７

Patent Examination Practices Designed to Improve
User Convenience(*)

With the advancement of economic globalization, it is increasingly important to establish a system togrant patents promptly and properly in order to encourage Japanese companies to pursue innovative
activities and improve their international competitiveness. The JPO has been promoting international work
sharing (Patent Prosecution Highway, etc.) and making various efforts to grant stable, strong patents.
These are some of the patent examination practices that the JPO has adopted in order to improve userconvenience.
In this study, surveys were conducted on these patent examination practices with a focus on “theQuality of the JPO’s patent examination,” “the systems to support patent acquisition in foreign countries,”and “the patent examination practices to improve user convenience.” The survey results were analyzed
and studied in order to grasp the ways users use various systems and the new needs users latently haveand to further improve user convenience.

Ⅰ Introduction
1

Background and purpose of this study

With the advancement of economic
globalization, from the perspective of promoting
innovative activities and increasing international
competitiveness of Japanese companies, it isextremely important to establish a system togrant patents promptly and properly. So far, the
JPO has promoted international work sharing(e.g., the Patent Prosecution Highway) and
implemented various measures to grant stable,
strong patents. These are some of the patentexamination practices that the JPO has adopted inorder to improve user convenience.
Under these circumstances, the Intellectual
Property Strategic Program 2010 proposes a“review of the patent system in order to promote
the exploitation of patents and the convenience
for a wide range of users, including universities,
from the perspective of creating fertile ground forinnovation.” The Intellectual Property Strategic
Program also requests further improvement of
the patent system in order to grant patents
promptly and properly.
This study has been conducted to collectbasic data about the JPO’s patent examination
practices specifically designed to improve userconvenience. The data will help us understandthe ways users use various systems and the newneeds users latently have. Based on the data, we(*)

will discuss patent examination practices that willfurther improve user convenience. This study
focused on three points, namely, “the quality of
the JPO’s patent examination,” “the systems to
support patent acquisition in other countries,”and “the patent examination practices to improveuser convenience.”2

Implementation of this study

In order to obtain data about the JPO’s patentexamination practices designed to improve userconvenience, as well as to grasp the ways users
use various systems and the new needs users
latently have, a questionnaire survey and aninterview survey were conducted on Japanese
patent applicants and foreign patent applicants.
The results of the surveys were analyzed andstudied as follows.
- A national questionnaire survey was conductedby sending a questionnaire to 1,601
organizations, including companies, universities,
TLOs, research institutes, etc., in Japan, of
which 622 organizations responded (Response
rate: 38.8%).
- Based on the results of the nationalquestionnaire survey, 20 respondents wereselected from among those who have made acomment on the quality of patent examinationand have experience in using the Patent
Prosecution Highway. Those 20 respondents

This is an English translation of the summary of the report published under the Research Study Project on Issues
with Industrial Property Rights System FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible forany errors in expression or description of the translation. When any ambiguity is found in the English translation,
the original Japanese text shall be prevailing.
●

IIP Bulletin 2011 Vol.20

1 ●were subject to a national interview survey.
- An overseas questionnaire survey was
conducted by sending a questionnaire to 200
companies and other organizations in foreigncountries and other organizations that wereranked high in terms of the number of patentapplications filed with the JPO. Among the 200
companies, 21 responded (Response rate:
10.5%).
- From the respondents of the overseas
questionnaire survey, 10 companies (two U.S.
companies, five European companies, and three
South Korean companies) were selected andsubject to an overseas interview survey throughsix foreign lawyers.

Ⅱ Quality of JPO’s patent examination
1

Introduction

A questionnaire survey and an interview
survey were conducted on the quality of theJPO’spatentexamination
bysendingquestionnaires covering the following issues toJapanese as well as foreign patent applicants inorder to collect data about applicants’ satisfactionlevel, requests for improvement, and latent needs.
The results of the surveys were analyzed andstudied by comparing the results to those of the2008 surveys1.
2

