of the foreign Offices over the JPO, on patent examination quality on national applications. Table 8 shows the aggregated results of comments by the respondents being sorted into the predetermined aspects through analysis. Table 7: Foreign Offices at which the respondents found advantage(s) over the JPO nothing in particular EPO USPTO SIPO KIPO others 1 number of check Table 8: The aspects at which the respondents found advantage(s) at foreign Offices over the JPO number of check 3 EPO USPTO SIPO KIPO Others 21 prior art searches description in notifications of reasons for refusal judgement of novelty / inventive step consistency in judgement examiners understanding of technical details time length required for examination communication with examiners such as face-to-face interviews and telephone suggestion of amendment judgement on descriptive requirements practices on requirements for unity of invention others Others includes 2 indications for the German Patent and Trade Mark Office (DPMA), 2 indications for Intellectual Property Office of Singapore (IPOS), 1 indication for the UK Intellectual Property Office (UKIPO), and 1 indication for Taiwan Intellectual Property Office (TIPO) responses were valid, including 347 nothing in particular. When multiple checks were in a single response, the number of check was counted for each responses were valid, which do not include nothing in particular. When multiple checks were in a single response, the number of check was counted for each. 4 Others includes innovative applications are more likely to be patent-granted with a broader scope of claims at the EPO and examination results at the USPTO are useful at the other Offices, for example. 16

40 As shown in Table 8, a large number of respondents appreciated prior art searches at the EPO. Specifically, the respondents appreciated the EPO for its proper non-patent literature search and for the cited publications containing those from various Offices without focusing on those from particular Offices. Further, the respondents appreciated the EPO and USPTO as in the last FY, for their thorough description in notifications of reasons for refusal, including thorough description on reasoning and detailed description for dependent claims. (iv) Comments in the Free Description Columns 1 The major opinions / requests in the free description columns in the Questionnaire Sheets related to description in notifications of reasons for refusal, which accounted for 93 indications. The comments related to judgement of inventive step included 37 indications on an insufficient description on / reasoning for judgement of lack of inventive step in view of motivation. 17 comments indicated an insufficient description on dependent claims. 19 comments indicated an insufficient description on comparison between the invention as claimed in the application concerned and the invention as in the main citation. The comments related to consistency in judgement included 17 indications on an insufficient consistency in judgement of descriptive requirements responses were valid. Opinions / requests related to description in notifications of reasons for refusal accounted for one fifth of the total. 17

41 (2) Satisfaction Levels on the Quality of on the International Search and International Preliminary Examination on PCT Applications (i) Satisfaction Levels on the Overall Quality of on the International Search and International Preliminary Examination on PCT Applications The ratio of positive response on the overall quality of the International Search and International Preliminary Examination has increased year by year since the first Survey in FY2012. Figure 11: Satisfaction levels on the overall quality of the International Search and International Preliminary Examination (ii) Satisfaction Levels on Each Evaluation Item on the International Search and International Preliminary Examination on PCT Applications Table 9 shows the satisfaction levels on each evaluation item. Figure 12 through Figure 15 show the over-year change of the satisfaction levels on each evaluation item in Table 9, in which the response Not Sure and the response without any check are not included 1. 1 There was no response without any check to the question asking the satisfaction levels on each evaluation item on the International Search and International Preliminary Examination. 18

42 Table 9: The number of checks on each satisfaction level on each evaluation item on PCT applications 5: 4: 3: 2: 1: evaluation item Satisfied Somewhat Neutral Somewhat Unsatisfied Not Satisfied Unsatisfied Sure IPC accuracy judgement of excluded subject matter from searches judgement of violation of requirements for unity judgement of novelty/inventive step description on judgement of novelty / inventive step judgement of descriptive deficiencies consistency in judgement in the International Search and International Preliminary Examination consistency in judgement between the international phase and the national phase searches national patent literature search foreign patent literature search non-patent literature search

