Report on FY2015 Annual User Satisfaction Survey on Patent Examination Quality

Transcription

1 Report on FY2015 Annual User Satisfaction Survey on Patent Examination Quality June 2016 Japan Patent Office

2 ABSTRACT I. Introduction Globally reliable high-quality patent examination and proper patent-granting by the JPO (Japan Patent Office) are keys to supporting 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 at sustaining and enhancing 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 the Quality Policy on Patent Examination (hereinafter, the Quality Policy ), which outlines the fundamental principles of quality management designed to achieve the utmost examination quality in the world. The Quality Policy states, in one of the six fundamental principles, we meet wide-ranging needs and expectations. 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, and has reflected the results of the Survey on the quality management measures. The survey strategy was improved in FY2015 in terms of several aspects, in order to identify more specific needs and expectations of users and any changes thereof. Since a great number of users took the Survey, invaluable information was derived as a result. The JPO is committed to making continuous efforts for sustaining/enhancing examination quality in view of the results of the Survey. The following is a summary of the Survey results in FY 2015, including the results of an analysis that was conducted, giving the details and overall findings. 1 In this Report, the term patent examination means examination of inventions (including the International Search and International Preliminary Examination under the PCT) 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 application means examination of invention on national applications. a

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 in the following 1-7. Sheet A: Sheet B: Sheet C: Sheet D: Overall Quality of Patent Examinations on National Applications Quality of Patent Examinations on Specific National Applications Overall Quality in General of the International Searches and the International Preliminary Examinations on PCT Applications Quality of the International Searches and the International Preliminary Examinations on Specified PCT Applications b

4 1. Overall Quality of Patent Examination on National Applications The questionnaire sheets of the Survey were distributed and collected between August and November in The positive responses, that is, Satisfied or Somewhat Satisfied with the overall quality of patent examination on national applications during the last one year comprised more than half of the total (54.2%) in FY2015, which has increased year by year since the first Survey in FY2012. Only 23% of the respondents felt the overall quality of recent patent examination on national applications had improved. However, the positive responses accounted for more than 50% (50.3%) out of the responses stayed the same, which accounted for 67% to the total (See 2 (1) (iii)). This shows that examination quality on the national applications these years has continuously improved. Fig. i-1: Satisfaction level on the overall quality of patent examination on national applications c

5 Fig. i-2: Satisfaction level on the overall quality of patent examination on national applications (changes over the years) Regarding description in notifications of reasons for refusal (except for decisions of refusal) and communication with examiners (such as face-to-face interviews, telephone conversations etc.), the percentage of positive responses has increased and the percentage of negative responses, that is, Unsatisfied or Somewhat Unsatisfied has decreased, year by year. Although the factors for the improvement cannot definitely be determined, various initiatives are believed to have contributed to this, such as the use of standardized forms for drafting notifications of reasons for refusal (since April 1, 2015) and the Guidelines for Interviews (since October 1, 2014). d

6 Fig. i-3: Percentage of each level of satisfaction based on 5-point scale on the description in notifications of reasons for refusal (FY2012-FY2015) e

7 5: Satisfied 4: Somewhat Satisfied 3: Neutral 2: Somewhat Unsatisfied 1: Unsatisfied FY % 35.0% 49.8% 5.3% 0.8% FY % 39.6% 44.5% 6.3% 0.8% FY % 41.9% 42.9% 4.7% 0.6% FY % 38.3% 44.9% 2.5% 0.6% 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Fig. i-4 Percentage of each level of satisfaction based on 5-point scale on communication with examiners (FY2012-FY2015) The percentage of negative responses, that is, Unsatisfied or Somewhat Unsatisfied with judgements without discrepancies among examiners or examination divisions had continuously decreased from 47.9% to 30.8% since the launch of the Survey in FY2012. Fig. i-5: Percentage of each level of satisfaction based on 5-point scale on judgements without discrepancies among examiners or examination divisions (FY2012-FY2015) f

8 Analysis was conducted on the factors for the continuous improvement in the satisfaction level on the overall quality of patent examination on national applications. The rate of increase of the average level of satisfaction from FY2012 to FY2015 was calculated for each item on the questionnaire sheets based on a 5-point scale. The rate of increase in the average level was high (in descending order) for practices regarding unity of invention, practices regarding requirements for amendment of description and claims etc., judgements without discrepancies, description in notifications of reasons for refusal, and practices regarding inventive step. Fig. i-6 below shows the changes over the years between FY2012 and FY2015 in each average level of satisfaction on the top 5 items achieving a high rate of increase, and the average level of satisfaction on the overall quality. Fig. i-6 shows the similarity in the changes over the years in the average level of satisfaction on the overall quality ( ) and on description in notifications of reasons for refusal ( ). average level of satisfaction overall quality description in notifications of reasons for refusal practices regarding inventive step judgements without discrepancies practices regarding requirements for amendment of descriptions and claims etc. practices regarding unity of invention FY2012 FY2013 FY2014 FY2015 Fig. i-6: Changes over the years in the average level of satisfaction (FY2012-FY2015) g

9 This fiscal year, the following three items were added to the questionnaire sheets regarding the overall quality of patent examination on national applications. (i) (ii) (iii) The question that asks which item should be the focus of improvement The question that asks how the perception on descriptions in notifications of reasons for refusal had changed during the last one year or so The question that asks how the perception on foreign patent literature searches had changed during the last one year or so (i) The top 5 items 1 that the respondents chose to the question that asks which item should be the focus of improvement were practices regarding inventive step (130 cases), foreign patent literature searches (112 cases), judgements without discrepancies (109 cases), practices regarding descriptive requirements for description and claims (100 cases), and non-patent literature searches (90 cases). Meanwhile, the top 5 items with a large number of negative responses, that is, Unsatisfied or Somewhat Unsatisfied in FY2015 were judgements without discrepancies (30.8%), practices regarding descriptive requirements for description and claims (22.2%), practices regarding inventive step (20.7%), foreign patent literature searches (18.2%), and non-patent literature searches (17.4%). (ii) To the question that asks how the perception on the description in notifications of reasons for refusal had changed, the percentage of improved was 25%, stayed the same was 66%. 48% out of the respondents who chose stayed the same answered Satisfied or Somewhat Satisfied in regard to description in notifications of reasons for refusal. 135 out of 585 responses to this question involved positive comments indicating that description in notifications of reasons for refusal became more detailed and thorough or became easy-to-understand, for example. Also in view of the changes over the years as in Fig. i-3 and the increased average level of satisfaction on description in notifications of reasons for refusal as in Fig. i-6, it seems that the satisfaction on description in notifications of reasons for refusal has been improving. (iii) To the question that asks how the perception on foreign patent literature searches had changed, the answer stayed the same or not sure accounted for 90%. 6 out of 474 stayed the same responses involved positive comments indicating that the cases in which foreign patent literature was cited in notifications of reasons for items was chosen in total to the question that asks which item should be focused for enhancement regarding patent examination on national applications (multiple choices allowed). h

10 refusal had increased, for example. Therefore, there is a possibility that some of the respondents who chose stayed the same actually indicated their satisfaction. However, 8 responses indicated that there seems no substantial change such as not sure because there were too few cases to determine whether the cases in which foreign patent literature was cited had increased, or there seems no substantial change in foreign patent literature searches during the specified last one year or so. This may suggest that the JPO has not communicated enough to users that it has continued to conduct foreign patent literature searches. i

11 2. Overall Quality of the International Search and International Preliminary Examination on PCT applications Regarding the overall quality of the International Search and International Preliminary Examination during the last one year or so (the questionnaire sheets were distributed and collected between August and November in 2015), Neutral or better level of satisfaction 1 accounted for 96.3%, and the positive responses, that is, Satisfied or Somewhat Satisfied, accounted for 42.6%. The percentage of positive responses has gradually increased while the percentage of negative responses, that is, Unsatisfied or Somewhat Unsatisfied had gradually decreased, since the Survey was started in FY2012. Fig. ii-1: Satisfaction level on the overall quality of the International Search and International Preliminary Examination on PCT applications 1 The expression Neutral or better level of satisfaction means Neutral, Somewhat Satisfied or Satisfied. j

12 5: Satisfied 4: Somewhat Satisfied 3: Neutral 2: Somewhat Unsatisfied 1: Unsatisfied FY % 34.6% 59.8% 4.9% 0% FY % 38.6% 52.9% 5.0% 0.4% FY % 39.7% 55.9% 3.4% 0% FY % 40.4% 53.7% 3.7% 0% 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Fig. ii-2: Satisfaction level on the overall quality of the International Search and International Preliminary Examination on PCT applications k

13 Analysis was conducted on the factors for slower improvement in the overall quality of the International Search and International Preliminary Examination on PCT applications than that in the above-mentioned overall quality of patent examination on national applications. The rate of increase in the average level of satisfaction was calculated for each item in the questionnaire sheets between FY2012 and FY2015. The top 5 items having a high rate of increase in the average level of satisfaction were (in descending order) judgements without discrepancies between the international phase and the national phase at the JPO, foreign patent literature searches, judgements of violation of unity of invention, non-patent literature searches, and IPC accuracy. Fig. ii-3 shows the top 5 items with a high rate of increase in the average level of satisfaction and the changes in the average level of satisfaction on the overall quality over the years between 2012 and average level of satisfaction overall quality discrepancies between the international phase and the national phase foreign patent literature searches judgements of violation of unity of invention non-patent literature searches IPC accuracy FY2012 FY2013 FY2014 FY2015 Fig. ii-3: Changes in the average level of satisfaction over the years of the top 5 items with a high increase ratio (FY2012-FY2015) l

14 Fig. ii-4 shows the bottom 3 items with a low percentage of increase in terms of average level of satisfaction between FY2012 and FY2015. It shows that the rate of increase in the average level of satisfaction on domestic patent literature searches, judgements of exclusion from searches, and discrepancies in the international phase were relatively low compared to that of the other items. average level of satisfaction overall quality domestic patent literature searches judgements of exclusion from searches discrepancies in the international phase FY2012 FY2013 FY2014 FY2015 Fig. ii-4: Changes in the average level of satisfaction over the years of the bottom 3 items with a low increase ratio (FY2012-FY2015) m

15 In this fiscal year, the following two items were added to the questionnaire regarding the overall quality of the International Search and International Preliminary Examination on PCT applications. (i) The question that asks which item should be the focus of improvement (ii) The question that asks how the perception on foreign patent literature searches had changed during the last one year or so (i) To the question that asks which item should be focus of improvement regarding PCT application 1, 79 respondents chose foreign patent literature searches, though each of the other items were chosen by 40 or fewer respondents. 59 respondents indicated insufficient search out of the 79 respondents who chose foreign patent literature searches. Furthermore, 29 respondents out of the 59 respondents indicated that one or more additional document was newly cited at the other office(s). In view of enhancing reliability of the International Search and predictability in the national phase at the other office(s), 20 respondents chose judgements of novelty/inventive step, 13 respondents chose description of examiner s view on novelty/inventive step, 20 respondents chose judgements without discrepancies in the international phase, 25 respondents chose judgements without discrepancies between the international phase and national phase. (ii) To the question that asks how the perception on foreign patent literature searches had changed in the International Search and International Preliminary Examination on PCT applications, stayed the same or not sure accounted for 93% to the total. Also to the question that asks how the perception on foreign patent literature searches had changed on national applications, stayed the same and not sure accounted for 90% of the total. 55 responses (23 responses for national applications and 32 responses for PCT applications) indicated that there were the cases where one or more additional document was newly cited at the other office(s) even after patentability had been confirmed at the JPO or in the International Search and International Preliminary Examination by the JPO. Therefore, foreign patent literature searches is considered to be one of the items that should continuously be focused for enhancement items were chosen in total to the question that asks which "item should be focused for enhancement regarding patent examination on national applications (multiple choices allowed). n

16 3. Quality of Patent Examination on Specific National Applications In this fiscal year, neutral or better level of satisfaction on the quality of patent examination on specific national applications that were subject to the Survey 1 accounted for 88.2%; more than half of which, specifically, 54.9% of which consisted of the positive responses Satisfied or Somewhat Satisfied. The satisfaction level on patent examination quality on specific national applications has been fluctuating since FY2013, which requires continuous, careful observation. 966 positive responses included specific reasons for the responses such as detailed and easy-to-understand description in notifications of reasons for refusal (643 cases) and proper judgements of novelty/inventive step (553 cases). 2 Meanwhile, 208 negative responses Unsatisfied or Somewhat Unsatisfied included specific reasons for the response such as unsatisfied with judgements of novelty/inventive step (128 cases) and insufficient description on the reasons for judgements of lacking novelty/inventive step (112 cases). 3 Fig. iii-1: Satisfaction level on the quality of patent examination on specific national applications 1 The number of applications to be subject to the Survey for each respondent on the overall quality of patent examination on national applications was determined in accordance with the number of national applications that had been filed by the applicants as leader applicant. 2 Multiple choices allowed indications were given in total. 3 Multiple choices allowed. 353 indications were given in total. o

17 Fig. iii-2: Satisfaction level on the quality of patent examination on specific national applications p

18 4. Quality of the International Search and International Preliminary Examination on Specific PCT Applications Regarding the quality of International Search and International Preliminary Examination on specific PCT applications that were subject to the Survey 1, neutral or better level of satisfaction accounted for 89.1%. Further, the percentage of the positive response Satisfied or Somewhat Satisfied accounts for approximately half of the whole, specifically, 49.0%. The level of satisfaction on the quality of patent examination on specific PCT applications has not significantly been improved since 2013, which requires continuous, careful observation. 301 positive responses included specific reasons for the responses such as detailed and easy-to-understand description in the International Search Reports and the Written Opinions of the International Searching Authority, (207 cases) proper judgements of novelty/inventive step (183 cases) and proper search scope (133 cases). 2 Meanwhile, 67 negative responses Unsatisfied or Somewhat Unsatisfied included specific reasons for the responses such as unsatisfied with judgements of novelty/inventive step (54 cases) and insufficient description for the reasons for judgements of lacking novelty/inventive step (29 cases). 3 Fig. iv-1: Satisfaction level on the quality of the International Search and International Preliminary Examination on specific PCT applications 1 The number of applications to be subject to the Survey for each respondent on the overall quality of the International Search and International Preliminary Examination on PCT applications was determined in accordance with the number of PCT applications that had been filed by the applicants as leader applicant. 2 Multiple choices allowed. 547 indications were given in total. 3 Multiple choices allowed. 115 indications were given in total. q

19 Fig. iv-2: Satisfaction level on the quality of the International Search and International Preliminary Examination on specific PCT applications r

