<Annex>
Final Analysis Report of the In-depth Survey on Patent Laws and IT System of IP5

Ⅰ. Objective of the in-depth survey
This project will be advanced based on the results of the in-depth study so as to achieve the goals of
reducing the burdens on the applicant for submission of prior art references and improving worksharing efficiency. The IP5 offices have their unique patent laws and examination systems related tothe submission of prior art references, and have, in this regard, used different IT solutions at each
office. Therefore, the IP5 Offices should investigate which documents related to prior art at each
office could be exchanged electronically at this stage, and which documents could be prepared forelectronic exchange in the near future for the completion of this project. In fact, a fact-finding study
on the citation of prior art was endorsed at the Heads meeting held in May 2015. However, an
additional fact-finding study is required at this stage before designing a prototype of a potential IT
system because the patent laws and examination systems/practices may be revised, reflecting the
trading system, as well as technological development. With regard to KIPO, based on the revised
Korean Patent Act which went into effect from March 2017, a new system was introduced to request
the results of patent examination conducted by other IP offices on an application on which priority isclaimed. Therefore, it seems necessary to conduct an in-depth survey on the current status quo, in thisregard, of each office, and this will be one of the core activities for the successful output of this project.

Ⅱ. Main contents of this survey
To achieve the goals of this project, this survey focused mainly on patent examination systems,
practices, IT systems, and solutions. There are two parts in this survey. The first is a survey on
business processes including practices which will be primarily dealt with by PHEP experts at each
office. The second part is a survey on IT systems which will be primarily dealt with by WG2 experts
at each office. The responsibility for both groups in terms of what needs to be evaluated for thesurvey is listed below:-(PHEP) The patent laws, examination systems and practices of each office related to citationof prior art will be investigated. The survey will also focus on the scope of documents thatpatent applicants have to submit and a new business process highly related to IT system design,specifically regarding applicants’ submission of prior arts.

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-(WG2) IT systems and the preparation of data exchange at each office with respect to citationof prior art will be investigated. The survey will also concentrate on details, such as creation ofprior art information/data and data exchange between offices.

It is desirable that the PHEP experts and WG2 experts at each office should work closely on thissurvey and complete the questionnaire because the business processes, including practices and IT
systems, are dependent and highly connected.
This survey was conducted as a collaboration of the PHEP and WG2 experts at KIPO, and thenreviewed by the PHEP and WG2 experts at the USPTO.

Ⅲ. Main contents of this report
The survey data was collected in a matrix format, resulting in varying kinds of responses to thesurvey. As the survey questions had varying types of formats, and uniform responses were notreceived from the offices. Therefore, the analysis report presents each office’s response as it is.
Further, by analyzing each category specifically, we believe that only meaningful results were
included. To ensure that the analysis results were presented with an unbiased viewpoint, we
attempted to provide analysis results based on the facts of the responses. The data submitted by each
office and annexed to this report will become a basis of the future operations.

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Ⅳ. Final results of the survey

1.

Business processa) Survey resulta-1) Necessity of applicants’ request for providing documents (Y/N)
A survey result of whether applicants’ request is essential before prior art is being provided throughan IT system and of relevant reasons is as follows:

EPO

JPO

Necessity
Preferable method of submission(Y/N)
Y
The Applicant has to provide under Rule 141 EPC.
A secure delivery of citation data preferably via a Web Service.
N
The data shall be transmitted in an XML formatted way.
Unpublished phase : Applicants themselves submit prior art
Yreferences.
N
Published phase : No restrictions

KIPO

Y

Check-box form

CNIPA

N

Not increasing the burden of the users on the transmission

USPTO

N

Automatically retrieving/receiving, but one possibility is to allow
the applicant to build an IDS on-demand in Global Dossier.

a-2) Necessity of notification of the receipt to applicants
As prior art is provided/exchanged through an IT system, a relevant survey was conducted withrespect to 1) whether the transmission of the prior art should be noticed to applicants and 2) which
office should provide submission status to applicants, if needed.
EPO: The EPO currently does not foresee a check mechanism from the applicant to see if what has
been transmitted is complete. This greatly simplifies the process. This transmission will not be overly
prone to mistakes if the tools are properly designed.
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JPO: If prior art citations are in published applications, the JPO considers that there is no need to
notify patent applicants. When prior art citations are in unpublished applications, and if exchanging
information of prior art citations requires approval from patent applicants, the JPO can be flexible onsending notices to applicants. Since receiving offices will have better information in this regard, thereceiving offices should notify applicants.
KIPO: Necessary. Citation of prior art transmitted by a providing office could not be expected to bematched with the prior art that a receiving office receives, due to either error in data processing or
system delay. Therefore, it is much better for each office to directly notify patent applicants.
CNIPA: Unnecessary. The citation of prior art should be considered as the internal function withineach office.
USPTO: Necessary. It is important to notify applicants as to which references have been imported
into the application, so that they are aware of which references are being considered by the examinerand so that the applicant does not otherwise provide those citations to the USPTO via an IDS. The
USPTO prefers that the Receiving Office notify patent applicants, since the Receiving Office would
be responsible for determining whether references are placed into an application for consideration by
the examiner.

a-3) ‘To be Model’ among business model cases

Each office made a preference among Business Model cases 1-3 that were previously proposed by
the leading offices. CNIPA and the USPTO have selected case 3, and KIPO chose cases 1 and 2 but
also mentioned that case 3 would be a proper alternative. The JPO and the EPO did not indicate any
preferences.

b) Analysis

Based on survey results, each office’s opinion on new business models will be analyzed. With respect
to whether applicants have to agree on the submission of prior art, each office is in a different
position: For example, whether or not an application has been published should be factored in.
Additionally, with regard to transmitting prior art references, burdens on applicants should be
minimized. Further, each office has a different opinion on the necessity of providing an application
with submission status. Among business model cases 1-3 that were previously proposed, business
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model case 3 was best preferred by the IP5 offices. To put it all comprehensively, the most important
aspect is to minimize the burden on the applicant with respect to the submission of prior art while, atthe same time, considering matters raised by whether an application is in a prepublication or
published status.