43 As seen in Figure 12, the ratios of Unsatisfied or Somewhat Unsatisfied with foreign patent literature search have decreased on the whole since the first Survey in FY2012. The total ratio of Unsatisfied and Somewhat Unsatisfied reached less than 20% of the total this FY. Meanwhile, the ratio on non-patent literature search this FY did not show a clear change. 1 Figure 12: Satisfaction levels on foreign patent literature search in the International Search and International Preliminary Examination 1 This FY, telephone interviews were conducted with the 36 respondents who gave the responses with their names, checked Unsatisfied, Somewhat Unsatisfied, or Not Sure to the questions asking the satisfaction levels on foreign patent literature search or non-patent literature search, and further gave comments related to foreign patent literature search or non-patent literature search in the free description columns, aiming at accurate identification of the current status of these items. 15 out of the 36 respondents gave a detailed response to the interview. To the question asking the ratio of notifications of reasons for refusal citing foreign patent literature, 9 respondents felt that foreign patent literature citation was still not enough though it had gradually been increasing. A respondent gave the comment that the respondent had not received such a notification of reasons for refusal yet. While 2 respondents gave comments that there were few cases where catalogues or text books had been cited, 2 respondents considered it to be difficult to cite these documents, based on their experience in search by themselves. 20

44 Figure 13: Satisfaction levels on non-patent literature search in the International Search and international Preliminary Examination The five-year change in the satisfaction levels on consistency in judgement in the International Search and International Preliminary Examination 1 and consistency in judgement between the international phase and the national phase 2 showed a certain degree of improvement. 1 The wording of the corresponding evaluation item until last FY was judgement without discrepancies in the international phase. 2 The wording of the corresponding evaluation item until last FY was judgement without discrepancies between the international phase and the national phase. 21

45 Figure 14: Satisfaction levels on consistency in judgement in the International Search and international Preliminary Examination Figure 15: Satisfaction levels on consistency in judgement in the international phase and national phase 22

46 (iii) Comparison to Foreign Offices Table 10 shows the aggregated results of the aspects at which the respondents found advantage(s) at the JPO over the other foreign Office(s) 1. Table 10 shows the fact that the respondents appreciate the JPO over foreign Offices at examiners understanding of technical details, prior art search, judgement of novelty / inventive step, and description in WO/ISA etc. Table 10: The number of aspects at which the respondents found advantage(s) at the JPO over the other foreign Office(s) aspects number of indications 2 number of indications (last FY) 3 examiners understanding of technical details prior art search judgement of novelty / inventive step description in WO/ISA etc time length required for searches 4 10 consistency in judgement 2 12 suggestion for amendment 1 - others Although the comments in the free description columns were analyzed and then sorted into the aspects in Table 7 last FY, the alternatives with checkboxes were prepared this FY for the major aspects based on the Survey in the last FY responses were valid. When multiple indications were in a single response, the number of indications was counted for each responses were valid. When multiple indications were in a single response, the number of indications was counted for each. 4 Others includes the overall high quality and a sufficient number of documents are presented that show technical standards, for example. 23

47 Table 11 shows the aggregated results of the aspects at which the respondents found advantage(s) at foreign Offices over the JPO. Table 12 shows the comments by the respondents being sorted into the predetermined aspects through analysis. Table 11: The foreign Offices at which the respondents found advantage(s) over the JPO nothing in EPO USPTO SIPO KIPO others particular number of check Table 12: The number of aspects at which the respondents found advantage(s) at foreign Offices over the JPO number of checks 3 aspects EPO USPTO SIPO KIPO prior art search judgement of novelty / inventive step description in notifications of reasons for refusal examiners understanding of technical details judgement of descriptive requirements consistency in judgement others responses were valid, including 192 nothing in particular. When multiple indications were in a single response, the number of indications was counted for each. 2 The alternative nothing in particular was prepared. In the cases where checks were coherent (the cases where a respondent checked both EPO and nothing in particular were checked, for example), the response was re-analyzed taking the coherency among the other answers.) 3 68 responses were valid, which do not include nothing in particular. When multiple indications were in a single response, the number of indications was counted for each. 4 Others includes prior art search written in the languages other than Japanese for EPO, a sufficient, larger number of cited documents, for example. 24