20 5. Analysis on how the level of satisfaction on each item affects the overall level of satisfaction Based on the results of the Survey, analysis was conducted on how the quality satisfaction on each item affects (or correlates with) the overall level of satisfaction. The following graph (Fig. v-1) shows each questionnaire item regarding patent examination on national applications, in which the horizontal axis corresponds to the average level of satisfaction for each item and the vertical axis corresponds to correlation coefficients with the overall level of satisfaction. In this graph, the left side represents a lower level of satisfaction and the upper side has a greater effect on the overall level of satisfaction. As seen in the area items with a high priority level at the upper right of the graph of Fig. v-1, users had a medium or high level of satisfaction to practices regarding inventive step, level of examiners expertise, description in notifications of reasons for refusal, and domestic patent literature searches. Their correlation coefficients were 0.5 or larger and thus greatly effects on the overall level of satisfaction. If the level of satisfaction cannot be sustained and is then lowered, the overall level of satisfaction might significantly be degraded. Therefore, level of satisfaction on these items should continuously be improved and enhanced. Meanwhile, as seen in the area items to be improved at the lower left of the graph, users gave a low level of satisfaction to judgements without discrepancies, foreign patent literature searches, non-patent literature searches, and practices regarding descriptive requirements. The level of satisfaction on these items resulted in approximately 3 or less, which means worse than neutral. Although their effect on the overall level of satisfaction was relatively small, the low level of satisfaction itself requires improvement. Among these items to be improved and items with a high priority level, practices regarding inventive step, judgements without discrepancies, foreign patent literature searches, non-patent literature searches, and practices regarding descriptive requirements correspond to the top 5 items that should be focused according to the responses form users. s

21 Unsatisfied Satisfied Important correlation coefficients with the overall level of satisfaction items to be improved judgements without discrepancies practices regarding descriptive requirements foreign patent literature searches non-patent literature searches items with a high priority level level of examiners expertise practices regarding inventive step patent-granted scope description in decision of refusal description in notifications of reasons for refusal national patent literature searches practices regarding novelty judgements of descriptive requirements for description and claims communication with examiners practices regarding unity of invention judgements regarding the main paragraph of Article 29 (1) average level of satisfaction on each item Fig. v-1: Correlation coefficients between the overall level of satisfaction and the current level of satisfaction on each item (national application) Fig. v-2 shows the changes over the years between 2012 and 2015 in terms of the correlation coefficients between the average level of satisfaction on the overall and the average level of satisfaction on each of the top 5 items that should be focused on according to the responses from users. The year-over-year change in non-patent literature searches is not shown because a similar change to that of foreign patent literature searches was seen. t

22 Unsatisfied Satisfied Important correlation coefficients with the overall level of satisfaction practices regarding inventive step foreign patent literature searches judgements without discrepancies practices regarding descriptive requirements description in notifications of reasons for refusal average level of satisfaction on each item Fig. v-2: Correlation coefficients between the overall level of satisfaction and the current level of satisfaction on each item (national application) As shown in the analysis results in Fig. v-2, practices regarding inventive step and description in notifications for reasons for refusal improved to a certain extent, while there was no clear change in practices regarding descriptive requirements, foreign patent literature searches and judgements without discrepancies. Although the importance of foreign patent literature searches had gradually increased between FY2013 and FY2015, it was relatively lower than that of the other items. The analysis was conducted on the correlation coefficients between the average level of satisfaction on the overall and the average level of satisfaction on each item regarding the quality of the International Search and International Preliminary Examination on PCT applications, in the same way with that on patent examination on national applications. Regarding the International Search and International Preliminary Examination on PCT applications (Fig. v-3), each level of satisfaction on judgements of novelty/inventive step and description of examiner s view on novelty/inventive step were approximately the average level among all the items. However, their correlation coefficients with the average level of satisfaction on the overall were 0.5 or more, which is a relatively high level. Therefore, these are considered to be the items that should continuously be enhanced as high priorities. Meanwhile, the average level of satisfaction on judgements without discrepancies among patent examiners or u

23 examination divisions, judgements without discrepancies between the international phase and the national phase at the JPO, foreign patent literature searches, and non-patent literature searches were 3 or less, which means worse than neutral among all the items. Therefore, these are also considered to be the items that need to be improved. Among these items, judgements without discrepancies among patent examiners or examination divisions, judgements without discrepancies between the international phase and the national phase at the JPO, foreign patent literature searches, non-patent literature searches, judgements of novelty/inventive step, and description of examiner s view on novelty/inventive step correspond to the top 6 items that should be focused according to the responses form users. v

24 Unsatisfied Satisfied Important items with a high priority level correlation coefficients with the overall level of satisfaction items to be improved judgements without discrepancies between the international phase and the national phase foreign patent literature searches non-patent literature searches judgements of novelty/inventive step description of examiner s view on novelty/inventive step IPC accuracy national patent literature searches judgements of exclusion from searches judgements of descriptive deficiencies judgements of violation of unity judgements without discrepancies among patent examiners or examination divisions average level of satisfaction on each item Fig. v-3: Correlation coefficients between the overall level of satisfaction and the current level of satisfaction on each item (PCT application) Fig. v-4 shows the changes over the years between 2012 and 2015 of the correlation coefficients between the average level of satisfaction on the overall and the level of satisfaction on each of the top 5 items that should be focused according to the responses from users. w

25 Unsatisfied Satisfied Important correlation coefficients with the overall level of satisfaction judgements of novelty/inventive step description of examiner s view on novelty/inventive step judgements without discrepancies between the international phase and the national phase foreign patent literature searches discrepancies in the international phase average level of satisfaction on each item Fig. v-4: Correlation coefficients between the overall level of satisfaction and the current level of satisfaction on each item (PCT application) The average level of satisfaction on description of examiner s view on novelty/inventive step has improved, though it is not such clear as that on national applications. Meanwhile, the average level of satisfaction on discrepancies in the international phase has degraded. There was no remarkable change in judgements of novelty/inventive step, judgements without discrepancies between the international phase and the national phase at the JPO, and foreign patent literature searches. x

26 6. Detailed Analysis on Specific Applications Regarding the quality of patent examination on specific national applications and the quality of the International Search and International Preliminary Examination on specific PCT applications, analysis was conducted on the opinions/indications on the specific applications that were subject to the Survey and the opinions/indications in areas provided to freely write comments about the specific applications. Fig. vi-1 below shows the changes over the years in the number of applications to which users indicated dissatisfaction or some problem in the quality of specific national applications or specific PCT applications. In the following figures, the number of applications to which users indicated dissatisfaction or some problem in quality is normalized in accordance with the total number of responses in each fiscal year. There is a tendency that the number of applications to which users indicated dissatisfaction or some problem in quality has decreased. Specifically, the number of applications to which users indicated dissatisfaction or some problem in novelty/inventive step has decreased, while there was no remarkable decrease in the number of applications to which users indicated dissatisfaction or some problem in descriptive requirements and the other aspects. Fig. vi-1: Number of applications to which users indicated dissatisfaction or some problem in quality and breakdown of aspects y

27 The following Fig. vi-2 shows the breakdown of indications on novelty/inventive step. identification of claimed invention identification of cited invention indication of cited part(s) of cited document(s) identification of well-known (commonly used) art presentation of well-known (commonly used) art configuring the basis for judgement judgments of identical features/differences description of identical features/differences judgments of combination/motivation description of combination/motivation judgments of matters of workshop modification description of engineering expedient judgment of effects explanation for each claim problems in description or formality other than the items above others number of indication / total number of response Fig. vi-2: Breakdown of indications on novelty/inventive step There is a tendency that the number of indications regarding (insufficient indication of) cited part(s) of cited document(s), judgements of identical features/differences, description of identical features/differences, and explanation for each claim has decreased year by year. Meanwhile, there was no steady decline in identification of cited invention, description of combination/motivation, description of engineering expedient, judgment of effects. z

28 The following Fig. vi-3 shows the breakdown of indications on descriptive requirements (Article 36), unity (Article 37), and requirements for amendments. There was no remarkable decline in the number of indications on descriptive requirements. Meanwhile, changes in the number of indications on judgements of support requirements (Article 36 (6)-1) require continuous, careful observation, because there might be increase tendency. judgements of support requirements (Article 36 (6)-1) judgements of clarity requirements (Article 36 (6)-2) judgements of enablement requirements (Article 36 (4)-1) description as in Article 36 (descriptive requirements) others judgements of unity (Article 37) description as in Article 37 (unity of invention) others judgements of amendment that changes a special technical feature of an invention judgements of new matter judgements of requirements for amendment after final notification of reasons for refusal explanation / description regarding violation of requirements for amendment others number of indication / total number of response Fig. vi-3: Breakdown of indications on descriptive requirements and other aspects aa

29 Changes in the number of indications in which users indicated dissatisfaction or some problem in quality were analyzed for national applications and PCT applications, respectively. Fig. vi-4 shows the tendencies of indications for national applications and PCT applications, respectively. In this Figure, the number of indications is normalized in accordance with the total number of responses in each FY between FY2012 and FY2015 for national applications and PCT applications, respectively. Changes in the tendencies on national applications and each questionnaire item were similar to those in the total tendencies of indications. Meanwhile, the number of indications on PCT applications has been fluctuating and there was no steady decline. Fig. vi-4: Changes in the number of indications for national applications and PCT applications over the years According to the breakdown of contents of indications on PCT applications, the tendencies of indications on the items regarding novelty/inventive step shows a different manner from that of the total tendencies of indications and the tendencies of indications on national applications. bb

30 Fig. vi-5 shows the breakdown of indications regarding novelty/inventive step. There was not a clear improvement in the over-year changes in identification of claimed invention, identification of cited invention, and description of identical features/differences regarding PCT applications, compared to the degree of overall improvement and the degree of improvement on national applications. national application PCT application identification identification of claimed of invention claimed invention identification identification of cited invention of cited invention indication of cited part(s) of cited document(s) identification of well-known (commonly used) art presentation presentation of well-known of well-known (commonly used) (commonly art configuring used) art the configuring basis for judgement judgments the of basis identical for judgement features/differences description of identical features/differences judgments of combination/motivation description of combination/motivation judgments of matters of workshop modification description of matters of workshop modification judgments of operations/effects explanation for each claim Fig. vi-5: Over-year changes in the number of indication regarding novelty/inventive step (PCT application) cc

31 7. About this Survey Positive opinions on the Survey were given by users such as the Survey is a good effort and hope it will be continued (10 comments), and hope the results to be reflected on the future initiatives (1 comment). Some comments suggested grouping the respondents by several technical fields, for example, and conducting the Survey group by group once every several years. Detailed suggestions for improving the Survey were also given regarding sending/collection procedures of the questionnaire sheets and the schedule of the Survey (17 comments) such as making response submission available on the web (4 comments). Regarding the specific applications for Sheet B, some comments indicated that it is difficult to evaluate granted applications (4 comments). dd

32 III. Main Points of the Results of the Survey in FY2015 In the Survey in FY 2015, as many as 54.2% of the respondents gave positive responses, that is, Satisfied or Somewhat Satisfied with the overall quality of patent examination. In FY2012, the percentage of the positive responses was 31.6% and gradually increased year by year. A similar change was seen in the satisfaction level on description in notifications of reasons for refusal. The percentage of positive response on the aspect had continuously increased to 55.2% in FY2015 from 35.8% in FY2012. The overall level of satisfaction on quality of the International Search and International Preliminary Examination on PCT applications has gradually improved. However, the change was not as steady as that on national applications in the items regarding prior art searches (see II.2, Fig. ii-3, Fig. ii-4). In view of the above, responses regarding the items that should be focused for enhancement and the comments in free description columns; the main points that should be focused for quality sustainment/enhancement were investigated as follows. (1) Sustainment/Enhancement of Quality on Description in Notifications of Reasons for Refusal, the International Search Reports (ISR), and the Written Opinions of the International Searching Authority (WO/ISA) As described above, the level of satisfaction on description in notifications of reasons for refusal has improved year by year. 135 out of 585 responses to this question that asks how the perception on description in notifications of reasons for refusal had changed involved the positive opinion such as description in notifications of reasons for refusal became more detailed and thorough/easy-to-understand. Further, the satisfaction level on description of examiner s view on novelty/inventive step in WO/ISA on PCT applications also has improved. Such description in notifications of reasons for refusal, ISR, and WO/ISA highly correlates with the overall level of satisfaction on quality compared to the other evaluation items. Therefore, it is considered that users focus on these items (see II.5, Fig. v-1, and Fig. v-3). However, there were still the responses indicating insufficient description of judgements process in examination such as identical features/differences, cited part(s) of cited document(s), and combination/motivation. Therefore, continuous efforts for sustainment/enhancement of quality are required on description in notifications of reasons for refusal, ISR, and WO/ISA such as more detailed and thorough description of judgements process in examination, which leads to ee

33 easy-to-understand drafts for users. (2) Improvement in Prior Art Search Quality and Enhancement in Prior Art Search Skill The examination results of national applications and the contents of the International Search and International Preliminary Examination are used as a basis for judgements of whether users file the applications to a foreign office/foreign offices, or whether users have the applications enter into the national phase. In order that the examination results of national applications and the contents of the International Search and International Preliminary Examination are more frequently and effectively used in examination at foreign offices, enhancement of their reliability is required (see II. 2 (i)). Therefore, efforts for sustainment/enhancement in search skill for domestic patent literature as well as foreign patent literature and non-patent literature are needed, as seen from the fact that a number of respondents indicated that expertise for foreign patent literature/non-patent literature searches should be focused for enhancement. Further, steady development of infrastructure for prior art searches is required. The International Search and International Preliminary Examination on PCT applications are followed by examination in the national phase in other offices where laws, regulations, and practices of which may different from those of the Japan Patent Office. From this point of view, searches and analyses should be conducted aiming at identification of more specific users needs, in order to facilitate efficient acquisition of rights for users at any foreign office. (3) Proper Practices regarding Descriptive Requirements for Description/Claims and Proper Practices regarding Novelty/Inventive Step The Survey in FY2015 was conducted between August and November in It was immediately after the provisional practice on product-by-process (PBP) claims on national patent applications was started. Accordingly, there were 50 opinions/requests 1, including requests for proper practices on PBP claims, which required proper practices regarding descriptive requirements for description/claims. Based on these requests update of knowledge regarding practices in guidelines such as descriptive requirements are required and the updated laws/regulations should be reflected on examination. Some respondents indicated discrepancies among patent examiners or examination divisions regarding novelty/inventive step or descriptive requirements. Aiming at more effective improvement, more detailed survey/analysis on these discrepancies in judgements is required requests (including the requests regarding description in notifications of reasons for refusal, judgements of novelty, and judgements of inventive step, etc.) were given in total. ff

34 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 these main points. Further, the JPO will announce its quality management system and the implementation status of the system on our website and through other media. gg

35 Acknowledgment The JPO expresses our gratitude to all the respondents for their generous time in taking the Survey. In order to sustain/enhance the quality of patent examination, the JPO continues to conduct the surveys on quality satisfaction by users, and based on the results, enhances patent examination and operating procedures. The JPO appreciates your continuous support. hh