General matters regarding the JPO’s
patent examination and PCT international
search(1) Recent patent examiners’ practices (forthe last year)
The surveys reveal that the recent patentexaminers’ practices have been highly regarded
by Japanese applicants as well as foreign
applicants. However, in the surveys, some
applicants made requests for improvements, suchas increasing the consistency among, for example,
notices of reasons for refusal issued by examiners
who denied involvement of an inventive step andimproving examiners’ way of dealing withapplicants.
Since the 2008 survey, applicants haveshown a high level of satisfaction with the way
examiners communicate with applicants throughface-to-face interviews, by telephone, etc., andthe way examiners offer suggestions foramendment.
The surveys also reveal that applicants haverather strong needs for examiners’ suggestions●

for amendment.
(2) Recent patent examiners’ practices(international search report, search
opinion,international
preliminary
examination report) in the international
phase of international applications forwhich the JPO conducted international
searchIn general, the way examiners writeinternational search reports, search opinions
seems to be viewed favorably by applicants. The
quality of those reports seems to have improved
since 2008.
Applicants generally trust the results ofprior-art search and examiners’ decisions (in theinternational phase). However, a relatively large
number of applicants point out the differences
between the international phase and the national
phase in terms of the results of prior-art searchand patentability test.
(3) Comparison between the JPO andforeign IP Offices in terms of patentexaminers’ practices
Japanese applicants consider the JPO toexceed most of foreign IP Offices in terms of
examination quality. In particular, both Japaneseapplicants and foreign applicants highly value the“reasonablenessandappropriatenessof
examiners’ decisions.” However, a relatively
large number of Japanese applicants and foreign
applicants point out that “the notices of reasons
for refusal do not contain detailed information”
and that “the requirements and judgment criteria
are too strict.”(4) Key factors that determine the level ofapplicants’ satisfaction with patentexamination
For Japanese applicants, the key factors that
determine their level of satisfaction with patentexamination are: “accurate prior-art search,”“decisions
consistentacrossexaminers,”“reasonable information contained in the noticesof reasons for refusal,” and “a high level oftechnical understanding of examiners.” Thistendency has remained the same since the 2008
survey. These four key factors (except for thefactor “decisions consistent across examiners”)
are also upheld by foreign applicants. Instead ofthefactor“decisions
consistentacrossexaminers,” foreign applicants place emphasis on“examination results consistent with those given
by other IP Offices.”
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3

Patent examination practices

Both Japanese and foreign applicants very
highly evaluate the JPO’s patent examination
practices related to “inventions with industrial
applicability” and “novelty.” In general, Japaneseapplicants highly evaluate the JPO’s patentexamination practices related to “inventive step.”
Some respondents have pointed out problems
related to the application of examination criteria
to individual cases, such as “inconsistentjudgments,” “simplistic use of ‘well-known’ and‘design variation’ as grounds for refusal,”“combination of cited documents about different
fields,” and “refusal in hindsight.” Some foreign
applicants find the JPO’s patent examination
practices to be appropriate, while other foreign
applicants find them inappropriate. A relatively
large number of respondents consider the JPO’s
criteria for judging the involvement or
non-involvement of an inventive step to bestricter than those adopted by other IP Offices.
Both Japanese and foreign applicants highly
evaluate the way the JPO applies the “description
requirements for a specification and claims.”
However some Japanese and foreign applicants
have pointed out such problems as “inconsistentjudgments” and “strict criteria (mostly for
judging the fulfillment of the support
requirements) and strict application of thecriteria.”
Both Japanese and foreign applicants highly
evaluate the way the JPO requests “amendment
to a specification or claims.” However, someJapanese and foreign applicants have pointed out
such problems as “strict prohibition of adding
new matters” and “strict or unclear criteria for
judging a so-called shift amendment and strict or
unclear application of the criteria.”
Both Japanese and foreign applicants highly
evaluate the way the JPO applies the requirementof the “unity of invention.” In particular, foreign
applicants evaluate it very highly. However, someJapanese applicants have pointed out suchproblems as “strict or unclear criteria and strict
or unclear application of the criteria.”
4

Level of satisfaction regarding prior-art
searchAs far as Japanese patent documents areconcerned, Japanese applicants are generally
satisfied with prior-art search, while foreign
applicants are very satisfied.
As far as foreign patent documents are●

IIP Bulletin 2011 Vol.20

concerned, Japanese applicants are generally
satisfied with prior-art search only to a certain
extent. The level of satisfaction varies from one
industrial category to another and from one
applicant to another. The level of satisfaction offoreign applicants is relatively high.
As far as non-patent documents areconcerned, Japanese applicants are generally
satisfied with prior-art search only to a certain
extent. The level of satisfaction varies from one
industrial category to another and from one
applicant to another. The level of satisfaction offoreign applicants is relatively high.
As described above, the level of satisfaction
varies from one document to another. Japaneseapplicants are generally satisfied with prior-art
search, while foreign applicants are very satisfied
with it.