48 (iv) Comments on the free description columns 1 The major comments in the free description columns in the Questionnaire Sheets indicated the cases where the negative opinions were made by examiners in the national phase or notifications of reasons for refusal were issued by the JPO or foreign Offices though the applications on which the positive opinion was presented in the international phase. Such indications accounted for 60 cases. 31 cases out of these indicated the national phase at the JPO responses were valid. 25

49 (3) Quality of Patent Examination on Specific National Applications (i) Overall Quality of Patent Examination on the Specific National Applications that were Subject to the Survey The ratio of the positive responses, i.e., Satisfied or Somewhat Satisfied to the overall quality of patent examination on the specific national applications that were subject to the Survey accounted for 57% of the total (55% in the last FY). The over-year change of the positive responses has fluctuated around 55% since the first Survey in FY2012. Figure 16: applications Satisfaction levels on patent examination quality on specific national 26

50 Table 13 shows a breakdown of the satisfaction levels in Table 16 by the types of final disposition. The satisfaction levels were high in the order of decision to grant a patent, decision of refusal without any response, and decision of refusal after written opinions by applicants also in this FY. Table 13: Breakdown of the satisfaction levels on patent examination quality on specific national applications by the types of final disposition in 5-point scale decision of refusal after decision of refusal 5-point scale written opinions by decision to grant a patent without any response applicants 5: Satisfied 7 (3.6%) 25 (12.7%) 295 (21.2%) 4: Somewhat Satisfied 57 (29.2%) 70 (35.5%) 562 (40.3%) 3: Neutral 78 (40.0%) 91 (46.2%) 417 (29.9%) 2: Somewhat Unsatisfied 42 (21.5%) 9 (4.6%) 110 (7.9%) 1: Unsatisfied 11 (5.6%) 2 (1.0%) 10 (0.7%) total

51 (ii) Reasons for the Positive Responses to the Questions asking the Satisfaction Level on Patent Examination Quality on Specific National Applications that were Subject of the Survey Table 14 shows a breakdown of reasons for the positive responses ( 5: Satisfied or 4: Somewhat Satisfied in 5-point scale evaluation) to the questions asking the satisfaction level on patent examination quality on specific national applications that were subject of the Survey. Table 15 shows a breakdown of the reasons for the positive responses by the types of final disposition. Table 14: Breakdown of the reasons for the positive responses to the questions asking the satisfaction levels on patent examination quality on specific national applications reasons for the positive responses number of number of response 1 response in the last FY 2 thorough and easy-to-understand description in notifications of reasons for refusal / decision of refusal proper judgement on novelty /inventive step proper search scope / search results efficient communication with examiners (such as face-to-face interviews, telephone conversations etc.) responses were valid. When multiple checks were in a single response, the number of check was counted for each responses were valid. When multiple checks were in a single response, the number of check was counted for each. 28

52 Table 15: Breakdown of the reasons for the positive responses by the types of final disposition on specific national applications thorough and proper proper search efficient others easy-to-understand judgement on scope / search communication description in novelty results with examiners notifications of /inventive step (such as reasons for refusal / face-to-face decision of refusal interviews, telephone conversations etc.) decision of refusal after written opinions by applicants (63 cases) decision of refusal without any response (95 cases) all decision of refusal (159 cases) decision to grant a patent (857 cases) 29

53 (iii) Reasons for the Negative Responses to the Questions asking the Satisfaction Level on Specific National Applications that were Subject of the Survey Table 16 shows a breakdown of reasons for the negative responses ( 2: Somewhat Unsatisfied or 1: Unsatisfied in 5-point scale evaluation) to the questions asking the satisfaction level on specific national applications that were subject of the Survey. The major reasons for the negative responses were dissatisfaction with description regarding judgement of lack of novelty / inventive step, or the judgement itself in the first notification of reasons for refusal. In the respondents who were Unsatisfied or Somewhat Unsatisfied with patent examination quality on specific national applications, the indication ratio on description regarding judgement of lack of novelty / inventive step, or the judgement itself in the first notification of reasons for refusal, final notification of reasons for refusal or decision of refusal, to the questions asking the reasons for dissatisfaction accounted for 8%. 30