36 1. Overview of the Survey 1 (1) Background 1 (2) Purpose of the Survey 1 (3) Way of Sending and Receiving the Questionnaire Sheets 1 (4) Questionnaire Sheets 2 (5) Respondents 2 (6) Results 4 (7) Definition of Satisfied and Unsatisfied in this Report 5 (8) Changes from Last Fiscal Year 6 2. Aggregated Results 7 (1) Quality of Patent Examination on National Applications 7 (i) Level of Satisfaction on the Overall Quality of Patent Examination on National Applications 7 (ii) Level of Satisfaction on the Overall Quality of Patent Examination on National Applications (in accordance with the Number of Applications Filed) 9 (iii) Changes in the Perception on the Overall Quality of Patent Examination on National Applications 10 (iv) Level of Satisfaction for Each Evaluation Item regarding the Quality of Patent Examination on National Applications 11 (v) Applications in which the Respondents Found Discrepancies 17 (vi) Indications/Requests for Each Item in the Questionnaire Sheets 19 (vii) Items that should be the Focus of Improvement 20 (viii) Comparison to Foreign Patent Offices 23 (ix) Perception on Improvement in Description in Notifications of Reasons for Refusal in Patent Examination 26 (x) Perception on improvement in foreign patent literature searches 27 (xi) Factors for Improvement in the Overall Quality 29 (xii) Responses about Examination on Others Applications 30 (xiii) Other Responses on Patent Examination on National Applications (in the Spaces to Write Comments) 32 (xiv) Indications on the Survey itself (in the Spaces to Write Comments) 33 (2) Quality of the International Search and International Preliminary Examination on PCT ii

37 Applications 34 (i) Overall Quality of the International Search and International Preliminary Examination on PCT Applications 34 (ii) Changes in the Perception on the Overall Quality of the International Search and International Preliminary Examination on PCT Applications 37 (iii) Level of Satisfaction on Each Item on the International Search and International Preliminary Examination on PCT Applications 37 (iv) Opinions/Requests for Each Evaluation Item on the International Search and International Preliminary Examination on PCT Applications 40 (v) Aspects that should be the Focus of the International Search and International Preliminary Examination on PCT Applications 41 (vi) Comparison to Foreign Patent Offices 43 (vii) Changes in the Perception of Foreign Patent Literature Search 45 (viii) Analysis on the Changes over years in the Overall Quality 47 (ix) Other Comments (in the spaces to write comments) on the International Search and International Preliminary Examination on PCT Applications 48 (3) Quality of Patent Examination on Specific National Applications 49 (i) Overall Quality of Patent Examination on Specific National Applications that were Subject to the Survey 49 (ii) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (Breakdown in accordance with the Type of Final disposition) 51 (iii) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Patent-granted Applications) 53 (iv) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Decision of Refusal without any Response) 54 (v) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Decision of Refusal after a Written Opinion/Amendment) 56 (vi) Reasons for Positive Responses to the Question asking Level of satisfaction on the Quality of Patent Examination on Specific National Applications that were Subject to the Survey 58 (vii) Reasons for Negative Responses to the Question asking Level of satisfaction on the Quality of Patent Examination on Specific National Applications that were Subject to the Survey 59 (4) Quality of the International Search and International Preliminary Examination on the Specific PCT Applications 61 (i) Overall Quality of the International Search and International Preliminary Examination on the jj

38 Specific PCT Applications that were subject to the Survey 61 (ii) Reasons for Positive Responses to the Question asking the Quality of the International Search and International Preliminary Examination on the Specific PCT applications that were subject to the Survey 63 (iii) Reasons for Negative Responses to the Question asking about the Quality of the International Search and International Preliminary Examination on the Specific PCT Applications that were subject to the Survey 64 3 Detailed Analysis on the Responses 66 (1) Analysis on the Correlation between Each Item and Overall Level of Satisfaction 66 (i) Details of the Analysis 66 (ii) Correlation Coefficients between the Level of Satisfaction on Each Item and the Overall Level of Satisfaction (National Applications) 67 (iii) Correlation Coefficients between the Level of Satisfaction on Each Evaluation Item and the Overall Level of Satisfaction (National Applications) 68 (iv) Correlation Coefficients between the Level of satisfaction on Each Item and the Overall Level of satisfaction (PCT Applications) 72 (v) Correlation Coefficients between the Level of satisfaction on Each Item and the Overall Level of satisfaction (PCT Applications) 73 (2) Analysis on Each Indication on the Specific Applications 77 (i) Details of the Analysis 77 (ii) Overall Trends in the Indications 80 (iii) Indications regarding Novelty/Inventive Step 81 (iv) Indications regarding Descriptive Requirements, Unity, and Requirements for Amendment 82 (v) Indications regarding Searches, Notifications of Reasons for Refusal, and Decision of Granting a Patent 83 (vi) Indications related to Discrepancies in Judgement, Specific Examiners, and Other Aspects 83 (vii) Changes in the Number of Indications / Responses on National Applications and PCT Applications Main Points of the Results of the Survey in FY (1) Maintaining or Enhancing Quality of Descriptions in Notifications of Reasons for Refusal, the International Search Reports (ISR), and the Written Opinions of the International Searching Authority (WO/ISA) 88 (2) Improvement in Prior Art Search Expertise and Search Quality 89 (3) Proper Practices regarding Descriptive Requirements for Description/Claims and Proper Practices regarding Novelty/Inventive Step 89 kk

39 5. Measures to Address to the Issues Identified from the Results of the Survey Future of the User Satisfaction Survey 90 Acknowledgment 91 ll

40 Fig. 1: Level of satisfaction on the overall quality of patent examination on national applications 7 Fig. 2: Level of satisfaction on the overall quality of patent examination on national applications (between FY2012 and FY2015) 8 Fig. 3: Level of satisfaction on the overall quality of patent examination (in accordance with the number of applications) 10 Fig. 4: Changes in the perception on the overall quality of patent examination on national applications 11 Fig. 5: Level of satisfaction on each evaluation item on patent examination 13 Fig. 6: Level of satisfaction on description in notices of reasons for refusal (between FY2012 and FY2015) 14 Fig. 7: Level of satisfaction on communication with examiners (between FY2012 and FY2015) 15 Fig. 8: Level of satisfaction on judgement without discrepancies (between FY2012 and FY2015) 15 Fig. 9: Level of satisfaction on each evaluation item in accordance with the industrial classification of respondents 17 Fig. 10 Indications/requests for each evaluation item on patent examination 19 Fig. 11 Items that should be the focus of improvement 21 Fig. 12: Perception on improvement in foreign patent literature search in patent examination 27 Fig. 13: Changes over the years in the average level of satisfaction (between FY2012 and FY2015) 29 Fig. 14: Level of satisfaction on the aspects at which the respondents found insufficient prior art searches/insufficient understanding of technical details 32 mm

41 Fig. 15: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 34 Fig. 16: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 35 Fig. 17: Changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 36 Fig. 18: Changes in the perception on the overall quality of the International Search and International Preliminary Examination on PCT applications 37 Fig. 19: Level of satisfaction on each evaluation item on the International Search and International Preliminary Examination on PCT applications 39 Fig. 20: Opinions/requests for each evaluation item on the International Search and International Preliminary Examination on PCT applications 41 Fig. 21: Aspects that should be the focus in the International Search and International Preliminary Examination on PCT applications 42 Fig. 22: Changes in the perception on foreign patent literature search (PCT applications) 45 Fig. 23: Changes over the years in the average level of satisfaction of the top 5 evaluation items with a large rate of increase (between FY2012 and FY2015) 47 Fig. 24: Changes over years in the average level of satisfaction of the bottom 3 items with a low rate of increase (between FY2012 and FY2015) 48 Fig. 25: Breakdown of the level of satisfaction on the quality of patent examination on specific national applications 50 Fig. 26: Changes over years in the level of satisfaction on the overall quality of patent examination on specific national applications 50 Fig. 27: Breakdown of the level of satisfaction on the quality of patent examination nn

42 on specific national applications (in accordance with the type of final disposition) 52 Fig. 28: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: patent-granted applications) 54 Fig. 29: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal without any response) 55 Fig. 30: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal after a written opinion/amendment) 57 Fig. 31: Breakdown of level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications 62 Fig. 32: Changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications 62 Fig. 33: Connection between the level of satisfaction on each item and the overall level of satisfaction 66 Fig. 34: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (national applications) 67 Fig. 35: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (national applications) 69 Fig. 36: Relation between the current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item(s) should be the focus of improvement (national applications) 70 Fig. 37: Correlation coefficients between the current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item(s) should be the focus of improvement (national applications) 71 oo

43 Fig. 38: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (PCT applications) 72 Fig. 39: Correlation coefficients between the level of satisfaction on each item and the overall level of satisfaction (PCT applications) 74 Fig. 40: Current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item should be the focus of improvement (national applications) 75 Fig. 41: Correlation coefficients between the overall level of satisfaction and the current average level of satisfaction on each evaluation item (national applications) 76 Fig. 42: List of classified types of indication 79 Fig. 43: Number of applications to which the respondents indicated either dissatisfaction with or some problem in examination quality, and the breakdown of the items corresponding to the dissatisfaction/problem. 80 Fig. 44: Breakdown of indications related to novelty/inventive step 81 Fig. 45: Breakdown of the indications related to descriptive requirements. 82 Fig. 46: Results of the analysis of indications on searches, reasons for refusal, decisions of refusal, and decisions of granting patents 83 Fig. 47: Results of the analysis of indications on searches, reasons for refusal, decision of refusal, and decision of granting a patent 84 Fig. 48: Changes in the number of indications on national applications and PCT applications over years 85 Fig. 49A: Changes over years in the number of indications on novelty/inventive step (national applications) 86 Fig. 49B: Changes over years in the number of indications on novelty/inventive step (PCT applications) 86 pp

44 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 5 Table 5: Number of checks for each level of satisfaction on the overall quality of patent examination (in accordance with the number of national applications filed) 9 Table 6: Level of satisfaction for each evaluation item on patent examination 12 Table 7: The fields/aspects in which the respondents found discrepancies 18 Table 8: Items that should be the focus of improvement (in accordance with the attributes of respondents) 22 Table 9: Number of indication to the question asking at which aspect(s) the respondents found advantage(s) of the JPO over any foreign patent offices in examination quality (national applications) 23 Table 10: Number of checks to the question asking at which foreign office(s) the respondent found advantage(s) over the JPO in examination quality (national applications) 24 Table 11: Number of responses to the question asking at which aspect(s) the respondent found advantages of foreign patent office(s) over the JPO in examination quality (national applications) 25 Table 12: Perception on improvement in description in notifications of reasons for refusal in patent examination 26 Table 13: examination 27 Perception on improvement in foreign patent literature search in patent qq

45 Table 14: Aggregated results of level of satisfaction on examination on others applications 30 Table 15: Breakdown of the aspects with which the respondents were dissatisfied on examination on others applications (national applications) 31 Table 16: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 34 Table 17: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications (anonymous only) 35 Table 18: Level of satisfaction on each item on the International Search and International Preliminary Examination on PCT applications 38 Table 19: Number of indications regarding the aspects at which the respondents found advantages of the JPO over foreign patent office(s) (PCT applications) 43 Table 20: Number of check to the question asking at which foreign patent office(s) the respondents found advantage(s) over the JPO (PCT applications) 44 Table 21: Number of indications to the question asking at which aspect(s) the respondents found advantages of foreign patent office(s) over the JPO (PCT applications) 44 Table 22: Changes in the perception in foreign patent literature search (PCT applications) 45 Table 23 Breakdown of the level of satisfaction on the quality of patent examination on specific national applications 49 Table 24: Breakdown of the level of satisfaction on the quality of patent examination on specific national applications (in accordance with the type of final disposition) 51 Table 25: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: patent-granted applications) 53 rr

46 Table 26: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal without any response) 55 Table 27: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal after a written opinion/amendment) 56 Table 28: Breakdown of the reasons for positive responses to the question asking level of satisfaction on the quality of patent examination on specific national applications 58 Table 29: Breakdown of the reasons for negative responses to the question asking level of satisfaction on the quality of patent examination on specific national applications 60 Table 30: Breakdown of level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications 61 Table 31: Reasons for positive responses to the question asking the quality of the International Search and International Preliminary Examination on the specific PCT applications 63 Table 32: Breakdown of the reasons for negative responses to the question asking the quality of the International Search and International Preliminary Examination on the specific PCT applications 65 ss

47 1. Overview of the Survey (1) Background Globally reliable high-quality patent examination and proper patent-granting by the JPO (Japan Patent Office) are keys to support domestic enterprises in developing their global business activities, driving innovation, and maintaining sound business practices. In April 2014, the JPO released the Quality Policy on Patent Examination (the Quality Policy ), which outlines the fundamental principles of quality management 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. 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 in order to improve initiatives for quality assurance. The JPO has conducted the User Satisfaction Survey (the Survey ) annually since FY2012, and committed to reflecting the results of the Survey on the quality management initiatives. This Report gives a summary of the Survey results in FY 2015, including the analysis results of 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 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. (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 . 1

48 The respondents were given about a month to respond. The respondents were asked to complete the Questionnaire Sheets via or postal service. The Questionnaire Sheets were distributed and the responses were received between August and November, 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. (4) Questionnaire Sheets The following four types of Questionnaire Sheets were used in the Survey, which are attached to this Report as appendices. Sheet A: Sheet B: Sheet C: Sheet D: Overall Quality in General of Patent Examinations on National Applications Quality of Patent Examinations on Specified National Applications Overall Quality in General of the International Searches and the International Preliminary Examinations on PCT Applications Quality of the International Searches and the International Preliminary Examinations on Specified PCT Applications Sheets A and B, which had been translated into English when necessary (see APPENDIX), were sent to foreign-resident applicants. (5) Respondents Table 1 shows the method of selecting applicants/applications and the number of applicants/applications applicable to Sheets A and B (national applications). Table 2 shows the method of selecting applicants/applications and the number of applicants/applications applicable 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 718 when the overlap was excluded. Fifty foreign-resident applicants (thirty applicants last FY) were subject to the Survey using Sheets A and B in this FY. While foreign-resident applicants were only subject to the Survey using Sheets A and B (for national applications) up until the Survey in last FY, this year they were eligible to take the Survey using Sheets C and D (PCT applications) on a pilot basis. Representatives with a large number of applications were also subject to the Survey, since the JPO asked for the responses from the standpoint of representatives. 2

49 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 respondents/applications to be subject to the Survey number of applicants/applications non-individual, domestic-resident applicants who filed 50 or more national applications as leader applicants in FY2013 and also one or more copies of final decision 571 were sent in FY2014 non-individual, foreign-resident applicants who filed 120 Sheet A or more national applications as leader applicant in FY2013 and also one or more copy of final decision was transmitted in FY2014 [*1] applicants with a small number of applications and/or employees [*2] 13 representatives [*3] 50 Sheet B randomly selected national applications of which leader applicant was respondent being subject to Sheet A, and to which decision to grant a patent or decision of refusal was issued in FY2014 [*4] 2070 *1 The applicants were arbitrary extracted from the top applicants 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 FY2013, in view of the previous interview or opinion-exchange with the JPO. *3 The top representatives who filed a large number of applications in FY2013 were extracted. *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