Ⅲ Systems to support patentacquisition in foreign countries
1

Introduction

In many countries, the need for international
work sharing for patent examination has been
growing. With the advancement of economic
globalization, Japan also considers it very
importanttopromoteaninternational
work-sharing system as well as other systems to
support patent acquisition in foreign countries inorder to encourage Japanese companies to pursue
innovative
activities
andimprove
theirinternational competitiveness.
In this study, a questionnaire survey and aninterview survey were conducted on Japanese
patent applicants and foreign patent applicants inorder to study the following issues, with a focus
on the Patent Prosecution Highway (PPH), whichfunctions as an international work-sharing system.
The purpose of this survey is to grasp applicants’views on the systems to support patentacquisition in foreign countries by asking
questions on the ways users use various systems,
the improvements that applicants hope to see,and the new needs users latently have.
2

Patent Prosecution Highway (PPH)(1) Awareness of the existence of the PPH
and the use of the PPH
The national questionnaire survey conductedon 622 companies in Japan shows that 15% haveused the PPH, while 72% have been aware of theexistence of the PPH but have not used it. Large
3 ●companies were more likely to answer “We haveused the PPH” than small and midsize companies,
TLOs, and educational or public organizations(large companies: 18%, small and midsize
companies: 6%, TLOs, educational or publicorganizations: 6%).
The national interview survey reveals thatten companies used the PPH for the purpose ofearly patent registration and that eight out of theten companies would “use the PPH again if
necessary.” The survey also reveals that six
companies used the PPH for the purpose of
reducing the number of notices of reasons forrefusal and that three out of the six companies
answer that they would not necessarily use the
PPH again.
The overseas questionnaire survey showsthat only two out of 19 companies “have used the
PPH” and 16 out of 19 companies “have not used
the PPH, while being aware of its existence.”

applicants, respondents also pointed out demerits
that would prevent applicants from obtaining
patents of their desired scope in some cases, suchas “inflexibility in amending claims after theapplication is approved” (22%) and “the scope of
the patent granted in the U.S. is often the sameas or narrower than that of the patent granted inJapan” (19%).
In the national interview survey, to thequestion about the merits and demerits of thePPH, as far as the JPO-USPTO PPH and the
JPO-EPO PPH are concerned, the top answer was“some applications were rejected or failed to beregistered,” while such answer was less common
as far as the JPO-KIPO PPH is concerned.
In the overseas questionnaire survey, thetwo companies with experience in filing PPH
applications with the JPO answered that the
demerit was “the burden of preparing documents
for PPH applications.”(2) Merits and demerits of the PPH
The national questionnaire survey showsthat, when 81 companies with experience in using
the JPO-USPTO PPH were asked about themerits of the JPO-USPTO PPH, the top answer
was “fewer notices of reasons for refusal” (38%),
followed by the answer “early patent registrationin the U.S.” (36%).
In the national interview survey, to thequestion about the merits of the use of the PPH
regardless of the direction (mostly from the JPO
to the USPTO, from the JPO to the KIPO, or fromthe JPO to the EPO), the top answer was “earlyregistration of patent.” The users of JPO-USPTO
PPH and JPO-EPO PPH were more likely toanswer that the “number of notices of reasons forrefusal was reduced” than JPO-KIPO PPH users
were.
The overseas questionnaire survey reveals
that, to the question about the merits of the PPH,
the two companies with experience in using the
PPH with the JPO answered “early patentregistration in Japan” and “fewer notices ofreasons for refusal.”
The national questionnaire survey reveals
that the 81 companies with experience in using
the JPO-USPTO PPH answered that the demeritsof the JPO-USPTO PPH were “the burden of
preparing documents for PPH applications” (33%),“the burden of making preparations and checking
requirements for PPH applications” (20%), and“higher application costs” (17%). In addition tothese demerits, which would increase proceduraland monetary burdens imposed on PPH(3) Reasons for not using the PPH
The national questionnaire survey reveals
that, when 460 respondents were asked about thereasons for their non-use of the JPO-USPTO PPH,
the top answer was “none of our patentapplications seek early registration in the U.S.”(70%). Other common answers referred to anincrease in procedural and monetary burdens as areason for non-use, such as “heavier procedural
burdens” (40%) and “heavier monetary burdens
caused by PPH applications” (35%), and “theburdens of managing PPH applications separatelyfrom regular applications” (23%). In comparison
with the demerits pointed out by 81 companies
with experience in using the JPO-USPTO PPH,
the answers more commonly given as a reason for
non-use of the PPH were “heavier monetaryburdens caused by PPH applications” and “theburdens of managing PPH applications separatelyfrom regular applications,” while the answer“inflexibility in amending claims after theapplication is approved” was less common.
In the overseas questionnaire survey, when
16 respondents were asked about the reasons fortheir non-use of the PPH with the JPO, the top
answer was “none of our patent applications seek
early registration in Japan” (44%). In the case offoreign applicants, the top answer was “the scopeof the patent granted in Japan is often the same as
or narrower than that of the patent granted by
Office of First Filing” (38%). This proportion ishigher than the proportion of respondents whocited “the scope of the patent granted in the U.S.
is often the same as or narrower than that of the●