54 Table 16: Reasons for the negative responses to the questions asking the satisfaction level on specific national applications number of response 1 (indication ratio 2 ) reasons for the negative responses first notification of reasons for refusal final notification of reasons for refusal decision of refusal decision to grant a patent description regarding judgement of lack of novelty / inventive step, or the judgement itself 113 (7.1%) 16 (8.3%) 35 (8.9%) description regarding judgement of lack of descriptive requirements (Article 36 (4)(i) and Article 20 (1.2%) 4 (2.0%) 4 (1.0%) 36(6)), or the judgement itself search scope / search results 6 (0.4%) 1 (0.5%) 0 (0%) 3 (0.2%) consistency in judgement 7 (0.4%) 0 (0%) 7 (1.8%) 1 (0.1%) description regarding violation of requirements for unity (Article 37), or the judgement itself 0 (0%) 0 (0%) 0 (0%) difficulty in understanding the examiner s view or the basis for the examiner s judgement, even after reading through the notification of reasons for 21 (1.3%) 5 (2.5%) 8 (2.0%) refusal / decision of refusal excessive number of cited documents 4 (0.2%) 0 (0%) 0 (0%) poor communication with examiners (such as face-to-face interviews, telephone conversations 3 (0.2%) 1 (0.5%) 1 (0.3%) 0 (0%) etc.) others 7 (0.4%) 5 (2.5%) 1 (0.3%) 0 (0%) responses were valid. When multiple checks were in a single response, the number of check was counted for each. 2 The indication ratios were obtained by dividing the number of check to each alternative by the total number of OAs that was included in each step of OA. The total number of each OA is as follows: 1602 first notification of reasons for refusal, 197 final notifications of reasons for refusal, 392 decision of refusal, and 1394 decision to grant a patent. 31

55 (4) Quality of the International Search and International Preliminary Examination on Specific PCT Applications (i) Quality of the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey The ratio of the positive responses, i.e., Satisfied or Somewhat Satisfied to the overall quality of the International Search and International Preliminary Examination on the PCT applications that were subject to the Survey accounted for 53% of the total (49% in the last FY). The over-year change of Satisfied has gradually improved since the first Survey in FY2012, while the ratio of Somewhat Satisfied tends to be decreased. Accordingly, the ratio of the positive responses has fluctuated around 50%. Figure 17: Satisfaction levels on the quality of the International Search and International Preliminary Examination on specific PCT applications 32

56 (ii) Reasons for the Positive Responses to the Questions asking the Satisfaction Level on the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey Table 17 shows a breakdown of reasons for the positive responses ( 5: Satisfied or 4: Somewhat Satisfied in 5-point scale evaluation) to the questions asking the satisfaction level on the quality of the International Search and International Preliminary Examination on specific PCT applications. Table 17: Breakdown of the reasons for the positive responses to the questions asking the satisfaction levels on the International Search and International Preliminary Examination on Specific PCT Applications reasons for positive responses number of number of response 1 response in the last FY 2 through and easy-to-understand description in ISR, WO/ISA, and IPER proper judgement on novelty / inventive step proper search scope /search results responses were valid. When multiple checks were in a single response, the number of check was counted for each responses were valid. When multiple checks were in a single response, the number of check was counted for each. 33

57 (iii) Reasons for the Negative Responses to the Questions asking the Satisfaction Level on the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey Table 18 shows a breakdown of the reasons for negative responses ( 2: Somewhat Unsatisfied or 1: Unsatisfied in 5-point scale evaluation) to the questions asking the satisfaction level on each of the International Search and International Preliminary Examination on Specific PCT Applications that were Subject to the Survey. The respondents who were Unsatisfied or Somewhat Unsatisfied with the International Search and International Preliminary Examination on Specific PCT Applications checked description regarding judgement on lack of novelty / inventive step, or the judgement itself in ISR (Form PCT/ISA/210) or WO/ISA (Form PCT/ISA/237). In the respondents who were Unsatisfied or Somewhat Unsatisfied with the International Search and International Preliminary Examination on Specific PCT Applications, the indication ratio on description regarding judgement on lack of novelty / inventive step, or the judgement itself in the ISR (Form PCT/ISA/210) or WO/ISA (Form PCT/ISA/237) accounted for about 10%. 34