50 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 respondents/applications to be subject to the Survey number of applicants/applications non-individual, domestic-resident applicants who filed 18 or more PCT applications as leader applicant in FY2014 and also one or more International Search Report (ISR) or 262 International Preliminary Examination Report (IPER) was transmitted in FY2014 Sheet C foreign-resident applicants being subject to 309 Sheet A to which the ISR or IPER was 4 transmitted in 2014 [*1] applicants with a small number of applications and/or employees [*2] 13 representatives [*3] 30 Sheet D 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 2014 [*4] 689 *1 The applicants were arbitrary extracted in view of the number of PCT filings. *2 The applicants were arbitrary extracted from the domestic-resident enterprises (manufacturers only) who filed 18 or fewer PCT applications as leader applicant in FY2014, in view of previous interview or opinion-exchange with the JPO. *3 The top representatives who filed a large number of applications in FY2014 were extracted. *4 An additional condition was set in order to lighten the workload on the respondents, in which the number of subject applications was limited to 2 at minimum and 5 at maximum. 2-5 Questionnaire Sheets were sent to each applicant in accordance with the number of PCT applications as leader applicant in FY2014. (6) Results Since FY2012, the JPO has achieved a high response rate of over 80%. This high rate indicates a keen interest by users in the Survey. Table 3 shows the response rates to Sheets A, B, C and D, respectively. Table 4 shows the breakdown by type of industry of respondents on Sheets A and C. 4

51 Table 3: Response rate to each Questionnaire Sheet number of response response response response number of Sheets rate in rate in rate in rate in responses distributed FY2015 FY2014 FY2013 FY2012 Sheet A % 86.8% 91.8% 91.4% Sheet B % 87.5% 90.6% 91.7% Sheet C % 88.7% 90.6% 91.8% Sheet D % 90.4% 90.1% 93.0% Table 4: Breakdown by type of industry of respondents attributes Sheet A Sheet C type of industry [*1] percentage percentage number of number of in relation in relation respondents respondents to the total to the total metal % 9 3.3% construction 8 1.4% 1 0.4% machinery % % domesticresident chemistry % % food/medicine 8 1.4% 5 1.9% applicant electronics % % other industries % 3 1.1% others % 4 1.5% institutes/public research org % 4 1.5% representatives % % foreign-resident applicant 3 0.5% 1 0.4% anonymous respondent % % total % % (7) Definition of Satisfied and Unsatisfied in this Report In the Questionnaire Sheets (see APPENDIX), a 5-point scale was used for representing level of satisfaction, 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. 5

52 (8) Changes from Last Fiscal Year The Survey was changed in terms of the following points, in addition to those stated above. 1. The range of users being subject to the Survey was expanded to include foreign-resident users in order to increase the number of respondents to Sheets A and B. In addition, this FY, foreign-resident users became subject to Sheets C and D on a pilot basis. 2. Some new questions were added, that is, the question that asks how the perceptions about examination quality have changed ([1]-(2) of Sheet A and [1]-(2) of Sheet C), the question that asks which items should be the focus of improvement ([1]-(9) of Sheet A and [1]-(10) of Sheet C), and the question that asks the perceptions about the initiatives by the JPO ([1]-(12) of Sheet A and [1]-(13) of Sheet C). Also, the descriptions for questions as well as the layout of alternatives and spaces to write comments were improved so that users could understand the purpose and meaning of each question. 6

53 2. Aggregated Results (1) Quality of Patent Examination on National Applications (i) Level of Satisfaction on the Overall Quality of Patent Examination on National Applications The percentage of positive responses exceeded 50% of the total. The percentage of negative responses was 6.3% of the total. The percentage of positive responses has increased year by year since the first Survey in FY2012. Fig. 1 shows the aggregated results on the level of satisfaction based on a 5-point scale on the overall quality of patent examination on national applications during the last one year or so. Fig. 2 shows the aggregated results on the level of satisfaction based on a 5-point scale on the overall quality of patent examination on national applications between FY2012 and FY2015. Fig. 1: Level of satisfaction on the overall quality of patent examination on national applications 7

54 Fig. 2: Level of satisfaction on the overall quality of patent examination on national applications (between FY2012 and FY2015) 8

55 (ii) Level of Satisfaction on the Overall Quality of Patent Examination on National Applications (in accordance with the Number of Applications Filed) Table 5 shows the number of checks for each level of satisfaction in accordance with the attribute * of users as applicants. Fig. 3 shows the respondents level of satisfaction on the Overall Quality of Patent Examination on National Applications in accordance with the attribute. The percentage of positive response from anonymous respondents was lower than that from onymous respondents. Table 5: Number of checks for each level of satisfaction on the overall quality of patent examination (in accordance with the number of national applications filed) 5-point scale no answer attribute total applicants with a large number of applications applicants with a semi-large number of applications applicants with a onym small/medium ous number of applications representatives foreign-resident applicants onymous respondents anonymous * The applicants who filed 1000 or more applications in FY2013 are referred to as applicants with a large number of applications, the applicants who filed applications in FY2013 are referred to as applicants with a semi-large number of applications, and the applicants who filed 99 or less applications are referred to as applicants with a small/medium number of applications. However, the number of representatives, foreign-resident applicants, and anonymous respondents are separately shown regardless of the number of applications. 9

56 Fig. 3: Level of satisfaction on the overall quality of patent examination (in accordance with the number of applications) (iii) Changes in the Perception on the Overall Quality of Patent Examination on National Applications 23% of respondents chose Improved in regard to their perception of the overall quality of patent examination on national applications. 50% out of the respondents who chose Stayed the same (67% of the total), nevertheless gave positive responses about the overall quality of patent examination. The center pie chart in Fig. 4 shows changes in the perception on the overall quality of patent examination on national applications during the last one year or so. The left pie chart in Fig. 4 regarding the perception on the overall quality of patent examination on national applications during the last one year or so shows a breakdown of responses from the respondents who chose Improved based on a 5-point scale. The right pie chart n Fig. 4 regarding the perception on the overall quality of patent examination on national applications during the last one year or so shows a breakdown of responses from the respondents who chose the alternative Stayed the same on a 5-point scale. 10

57 Fig. 4: Changes in the perception on the overall quality of patent examination on national applications (iv) Level of Satisfaction for Each Evaluation Item regarding the Quality of Patent Examination on National Applications The respondents gave positive responses to description in notifications of reasons for refusal (except for decisions of refusal), practices regarding inventive step, domestic patent literature search, and communication with examiners. The percentage of positive responses to these items exceeded 50% of the total. In particular, the level of satisfaction on description in notifications of reasons for refusal (except for decisions of refusal) improved by 6% compared to that in the last FY. Meanwhile, the respondents gave negative responses to judgement without discrepancies, practices regarding inventive step, practices regarding descriptive requirements, foreign patent literature search, non-patent literature search. The percentage of negative responses to these evaluation items accounted for 20% or so of the total, respectively. The percentage of negative responses to judgement without discrepancies has continuously decreased since FY2012, to 30.8%. Table 6 shows the level of satisfaction for each evaluation item. breakdown of the percentage of level of satisfaction on each evaluation item. Fig. 5 * shows the * The number of checks on Not sure and anonymous responses are excluded in Figs

58 Table 6: Level of satisfaction for each evaluation item on patent examination evaluation item not sure no answer description in notifications of reasons for refusal (except for decisions of refusal) description in decisions of refusal judgement without discrepancies items with which the respondents were unsatisfied discrepancies in the same technical field 118 discrepancies between foreign patent offices and the JPO 67 discrepancies between the examination divisions and the appeals and trials 54 discrepancies among different technical fields 41 main paragraph of Article 29 (1) (industrial applicability and judgement of whether the subject matter falls under the concept of invention ) application of legal wordings 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 etc.) domestic patent literature search searches foreign patent literature search non-patent literature search level of examiners expertise in technical details communication with examiners (such as face-to-face interviews, telephone conversations etc.) patent-granted scope after examination

59 Fig. 5: Level of satisfaction on each evaluation item on patent examination Fig. 6 shows the aggregated results regarding description in notifications of reasons for refusal (except for final decisions of refusal) and Fig. 7 shows the aggregated results regarding communication with examiners (such as face-to-face interviews, telephone conversations etc.) between FY2012 and FY2015. The percentage of the positive responses, that is, Satisfied or Somewhat Satisfied with description in notifications of reasons for refusal (except for final decisions of refusal) and communication with examiners (such as face-to-face interviews, telephone conversations etc.) has increased year by year, while the percentage of the negative responses, that is, Unsatisfied or Somewhat Unsatisfied with those evaluation items has decreased year by year. Although the reasons for the improvement cannot definitely be determined, various initiatives are believed to have contributed to this, such as the use of standardized forms for drafting notifications of reasons for refusal (since April 1, 2015) and the Guidelines for Interviews (since October 1, 2014). 13

60 Fig. 6: Level of satisfaction on description in notices of reasons for refusal (between FY2012 and FY2015) 14

61 5: Satisfied 4: Somewhat Satisfied 3: Neutral 2: Somewhat Unsatisfied 1: Unsatisfied FY % 35.0% 49.8% 5.3% 0.8% FY % 39.6% 44.5% 6.3% 0.8% FY % 41.9% 42.9% 4.7% 0.6% FY % 38.3% 44.9% 2.5% 0.6% 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Fig. 7: Level of satisfaction on communication with examiners (between FY2012 and FY2015) Fig. 8 shows the aggregated results of judgement without discrepancies (between FY2012 and FY2015). The percentage of negative responses to judgement without discrepancies among examiners or the examination divisions has continuously improved, decreasing to 30.8%, compared to 47.9% in the first Survey in FY2012. Fig. 8: Level of satisfaction on judgement without discrepancies (between FY2012 and FY2015) 15

62 Fig. 9 below shows the level of satisfaction on judgement without discrepancies, practices regarding inventive step, practices regarding descriptive requirements, foreign patent literature search, and non-patent literature search by type of industry of respondents. judgement without discrepancies practices regarding inventive step practices regarding descriptive requirements foreign patent literature search non-patent literature search 16

63 Fig. 9: Level of satisfaction on each evaluation item in accordance with the industrial classification of respondents (v) Applications in which the Respondents Found Discrepancies In order to identify the aspects or technical fields at which the respondents found discrepancies, the contents in the spaces to write comments were classified into the following fields and aspects. The fields were discrepancies in the same technical field, discrepancies among different technical fields, discrepancies between the examination divisions and the appeals and trials, discrepancies between foreign patent offices and the JPO, and discrepancies between/among the other fields. The aspects were on the whole (without any indication of any specific aspect), judgement of novelty/inventive step, judgement of descriptive requirements, description in notifications of reasons for refusal, judgement of unity/amendment changing special technical feature of invention, and the other aspect(s). Fig. 7 shows the aggregated results regarding the combination of the field and aspect in which the respondents found discrepancies. The field that obtained the highest percentage was discrepancies in the same technical field. The aspect that obtained the highest percentage was judgement of novelty/inventive step. 17

64 Table 7: The fields/aspects in which the respondents found discrepancies judgement of field aspect on the whole (without any indication of any specific aspect) judgement of novelty/inven tive step judgement of descriptive requirements description in notification of reasons for refusal unity / amendment changing special technical feature of the other aspect(s) [*3] total [*1] invention discrepancies in the same technical field discrepancies among (12.2%) (36.1%) (30.6%) (5.4%) (1.4%) (14.3%) (100.0%) different technical fields discrepancies (11.1%) (28.9%) (35.6%) (6.7%) (0.0%) (17.8%) (100.0%) between the examination divisions and the appeals and trials discrepancies (13.2%) (38.2%) (33.8%) (5.9%) (0.0%) (8.8%) (100.0%) between foreign patent offices and the JPO the other field(s) [*2] total (11.8%) (42.4%) (22.4%) (7.1%) (2.4%) (14.1%) (100.0%) (7.7%) (38.5%) (35.9%) (10.3%) (0.0%) (7.7%) (100.0%) (11.7%) (37.2%) (30.5%) (6.5%) (1.0%) (13%) (100.0%) *1 188 responses were valid. When multiple indications were in a single response, the number of indications was counted for each. *2 Examples of the other field(s) include indication(s) on a specific examiner (discrepancies among examiners). *3 Examples of the other aspect(s) include prior art searches, examiners understanding of technical details, and judgement regarding the main paragraph of Article 29(1) (novelty). 18

65 (vi) Indications/Requests for Each Item in the Questionnaire Sheets 481 indications/requests in total included 64 comments related to notifications of reasons for refusal, 47 comments related to discrepancies among examiners or the Examination Divisions, 58 comments related to inventive step, and 50 comments regarding descriptive requirements. Specifically, 24 comments requested for proper practices related to product-by-process claims in the requests related to descriptive requirements. * Fig. 10 shows the aggregated results of indications/requests etc. (comments in the spaces to write comments) for each evaluation item were classified into the positive/negative responses. Fig. 10 Indications/requests for each evaluation item on patent examination Regarding descriptions in notifications of reasons for refusal, 15 positive comments were made in regard to detailed and thorough description. Meanwhile, 30 comments indicated too concise description on reasoning etc. to understand what examiners actually mean, too little description to prepare for argument, and 19 comments requested for a sufficient description of cited parts in cited documents or enhanced description on judgement regarding dependent claims. * The Survey was conducted between August and November in 2015, immediately after the provisional practice on product-by-process (PBP) claims was started in July. 19

66 Regarding judgement of inventive step, some respondents felt it too strict while others felt it too lax. Regarding descriptive requirements, there were 15 negative comments such as notifications of reasons for refusal that made judgement on enablement requirements or requirements of support in description by limiting the scope of invention to the level of embodiment, or that stated the claim description was unclear without considering the description or common general technical knowledge in the art. (vii) Items that should be the Focus of Improvement The top 5 items in response to the question asking which item should be the focus of improvement were practices regarding inventive step (130 cases), foreign patent literature searches (112 cases), judgement without discrepancies (109 cases), practices regarding descriptive requirements for description and claims (100 cases), and non-patent literature searches (90 cases) Fig. 11 shows the aggregated results of responses to the following 15 questionnaire items that should be the focus of improvement by the JPO (multiple choices were allowed): 1) description in notices of reasons for refusal, 2) description in decision of refusal, 3) judgement without discrepancies, 4-1) the main paragraph of Article 29(1) (industrial applicability, judgement of whether the subject matter falls under the concept of invention ), 4-2) each item of Article 29 (1) (novelty), 4-3) Article 29 (2) (inventive step), 5-1) domestic patent literature search, 5-2) foreign patent literature search, 5-3) non-patent literature search, 6) level of examiners expertise in technical details, 7) communication with examiners (such as face-to-face interviews, telephone conversations etc., and 8) patent-granted scope after examination. 20