2.

In-depth survey of law & practice

2.1.

Survey on the patent laws and the patent examination system of each officea) Survey resulta-1) Legal basis regarding submission of prior art
The following are the legal basis of each office for the submission of prior art references. The survey
was conducted by entity, i.e., whether it is the applicant or a third parties.

EPO
JPO
KIPO

Concerned Party

Legal Basisapplicants

Art 83 EPC, Rule 42(1)(b) EPC, Rule 141 EPC

third parties

Art 115 EPC

applicants

Article 36 (4) (ii) of the Patent Act in Japan

third parties

Article 13bis of the Regulations under the Patent Act in Japanapplicants

Article 42(4)ii, 63(3), 61 of the Patent Act of Korea

third parties

Article 63(2) of the Patent Act of Korea

applicants

Article 36 of Chinese Patent Law, Rule 17 of Chinese Patent
Implementing Regulations

third parties

Rule 48 and related 4.9, Chapter 8, Section 2 of Guideline

applicants

37 CFR 1.56, 37 CFR 1.97 and 1.98

third parties

35 U.S.C. 122( e), 37 CFR 1.290

CNIPA

USPTO

a-2) The case where the applicants or third parties submit prior art
A survey was conducted on the specific cases as to whether prior art references should be submitted
based on the specific legal basis.

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Legal Basis
Art 83EPO

Rule 42(1)(b)

The applicant must disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled in theart.
The description should indicate any background art.

Rule 141

An applicant claiming priority must file a copy of the search results
carried out on the priority application.

Art 115

Third parties can present observations regarding the patentability of
the invention claimed in a European patent application or patent.

Article 36 (4) (ii)

The source of the information concerning the inventions known tothe public through publication should be described in the detailed
description of the invention when the person requesting the grant ofa patent has knowledge of any inventions related to said invention,
which is known to the public through publication at the time of filingof patent application.

Article 13bis

Third parties can present information showing that the invention
claimed in the patent application has no novelty nor inventive step,and the like, in the patent application pending in the Patent Office.

Article 42(4)ii

Prior art information in the “background art” section in thespecification in filing an application.

Article 63(3)A patent applicant can submit citation information of other offices if
an examiner considers that the examination results of other offices
are necessary.

Article 61

As for an accelerated examination, the patent applicant should
submit prior art information and references.

Article 63(2)Third parties can submit prior art information and references
regarding the application.
When the applicant for a patent for invention requests examination
as to substance, he or it shall furnish pre-filing date referencematerials concerning the invention.
If an application has been filed for an invention patent in a foreigncountry, the patent administration department under the StateCouncil may require the applicant to submit prior art. However, it is
not mandatory to separately submit cited documents of foreign
offices.

JPO

KIPO

Article 36

CNIPA

Rule 17

The description of an application for a patent for invention or apatent for utility model shall state the title of the invention or utility
model, which shall be the same as it appears in the request. The
description shall include the following:
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[…](2) background art: indicating the background art which can be
regarded as useful for the understanding, searching and examinationof the invention or utility model, and when possible, citing the
documents reflecting such art;[…]
Rule 48

Any person may, from the date of publication of an application for apatent for invention till the date of announcing the grant of the patentright, submit to the patent administration department under the StateCouncil his observations, with reasons therefor, on the application
which is not in conformity with the provisions of the Patent Law.

37 CFR 1.56, 37
CFR 1.97 and

The Office encourages applicants to carefully examine:(1) Prior art cited in search reports of a foreign patent office in acounterpart application, and(2) The closest information over which individuals associated withthe filing or prosecution of a patent application believe any pending
claim patentably defines, to make sure that any material information
contained therein is disclosed to the Office.
Under this section, information is material to patentability when it is
not cumulative to information already of record or being made ofrecord in the application, and(1) It establishes, by itself or in combination with other information,a prima facie case of unpatentability of a claim; or(2) It refutes, or is inconsistent with, a position the applicant takesin:(i) Opposing an argument of unpatentability relied on by the Office,or(ii) Asserting an argument of patentability.

1.98

USPTO

35 U.S.C. 122( e), A third party may submit, for consideration and entry in the record
37 CFR 1.290
of a patent application, any patents, published patent applications, orother printed publications of potential relevance to the examinationof the application if the submission is made in accordance with 35
U.S.C. 122(e) and 37 CFR 1.290.

a-3) Time limit of submission
The following table is a survey result for time limit for submission according to the specific legal
basis:

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Legal Basis
Rule 42(1)(b)EPO

Rule 141

When filing the subsequent application with the EPO.