58 Table 18: Breakdown of the reasons for the negative responses to the questions asking the satisfaction levels on the International Search and International Preliminary Examination on Specific PCT Applications reasons for negative responses number of response 1 (indication ratio) 2 ISRs, WO/ISAs IPERs description regarding judgement on lack of novelty / 65 (9.5%) 2(15.4%) inventive step, or the judgement itself search scope / search results 8 (1.2%) 1 (7.7%) consistency in judgement 6 (0.9%) 1 (7.7%) description regarding judgement of lack of descriptive 1 (0.1%) 0 (0%) requirements, or the judgement itself description regarding violation of requirements for unity, 0 (0%) 0 (0%) or the judgement itself insufficient indication of cited part(s) to readily identify 5 (0.7%) 0 (0%) the part(s) in the cited document(s) excessive number of cited documents 2 (0.3%) 1 (7.7%) others 3 2 (0.3%) 0 (0%) 1 95 responses were valid. When multiple checks were in a single response, the number of check was counted for each. 2 The indication ratios were obtained by dividing the number of check to each alternative by the total number of ISRs and WO/ISAs (682 cases), or the number of IPERs (13 cases), respectively. 3 Others includes an insufficient explanation on novelty / inventive step makes it difficult to determine whether the judgement is proper or not, for example. 35

59 3. Detailed Analysis on the Responses (1) Analysis on the Correlation between the Levels of Satisfaction on Each Evaluation Item and the Overall Levels of Satisfaction on Quality (i) Details of the Analysis An analysis was conducted on how the satisfaction level on each evaluation item (such as description in notifications of reasons for refusal and practices related to inventive step ) affected the overall satisfaction level on quality, aiming at identifying the items to be addressed at a high priority level for improving the satisfaction levels on patent examination. The degree of effect can be analyzed through the correlation coefficients between the satisfaction level on the overall quality (on a 5-point scale on the overall quality of patent examination) and the satisfaction level on each item (on a 5-point scale on each evaluation item), as it is common in general customer satisfaction surveys. Figure 18 shows the correlation between the satisfaction level on each evaluation item (description in notifications of reasons for refusal) and the overall satisfaction level, in which the diameter of the circle represents the number of responses and the solid line represents a regression line. Figure 18: the overall satisfaction level Correlation between the satisfaction level on each evaluation item and 36

60 (ii) Analysis on how the Levels of satisfaction on Each Evaluation Item Affects the Overall Levels of Satisfaction on Examination Quality (National Applications) An analysis was conducted on how the average levels of satisfaction on each evaluation item such as description in notifications of reasons for refusal affected the overall levels of satisfaction on examination quality on national applications (Sheet A). The degree as to how they affect the levels of satisfaction can be analyzed by examining the correlation coefficients between the overall levels of satisfaction on patent examination quality with the levels of satisfaction on each evaluation item. (Levels of satisfaction were based on a 5-point scale between 5: Satisfied and 1: Unsatisfied.) Figure 19 shows the correlation between the correlation coefficients and the average levels of satisfaction on each evaluation item on national applications. As seen in this figure, it appears that the JPO should firstly improve the evaluation items of which current levels of satisfaction are relatively low and of which correlation coefficients with the overall levels of satisfaction are relatively high (i.e., the items on the upper left in the figure). The average levels of satisfaction on consistency in judgement, foreign patent literature search, and non-patent literature search were relatively low compared to the other evaluation items. Accordingly, the JPO needs to make improving these evaluation items at a high priority level. The average levels of satisfaction on description in notifications of reasons for refusal (decision of refusal is not included) and judgement of inventive step were relatively high. However, these items strongly correlate with and have a great influence on the overall levels of satisfaction, and thus the JPO should continue to maintain and improve the quality. 37

61 Figure 19: Influence of the average levels of satisfaction on each evaluation item on the overall levels of satisfaction with national applications 1 1 In this Figure, the plots are colored according to the types of evaluation item (i.e., light blue: searches, orange: judgement, green: description in notifications, and deep blue: others). 38