4 ●IIP Bulletin 2011 Vol.20

patent granted in Japan” (19%) as a reason for notusing the JPO-USPTO PPH. This is the greatest
difference between Japanese applicants andforeign applicants in terms of the reasons for notusing the PPH.
(4) Requests for improvement of the PPH
The national questionnaire survey reveals
that common requests for overall improvement of
the PPH given by 546 respondents included“simplification
andstreamliningoftherequirements for the documents for PPH
applications” (49%), “use of the uniform PPH
application form in all the PPH-participating
countries” (27%), and “a higher likelihood of theinstantaneous grant of a patent for a PPH
application” (23%). In addition to these requests
for reduction of the procedural and monetaryburdens, another common request was “anincrease in the number of PPH-participating
countries” (31%).
In the national interview survey, among the
20 respondents, the most common request was“emerging countries’ participation in the PPH
program” (14 respondents). The top country citedas an “emerging country” was China (12respondents).
In the overseas questionnaire survey, among
18
respondents,
commonrequestsforimprovement
included“simplification
andstreamlining of the requirements for the
documents for PPH applications” (44%), “ahigher likelihood of the instantaneous grant of apatent for a PPH application” (28%), and “use of
the uniform PPH application form in all the
PPH-participating countries” (22%). As is thecase with the national questionnaire survey,
respondents tend to request improvements thatwill reduce procedural and monetary burdens.
(5) PPH portal site
In the interviews, respondents were asked
about the usefulness of PPH-related information
on various countries that are provided on the
JPO’s PPH portal site. Such information includes
guidelines,
applications,brochures,
PPH
statistics, and links to websites containing
PPH-related information.
In the national questionnaire survey, among a
total of 546 respondents, the top answer was“PPH guidelines are useful” (49%). Regarding
PPH statistics, the top answer was the “final
patent grant rate is useful” (40%). Other common
answers referred to the information on
examination speed, such as “the average length●

IIP Bulletin 2011 Vol.20

from the filing of a PPH application to theissuance of a notice of reasons for refusal” (29%)
and “the average length from the issuance of thefirst notice of reasons for refusal to the final
disposal” (23%); or they referred to theinformation that would reduce procedural andmonetary burdens, such as “the rate of
instantaneous patent grant” (29%) and “theaverage number of times a notice of reasons forrefusal is issued” (21%).
The national interview survey reveals that
12 respondents were aware of the existence of
the PPH portal site, while 8 respondents were
not aware of it. The top answer was “thestatistical information of the portal site should be
increased and improved” (27 respondents(accumulative total)).
In the overseas questionnaire survey, amonga total of 18 respondents, the top answer was “thePPH guidelines are useful” (11 respondents). The
answer that “the information on the PPH portalsite is useful” was more common among foreign
applicants than among Japanese applicants.
Regarding PPH statistics, as is the case withJapanese applicants, the top answer among
foreign applicants was “the final patent grant rateis useful” (61%).
3