67 Fig. 11 Items that should be the focus of improvement 21

68 The responses to the questionnaire items foreign patent literature search and non-patent literature search included comments such as reasons for refusal only based on the literature written in Japanese seem insufficient for those issued by PCT Receiving Office, it seems that cited documents tend to be domestic literature, but foreign literature as reference is also appreciated, and product market globalization expands the needs for foreign patent literature search. Therefore, in some instances, possibly around half the number of cited documents were foreign patent documents. The responses to the questionnaire item practices regarding inventive step included 46 comments that requested for clear description of relevance between the invention as claimed in the application concerned and the cited invention or clear description of the basis for combination in notifications of reasons of refusal. Table 8 below shows the items that should be the focus of improvement in accordance with the attribute of respondents. Table 8: Items that should be the focus of improvement (in accordance with the attributes of respondents) practices judgement practices foreign regarding non-patent without regarding patent number of descriptive literature discrepanci inventive literature indications requirement search es step search s metal 3(13.6%) 6(27.3%) 4(18.2%) 4(18.2%) 3(13.6%) 22 construction 2(25.0%) 1(12.5%) 0(0.0%) 2(25.0%) 4(50.0%) 8 machinery 8(10.4%) 10(13.0%) 7(9.1%) 15(19.5%) 10(13.0%) 77 chemistry 14(21.5%) 17(26.2%) 23(35.4%) 14(21.5%) 10(15.4%) 65 domesticresident applicant s food/medicine 1(12.5%) 2(25.0%) 2(25.0%) 2(25.0%) 2(25.0%) 8 electronics 21(20.8%) 21(20.8%) 9(8.9%) 26(25.7%) 23(22.8%) 101 other industries 1(9.1%) 2(18.2%) 2(18.2%) 2(18.2%) 3(27.3%) 11 others 1(9.1%) 3(27.3%) 2(18.2%) 3(27.3%) 2(18.2%) 11 educational institution and research 1(9.1%) 4(36.4%) 1(9.1%) 1(9.1%) 0(0.0%) 11 organizations etc. representatives 6(23.1%) 7(26.9%) 8(30.8%) 0(0.0%) 0(0.0%) 26 foreign-resident applicants 0(0.0%) 0(0.0%) 0(0.0%) 2(66.7%) 1(33.3%) 3 anonymous respondents 51(21.1%) 57(23.6%) 42(17.4%) 41(16.9%) 32(13.2%) 242 total 109(18.6%) 130(22.2%) 100(17.1%) 112(19.1%) 90(15.4%)

69 (viii) Comparison to Foreign Patent Offices Top 4 advantageous aspects of the JPO over foreign patent offices were prior art searches (112 cases), examiners understanding of technical details (105 cases), judgement of novelty/inventive step etc. (76 cases), and judgment without discrepancies (68 cases). 186 responses were valid, in which 68 responses appreciated prior art searches at the EPO and 26 responses appreciated description in notifications of reasons for refusal at the EPO. Further, 34 responses appreciated description in notifications of reasons for refusal at the USPTO. Table 9 shows the number of indication to the question asking at which aspect(s) the respondents found advantage(s) of the JPO over any foreign patent offices in examination quality on national applications. Table 9: Number of indication to the question asking at which aspect(s) the respondents found advantage(s) of the JPO over any foreign patent offices in examination quality (national applications) aspect Number of indication Reference(last FY) prior art searches domestic patent literature search 17 - foreign patent literature search 6 - non-patent literature search 1 - examiners understanding of technical details judgement of novelty/inventive step judgement without discrepancies time length required for examination description in notifications of reasons for refusal judgement of descriptive requirements communication with examiners (such as face-to-face interviews and telephone 16 9 conversations) suggestion of amendment etc. 5 7 practices regarding judgement of unity 2 1 others

70 Table 10 shows the number of checks to the question asking at which foreign office(s) the respondent found advantage(s) over the JPO in examination quality on national applications. Table 11 shows the number of indication to the question asking at which aspect(s) on national applications the respondent found advantage(s) of foreign patent office(s) over the JPO. The comments in the spaces to write comments were aggregated in accordance with classification as in Table 11. Table 10: Number of checks to the question asking at which foreign office(s) the respondent found advantage(s) over the JPO in examination quality (national applications) nothing special EPO USPTO SIPO KIPO others number of checks

71 Table 11: Number of responses to the question asking at which aspect(s) the respondent found advantages of foreign patent office(s) over the JPO in examination quality (national applications) number of indications [*1] aspect(s) at which the respondent found others advantages of foreign patent office(s) over the JPO EPO USPTO SIPO KIPO [*2] description in notifications of reasons for refusal prior art searches prior art search (domestic patent literature search) prior art search (foreign patent literature search) prior art search (non-patent literature search) judgement of novelty/inventive step suggestion of amendment etc examiners understanding of technical details communication with examiners (such as face-to-face interviews and telephone conversations) judgement of descriptive requirements judgement without discrepancies practices regarding unity time length required for examination others [*3] *1 186 comments were valid. When multiple answers were in a single response, the number of answers was counted for each. *2 Examples of others includes sufficient suggestion of amendment for the German Patent and Trade mark Office (DPMA). *3 Examples of others includes examination results at the EPO or the USPTO can readily be utilized as reference by the other Offices. As shown in Table 11, a large number of comments appreciated prior art searches at the EPO, including the comments such as cited documents covers patent publications from various countries without limiting the target at those from specific countries and searches are properly conducted also in non-patent literature searches. As shown in Table 11, the respondents appreciated thorough description of notifications of reasons for refusal at the EPO and the USPTO such as thorough description of reasoning and detailed description to the extent of dependent claims, as in the last FY. 25

72 (ix) Perception on Improvement in Description in Notifications of Reasons for Refusal in Patent Examination 25% of the respondents chose Improved regarding the perception on improvement in description in notifications of reasons for refusal. 50% of the respondents who chose the alternative Stayed the same gave positive responses, and 92% of them chose Neutral or better level of satisfaction with description in notifications of reasons for refusal. Table 12 shows the number of checks for each level of perception on improvement in description in notifications of reasons for refusal in patent examination on a 5-point scale. Table 12: refusal in patent examination Perception on improvement in description in notifications of reasons for level of satisfaction with description in notifications of reasons for refusal perceptions on improvement in description in notifications of reasons for refusal number of checks percentage 3: Improved % 2: Stayed the same % 1: Worsened % Not sure % no answer % total % The responses regarding the perception on improvement included 135 positive comments such as description in notifications of reasons for refusal became thorough/easy-to-understand. Meanwhile, 3 negative comments indicated the amount of description in notifications of reasons for refusal has excessively increased/ description in notifications of reasons for refusal became redundant. 26

73 (x) Perception on improvement in foreign patent literature searches Table 13 shows the perception on improvement in foreign patent literature searches in patent examination, especially in description in notifications of reasons for refusal, on a 5-point scale. The right and left pie charts in Fig. 12 show the breakdown of level of satisfaction with foreign patent literature searches by the respondents who felt Improved and Stayed the same, respectively. Table 13: examination Perception on improvement in foreign patent literature search in patent perceptions on improvement level of satisfaction with foreign patent literature search not sure number of checks percentage 3: Improved % 2: Stayed the same % 1: Worsened % Not sure % no answer % total % Fig. 12: Perception on improvement in foreign patent literature search in patent examination 6 out of 474 responses Stayed the same gave positive comments indicating the cases of patent literature being cited in notifications of reasons for refusal have increased, for 27

74 example. Therefore, there is a possibility that some of the respondents who chose Stayed the same actually indicated their satisfaction. However, 8 responses involved comments indicating that there seems no substantial change such as not sure because there are too few cases to determine whether the cases in which foreign patent literature was cited have increased, or there seems no substantial change in foreign patent literature searches during the last one year or so. This may suggest that the JPO has not communicated enough to users that it has continuously enhanced foreign patent literature searches. 28

75 (xi) Factors for Improvement in the Overall Quality Analysis was conducted on the reasons for continuous improvement in the overall quality of patent examination on national applications. The rate of increase in the level of satisfaction for each evaluation item in the Questionnaire Sheets between FY 2012 and FY2015 was calculated. The rate of increase in the level of satisfaction was high in the order of practices regarding unity of invention, practices regarding requirements for amendment in description etc., judgement without discrepancies, description in notifications of reasons for refusal, and practices regarding inventive step. Fig. 13 below shows the top 5 items with the highest rate of increase on the average level of satisfaction and the changes in the average level of satisfaction on the overall quality over the years between FY2012 and FY2015. As seen from Fig. 13, the average level of satisfaction on the overall quality ( ) and the average level of satisfaction on description in notifications of reasons for refusal ( ) / practices regarding inventive step ( ) have changed in a similar way over the years. Fig. 13: Changes over the years in the average level of satisfaction (between FY2012 and FY2015) 29

76 (xii) Responses about Examination on Others Applications The percentage of positive response on examination on others applications was 8 %, which was lower than that on the overall quality of national patent examination (54%). Specifically, 56 responses were given on insufficient prior art searches or insufficient understanding of technical details, and 18 responses expressed dissatisfaction with judgement of inventive step/clarity related to numerical limitation. Some respondents indicated that they cannot respond to the questionnaires about the applications prior to publication such as those subject to accelerated examination and that such questionnaires were troublesome and unfavorable. Table 14 shows the aggregated results of level of satisfaction on examination on others applications on a 5-point scale. Table 14: Aggregated results of level of satisfaction on examination on others applications number 5-point scale evaluation of percentage checks reference (lasetfy) 5: Satisfied 4 0.9% 0.6% 4: Somewhat Satisfied % 9.6% 3: Neutral % 67.1% 2: Somewhat Unsatisfied % 21.0% 1: Unsatisfied % 1.6% Not sure no answer total % 100.0% 1 This table shows the percentages after the number of checks on Not sure and the cases of no answer were excluded. Table 15 shows the aggregated results of responses on examination on others applications. For the purpose of aggregation, the respondents comments in the spaces to write comments were classified into the following aspects in accordance with similarity. 30

77 Table 15: Breakdown of the aspects with which the respondents were dissatisfied on examination on others applications (national applications) details of aspects number of indication insufficient prior art searches / insufficient understanding of technical details 56 dissatisfaction with examination results related to numeral limitation (inventive step/clarity) 18 insufficient record of interviews (requests for enhanced record of interviews) 9 dissatisfaction with examination on the applications by foreign-resident applicants 16 concern about the possibility in which the applications in which description of claims/scope of claims is unclear are patent-granted 25 submission of information by third parties (requests for efficient use of the information in examination, and ensured 9 opportunities for information submission) unclear basis for granting a patent of a certain application/certain applications 2 dissatisfaction with judgement etc. in accelerated examination 4 positive responses such as found nothing improper 10 others 12 *1 132 responses were valid. When multiple indications were in a single response, the number of indications was counted for each. *2 Examples of others include such indications as there were cases in which even such subject matter that is common in the art concerned had been patent-granted only because any proper citation or material cannot be found. The indication insufficient prior art searches/insufficient understanding of technical details in Table 15 above were further analyzed in detail. 31

78 Fig. 14 shows the level of satisfaction on the aspects at which the respondents found insufficient prior art searches/insufficient understanding of technical details. The aspects are practices regarding novelty, practices regarding inventive step, domestic patent literature search, foreign patent literature search, and non-patent literature search. The level of satisfaction for each aspect is represented on a 5-point scale. Fig. 14: Level of satisfaction on the aspects at which the respondents found insufficient prior art searches/insufficient understanding of technical details According to the comparison between Fig. 14 above and Fig. 5 showing the level of satisfaction with the overall quality on a 5-point scale, the respondents who indicated insufficient prior art searches or insufficient understanding of technical details on others applications tend to give negative responses to practices regarding inventive step foreign patent literature searches or non-patent literature searches at a higher percentage compared to the overall average percentage. This suggests that these items are the main factors of the response insufficient prior art searches or insufficient understanding of technical details on others applications. (xiii) Other Responses on Patent Examination on National Applications (in the Spaces to Write Comments) In addition to the above, various indications regarding various aspects on patent examination on national applications were given from the respondents. Requests asking wish to have a patent without potential invalidity (27 cases) were given as in the last FY. Further, some respondents requested for taking some measures for the questionnaires on the applications prior to publication because the applicants cannot submit information regarding such cases. 32

79 (xiv) Indications on the Survey itself (in the Spaces to Write Comments) Many comments about the Survey were given, including positive comments such as the Survey is a good effort and hope it will be continued (10 comments) and hope the results to be reflected to the future initiatives (1 comment). Meanwhile, some respondents indicated that it does not seem that the quality of patent examination changes dramatically within a year, and the Survey being held every few years maybe enough instead of the annual Survey. Detailed suggestions for improving the Survey were also given regarding sending/collection procedures of the Questionnaire Sheets or the schedule of the Survey (17 comments) including the request to respond online (4 comments). Regarding the specific applications used for Sheet B, some comments said that it s difficult to evaluate applications for which patents have already been granted. (4 comments). 33

80 (2) Quality of the International Search and International Preliminary Examination on PCT Applications (i) Overall Quality of the International Search and International Preliminary Examination on PCT Applications The percentage of positive responses were 42.6%, which was higher by 2% than that in the last FY (40.7%). The percentage of negative responses were 3.7% of the total. Table 16 and Fig. 15 show the aggregated results of level of satisfaction on a 5-point scale on the overall quality of the International Search and International Preliminary Examination on PCT applications during the previous one year or so. Table 16: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 5-point scale number last FY percentage of check (for reference only) 5: Satisfied 6 2.2% 1.0% 4: Somewhat Satisfied % 39.7% 3: Neutral % 55.9% 2: Somewhat Unsatisfied % 3.4% 1: Unsatisfied 0 0.0% 0.0% total % 100.0% Fig. 15: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 34

81 Table 17 and Fig. 16 show the aggregated results of level of satisfaction on a 5-point scale on the overall quality of the International Search and International Preliminary Examination on PCT applications during the previous one year or so, only for anonymous respondents. Table 17: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications (anonymous only) 5-point scale number percentage of check 5: Satisfied 2 6.1% 4: Somewhat Satisfied % 3: Neutral % 2: Somewhat Unsatisfied 3 9.1% 1: Unsatisfied 0 0% total % Fig. 16: Level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications A relatively larger number of negative responses were given by the anonymous respondents compared to the onymous respondents. Fig. 17 shows the changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications. 35

82 5: Satisfied 4: Somewhat Satisfied 3: Neutral 2: Somewhat Unsatisfied 1: Unsatisfied FY % 34.6% 59.8% 4.9% 0% FY % 38.6% 52.9% 5.0% 0.4% FY % 39.7% 55.9% 3.4% 0% FY % 40.4% 53.7% 3.7% 0% 0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100% Fig. 17: Changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications 36

83 (ii) Changes in the Perception on the Overall Quality of the International Search and International Preliminary Examination on PCT Applications 10% of the respondents chose the alternative Improved to the question asking the changes in the perception on the overall quality of the International Search and International Preliminary Examination on PCT applications. 40% out of the respondents who chose the alternative Stayed the same (83% of the total) gave the positive responses to the overall quality of patent examination. Fig. 18: Changes in the perception on the overall quality of the International Search and International Preliminary Examination on PCT applications (iii) Level of Satisfaction on Each Item on the International Search and International Preliminary Examination on PCT Applications 52.2% of the respondents gave the positive responses to domestic patent literature search, which was the highest percentage of all the items (53.1% in the last FY). Meanwhile, a higher percentage of respondents gave the negative responses to foreign patent literature search, non-patent literature search and judgement without discrepancies between the international phase and the national phase, compared to the other items. Table 18 shows the number of check for level of satisfaction on each evaluation item. Fig. 19 shows the level of satisfaction on each evaluation item, from which the number of response Not sure was excluded. 37

84 Table 18: Level of satisfaction on each evaluation item on the International Search and International Preliminary Examination on PCT applications evaluation item Not 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 domestic patent literature search searches foreign patent literature search non-patent literature search etc judgement of descriptive deficiencies etc judgement without discrepancies in the international phase aspects at which the respondents found discrepancies discrepancies between the JPO and foreign patent office(s) 32 discrepancies between different technical fields 4 discrepancies in the same technical field 17 judgement without discrepancies between the international phase and the national phase