62 Figure 20 shows evaluation items of which the levels of satisfaction significantly changed, compared to the average levels of satisfaction and the correlation coefficients in the last FY. There is no evaluation item of which correlation coefficients improved and at the same time of which average satisfaction level degraded, among the evaluation items of which satisfaction level significantly changed. In other words, there was no evaluation item of which the levels of satisfaction decreased in spite of users paying greater attention to them. Figure 20: Evaluation items of which the average levels of satisfaction and correlation coefficient significantly changed in terms of national applications 1 1 In this Figure, the plots are colored in accordance with the types of evaluation item (i.e., orange: judgement, green: description in notifications, and deep blue: others). 39

63 (iii) Analysis on how the Levels of satisfaction on Each Evaluation Item Affects the Overall Levels of satisfaction on Examination Quality of PCT Applications An analysis was conducted on how the levels of satisfaction on each evaluation item such as IPC accuracy affected the overall levels of satisfaction on examination quality. This was done for Questionnaire Sheet C that asked respondents about their levels of satisfaction with the overall quality of the International Search and International Preliminary Examination on PCT Applications. The degree of the effects can be determined by analyzing the correlation coefficients between the overall levels of satisfaction with International Search and International Preliminary Examination, and with the levels of satisfaction on each evaluation item (both based on a 5-point scale between 5: Satisfied and 1: Unsatisfied). Figure 21 shows the correlation between the correlation coefficients and the average levels of satisfaction on each evaluation item on the International Search and International Preliminary Examination on PCT applications. As seen in this figure, the JPO should first improve the evaluation items of which current levels of satisfaction are relatively low and of which correlation coefficients with the overall levels of satisfaction are relatively high (i.e., the items on the upper left in the figure). The average levels of satisfaction on foreign patent literature search and non-patent literature search are relatively low, compared to the other evaluation items. Accordingly, the JPO should make it a priority to improve these evaluation items. The average levels of satisfaction with consistency in judgement in the international phase, judgement on novelty/inventive step, and description on judgement on novelty/inventive step was relatively high. However, these items strongly correlate with and greatly affect the overall levels of satisfaction, and thus the JPO should continue to maintain and improve the quality. 40

64 Figure 21: Influence of the average levels of satisfaction on each evaluation item on the overall levels of satisfaction with PCT applications 1 Figure 22 shows the evaluation items of which average levels of satisfaction and correlation coefficients with the overall levels of satisfaction significantly changed, compared to those in FY2015. There was no evaluation item that showed an increase in the correlation coefficient with the overall levels of satisfaction and at the same time a decrease in the average levels of satisfaction. In other words, there was no evaluation item of which levels of satisfaction decreased in spite of users paying more attention to them. 1 In this Figure, the plots are colored in accordance with the types of evaluation item (i.e., light blue: searches, orange: judgement, green: description in notifications, and deep blue: others). 41

65 Figure 22: Evaluation items which showed a significant change in the average levels of satisfaction and the correlation coefficients with the overall levels of satisfaction with PCT applications. 1 1 In this Figure, the plots are colored in accordance with the types of evaluation item (i.e., light blue: searches, orange: judgement). 42

66 (2) Analysis on Opinions Given on Specific Applications Respondents gave their opinions on the specific applications that were used in the Survey. They could write their opinions in the spaces provided, about what they were satisfied with in regard to examination procedures or what they thought were problems. Respondents were satisfied with the quality of 16 national applications. Meanwhile, there were not satisfied with patent examination on 104 national applications and 18 PCT applications because of some problems with quality. Analysis was conducted on the details of their negative responses written in Sheets B and D in regard to specific applications. (i) Details of Analysis An analysis was conducted on items pointed out by the respondents on the specific applications. They could write their opinions in the spaces provided and mention problems they found with the quality of patent examination or with examination procedures on the sample applications that were used in the Survey. The respondents wrote their opinions on 386 applications: 104 national applications 1, 18 PCT applications, 183 national applications and 81 PCT applications. The responses were analyzed in detail and specific opinions were sorted into the aspects #01-#24 2 shown in Figure There were about 100 fewer applications that respondents were dissatisfied with compared to the last FY. 2 Until last FY there were 57 aspects on the survey. In the survey in this FY, Sheets B and D were revised, with some aspects combined or deleted. Accordingly, for the sake of comparison, the number of aspects mentioned until the last FY was integrated into the corresponding aspects used in this FY. 43