Art 115

Third party observations can be filed after publication of theEuropean patent application and will be taken into account, provided
that the application is still pending.

Article 36 (4) (ii)
JPO

KIPO

CNIPA

When filing an application.

Article 13bis

When the patent application is pending in the Patent Office. After
granting a patent, the submission of information under Article 13terof the Regulations under the Patent Act is possible.

Article 42(4)ii

When filing the application.

Article 63(3)During examination.

Article 61

When filing the accelerated application.

Article 63(2)When the application is pending.

Article 36(1)When the applicant requests examination as to substance

Article 36(2)Within a specified time limit, laid down by the examiner

Rule 17

When filing the application.

Rule 48

Before the notice of grant

37 CFR 1.56, 37
CFR 1.97 and
1.98

USPTO

When filing the application.

In order for an applicant for a patent, or for a reissue of a patent, tohave an information disclosure statement in compliance with § 1.98
considered by the Office during the pendency of the application, theinformation disclosure statement must satisfy one of paragraphs (b),(c), or (d) of this section;(b) An information disclosure statement shall be considered by the
Office if filed by the applicant within any one of the following time
periods:(1) Within three months of the filing date of a national application
other than a continued prosecution application under § 1.53(d);(2) Within three months of the date of entry of the national stage as
set forth in § 1.491 in an international application;(3) Before the mailing of a first Office action on the merits;(4) Before the mailing of a first Office action after the filing of arequest for continued examination under § 1.114; or(5) Within three months of the date of publication of theinternational registration under Hague Agreement Article 10(3) in aninternational design application.
(c) An information disclosure statement shall be considered by the
Office if filed after the period specified in paragraph (b) of thisPage 13 of 30

section, provided that the information disclosure statement is filed
before the mailing date of any of a final action under § 1.113, a
notice of allowance under § 1.311, or an action that otherwise closes
prosecution in the application, and it is accompanied by one of:(1) The statement specified in paragraph (e) of this section; or(2) The fee set forth in § 1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:(1) The statement specified in paragraph (e) of this section; and(2) The fee set forth in § 1.17(p) .
35 U.S.C. 122( e), 37 CFR 1.290, any third-party submission must be filed prior to the
37 CFR 1.290
earlier of: (1) The date a notice of allowance under §1.311 is given
or mailed in the application; or (2) The later of: (i) Six months after
the date on which the application is first published by the Officeunder 35 U.S.C. 122(b) and § 1.211, or (ii) The date the first
rejection under §1.104 of any claim by the examiner is given or
mailed during the examination of the application.

a-4) Minimum number of prior art to be submitted
The following results are the minimum number of prior art references that may be cited according to
the specific legal basis:
Legal Basis
EPO
JPO

KIPO

CNIPA
USPTO

Rule 42(1)(b)

One or more.

Art 115

One or more.

Article 36 (4) (ii)One or more.

Article 13bis

One or more.

Article 42(4)ii

One or more.

Article 63(3)One or more.

Article 61

More than four.

Article 63(2)One or more.

Article 36(2)One or more.

Rule 17

One or more.

Rule 48

One or more.

37 CFR 1.56, 37

One or more.
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CFR 1.97 and1.98
35 U.S.C. 122( e), At least one. More than three incurs fees in accordance with 37 CFR
37 CFR 1.290
1.290.

a-5) Legal restraints of prior art not being submitted
The following table is the survey results of legal restraints where prior art references are notsubmitted:
Legal Basis

EPO

Rule 42(1)(b)

For later identified relevant documents, the applicant may be invitedby the examiner. Otherwise, the application will be refused (Art.
97(2) EPC) or the patent revoked (Art. 101(2) EPC).

Rule 141

Where the applicant fails to reply in due time, i.e. either provide thesearch results or furnish the statement of non-availability, theEuropean patent application will be deemed to be withdrawn (Rule70 b(2) EPC).

Article 36 (4) (ii)

The decision of refusal in the case (1) or (2) below,(1) Where the information on prior art documents has not been
disclosed, and the written opinion does not provide a rational
explanation that there is no invention known to the public throughpublication(2) Where the information on prior art documents is disclosed by theamendments, but appropriate information on prior art documents is
not disclosed

Article 42(4)ii

The decision of rejection.

JPO

KIPO
CNIPA

USPTO

Article 61

An accelerated examination is dismissed.

Article 36(2)Deemed to have been Withdrawn.

Rule 1737 CFR 1.56, 37
CFR 1.97 and
1.98

May be rejected.
No patent will be granted on an application in connection with which
fraud on the Office was practiced or attempted or the duty of
disclosure was violated through bad faith or intentional misconduct.

a-6) Additional prior art to be submitted
A survey of whether other prior art references should be additionally submitted is also conductedwith respect to the specific legal basis:
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Legal Basis

Art 115

Supporting documents, e.g. prior art citations, can be written in any
language. The Office may require the third party to file a translation
into an official language. If the required translation is not filed in duetime, the EPO may disregard the document in question.