85 Fig. 19: Level of satisfaction on each evaluation item on the International Search and International Preliminary Examination on PCT applications 39

86 (iv) Opinions/Requests for Each Evaluation Item on the International Search and International Preliminary Examination on PCT Applications Fig. 20 shows the aggregated results of opinions/requests for the evaluation items 1-9 in Sheet C (the opinions in the space to write comments), in which the opinions/requests were classified into the positive/negative responses to the prescribed aspects. The opinions/requests related to judgement of novelty/inventive step or description of examiners view on novelty/inventive step were as follows: We request for further improvement of examiners understanding of technical details in cited document(s), clear description of cited part, and reasoning for combination. In order to address the cases in which some improper notification of reasons for refusal is issued in the national phase at any of foreign patent offices, we appreciate it if the basis of judgement for each claim and cited part(s) in cited document(s) are described more in detail in the written opinion in the international phase, regardless of the results of judgement of novelty/inventive step. Description in WO/ISA by the JPO seems insufficient. The degree of thoroughness as in notifications of reasons for refusal on national applications at the JPO seems to be appropriate to help understanding. The opinions/requests related to prior art searches were as follows: We request for proper examination in the international search because the citations listed in ISRs are often used in the examination at foreign patent office(s). PCT application often means filing at foreign patent office(s), and thus, we request for as much citation from foreign patent literature as possible in order to prevent such cases in which judgement differs from foreign patent office(s). It seems that there are a number of cases in which some notification of reasons for refusal is issued at the EPO even after the patentability has been ensured in the international search. We appreciate it if the JPO considers the optimization of searches for each technical field though we know foreign patent literature search needs a great effort. The comments related to consistency in judgement between the international phase and the national phase (the JPO/foreign patent office(s)) included such opinions/requests as it makes domestic applicants disappointed if cited document(s) is newly listed and the novelty/inventive step of an application is denied in the national phase at the JPO even though novelty/inventive step has been ensured once in the international phase. 40

87 Fig. 20: Opinions/requests for each evaluation item on the International Search and International Preliminary Examination on PCT applications (v) Aspects that should be the Focus of the International Search and International Preliminary Examination on PCT Applications Regarding the aspects that should be the focus of the International Search and International Preliminary Examination on PCT applications, as many as 79 responses were given to foreign patent literature search, though 40 or fewer responses were given to the other aspects. 59 out of 79 respondents who chose foreign patent literature search at the question asking the aspects that should be the focus indicated insufficient search. In particular, 29 responses indicated that new citation(s) were found in search at any of foreign patent offices. Further, in view of enhancing reliability on the international search at the JPO /predictability in the national phase at foreign patent offices, 20 responses related to judgement of novelty/inventive step, 13 responses related to description on examiners view on novelty/inventive step, 20 responses related to judgement without discrepancies in the international phase, and 25 responses related to judgement without discrepancies between the international phase and the national phase. 41

88 Fig. 21: Aspects that should be the focus in the International Search and International Preliminary Examination on PCT applications 42

89 (vi) Comparison to Foreign Patent Offices A large number of respondents found advantage(s) of the JPO over foreign patent offices at prior art search. Meanwhile, as many respondents as those who found advantage(s) of the JPO over foreign patent offices found advantages of the foreign patent offices over the JPO at prior art search especially at the EPO. Table 19 shows the aggregated results of the number of indications regarding the aspect at which the respondents found advantage(s) of the JPO over foreign patent offices. The opinions in the space to write comments were classified into the prescribed aspects for aggregation. Table 19: Number of indications regarding the aspects at which the respondents found advantages of the JPO over foreign patent office(s) (PCT applications) aspect at which the respondents found advantages of the JPO over foreign patent office(s) number of indications number of indications in the last FY (for reference only) prior art searches 31 *2 41 prior art search(domestic patent literature search) 10 - judgement of novelty/inventive step etc judgement without discrepancies examiners understanding of technical details 11 5 time length required for examination 10 6 description in notifications of reasons for refusal etc. 4 5 other indications 4 8 judgement of descriptive requirements etc. 1 0 practices regarding unity 1 - communication with examiners 0 1 total *1 62 responses were valid. When multiple opinions were in a single response, the number of indications was counted for each. *2 This number includes 10 opinions that appreciated domestic patent literature search in particular. Table 20 shows the number of check to the question asking at which foreign patent office(s) the respondent found advantage(s) over the JPO. 43

90 Table 20: Number of check to the question asking at which foreign patent office(s) the respondents found advantage(s) over the JPO (PCT applications) nothing EPO USPTO SIPO KIPO others special number of check Table 21 shows the aggregated results of the number of indications to the question asking at which aspect(s) the respondent found advantages of foreign patent office(s) over the JPO in the International Search and International Preliminary Examination on PCT applications. The opinions in the space to write comments were classified into the prescribed aspects for aggregation. Table 21: Number of indications to the question asking at which aspect(s) the respondents found advantages of foreign patent office(s) over the JPO (PCT applications) aspect(s) at which the respondent found number of indications advantages of foreign patent office(s) EPO USPTO SIPO KIPO prior art searches (foreign patent literature search) (non-patent literature search) judgement of novelty/inventive step description in notifications of reasons for refusal examiners understanding of technical details judgement without discrepancies judgement of descriptive requirements etc practices regarding unity communication with examiners (such as face-to-face interviews, telephone conversations etc.) time length required for examination suggestion for amendment etc others *1 48 responses were valid. When multiple opinions were in a single response, the number of indications was counted for each. *2 Examples of others include the cited document(s) in the ISRs issued by the EPO are often used also in the national phase at the Designated Office(s). 44

91 (vii) Changes in the Perception of Foreign Patent Literature Search Table 22 shows the number of check for each level of satisfaction on foreign literature search on patent examination, especially in description in notifications of reasons for refusal on a 5-point scale. The right and left pie charts in Fig. 22 show the breakdown of level of satisfaction with foreign patent literature search by the respondents who felt Improved and Stayed the same, respectively. Table 22: applications) Changes in the perception in foreign patent literature search (PCT level of satisfaction on foreign patent literature search 5: Satisfied 4: Somewhat Satisfied 3: Neutral 2: Somewhat Unsatisfied 1: Unsatisfied Not sure number of check percentage changes in perception 3: Improved % 2: Stayed the same % 1: Worsened % Not sure % no answer % total % Fig. 22: Changes in the perception on foreign patent literature search (PCT applications) Although some respondents indicated the percentage of citation from foreign patent literature has increased (16 cases), over 90% of the respondents chose the alternative 45

92 Stayed the same or Not sure. Some of the respondents who chose the alternative Stayed the same added the comment such as The percentage of citation from foreign patent literature may have possibly increased, but the perception on this aspect is not changed. As seen from Fig. 22, about a quarter of the respondents who chose the alternative Improved or Stayed the same for the changes in perception chose the alternative Unsatisfied or Somewhat Unsatisfied for the level of satisfaction on foreign patent literature on a 5-point scale. This suggests the fact that the respondents have not been satisfied enough with foreign patent literature search yet. The largest number of respondents indicated that foreign patent literature search is the aspect that should be the focus of improvement in the International Search and International Preliminary Examination on PCT applications. Therefore, it seems that foreign patent literature search is the focus of improvement from this time forward. 46

93 (viii) Analysis on the Changes over years in the Overall Quality The rate of increase in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on PCT applications is lower than that on the overall quality of patent examination on national applications. The main factor of this was analyzed as follows. The rate of increase of average level of satisfaction on each evaluation item in the Questionnaire Sheets was calculated between FY2012 and FY2015. The rate of increase of average level of satisfaction was large in the order of judgement without discrepancies between the international phase and the national phase, foreign patent literature search, judgement of violation of requirements for unity, non-patent literature search, and IPC accuracy. Fig. 23 is a graph that shows the changes in average level of satisfaction on the top 5 evaluation item with a large rate of increase between FY 2012 and FY2015. Fig. 23: Changes over the years in the average level of satisfaction of the top 5 evaluation items with a large rate of increase (between FY2012 and FY2015) Fig. 24 is a graph that shows the changes in average level of satisfaction on the bottom 3 items with a small rate of increase over years between FY 2012 and FY2015. The bottom 3 items were domestic patent literature search, judgement of excluded subject matter from searches, and discrepancies in the international phase. The rate of increase for these items were smaller than those for the other items. 47

94 Fig. 24: Changes over years in the average level of satisfaction of the bottom 3 items with a low rate of increase (between FY2012 and FY2015) (ix) Other Comments (in the spaces to write comments) on the International Search and International Preliminary Examination on PCT Applications Various comments were given from the respondents such as requests for the search expertise in the International Search and International Preliminary Examination on PCT applications at the JPO to be further enhanced, so that the contents in the ISRs issued by the JPO be effectively used also in the national phase (11 cases), for example. 48

95 (3) Quality of Patent Examination on Specific National Applications (i) Overall Quality of Patent Examination on Specific National Applications that were Subject to the Survey Neutral or better level of satisfaction on the quality of patent examination on specific national applications that were subject to the Survey accounted for 88.2% (88.8% in the last FY). Specifically, the positive responses accounted for 54.9%, more than half of which (53.2% in the last FY). Table 23 and Fig. 25 show the breakdown of the level of satisfaction on the quality of patent examination on specific national applications that were subject to the Survey on a 5-point scale, respectively. Table 23 Breakdown of the level of satisfaction on the quality of patent examination on specific national applications level of satisfaction on a 5-point scale number of check percentage last FY (only for reference) 5: Satisfied % 19.0% 4: Somewhat Satisfied % 34.1% 3: Neutral % 35.6% 2: Somewhat Unsatisfied % 9.3% 1: Unsatisfied % 1.9% total % 100.0% *1 1 out of 1761 responses to Sheet B that had been given from a respondent was treated as invalid due to error. 49

96 Fig. 25: Breakdown of the level of satisfaction on the quality of patent examination on specific national applications Fig. 26 shows the changes over years in the level of satisfaction on the overall quality of patent examination on specific national applications. Fig. 26: Changes over years in the level of satisfaction on the overall quality of patent examination on specific national applications 50

97 (ii) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (Breakdown in accordance with the Type of Final disposition) The percentage of positive responses were high in the order of patent-granted applications, decision of refusal without any response, and decision of refusal after a written opinion/amendment, and the difference between them were 10 percent or so, respectively. Table 24 and Fig. 27 show the breakdown of the level of satisfaction on the quality of patent examination on specific national applications that were subject to the survey, in accordance with the type of final disposition. Hereinafter, the expression decision of refusal without any response means the case in which decision of refusal was settled without any written opinion or amendment by the applicant in response to the notification of reasons for refusal immediately before the decision; and decision of refusal after a written opinion/amendment means the case in which decision of refusal was settled after a written opinion/amendment had been issued by the applicant in response to the notification of reasons for refusal immediately before the decision. Table 24: Breakdown of the level of satisfaction on the quality of patent examination on specific national applications (in accordance with the type of final disposition) decision of refusal after level of satisfaction on a decision of refusal decision of refusal a written 5-point scale without any response opinion/amendment 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total

98 Fig. 27: Breakdown of the level of satisfaction on the quality of patent examination on specific national applications (in accordance with the type of final disposition) 52

99 (iii) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Patent-granted Applications) The larger the number of times of notification of reasons for refusal was and the higher the cost for examination procedure was, the lower the percentage of positive responses became, no matter whether it was patent-granted application or not. Table 25 and Fig. 28 show the breakdown of level of satisfaction on the quality of patent examination on patent-granted, specific national applications, in accordance with the number of times of notification of reasons for refusal. Table 25: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: patent-granted applications) notification of notification of notification of notification of level of satisfaction reasons for reasons for reasons for reasons for on a 5-point scale refusal: three refusal: none refusal: once refusal: twice or more times total 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total

100 Fig. 28: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: patent-granted applications) (iv) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Decision of Refusal without any Response) Table 26 and Fig. 29 show the breakdown of level of satisfaction on the quality of patent examination on specific national applications of which final disposition was decision of refusal without any response, in accordance with the number of times of notification of reasons for refusal, respectively. 54

101 Table 26: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal without any response) level of satisfaction on a 5-point scale notification of notification of reasons for reasons for refusal: refusal: once twice total 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total Fig. 29: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal without any response) 55

102 (v) Quality of Patent Examination on Specific National Applications that were Subject to the Survey (in accordance with the Number of Times of Notification of Reasons for Refusal: Decision of Refusal after a Written Opinion/Amendment) Table 27 and Fig. 30 show the breakdown of level of satisfaction on the quality of patent examination on specific national applications of which final disposition was decision of refusal after a written opinion/amendment, in accordance with the number of times of notification of reasons for refusal, respectively. Table 27: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal after a written opinion/amendment) level of satisfaction on a 5-point scale notification of notification of notification of reasons for reasons for reasons for refusal: refusal: refusal: three or more once twice times total 5: Satisfied : Somewhat Satisfied : Neutral : Somewhat Unsatisfied : Unsatisfied total

103 Fig. 30: Breakdown of level of satisfaction on the quality of patent examination on specific national applications (in accordance with the number of times of notification of reasons for refusal: decision of refusal after a written opinion/amendment) 57

104 (vi) Reasons for Positive Responses to the Question asking Level of satisfaction on the Quality of Patent Examination on Specific National Applications that were Subject to the Survey 643 responses indicated, as the reasons for satisfaction, proper judgement of novelty/inventive step and thorough and easy-to-understand description in notifications of reasons for refusal/decision of refusal. Table 28 shows the breakdown of the reasons for positive responses ( 5: Satisfied or 4: Somewhat Satisfied on a 5-point scale) to the question asking level of satisfaction on the quality of patent examination on specific national applications that were subject to the Survey. Table 28: Breakdown of the reasons for positive responses to the question asking level of satisfaction on the quality of patent examination on specific national applications reasons for positive responses number of indications [*1] thorough and easy-to-understand description in notifications of reasons for refusal/decision of refusal 643 proper judgement of novelty/inventive step 553 proper scope of search/proper search results 280 effective communication with examiners such as face-to-face interviews, telephone conversations (suggestion of amendment etc.) 55 others 97 *1 966 responses were valid. When multiple answers were in a single response, the number of indication was counted for each. 58

105 (vii) Reasons for Negative Responses to the Question asking Level of satisfaction on the Quality of Patent Examination on Specific National Applications that were Subject to the Survey Specifically, the top 2 reasons for negative responses were insufficient description on judgement of lack of novelty/inventive step and being unsatisfied with judgement of novelty/inventive step in this order. Table 29 shows the breakdown of the reasons for negative responses ( 2: Somewhat Unsatisfied or 1: Unsatisfied on a 5-point scale) to the question asking level of satisfaction on the quality of patent examination on specific national applications that were subject to the Survey, in accordance with the type of Office Action. Applications to which the negative responses had been given became subject to further detailed analysis (see 3. (2)). 59