67 identification regarding novelty/inventive step #01 identification of cited documents #02 judgement of identical features/differences, or the judgment itself #03 description on combination/motivation, or the judgment itself #04 description on dependent claims, or the judgment itself #05 others opinion regarding descriptive requirements #06 description on support requirements (Article 36 (6) -1), or the judgment itself #07 description on enablement requirements (Article 36 (4) -1), or the judgment itself #08 description on clarity requirements (Article 36 (6) -2), or the judgment itself #09 description on the product-by-process (PEB) claims, or the judgment itself #10 others opinion regarding searches #11 foreign patent literature search #12 non-patent literature search #13 domestic patent literature search #14 difference in search results between the JPO and foreign Offices #15 others opinion regarding consistency in judgment #16 difference in description or judgement in the same technical field #17 difference in description or judgement among different technical fields #18 difference in judgement between Examination Departments and Appeals Department #19 difference in judgement between the JPO and foreign Offices #20 difference in judgement between the international phase (at the JPO) and the national phase (at the JPO) #21 difference in judgement between the international phase (at the JPO) and the national phase (at foreign Offices) #22 difference in judgement in the international phase (at the JPO) #23 others Other opinions #24 others Figure 23: Aspects of opinions 44

68 (ii) Overall Trends in Opinions Figure 24 shows the year-over-year change in the number of negative opinions on examination quality on the specific national applications and the specific PCT applications that were used in the Survey. Figure 24: Year-over-year change in the number of negative opinions on examination quality on the specific national applications and the specific PCT applications for each aspect (iii) Opinions on Novelty/Inventive Step Figure 25 shows a breakdown of details of the opinions given on novelty/inventive step shown in Figure 24. The JPO needs to pay continuous attention to identification of cited document(s), judgement of identical features/differences, description on/judgment of combination/motivation, and description for/judgement on each claim in opinions on novelty/inventive step, because the negative opinions on these items might possibly increase. 45

69 Figure 25: Breakdown of the number of opinions on novelty/inventive step (iv) Opinions on Requirements for Description, Unity of Invention, and Amendment Figure 26 shows a breakdown of the opinions on descriptive requirements (Article 36) shown in Figure 24. Figure 26: Breakdown of the opinions on descriptive requirements 46

70 (v) Opinions on Searches 24. Figure 27 shows a breakdown of the number of opinions on searches in Figure Figure 27: Breakdown of the number of opinions on searches (vi) the Others Opinions on Consistency in Judgement among Applications, Examiners, and Figure 28 shows a breakdown of opinions on consistency in judgement among applications, examiners, and others shown in Figure

71 Figure 28: Breakdown of opinions on consistency in judgement among examiners (vii) Applications Comparison in Judgements between National Applications and PCT According to the analysis conducted on the number of opinions for each aspect on national applications and PCT applications, a majority of respondents wrote comments on novelty/inventive step for both national applications and PCT applications. Figure 29: Breakdown of the number of negative opinions on examination quality on national applications (left) and PCT applications (right) for each aspect 48