37 CFR 1.56, 37
CFR 1.97 and1.98

The Office encourages applicants to carefully examine:(1) Prior art cited in search reports of a foreign patent office in acounterpart application, and(2) The closest information over which individuals associated withthe filing or prosecution of a patent application believe any pending
claim patentably defines, to make sure that any material information
contained therein is disclosed to the Office

EPO

USPTO

35 U.S.C. 122( e), Any third-party submission under 37 CFR 1.290 must include:
37 CFR 1.290(1) A document list identifying the documents, or portions of
documents, being submitted in accordance with paragraph (e) 37
CFR 1.290;(2) A concise description of the asserted relevance of each item
identified in the document list;(3) A legible copy of each item identified in the document list, otherthan U.S. patents and U.S. patent application publications;(4) An English language translation of any non-English language
item identified in the document list; and(5) A statement by the party making the submission that:(i) The party is not an individual who has a duty to disclose
information with respect to the application under § 1.56; and(ii) The submission complies with the requirements of 35 U.S.C.
122(e) and 37 CFR 1.290.

b) Analysis
The patent system of each office has been surveyed with regard to prior art submission. Each officeprescribes that applicants should, in principle, submit prior art references, and that third parties could
also submit prior art references. Regarding a time limit for prior art submission and legal restraints
where prior art is not submitted, each office applies a different legal basis, while the minimum
number of prior art references to be submitted is almost the same between offices. In this regard, indesigning a prior art submission model, each office should focus on minimizing the gap, and to thisend, the legal demands of a receiving office should also be factored in.

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2.2.

Documents to be submitteda) Survey resulta-1) Required documents
In section 2.1, a survey on the legal basis regarding prior art submission was conducted. In thissection, substantive information on prior art references to be submitted is surveyed on the specificlegal basis, and the results are as follows:
Legal Basis

EPO

JPO

KIPO

CNIPA

USPTO

Rule 42(1)(b)

Background, i.e. prior, art which as far as known to the applicant
can be useful to understand the invention, draw up the European
search report and examine the European patent application

Rule 141

Search results of the priority application.

Article 36 (4) (ii)

The detailed explanation of the invention.

Article 13bis

The Information Statement.

Article 42(4)ii

Information of prior art in the specification.

Article 63(3)Citation information related to examination results of otheroffices.

Article 61

Prior art information and references related to the patentapplication.

Article 63(2)Prior art references which can be used as supporting documents toreject the patent application.

Article 36(1)Pre-filing date reference materials concerning the invention

Article 36(2)Search results of the priority application

Rule 17

The background art

Rule 48

Prior art information

37 CFR 1.56, 37
CFR 1.97 and 1.98

Information Disclosure Statements.

35 U.S.C. 122( e),37 CFR 1.290

Prior art references which can be used as supporting documents toreject the patent application.

a-2) A specific scope of the documents
In this section, the specific scope of prior art references to be submitted is surveyed:

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Legal Basis
EPO

Rule 42(1)(b)Art 115

Article 36 (4) (ii)

The provision does not differentiate between patent and non-patent
literature.
Observations that concern substantive requirements of the EPC.
All of the cases shown in (i) to (iv) below,(i) To be inventions known to the public through publication(ii) To be inventions relating to the invention for which patent issought(iii) To be inventions known to applicant(iv) To be inventions known to applicant at the time of filing of thepatent application
Information that can be submitted is the following (1) - (9),(1) Information that a patent shall not be granted for the claimed
invention of the subject application according to the provisions of

JPO

Article 13bis

respective items of Article 29(1) of the Patent Act (Novelty)(2) Information that a patent shall not be granted for the claimed
invention of the subject application according to Article 29(2) of the
Patent Act (Inventive step)(3) Information that a patent shall not be granted for the claimed
invention of the subject application according to the provision of
Article 29bis of the Patent Act (Secret prior art)(4) Information that a patent shall not be granted for the claimed
invention of the subject application according to the provisions ofArticle 39(1) to (4) of the Patent Act (Prior application)(5) Information that the claimed invention of the subject application
is not an invention of the main paragraph in Article 29(1) of the
Patent Act or an industrially applicable invention(6) Information that the subject application does not satisfy thedescription requirements provided in Article 36(4) or (6) of the
Patent Act (excluding information related to Article 36(6)(iv) of thesame Act)(7) Information that the amendments of the description, claims ordrawings, attached to the request of the subject application do notsatisfy the requirements provided in Article 17bis (3) of the Patent
Act (including new matter)(8) Information that matters stated in description, claims or drawings
attached to a request for application in foreign language are notwithin a range of matters stated in the original language text
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(including new matter as to the original text)(9) Information that matters stated in description, claims or drawings
attached to a request for foreign language patent application, etc. are
not within a range of matters stated in description, claims ordrawings on the international filing date, etc. (including theconstructive international filing date) (foreign language patentapplication, etc. including new matter as to the original text)
Article 42(4)ii

Prior art which patent applicants understand well in filing the patentapplication.

Article 63(3)Examination results of the country where the patent application
claims priority.

Article 61

For prior art information and references that patent applicantsconsider to be relevant to the patent application or that an outsourced
searcher discovers.

Article 63(2)Prior art references that are used as supporting documents to denypatentability of the patent application and were published before thedate of the filing of the patent application.

Article 36(1)Pre-filing date reference materials concerning the invention

Article 36(2)Search results of the priority application

KIPO

CNIPA

USPTO

Rule 17

The background art

Rule 48

Prior art information

37 CFR 1.56, 37
CFR 1.97 and
1.98(1) It establishes, by itself or in combination with other information,a prima facie case of unpatentability of a claim; or(2) It refutes, or is inconsistent with, a position the applicant takesin:(i) Opposing an argument of unpatentability relied on by the Office,or(ii) Asserting an argument of patentability.