106 Table 29: Breakdown of the reasons for negative responses to the question asking level of satisfaction on the quality of patent examination on specific national applications number of response [*1] (indications rate [*2]) reasons for negative responses first notifications of reasons for refusal second notifications of reasons for refusal third or later notifications of reasons for refusal decision of refusal granted patents difficulty in understanding the examiners basis for judgement or intension even after considering notifications 25(1.6%) 5(1.5%) 0(0%) 7(1.7%) of reasons for refusal/decision of refusal insufficient description on the basis for the judgement of lacking novelty/inventive step 81(5.1%) 13(3.9%) 2(9.1%) 16(3.8%) being unsatisfied with judgement of novelty/inventive step 69(4.3%) 17(5.1%) 1(4.5%) 38(9%) 3(0.2%) [*3] more cited documents than necessary 16(1%) 2(0.6%) 1(4.5%) 4(0.9%) 0(0%) being unsatisfied with the judgement of industrial applicability or judgement of whether the subject matter falls under the concept of invention (main paragraph of Article 1(0.1%) 2(0.6%) 0(0%) 0(0%) 0(0%) 29, Paragraph (1)) being unsatisfied with the description on the reason(s) why the descriptive requirements were not met (Article 36, Paragraph 4, Item (i); and Article 36, Paragraph 7(0.4%) 1(0.3%) 0(0%) 0(0%) 6) being unsatisfied with the judgement on violation of descriptive requirements (Article 36, Paragraph 4, Item (i); 22(1.4%) 8(2.4%) 1(4.5%) 5(1.2%) 0(0%) and Article 36, Paragraph 6) being unsatisfied with the judgement on violation of requirements for unity (Article 37) 0(0%) 0(0%) 0(0%) 0(0%) being unsatisfied with scope of search/search results 7(0.4%) 0(0%) 0(0%) 0(0%) 2(0.1%) being unsatisfied with communication with examiners (such as face-to-face interviews, telephone conversations etc.) 0(0%) 1(0.3%) 0(0%) 2(0.5%) 1(0.1%) others 12(0.8%) 5(1.5%) 3(13.6%) 11(2.6%) 1(0.1%) *1 208 responses were valid. When multiple answers were in a single response, the number of indications was counted for each. *2 The indication rates were calculated by dividing the number of responses for each evaluation item by the total number of each Office Action that had been issued for the 1,760 applications being subject to the Survey. The total number of each Office Action was as follows: 1,600 for the first notifications of reasons for refusal, 333 for the second notifications of reasons for refusal, 22 for the third or later notifications of reasons for refusal, 424 for decision of refusal, and 1336 for granted patents. 60

107 (4) Quality of the International Search and International Preliminary Examination on the Specific PCT Applications (i) Overall Quality of the International Search and International Preliminary Examination on the Specific PCT Applications that were subject to the Survey Regarding the quality of International Search and International Preliminary Examination on the specific PCT applications that were subject to the Survey, neutral or better level of satisfaction accounted for 89.1% (90.2% in the last FY). The percentage of the positive response Satisfied or Somewhat Satisfied accounted for 49.0% (53.0% in the last FY). Table 30 and Fig. 31 show the breakdown of level of satisfaction on a 5-point scale on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications that were subject to the Survey. Table 30: Breakdown of level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications level of satisfaction on a 5-point scale number of check percentage percentage in last FY (for reference only) 5: Satisfied % 13.3% 4: Somewhat Satisfied % 39.7% 3: Neutral % 37.2% 2: Somewhat Unsatisfied % 8.4% 1: Unsatisfied 7 1.1% 1.3% total % 100.0% 61

108 Fig. 31: Breakdown of level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications Fig. 32 shows the changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications. Fig. 32: Changes over years in the level of satisfaction on the overall quality of the International Search and International Preliminary Examination on the specific PCT applications 62

109 (ii) Reasons for Positive Responses to the Question asking the Quality of the International Search and International Preliminary Examination on the Specific PCT applications that were subject to the Survey The respondents who checked Satisfied or Somewhat Satisfied (301 valid responses) chose the reasons for satisfaction from the following alternatives (multiple choices allowed). 207 checks were given to the details in the International Search Report / Written Opinion /Preliminary Examination Report were clearly indicated and easy to understand, 183 checks were given to the judgment as to novelty and inventive step was appropriate and 133 checks were given to the scope and results of searches were appropriate. Table 31 shows the aggregated results of reasons for positive responses ( 5: Satisfied or 4: Somewhat Satisfied on a 5-point scale) to the question asking the quality of the International Search and International Preliminary Examination on the specific PCT applications that were subject to the Survey. Table 31: Reasons for positive responses to the question asking the quality of the International Search and International Preliminary Examination on the specific PCT applications reasons for positive response number of check [*1] the details in the International Search Report / Written Opinion / 207 Preliminary Examination Report were clearly indicated and easy to understand the judgment as to novelty and inventive step was appropriate 183 the scope and results of searches were appropriate 133 others [*2] 24 *1 301 responses were valid. When multiple answers were in a single response, the number of indications was counted for each. *2 Some respondents referred to the reasons for positive responses relative to the claim(s) in which the presence of inventive step had been confirmed. The reasons were proper IPC(s) that had been applied to the search, proper indications of cited part of cited document, and so on. 63

110 (iii) Reasons for Negative Responses to the Question asking about the Quality of the International Search and International Preliminary Examination on the Specific PCT Applications that were subject to the Survey The respondents who checked Unsatisfied or Somewhat Unsatisfied (67 valid responses) chose the reasons for their low level of satisfaction (multiple choices allowed). 49 checks were given to the judgement on novelty or inventive step was unsatisfactory and 27 checks were given to the explanation stating the reason(s) why novelty or inventive step was lacking was insufficient. Table 32 shows the reasons for negative responses (2: Somewhat Unsatisfied or 1: Unsatisfied on a 5-point scale) to the question asking about the quality of the International Search and International Preliminary Examination on the specific PCT applications that were subject to the Survey, regarding ISR or WO/ISA and for IPER. Further analysis was conducted on the alternatives the judgement on novelty or inventive step was unsatisfactory, the explanation stating the reason(s) why novelty or inventive step was lacking was insufficient, and insufficient indication of cited parts, to which a number of checks were given from the respondents (see 3.(2)). 64

111 Table 32: Breakdown of the reasons for negative responses to the question asking the quality of the International Search and International Preliminary Examination on the specific PCT applications number of responses [*1] (indication rate [*2]) reasons for negative responses ISR or WO/ISA IPER explanation stating the reason(s) why novelty or inventive step was lacking was insufficient 27(4.4%) 2(3.5%) judgement on novelty or inventive step was unsatisfactory 49(8%) 5(8.8%) Due to insufficient indication of cited parts, it is hard to find the relevant description in the cited 11(1.8%) 0(0%) documents. too many cited documents were presented. 5(0.8%) 1(1.8%) excluded subject matter from searches was unsatisfactory 0(0%) 0(0%) judgment on unity was unsatisfactory. 0(0%) 0(0%) the explanation stating the reason(s) why the description requirements were not met was 2(0.3%) 1(1.8%) unsatisfactory judgment on the requirements for descriptions was unsatisfactory 3(0.5%) 0(0%) scope and/or results of searches were unsatisfactory 5(0.8%) 0(0%) applied International Patent Classification (IPC) was unsatisfactory 0(0%) 0(0%) others [*3] 3(0.5%) 1(1.8%) *1 67 responses were valid. In the case where multiple answers were in a single response, the number of indications was counted for each. *2 The indication rate was calculated by dividing the number of checks by the total number of ISRs and WO/ISAs (614) or the total number of IPERs (57). *3 Others included the comment due to insufficient explanation on the basis for the presence of novelty/inventive step, whether the judgement was proper or not cannot clearly be identified, for example. 65

112 3 Detailed Analysis on the Responses (1) Analysis on the Correlation between Each Item and Overall Level of Satisfaction (i) Details of the Analysis An analysis was conducted on the effect of the level of satisfaction on each evaluation item ( description in notifications of reasons for refusal and practices regarding inventive step etc.); on the level of satisfaction on the overall quality of examination (overall level of satisfaction), in order to identify which item(s) should be the priority focuses of improvement. The degree of effect can be analyzed through the correlation coefficients between the level of satisfaction on the overall quality (on a 5-point scale on the overall quality of patent examination) and the level of satisfaction on each item (on a 5-point scale on each item), as it is common in general customer satisfaction surveys. For example, Fig. 33 shows the connection between the level of satisfaction on each evaluation item (description in notifications of reasons for refusal) and the overall level of satisfaction, in which the diameter of the circle represents the number of responses and the solid line represents a regression line. Fig. 33: Connection between the level of satisfaction on each item and the overall level of satisfaction 66

113 (ii) Correlation Coefficients between the Level of Satisfaction on Each Item and the Overall Level of Satisfaction (National Applications) The top evaluation items with a high correlation coefficient value were description in notifications of reasons for refusal, practices regarding inventive step, level of examiners expertise, and domestic patent literature search. The level of satisfaction on these items had a strong correlation with the overall level of satisfaction and a great effect on the overall level of satisfaction. Therefore, these items as well as the items to which a relatively high level of satisfaction was given seem to be significantly important. Fig. 34 shows the correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction in Sheet A (Survey on national applications). Fig. 34: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (national applications) 67

114 (iii) Correlation Coefficients between the Level of Satisfaction on Each Evaluation Item and the Overall Level of Satisfaction (National Applications) The current overall level of satisfaction was relatively high on the evaluation items practices regarding inventive step, level of examiners expertise, domestic patent literature search, and description in notifications of reasons for refusal. At the same time, the evaluation items had a great effect on the overall level of satisfaction. Therefore, they require continuous improvement. The level of satisfaction on the evaluation items judgement without discrepancies, foreign patent literature search, non-patent literature search, and practices regarding descriptive requirements were relatively low compared to the other items. Therefore, they require improvement. Fig. 35 shows the average level of satisfaction on each item and the correlation coefficients with the overall level of satisfaction. In the graph in Fig. 35, the left side represents a lower level of satisfaction on a 5-point scale and the upper side represents the greater effect on the overall level of satisfaction. The level of satisfaction on the items within the area items with a high priority level at the upper right of the graph currently achieved a high or medium level of satisfaction, and they had a great effect on the overall level of satisfaction. Therefore, failing to maintain the level of satisfaction on these evaluation items may lead to a significant degradation in the level of satisfaction on the overall quality, and thus continuous improvement is required. The level of satisfaction on the evaluation items within the area items to be improved at the lower left of the graph had a relatively small effect on the overall level of satisfaction. However, it had a relatively low level of satisfaction and need to be improved. 68

115 Fig. 35: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (national applications) According to the results of the analysis in Fig. 35, the current level of satisfaction on the item practices regarding inventive step, level of examiners expertise, domestic patent literature search, and description in notifications of reasons for refusal were relatively high in patent examination on national applications. At the same time, they were the items with a high priority level having a great effect on the overall level of satisfaction, and thus need a continuous improvement with a high priority. Meanwhile, judgement without discrepancies, foreign patent literature search, and non-patent literature search gained a relatively lower level of satisfaction, and thus they were the items to be improved. Fig. 36 shows the number of checks in response to the question asking which item(s) should be the focus of improvement, instead of the correlation coefficients in Fig. 35. As in the case of the correlation coefficients between the level of satisfaction on each item and the overall level of satisfaction, the larger the number of checks in response to the question asking which item(s) should be the focus of improvement was, the greater concerns the users had about the item(s). 69

116 Fig. 36: Relation between the current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item(s) should be the focus of improvement (national applications) According to the results of the analysis, in Fig. 36 the evaluation items practices regarding inventive step, judgement without discrepancies, foreign patent literature search, non-patent literature search, and practices regarding descriptive requirements seem to be those that should be the focus of improvement in a similar way to the results in Fig. 35. Fig. 37 shows the changes over years between FY2012 and FY2015 in the correlation coefficients between the average level of satisfaction on each item and the overall level of satisfaction on the evaluation items which received a large number of checks by the respondents as the items that should be the focus of improvement. 70

117 Fig. 37: Correlation coefficients between the current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item(s) should be the focus of improvement (national applications) According to the results of the analysis in Fig. 37, a certain degree of improvement was found in the evaluation items practices regarding inventive step, judgement without discrepancies, and description in notifications of reasons for refusal. Meanwhile, there was not a significant change on the items practices regarding descriptive requirements or foreign patent literature search. Further, these results of the analysis show that the significance of foreign patent literature search had increased between FY2012 and FY

118 (iv) Correlation Coefficients between the Level of satisfaction on Each Item and the Overall Level of satisfaction (PCT Applications) The correlation coefficients between the overall level of satisfaction and each of the items judgement of novelty/inventive step, description of examiners view on novelty/inventive step, IPC accuracy, and domestic patent literature search were high in PCT applications. The correlation between the overall level of satisfaction and the level of satisfaction on these items were higher compared to the other items. In other words, these items have a great effect on the overall level of satisfaction. Therefore, these items seem to be significant, in that they received a relatively high level of satisfaction. Fig. 38 shows the correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction in Sheet C for PCT applications. Fig. 38: Correlation coefficients between the level of satisfaction on each evaluation item and the overall level of satisfaction (PCT applications) 72

119 (v) Correlation Coefficients between the Level of satisfaction on Each Item and the Overall Level of satisfaction (PCT Applications) The correlation between the overall level of satisfaction and the items judgement of novelty/inventive step and description of examiners view on novelty / inventive step was relatively strong. Furthermore, the average level of satisfaction on these items was approximately average for all the items. Therefore, these items are considered to be the focus of improvement. The level of satisfaction on the evaluation items judgement without discrepancies among patent examiners or examination divisions, judgement without discrepancies between the international phase and the national phase, foreign patent literature search and non-patent literature search were relatively low, compared to the other items. Therefore, these items are considered to be the focus of improvement. Fig. 39 shows the average level of satisfaction on each evaluation item and the correlation coefficients with the overall level of satisfaction. In the graph, although the evaluation items within the area items with a high priority level were at approximately average values in all the items, the correlation between the items and the overall level of satisfaction were relatively high. Therefore, these items are considered to be the focus of improvement. The evaluation items within items to be improved had a relatively low level of satisfaction compared to the other items. Therefore, these items are considered to be the focus of improvement. 73

120 Fig. 39: Correlation coefficients between the level of satisfaction on each item and the overall level of satisfaction (PCT applications) Regarding the International Search and International Preliminary Examination on PCT applications, each level of satisfaction on judgement of novelty/inventive step and description of examiner s view on novelty/inventive step was at approximately average in all the items. However, their correlation with the overall level of satisfaction was relatively strong. Therefore, they seem to be the items that should continuously be improved with a high priority. Among these items, the level of satisfaction on the evaluation items judgement without discrepancies among patent examiners or examination divisions, judgement without discrepancies between the international phase and the national phase, foreign patent literature search, and non-patent literature search were relatively low compared to the other items, and these items are considered to be the focus of improvement. Fig. 40 shows the number of checks in response to the question asking which item should be the focus of improvement, instead of the correlation coefficients in Fig. 39, and the average level of satisfaction on each evaluation item. The greater the number of checks in response to the question asking which item should be the focus of improvement is, the greater the significance of the evaluation item becomes, relatively. 74