72 4. Main Points of the Results of the Survey in FY2016 The ratio of the positive responses Satisfied or Somewhat Satisfied to the overall quality of patent examination on national applications has increased year by year since the first Survey in FY2012. In this Survey in FY2016, more than 50% of the respondents gave the positive responses as in the Survey in the last FY. The satisfaction levels on each evaluation item ( description in notifications of reasons for refusal, for example) on patent examination quality on national applications were improved or at least maintained. Specifically, the ratio of positive response Satisfied or Somewhat Satisfied to the questions asking the satisfaction levels on practices related to Article 29 (2): inventive step and Article 36 (4) (i) and Article 36 (6): descriptive requirements for description and claims increased, and in turn, the ratio of the negative response Unsatisfied or Somewhat Unsatisfied fell down below 20% in this FY. Although more than 20% of the respondents were still Unsatisfied or Somewhat Unsatisfied with consistency in judgement this FY, the over-year change shows a stable improvement (see II.1.i.). The ratio of positive response Satisfied or Somewhat Satisfied have been increasing year by year since the first Survey, also in the overall quality of the International Search and International Preliminary Examination on PCT Applications. The ratio of positive response Satisfied or Somewhat Satisfied increased to 48% in this FY from 43% in the last FY. The satisfaction levels on each evaluation item ( IPC accuracy, for example) on the International Search and International Preliminary Examination on PCT applications were generally improved or at least maintained. Specifically, the ratio of the negative responses to foreign patent literature search decreased from 26% to 19%, while the ratio of the positive responses to the aspect did not show a significant change compared to that in the last FY (see II.1.ii). These results show that the measures and initiatives for examination quality improvement taken by the JPO surely lead to improvement in user satisfaction. In addition to the current measures and initiatives for examination quality improvement, the JPO has to identify issues or problems to be addressed from the comprehensive viewpoints based on the analysis results of the User Satisfaction Survey in this FY on how the satisfaction level of each evaluation item affects on the overall 49

73 satisfaction level (see the II.1.iii) as well as the other results of the analyses being conducted by the JPO. Furthermore, the JPO should make continuous efforts for solving any issues that have been identified through the Survey in this FY in prior art searches (including foreign patent literature search on PCT applications) and consistency in judgement, while maintaining and improving the quality of judgement of novelty / inventive step and description in notifications of reasons for refusal, for example. 5. Measures to Address to the Issues Identified from the Results of the Survey The JPO will continue to conduct the Survey and announce to users the improvements on the issues that have been found out through the results of the Survey. Further, the JPO will announce its quality management system and the current status of the system on our website and through other media. 6. Future of the User Satisfaction Survey The Survey has been conducted basically in the same scale since the first Survey in FY2012. There were 732 respondents this year. Approximately 90% of applicants being subject of the Survey gave response to the JPO. This shows an understanding on and a keen interest in the Survey by users. The questions and the Questionnaire Sheets have been revised since FY2012. In FY2016, the JPO carefully selected questions in order to reduce the number of questions and lighten the burden on the respondents, while maintaining the main features of the Questionnaire Sheets for the past 4 fiscal years. Questions asking specific reasons for dissatisfaction were newly added to Sheets B and D on examination quality on specific applications, in order to identify users needs more accurately. The JPO will continue to conduct the Surveys basically in the same scale also in the future fiscal year, while improving strategies for quality evaluation by users, aiming at continuous identification of users needs. The JPO will further develop the time period when the Survey is conducted, operation strategies for the Surveys, a method of selecting applications / applicants being subject of the Surveys, and questions or layouts in the Questionnaire Sheets, for the Surveys in the future. The JPO established the Subcommittee on Examination Quality Management under the Intellectual Property Committee of the Industrial Structure Council, where the system of examination quality management, the current status of examination quality 50

74 management, and the points to be addressed are discussed based on the results of the Survey. Acknowledgment The JPO expresses our gratitude to all the respondents for their generous time in taking the Survey. In order to maintain and improve the quality of patent examination, the JPO continues to conduct the surveys on quality satisfaction on examination by users, and based on the results, improves the quality of patent examination and operating procedures. The JPO appreciates your continuous support. 51

75 APPENDIX: Questionnaire Sheets 52

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77 If you have any other comments on or requests for improving the quality of patent examination, please let us know in the space below. (If you chose 1: Unsatisfied or 2: Somewhat Unsatisfied in above, please comment on your reasons for being unsatisfied or somewhat unsatisfied. We also welcome your opinion / request related to the aspects above.) [2] Comments/Requests about any other aspects of the questionnaire We would appreciate it if you would kindly give us any comments or requests you might have about any other aspects of the questionnaire. For example, this could include your opinions about your own or other users' specific application(s); or your comments could be about this Survey itself, such as the format, forms, wording. Please specify here whether you consent to giving your responses to the examiner(s) in charge as feedback, if you give any comments on any specific application. comments 54

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