35 U.S.C. 122( e), Prior art references which can be used as supporting documents to
37 CFR 1.290
reject the patent application.

b) Analysis

In this section, the specific scope of prior art references to be submitted is surveyed. Followed by asurvey of each office’s patent system, the specific scope and reason for submission are surveyed on
the specific legal basis. A streamlined model should be conceived by taking into consideration that
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each office’s patent system and submitted prior art references are different from each other. It is
primarily considered in designing a proper model to minimize the difference, and to this end, itshould be prioritized as to what kinds of documents a receiving office demands.

2.3.

Details of documents to be submitteda) Survey result
Through this section, matters under section 2.2 above are more specifically surveyed. In effect,
among prior art references to be submitted on the legal, desirable and essential documents are
separately surveyed on the specific legal basis. The results are as follows:
Legal BasisEPO

Art 115

Desirable: Prior art citation which is translated into one of the EPO
official languages.

Article 36 (4) (ii)Desirable: It is enough to describe the source of the information
concerning the inventions known to the public through publicationthat were known to the applicant at the time of filing the patentapplication. Also, the information on prior art documents is required
to be described in the detailed description of the invention.

Article 13bis

Optional: The information provider can submit "documents" for the
purpose of certifying that the information that he/she intends tosubmit is correct. The "documents" that can be submitted include
publications, a copy of descriptions, claims of the patent or utility
models registration or drawings, attached to a request for a patentapplication or an application for a utility model registration, andcertificate such as experimental report.

Article 42(4)ii

Essential: Exact and detailed information of prior art in thespecification (Application No., Publication No. and Registration
No.)
Desirable: Copy of prior art references.

Article 63(3)Desirable: Citation information related to examination results ofother offices.

Article 61

Essential: Copy of prior art references.

Article 63(2)Essential: Copy of prior art references.

JPO

KIPO

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Article 36
CNIPA

Rule 17

Essential: Copy of prior art references

Rule 48

USPTO

37 CFR 1.56, 37
CFR 1.97 and1.98

Essential: Copy of prior art reference, except U.S. patent documents
Desirable: Translation of foreign references

35 U.S.C. 122( e), Essential: Copy of prior art reference, except U.S. patent documents
37 CFR 1.290
Desirable: Translation of foreign referencesb) Analysis

Section 2.3 more specifically divides the survey results of section 2.2. In effect, the EPO and the JPO
do not demand essential documents, but other offices partially demand essential documents. In thecase of desirable documents, as it is not necessarily demanded by each office, in designing a prior art
submission model, a desirable document does not have to be essentially considered, but is deemed to
be in a buffer zone.

2.4.

Prior art references stored in the IT system of each officea) Survey result
As with an IT system of each office, documents that include prior art references and entities are
surveyed as such:
EPO

Document
The question requires some clarifications.

Entities①Search Report
JPO

Examiner
Examiner②Decision of refusal
Examiner③Report of reconsideration by examiner before appeal Examiner①Notification of reasons for refusal④Decision to decline the amendment
KIPO①Search report②Decision of refusal③Notification of reason for refusal

Outsourcing
Examiner
Examiner
Examiner
Examiner
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④Notification of Preliminary examination result⑤Decision of patent grantApplicantThird party
Application⑥Submission of documents⑦Third party observation⑧Request for accelerated examination
CNIPA
USPTO

①Search Report
Information Disclosure statements(IDS)②PTO-892③Third-party Preissurance submissions④Non final rejection⑤Final rejection

Examiner
Applicant
USPTO
Third party
USPTO
USPTO
USPTO

⑥Notice of allowanceb) Analysis

The EPO, KIPO and CNIPA noted that prior art is enclosed in the search report. Further, the JPO,KIPO and the USPTO noted that prior art is also enclosed in the first office action (non-final
rejection) and the final rejection.

2.5.

Others

Besides the aforementioned surveys, each office responded to other supplementary surveys. The
results are as follows:a) Survey resulta-1) Examination information of unpublished application
Each office’s position was surveyed on whether information of non-published applications should be
included in the business scope of the project.

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EPO: Examination information could also be shared as being part of the patent grant process andbeing relevant to other IP5 Offices for work sharing purposes.

JPO: Exchanging examination information on unpublished applications will enhance our chances ofadvancing work sharing. On the premise that patent applicants’ agreements exist, the JPO considers
that it would be useful for us to discuss this matter. However, we should also take into accountpossible burdens on our systems

KIPO: As the examination proceeding of each IP office is completed before the publication of apatent application, the demand for unpublished patent applications is largely increasing. Therefore,
KIPO considers that it is desirable to include unpublished patent applications in the current project,provided, however, that 1) patent applicants agree and that 2) security of an IT system is guaranteed.

CNIPA: There are certain legal and security constraints that must first be addressed regarding
unpublished data.