121 Fig. 40: Current level of satisfaction on each evaluation item and the number of checks in response to the question asking which item should be the focus of improvement (national applications) As shown in Fig. 39 and Fig. 40, it is clear that the respondents consider that the quality of foreign patent literature search should be improved and look forward to the quality of foreign patent literature search becoming the focus of improvement in the future. The evaluation items judgement of novelty/inventive step, description of examiners view on novelty/inventive step, judgement without discrepancies among examiners or examination divisions, judgement without discrepancies between the international phase and the national phase, non-patent literature search were more significant than the other items, and seem to be the items that should be the focus in the future. Fig. 41 shows the changes over years between FY2012 and FY2015 in the correlation coefficients between the overall level of satisfaction and the average level of satisfaction, regarding the evaluation items that received a large number of checks in response to the question asking which item(s) should be the focus of invention. 75

122 Fig. 41: Correlation coefficients between the overall level of satisfaction and the current average level of satisfaction on each evaluation item (national applications) Although there was not such a significant change as in national applications, the level of satisfaction on description of examiners view on novelty/inventive step has improved. Meanwhile, the level of satisfaction on discrepancies in the international phase has degraded. There was not a clear change in the level of satisfaction on judgement of novelty / inventive step, judgement without discrepancies between the international phase and the national phase and foreign patent literature search. 76

123 (2) Analysis on Each Indication on the Specific Applications In addition to the opinions on examination on the specific applications that were covered in the Survey, the respondents specified the applications on which high-quality patent examination or efficient procedures had been conducted or in which some problem in quality had been found, through the comments written in the space for writing comments. The applications in which high-quality patent examination or efficient procedures had been conducted included 96 national applications and 21 PCT applications. The applications in which some problem in quality had been found included 241 national applications and 25 PCT applications. The detailed analysis was conducted on each indication on these specific applications as well as the specific applications themselves (which had been subject to Sheet B or Sheet D) to which the negative response had been given in examination quality. (i) Details of the Analysis As stated above, the respondents specified the applications in which some problem in quality had been found through the comments written in the space for writing comments. Analysis was conducted on each indication on these applications as well as the specific applications that were subject to the Survey to which the respondents gave the negative responses regarding examination quality. A total of 542 applications were analyzed consisting of 241 national applications * and 25 PCT applications which had been indicated in the space provided for writing comments, and 208 national applications and 68 PCT applications which had been subject of the Survey. In this analysis, each answer was classified among items #01 - #57, as shown in Fig. 42 after careful consideration. * Compared to the last FY, the number of comments written in the spaces to write comments, which indicated dissatisfaction with examination quality, significantly decreased by 100 or so. 77

124 indication regarding novelty/inventive step #01 identification of claimed invention #02 identification of cited invention #03 insufficient indication of cited part(s) of cited document(s) (including the cases without part-specifying description) #04 identification of well-known (commonly used) art #05 insufficient presentation of well-known (commonly used) art configuring a basis for judgement (including the cases without presentation thereof) #06 judgement of identical features/differences #07 insufficient description of identical features/differences or comparison (including the cases without presentation thereof) #08 judgment of combination/motivation #09 insufficient description of combination/motivation (including the cases without description) #10 judgment of matters of workshop modification #11 insufficient description of matters of workshop modification (including the cases without description) #12 judgment of operations/effects #13 insufficient explanation for each claim (collective and general description for multiple claims etc.) #14 problems in description or formality other than the items above (difficulty in understanding Japanese itself etc.) #15 others indication regarding descriptive requirements (Article 36) #16 judgement of support requirements (Article 36 (6)-1) #17 judgement of clarity requirements (Article 36 (6)-2) #18 judgement of enablement requirements (Article 36 (4)-1) #19 insufficient explanation/description on descriptive deficiencies #20 others indication regarding unity (Article 37) #21 judgement of unity #22 insufficient explanation/description on violation of unity #23 others indication regarding requirements for amendment #24 judgement of amendment that changes a special technical feature of an invention #25 judgement of new matter #26 judgement of requirements for amendment after final notification of reasons for refusal #27 insufficient explanation/description of requirements for amendment #28 others indication regarding searches #29 setting/determination of search scope (search formula/time period subject to search) #30 insufficient national patent literature search #31 insufficient foreign patent literature search #32 insufficient non-patent literature search 78

125 #33 others indication regarding notifications of reasons for refusal/decision of refusal/decision of granting a patent #34 presentation of proper document(s)/reason(s) for refusal in hindsight #35 suggestion for amendment etc. #36 excessive limitation requirement to the scope of claims during examination procedures #37 judgement so as to issue the final notifications of reasons for refusal #38 insufficient opportunities for response resulting in decision of refusal #39 judgement of granting a patent on applicants' own applications #40 judgement of granting a patent on other applicants' applications indication regarding judgement discrepancies in examination #41 discrepancies among patent examiners or examination divisions #42 discrepancies between related applications with each other due to divisional application etc. #43 discrepancies between the international phase and the national phase at the JPO #44 discrepancies between the examination divisions and the department of appeal #45 discrepancies among foreign patent offices and the JPO #46 others indication regarding specific examiners #47 insufficient technical understanding #48 examiners expertise (background, examination division in charge) #49 insufficient understanding/misapplication of regulations/standards #50 communication such as interview examination/telephone conversations #51 word expressions used in drafts #52 others others #53 examiners careless mistakes or writing errors #54 timing or required time length management of examination #55 dissatisfaction with system/practice itself (not with specified applications) #56 excessive load / cost for procedures (response to notifications of reasons for refusal, demand for trial, etc.) #57 others Fig. 42: List of classified types of indication 79

126 (ii) Overall Trends in the Indications The number of applications to which the respondents indicated either dissatisfaction with or some problem in examination quality has decreased year by year since the start of the Survey. The number of applications to which the respondents were dissatisfied with judgement of novelty/inventive step has decreased. Meanwhile, there was not a significant decrease in the number of applications to which the respondents indicated dissatisfaction with descriptive requirements. Fig. 43 shows the changes over years in the number of applications to which the respondents indicated either dissatisfaction with or some problem in examination quality on the specific national applications or specific PCT applications. In the following figures, the number of applications is normalized in accordance with the total number of responses in each FY. Fig. 43: Number of applications to which the respondents indicated either dissatisfaction with or some problem in examination quality, and the breakdown of the items corresponding to the dissatisfaction/problem. 80

127 (iii) Indications regarding Novelty/Inventive Step The number of indications related to insufficient indications of cited part(s) of cited document(s), description of identical point(s)/different point(s), and description for each claim has decreased year by year. There was not a steady decrease in the number of indications related to identification of cited inventions, description of combination / motivation, description of matters of workshop modification, and judgement of operations/effects. Fig. 44 shows the breakdown of indications related to novelty/inventive step in Fig. 43. Fig. 44: Breakdown of indications related to novelty/inventive step 81

128 (iv) Amendment Indications regarding Descriptive Requirements, Unity, and Requirements for There was not a significant decrease in the number of indications related to descriptive requirements. In particular, the indications related to judgement of support requirements (Article 36 (6)-1) may possibly be increasing and need careful observation. Fig. 45 shows the breakdown of indications in Fig. 43, especially on the indications related to descriptive requirements (Article 36), unity (Article 37), and requirements for amendment(s). Fig. 45: Breakdown of the indications related to descriptive requirements. 82

129 (v) Indications regarding Searches, Notifications of Reasons for Refusal, and Decision of Granting a Patent There is not a steady decrease in the number of indications presentation of document(s) in hindsight, insufficient opportunities for response and judgement of granting a patent on other applicants' applications. Fig. 46 shows the breakdown of indications in Fig. 43, especially on searches, reasons for refusal, decision of refusal, decision of granting a patent. Fig. 46: Results of the analysis of indications on searches, reasons for refusal, decisions of refusal, and decisions of granting patents (vi) Other Aspects Indications related to Discrepancies in Judgement, Specific Examiners, and The number of indications discrepancies among patent examiners or examination divisions and discrepancies between the international phase and the national phase has not been decreased. 83

130 Fig. 47 shows the results of the analysis of indications in Fig. 43, especially on discrepancies in judgement, indications on specific examiners, and the other aspects. Fig. 47: Results of the analysis of indications on discrepancies in judgement, indications on specific examiners, and the other aspects 84

131 (vii) Changes in the Number of Indications / Responses on National Applications and PCT Applications As a result of the analysis on the number of indications on national applications and PCT applications, the number of indications on national applications has changed in a similar way to the number of indications on the overall quality. Meanwhile, the number of indications on PCT applications has been fluctuating and there was no steady decrease. Fig. 48: Changes in the number of indications on national applications and PCT applications over years The number of indications on novelty/inventive step on PCT applications showed a particular type of change. Fig. 49A and Fig. 49B show the breakdown of indications related to novelty / inventive step, respectively. 85

132 Fig. 49A: (national applications) Changes over years in the number of indications on novelty/inventive step Fig. 49B: (PCT applications) Changes over years in the number of indications on novelty/inventive step 86

133 The number of indications on identification such as identification of claimed invention, identification of cited invention, cited part(s) of cited document(s), and description of identical features/differences has either remained the same or decreased over years for national applications. Meanwhile, the number of indications on these identification has either remained the same or increased over years for PCT applications. 87

134 4. Main Points of the Results of the Survey in FY2015 In the Survey in FY 2015, as many as 54.2% of the respondents gave positive responses, that is, Satisfied or Somewhat Satisfied with the overall quality of patent examination. In FY2012, when the Survey started, the percentage of the positive responses was 31.6% and gradually increased year by year. A similar change was seen in the level of satisfaction on description in notifications of reasons for refusal. The percentage of positive responses on this item has continuously increased to 55.2% in FY2015, from 35.8% in FY2012. The overall level of satisfaction on quality of the International Search and International Preliminary Examination on PCT applications has gradually improved. However, the change was not as steady as that for the items on national applications in regard to prior art searches. In view of the above, the responses to the question that asks which item should be the focus of improvement, and the comments written in the space for writing comments, the main points that should be the focus of improving or further enhancing quality were studies as follows. (1) Maintaining or Enhancing Quality of Descriptions in Notifications of Reasons for Refusal, the International Search Reports (ISR), and the Written Opinions of the International Searching Authority (WO/ISA) As described above, the level of satisfaction on description in notifications of reasons for refusal has improved year by year. Out of the 585 responses to the question that asks about description in notifications of reasons for refusal, 135 responses involved positive opinions such as description in notifications of reasons for refusal became more detailed and thorough/easy-to-understand. Furthermore, the level of satisfaction on description of examiner s view on novelty/inventive step in WO/ISA on PCT applications also represents either the maintaining or enhancing of quality. These descriptions in notifications of reasons for refusal, ISRs, and WO/ISAs highly correlate with the overall level of satisfaction on quality, compared to the other evaluation items. Therefore, it appears that users focus on these items. Nevertheless, there were still some responses indicating insufficiencies with the description of the judgement process in examination such as identical features/differences, cited part(s) of cited document(s), and combination/motivation. 88

135 Therefore, continuous efforts to either maintain or further enhance quality are required for descriptions in notifications of reasons for refusal, ISRs, and WO/ISAs. This means providing more detailed and thorough descriptions of the judgement process in examination, which leads to easy-to-understand drafts for users. (2) Improvement in Prior Art Search Expertise and Search Quality The examination results of national applications and the details written in the International Search and International Preliminary Examination serve as a basis for users to decide whether to file applications to foreign offices, or whether to have the applications enter into the national phase. In order for the examination results of national applications and the details written in the International Search and International Preliminary Examination to be more frequently and effectively used in examination at foreign offices, their reliability must be improved. Therefore, efforts to maintain and further enhance expertise for conducting searches on domestic patent literature, foreign patent literature, and non-patent literature are needed. This is seen from the fact that a number of respondents indicated that expertise for searching for foreign patent literature and non-patent literature should be enhanced. Further, a stable system and arrangement for prior art searches should be established. The International Search and International Preliminary Examination on PCT applications are followed by examination in the national phase in other offices, in which laws, regulations, and practices may different from each other. In view of this, searches and analyses should be conducted to identify more specific user needs, in order to facilitate their acquiring rights at any IP office. (3) Proper Practices regarding Descriptive Requirements for Description/Claims and Proper Practices regarding Novelty/Inventive Step The Survey in FY2015 was conducted between August and November in It was immediately after the provisional practice on product-by-process (PBP) claims on national patent applications was started. Accordingly, 50 opinions/requests * were given, asking proper practices be implemented to deal with descriptive requirements for description/claims, including requests for proper practices on PBP claims. These requests should be used for updating examiners knowledge about practices in regulations on descriptive requirements, and that updated laws and regulations should be * A total of 481 requests were made, which included requests regarding description in notifications of reasons for refusal, judgement of novelty, and judgement of inventive step. 89

136 reflected in examination practices. Some respondents indicated that there were discrepancies among patent examiners or examination divisions regarding novelty/inventive step or descriptive requirements. In aiming to achieve more effective improvements, more detailed surveys and analyses on these discrepancies in judgement are required. 5. Measures to Address to the Issues Identified from the Results of the Survey The Survey corresponds to the CHECK procedures within the PDCA Cycle, which is designed to maintain and enhance the quality of patent examination according to the Quality Management Manual for Patent Examination. Specifically, identifying the current status of the patent examination quality by conducting the Survey (CHECK) is required, in order to determine which procedure(s) should be the focus of improvement within the limited resources (ACT), properly reflect the improvement on the measures in the future (PLAN), and then implement the measures (DO). 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 these main points. Furthermore, the JPO will announce its quality management system and the implementation status of the system on our website and through other media. 6. Future of the User Satisfaction Survey The Survey has basically been conducted in the same way since the first one was conducted in FY2012 (there were 718 respondents in FY2015), with approximately 90% of respondents indicating that they have an understanding about and a keen interest in the Survey. During these years, the JPO has improved the strategies for conducting the Survey, under the aim of obtaining information on user satisfaction on the JPO s quality management. In FY2013, the JPO added and amended the questionnaire items in the Questionnaire Sheets. This was done to improve the information-gathering process. From this FY, the JPO again changed the Survey, in FY2014 introducing the option of anonymous/onymous responses and directly contacting foreign-resident applicants. In FY2015, in view of the Survey results, the JPO has made efforts to identify the issues that need to be addressed individually, making efforts to improve its patent examination and operating procedures. Based on the above, the JPO has achieved an understanding about the level of satisfaction by users. 90

137 The JPO will conduct a similar survey in FY 2016, and even after, making necessary improvements in order to continuously identify users needs. For future Surveys, the JPO will review the timing, method, strategies for selecting applications and respondents, and the questionnaire items, making improvements going forward. Furthermore, the JPO established the Subcommittee on Examination Quality Management under the Intellectual Property Committee of the Industrial Structure Council, Ministry of Economy, Trade and Industry. The Subcommittee evaluates the JPO s state of implementing the quality management system and suggests improvements, by having discussions. The results of the Survey are utilized as a basis for discussion. Acknowledgment The JPO expresses our gratitude to all the respondents for their generous time in taking the Survey. In order to maintain and enhance the quality of patent examination, the JPO will continue to conduct the surveys on user satisfaction with the JPO s quality. Based on the results, the JPO will enhance its patent examination and operating procedures. The JPO appreciates your continuous support. 91

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