SHARE Project (JP-FIRST)

In the national questionnaire survey, most
respondents commented about JP-FIRST (JP-Fast
Information Release Strategy) by stating that “We
are aware of JP-FIRST, but have not used it
consciously” (264/622 respondents) and “We are
not aware of JP-FIRST and have not used it
consciously” (270/622 respondents). The survey
reveals that small and midsize companies, TLOs,
and educational or public organizations are
relatively low in terms of the level of recognition
and use of JP-FIRST.
When the respondents were asked whether
they had any opinions or requests about JP-FIRST,
the top answer was the low publicity of the
JP-FIRST system (9 respondents).
4

General matters regarding the systems
to support patent acquisition in foreigncountries

In the national questionnaire survey, among a
total of 622 respondents, the most common
request (275 respondents) was the introduction ofa joint search conducted by major patent offices(Trilateral Patent Offices in Japan, the U.S., and5 ●Europe or five major Patent Offices in Japan, theU.S., Europe, China, and South Korea). Anothercommon request (239 respondents) was for the
introduction of a search report system, which has
been adopted by the EPO. Similar requests wereobserved in the overseas questionnaire survey.

Ⅳ Patent examination practices toimprove user convenience.
1

Introduction

In this study, a questionnaire survey and aninterview survey were conducted on Japanese
patent applicants and foreign patent applicants inorder to ask questions about various measurestaken by the JPO with a focus on the issues
addressed in the following sections.
The purpose of this survey is to grasp theopinions users have, the ways users use various
systems, and the new needs users latently have.
2

The length of the examination waiting
period and a system to postpone thecommencement of examination(1) Relationship between the timing of
filing an examination request and theideal length of the examination waiting
periodWith the passage of time from the filing of apatent application, the applicant is less likely to
be seeking early examination and more likely tobe hoping to decide the timing of examination ona case-by-case basis.
(2) Needs for introduction of a system topostponethecommencementofexamination
The surveys reveal that the situation where
postponed commencement of examination waspreferable was experienced mostly by applicants
who had postponed the filing of an examination
request. If all industries are combined, theanswer“We
preferpostponing
thecommencement of examination in some cases”
was slightly less common than the answer “We
rarely prefer postponing the commencement of
examination.” However, answers vary from one
industry to another. For example, the answer “We
prefer postponing the commencement of
examination in some cases” was relatively
common among respondents in the food industry,
the pharmaceutical industry, and the chemistryindustry, while the answer “We rarely prefer●

postponing the commencement of examination”
was relatively common among respondents in theelectric industry, the construction industry, andother industrial fields.
Regarding the negative effects of theintroduction of a system to postpone thecommencement of examination (a major
ramification would be an increase in the burdensof monitoring third parties’ patents), a majority ofboth Japanese and foreign applicants found thatthe introduction of such a system would havenegative effects. However, answers vary from one
industry to another. For example, the answer “theintroduction of such a system would havenegative effects” was relatively common among
applicants
in
the
food
industry,thepharmaceutical industry, and the chemistryindustry, while this answer was less common
among applicants in the construction industry,
TLOs, and educational and public organizations.
Both Japanese and foreign applicants wereequally divided over the pros (including theapplicants who expressed their support withconditions) and cons of the introduction of asystem to postpone the commencement of
examination. However, answers slightly varyfrom one industry to another. For example, theapplicants in the metal industry and otherindustrial fields tend to oppose the system
introduction, while the TLOs and educational or
public organizations tend to support it. The mostcommonly cited condition for the system
introduction was the empowerment of a third
party to terminate postponement. Other
commonly cited conditions were the placement ofan upper limit on the length of the postponement
period and an explicit indication of postponement.
3