USPTO: For applications where applicants have given permission to allow the exchange of
unpublished application data, the USPTO is open to considering this possibility of providing certain
limited application data, but notes that there are certain legal and IT security constraints that mustfirst be addressed before the USPTO is able to commit to this possibilitya-2) The information exchange mode of NPL
As prior art references, Non-patent literature (NPL) is as important as patent documents. However, as
NPL is inter-related with the copyright issues and the form of NPL documents is different from thatof patent documents, serious consideration should be taken in exchanging NPL documents. In thisregard, in this survey, among the following items (a)~(c), each office’s preferable position on themode for NPL exchange is surveyed.
(a) Exchange bibliographic data of the NPL only(b) Exchange of a copy of the NPL (a copyright problem could occur)(c) Please suggest other exchange modes

EPO: The IP5 Offices have established an NPL exchange practice under the PCT procedure. NPL
bibliographic data shall be exchanged and every Office is in charge of retrieving the complete record
Page 23 of 30

from its NPL collections. For cases that are impossible to retrieve, an exchange mechanism of thecomplete NPL records shall be put in place. This happens via regular document requests sent topartner IP5 offices. Additionally, the EPO would like to note the use of Digital Object Identifiers(DOI) as a means to facilitate and streamline the exchange of NPL.
JPO: (a), the JPO believes that each and every office should take into consideration the importanceof copyrights (rights of reproduction) to non-patent literature (NPL). Therefore, offices should obtain
NPLs on their own responsibility.

KIPO, CNIPA: (a)USPTO: (b) if copyright issues can be addressed; otherwise (a).

b) Analysis
The survey item is created by considering usability and expandability of this project. As for whether
information of unpublished applications should be included in this project, IP5 offices share the viewof availability and usefulness, but they, in general, are in agreement that applicants’ consent and data
security should be guaranteed. Further, in the case of NPL, most of the offices note thatbibliographic items only should be exchanged, but only if copyright issues are resolved, the USPTO
mentions that NPL could be exchanged between offices. The EPO does not express a preference, but
in exchanging NPL documents, it makes a reasonable opinion on basic requirements.

3.

In-depth survey of IT system related to WG2

3.1.

Generation of citation data in an XML formata) Survey result
In an IT system of each office, a survey result of system improvement feasibility is as follows,
especially in cases regarding whether documents that include prior art references can be created inPage 24 of 30

XML format or if they are not be compatible with XML:
Document
EPO①Search Report

XML
Y

JPO

①Notification of reasons for refusal

Y②Decision of refusalYIT system improvement③Report of reconsideration by examiner before Y
appeal④Decision to decline the amendment
KIPO①Search reportYY②Decision of refusal

Y③Notification of reason for refusal

Y④Notification of Preliminary examination Y
result⑤Decision of patent grantY⑥Submission of documents

N

Difficult (image or PDF)

⑦Third party observationN

Difficult (image or PDF)

⑧Request for accelerated examination

Difficult (image or PDF)

CNIPA

①Search Report

N
Y

USPTO

①Information Disclosure statements(IDS)

Y(partial) Variable(depend on the format)②PTO-892

Y(partial) Normal③Third-party Preissuance submissions

Y(partial) Variable(depend on the format)④Non final rejection

N

Normal⑤Final rejection

N

Normal

⑥Notice of allowanceN

Normalb) Analysis

The survey results show that the EPO, KIPO and CNIPA noted that a search report can be created in
XML format, and based on the responses of the JPO, KIPO and the USPTO, it is determined that
notification of a reason for refusal and the final rejection are already changed into XML format, or
can be changed into XML format with minimal issues. All things considered, it is determined that
documents that are produced by each office can be changed into XML format, but conversion ofimage format documents provided by the applicant or the third party into XML is difficult.

Page 25 of 30

3.2.

Detailed information of prior art data described in XMLa) Survey result
In an IT system of each office, specific information of documents that can be converted into the
XML format is as follows:
Document
EPO①Search Report

JPO①Notification ofreasons for refusal

N Publication Relevance Relevant
P date
claim
L
Y
Y
Y
Y

Relevant entity
passage

Generation Notified
date
date

Y

Y

②Decision ofrefusal③Report ofreconsideration by
examiner before
appealY
Y (only for
NPL)

Y

Y

Y

Y

Y

Y

④Decision to
decline theamendment
KIPO

CNIPA

①Search report

N

Y

Y

Y

Y

Y

Y

N

②Decision ofrefusal

N

Y

N

Y

Y

Y

Y

Y

③Notification ofreason for refusal

N

Y

N

Y

Y

Y

Y

Y

④Notification ofPreliminary
examination result

N

Y

N

Y

Y

Y

Y

Y

⑤Decision ofpatent grant

N

N

N

N

N

Y

Y

Y

①Search Report

Y

Y

Y

Y

Y

Y

N

VariesVariesVariesYY

Y②PTO-892

N

Y

Y

N

Y

Y

③Third-party
Preissuancesubmissions

N

N

N

N

USPTO ①IDS

VariesY VariesY
N

N

N

Y

Page 26 of 30

b) Analysis
XML data of almost all docuemnts include publication date, relevancy and relevant claims, etc, andin some offices, there is a limitation in establishing NPL data.

3.3.

Documents and their prior art data available via OPDa) Survey result
The survey results of whether XML data of a document are used in OPD and a time limit for
converting documents into the XML format for OPD are as follows:
Document

XML for
OPD

XML generation
timingEPO①Search Report

Y

-

JPO

①Notification of reasons forrefusalY

When OPD
user retrieve
citation dataof publishedapplications

1 day fromthe dispatch
to theapplicant

Deliverytime

Delivery
time

-

Y

-

Y

-

Y

When OPD
user retrieve
citation dataof publishedapplications

A couple ofhours after
exmainers
send
notifications orinvitations toapplicants

Y

-

-

-

-

-

-

Input time
into filewrapper
Within 48
hours after
mailing of
documents

N/A

Nomal

Y(partial)

Variable④Decision to decline theamendment
KIPO①Search reportY②Decision of refusal③Notification of reason forrefusal④Notification of Preliminary
examination result⑤Decision of patent grant
CNIPA①Search Report

USPTO ①IDS
②PTO-892③Third-party Preissuancesubmissions

1 weekIT system
requirement improvement
Y②Decision of refusal③Report of reconsideration
by examiner before appeal

Available
timing via
OPD
1-2 day

When OPD
user retrieves
Y(partial) citation dataof publishedapplications

Page 27 of 30

b) Analysis
Almost all the documents that are converted into XML format can be transmitted to the applicant, orwithin one week from the date of publication, citation data can be utilized in the XML format.

3.4.

Documents and their prior art data delivered to CCDa) Survey result
The survey results of whether XML data of a document are used in CCD and a time limit for
converting into the XML format for CCD are as follows:
Document

XML forexchange

EPO①Search ReportY

JPO①Notification of reasons
for refusal

Transmissi
on to EPO
for CCD-

Transmission
timing
-

N but
CSV

1-2
monthsfromtheexaminer’s
draftingY

1-2
monthsfromtheexaminer’s
drafting

N

Unclear

Y

Twice
per
month

Y

Twice
per
month

N

Impossi
*
ble

N

-

-

-

-

-

-

②Decision of refusal③Report ofreconsideration by
examiner before appeal④Decision to decline theamendment
KIPO①Search report②Decision of refusal③Notification of reason
for refusal④Notification of Preliminary
examination resultXML
generatio
n timing
1 week

1 weekrequirement-

IT system Reason
improve
ment
Not
estim
ate
the
difficultyyet⑤Decision of patent grant
CNIPA①Search Report

Y

-

Y

-

N

Difficult

-

USPTO

①IDS

Y

Variable

Variable

Variable-

Variable②PTO-892

Y

Variable

Variable

Variable

Variable

VariableLegal
and IT
constraints③Third-party PreissuanceY
Variable Variable Variable
Variable
submissions* KIPO’s reason on one-week requirement: Data standardization and validation take more than a week.

Page 28 of 30

b) Analysis
It is determined that even if XML data for documents citing prior art references are created andtransmitted through CCD, it will be very hard to meet the 1 week requirment under the current patent
system.

3.5.

Transmission timing of patent family information to EPO OPSa) Survey result
The survey results of the time period between creation of family information from the documentsthat include family information and transmission to OPS of the EPO are as follows:
Document

Family information generation Transmission timing to EPO
time
EPO
If this question relates to the priority number delivery that is used to constitute patent familes, theEPO can indicate that this data is usually delivered with the patent bibliographic data delivered by
Patent Offices to us. 4 weeks after publication a patent family can be considered as complete in OPS.
The Korean data are the ones where we face the longest delay between publication and availability in
OPS: 3 to 4 weeks.
JPO
around 18 months from the
FTP server upload as soon as the①Patent gazettesl
date of application
application is published
2-3
weeks
later
than
the
data
The
EPO
can download the data as soon
②Seiri-Hyojyunka data
entry at the JPO
as the data is ganarated
3-4 months later than the
FTP server upload as soon as the data is③PAJ: patent abstract
publication
generated
japan
KIPO
After 18 months or after patent FTP server upload within 10~25 days
①Publication
grantedafter generation
Within2monthsafter
FTP
serverupload with 1 day after②KPA: patent abstract
publication
generation
CNIPA CNIPA doesn't provide patent family information to EPO OPS
USPTO Bibliography data only
Storage only internally
Publication including
Weekly, with the publication
Weeklybibliographic data

The survey results of whether family information can be transmitted within one week to OPS and ofeach office’s opinion on information exchange before publication are as follows:

Page 29 of 30

Document
EPO
JPO①Patent gazettesl

1 weekOpinion about patent family information needs to berequirement exchanged before publicationY②Seiri-Hyojyunka data

N

③PAJ: patent abstract
japan

N

the JPO is concerned about exchanging unpublishedinformation including patent familly information before its
publication

KIPO believe that exchaning unpublished information
would be a good approach to solve 1 week requirement if
N②KPA: patent abstract
cyber security issues are addressed.
CNIPA We could exchange the bibliographic data in a week using current system
USPTO Bibliography data onlyN
there may be legal and cybersecurity issues that need to beaddressed before this is possible
Publication includingYbibliographic data
KIPO

①Publication

Nb) Analysis

It is determined that most of the documents that include family information can be transmitted to
OPS only after the prescribed time passes following the publication of family information, withfamily information being created. Under the current system, family information cannot betransmitted to OPS within one week, and each office is concerned with family information being
exchanged before the disclosure of an application due to data security, etc.

3.6.