Accelerated Examination System andthe Super Accelerated Examination
System

In the national questionnaire survey, themost common request related to the Accelerated
Examination System and the Super Accelerated
Examination System was “the simplification andstreamlining of the requirements for the
documents that explain the reasons forrequesting accelerated examination” (248 out of
617 respondents). The same result was obtainedin the national interview survey (7 out of 20
respondents).
In the national interview survey, thecommon reasons given by the respondents for notusing the Super Accelerated Examination System
6 ●IIP Bulletin 2011 Vol.20

were the strict limits imposed on the response
period (4 respondents) and the absence of needs
for early patent registration of such a level (4respondents).

interviewee are very strict” (15 respondents),
and “the communication between the interviewer
and interviewee is poor” (15 respondents).
7

4

System to defer payment
examination request feeofan

The national questionnaire survey reveals
that about 15% of a total of 622 respondents haveexperience in using this system. As a reason for
not using the system, more than half (55%) the
respondents answered that “since we havesufficient financial resources, there is no need touse the system.” Many respondents also showed
their concerns about procedural and monetaryburdens generated as a result of using the system(33%). Only a small number of respondents hope
to extend the effective period of this system.
Among those who hope to see the effective periodof the system extended, about half of them (25out of 52 respondents) hope to see an extensionof three years or less.
5

Collective Examination
ApplicationsofRelatedIn the national questionnaire survey, to thequestion about the merits of participating incollective examination of related applications, thetop answer was “a reduction in procedural andmonetary burdens as a result of having related
applications examined collectively at the sametime” (54 out of 111 respondents). To thequestion about the demerits, the top answer was“an increase in procedural burdens as a result of
having related applications examined and rejectedcollectively at the same time” (61 out of 111
respondents). To the question about the reason
for not participating in the system, the top answer
was “We do not file so many applications to form agroup of related applications” (297 out of 590
respondents).
6

Interview examination

In the national questionnaire survey, to thequestion about requests for improvement of aninterview examination system, the top answer
was “an increase in the number of interviews
conducted in various regions” (30 respondents).
Other common requests for improvement wererelated to such problems as “participation in aninterview
issometimes
refused”(18
respondents), “the requirements for an●

IIP Bulletin 2011 Vol.20

Systems and services that should be
introduced to Japan(1) Needs for the introduction of a system
to facilitate the settlement of a dispute
over a decision to grant a patent
In the national questionnaire survey, about ahalf the respondents request the introduction of asystem to facilitate the settlement of disputes
over decisions to grant a patent (such as a system
similar to the reexamination system of the U.S.,
improvement of the information provision system
in Japan, etc.). The needs for introduction of sucha system vary from one industry to another. Suchneeds were relatively strong in the metal industry,the chemistry industry, and other industrial fields,
whereas such needs were weak in theconstruction industry and among TLOs, andeducational or public organizations.
The national interview survey reveals that
respondents were generally hoping to see theintroduction of such a system.
(2) Needs for the introduction of foreignsystems and services to JapanThe national questionnaire survey reveals
that the needs for the introduction of “search
report” are very strong (111 out of 183
respondents). The national interview survey
reveals relatively strong needs for “the extensionof the period during which a response to a noticeof reasons for refusal may be made” (7respondents) and “search report” (6 respondents).
Regarding a U.S. system to conduct an interview
prior to the commencement of examination, theneeds for the introduction of such a system wererather weak. Among a total of 17 respondents, 7
respondents state “We support, though notstrongly, the introduction of such a system,”
while 10 respondents state “We consider such
systemunnecessary.”Theoverseas
questionnaire survey reveals that the needs forthe introduction of a system to conduct aninterview prior to the commencement of
examination (9 out of 21 respondents) arestronger than the needs for the introduction of“search report.”(Researcher: Kazuaki MAEDA)
1

The Reseach Study Project on Issue with Industrial
Property Rights System FY2007 entrusted by Japan
Patent Office, “Tokkyo shinsa no shutsugannin tou ni

7 ●yoru hyouka o fumaeta hinshitsu kanri shuhou ni
kansuru
chousakenkyuhoukokusho(Quality
Management System that Takes into Consideration on
the Evaluations Made by Patent Applicants andAgents）” (Institute of Intellectual Property, March 2008)
http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/toushin/c
housa/zaisanken.htm [Last access date: February 24,
2011]

●

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IIP Bulletin 2011 Vol.20