Business method for notification and delivery of data among IP5 officesa) Survey result
With respect to business method for notification and transmission of prior art data between the five
IP offices, each office responded as such:
EPO: The EPO collects and centralizes the citation data of all Offices who provide data to our Office.
This is done for published citation data. The EPO strives at improving the comprehensiveness andthe timeliness of this data. Such a system does not exist for the unpublished phase and would be quite
complex to create for both legal and technical reasons. It remains unclear which entity could play
Page 30 of 30

this role that requires important resources. For unpublished data it would therefore seem more natural
to have a notification system push or pull that would transmit the relevant search results to otheroffices in the unpublished phase. Such a system has been put in place for the priority document
exchange under PDX and DAS. However, this system is not timely as priority documents do notneed to be exchanged at the moment an application is filed at another Office. Several weeks canlapse before the priority document is requested as a priority document does not need to be in the file
before (at the EPO) 14 months after the first filing date. Citations shall be delivered/available at the
moment they are produced if we want an efficient and timely work sharing mechanism.
JPO: The JPO does not have a preference for the options. Either of them should be selectedaccording to the requirements. However, the JPO prefers the method in which receiving offices
voluntarily retrieve the citation information from the providing offices or "another entity," as shownin case 3 of Figure 2.
KIPO: Either of them could be selected. However, if option 2 (indirect) cannot solve the one-weekrequirement, then it is desirable to consider option 1 (direct) rather than option 2.
CNIPA: CNIPA prefers option 1(direct).
USPTO: USPTO prefers that one Office gathers data from all the Offices, curates the data, andredistributes to the other Offices via APIs.

b) Analysis
Each office is not in the same position regarding how to exchange data between offices. After it isspecifically determined what data should be exchanged, IP5 offices have to accordingly determine
the most proper mode for data exchange.

3.7.

Technical method for data exchangea) Survey result
With respect to a business method of data notification and transmission between IP5 offices, each
office responded as such:
OfficeEPO
JPO

Entities of data exchange
Providing office ↔ receiving office

Preferable method
Web services, i.e. OPS, is the preferable
method for the EPO.
Web service, i.e. OPD
Page 31 of 30

Providing office ↔ receiving office(EPO

Another entity download the data

CCD)
Another entity(EPO CCD) ↔ receiving
officeno preference

Others : The JPO prefers utilizing present IT systems, rather than building new
infrastructure
KIPO

Providing office ↔ receiving office
Providing office ↔ receiving office(EPO
CCD)

EDI preferred (cost-effective, rapidly
implementable)

Another entity(EPO CCD) ↔ receiving
officeCNIPA
USPTO

Others : disk for back file, FTP for front file
Providing office ↔ receiving office

Web service is preferred

Providing office ↔ receiving office(EPO
CCD)

If transmission to EPO, USPTO would
prefer to utilize the existing transmission
mechanisms

Another entity(EPO CCD) ↔ receiving
officeAPI web services (such as OPS) is
preferred for EPO transmission of data
to receiving Office; if
examiners/applicants are expected to use
CCD interface, this is not preferred

Others : one Office gathers data from all the Offices, curates the data, and redistributes
to the other Offices, either in bulk or via APIsb) Analysis
As previously mentioned, after specifically determining which data should be exchanged is, the mostproper business mode and technical methods should then be determined.

Page 32 of 30

3.8.

Considerations of published and unpublished applicationsa) Survey result
As for survey results of future direction and suitability of data exchange regarding published/unpublished applications, each office responded as such:
EPO: EPO's priority is to improve its published citation collection. If a decision is made to exchange
data in the unpublished phase, there will be a choice between a decentralized approach and acentralized one. The decentralized approach is likely to be the cheapest and the simplest to
implement as not requiring a central entity to maintain a new type of unpublished data database.
JPO: Although the JPO prefers option 1, considering the legal issue and burden for IT systemdevelopment, option 3 is preferred among options 2-4. Published data and unpublished data should
be processed separately. However, it will cost a lot to realize this IT system architecture.
KIPO: KIPO believes that it is desirable that the family information in unpublished applications
needs to be exchanged for “Citation of Prior Art” and prefers option 2.
CNIPA: Since the legal restraints should be first resolved regarding unpublished applications,
CNIPA feels it premature to discuss about the related IT system at the current stage.
USPTO: USPTO prefers option 2.

b) Analysis
KIPO and the USPTO noted that to get un-published applications’ data to be exchanged in the future,a new system should be set up to be extended to un-published applications. The EPO, the JPO andCNIPA are deemed to basically prefer a system applied only to published applications. Further, if thesystem is extended to un-published applications, legal and cost issues should be handled.

3.9.

How to access citation of prior arts by applicantsa) Survey result
A survey result of applicants’ approach to the citation of prior art references is as follows:
Page 33 of 30

EPO: The EPO offers access to citation under its DOCDB database it distributes in bulk and throughpublic search services like OPS, CCD, ESPACENET, The European Patent Register, Global Dossier(OPD). Each system fulfills a certain user need. The EPO is keen on improving the quality(comprehensiveness-timeliness-correctness) of the published data.
JPO: Global Dossier (OPD) & CCD are preferred.
KIPO: KIPO prefers each office’s file inspection system. It is known that each office has its own fileinspection system and applicants can securely check the status of published and unpublishedapplications.
CNIPA: The examiners provide the documents to the applicants.
USPTO: USPTO prefers Global Dossier (OPD) & each office’s file inspection system.

b) Analysis
The EPO and the JPO prefer the current system that includes the Global Dossier (OPD) and the CCD.
KIPO prefers each office’s file inspection system, while the USPTO prefers the Global Dossier (OPD)
and the file inspection system.

/End of document/

Page 34 of 30