7 Application Behavior for Industrial Property Rights
toward Acceleration of Technological Innovation in Japan
The intellectual property system is one of the most important institutional infrastructures that support
innovation activities. There is thus a request for consistent efforts to improve the system for the purpose ofpromoting innovation. In addition, data on intellectual property activities, such as patent data, areindispensable in analyzing the research and development and innovation activities of companies, etc.
In this research, six kinds of empirical analyses were conducted by taking advantage of patent databases
and the “Survey on Intellectual Property-Related Activities,” etc. implemented by the JPO based on previous
studies. Specifically, these analyses concern the effects of a change to the unity of invention requirement in Japan,
the effects of the provisions on exceptions to lack of novelty in Japan, the relationship between an increase in the
grant rate of patent applications and reasons for refusal in Japan, the complementary relationship between thedesign system and the trademark system, the condition of distribution of patent documents in major countries bytechnical field, and trial-related information in the East Asian Region. Furthermore, the sampling method thatis used in the Survey on Intellectual Property-Related Activities, which serves as the basis for the empiricalanalyses, was examined, and a trend survey was conducted on the empirical analyses of intellectual propertysystems overseas.

I

Introduction

This research empirically analyses theintellectual property system, and improvement of
the “Survey on Intellectual Property-Related
Activities,” which is also one of the uniquestatistics from a global perspective.
This report has six analyses in Part II. Of
these analyses, three concern the Japanese patent
system (“analysis of effects of a change to theunity of invention requirement on the number ofapplications in Japan,” “analysis of correlation
between an increase in the grant rate of patentapplications and reasons for refusal in Japan,” and“analysis of exceptions to lack of novelty inJapan”), two study the international patent
system (“analysis of distribution of patentdocuments in major countries by technical fieldand efficiency of prior art document search” and“statistical analysis of trial-related information in
the East Asian Region (except Japan)”), and oneis the analysis of the design patent system andthe trademark system (“analysis of thecomplementary use of the design patent systemand the trademark system”). All of them arehighly original empirical analyses.
In addition, Chapter 7 (“Case Study of
Economic
Analysis
Methods
Concerning
Industrial Property Rights in Foreign Countries”)
reports the outlines of the “Patent Statistics for
Decision Makers” conference (co-hosted by theOECD, WIPO, the EPO, and other major patentoffices) and “The PATSTAT user day,” both ofwhich were held in Rio de Janeiro, Brazil in
November 2013. At the end, in Part III, the“SurveyonIntellectual
Property-Related
Activities” implemented by the JPO is specificallyexamined toward introducing an online survey
therein, and the effects of changing the method of
conducting the Otsu survey to a stratified random
sampling method (Neyman allocation method) are
analyzed.
(Sadao NAGAOKA)Ⅱ Research on Application Behavior,etc. for Industrial Property Rights

1

Analysis of Effects of a Change to
the Unity of Invention Requirementon the Number of Applications inJapan

In this analysis, the effects of a change to theunity of invention requirement in the FY2003
revision and the FY2006 revision on the patentapplication behavior, etc. of companies, etc. were
statistically analyzed. The provisions on the unityof invention are set in order to limit the scope of
inventions for which rights can be claimed as one
patent to technically-relevant inventions. Throughthe FY2003 revision, existence of a “special
technical feature (STF)” that is common to all the(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
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claims has become one of the conditions forsatisfying the unity of invention requirement. In
addition, shift amendment, which is to change an
STF after a notice of reasons for refusal is given,
was prohibited through the FY2006 revision. Bothof these revisions are considered as having madethe unity of invention requirement stricter.
According to the analysis results, both revisions
have had no effect on the number of patentapplications, but the FY2006 revision has
produced effects such as a decrease in thenumber of claims and the number of incidences ofmaking an amendment and an increase in thenumber of divisional applications.
(Koichiro ONISHI)

2

Analysis of Correlation between an
Increase in the Grant Rate of Patent
Applications and Reasons for
Refusal in Japan

In this analysis, the factors of an increase in
the grant rate of patent applications in Japan wereanalyzed with a focus on the expediting of thestart of examination by the JPO and applicants’careful selection of applications for which they
file a request for examination. The effects ofexpediting the start of examination were analyzed
on the basis of the effects of the shortening of thetime limit for filing a request for examinationfrom within seven years to within three years in2001 and of the recent shortening of the period
from the filing of a patent application to the firstaction. In addition, the effect of applicants’ carefulselection of applications for which they file arequest for examination was analyzed on the basisof changes in the quality of patent applications
that were measured based on the number of
inventors, the number of IPCs assigned, the rateof international applications, etc.
The results revealed that the shortening of
the initiation lag of examination shifts the citedprior art in the examination of an application toolder ones, starting on the application date, while
it also increases the number of notices of reasons
for refusal based only on the lack of novelty. On
the other hand, the analysis suggested that such achange in the composition of reasons for refusal isunlikely to serve as a factor in an increase in the
grant rate of patent applications in terms of atime-series change though it was confirmed tohave the effect of increasing the grant rate interms of difference by technical field.
The possible factors of prolongation of thecitation lag arising from the shortening of theperiod before the start of examination include a
decline in document searchability due to theshortening of the period before the start ofexamination (the following conditions are likely tohave an effect: (1) there is a time lag before atranslation of a PCT application is submitted andbecomes searchable on a search database inJapanese; (2) a certain amount of time is also
required to gather non-patent literature; and (3) acertain amount of time is also required before theresults of searches conducted by other examiners
are accumulated in a database). In addition, thisanalysis indicated the decrease in opportunity to
use the search results of other offices is also oneof the factors in prolongation of the citation lag.
However, this analysis also suggested that its
effect is basically based on the shortening of thestart lag.
Furthermore, according to the analysis
results,
applicants’carefulselectionofapplications for which they file a request for
examination also contributes to an increase in the
grant rate. In particular, an increase in thenumber of inventors and in the number of IPCs
assigned and a raise in the rate of PCT
applications were confirmed to have the effect ofsignificantly raising the eventual grant rate.
However, such effect arising from applicants’careful selection is presumed to be relatively verysmall.
The results suggest that there is a trade-off
between response to applicants’ need for earlyprotection and appropriate search. In expediting
the start of examination, it is necessary tosimultaneously take measures for mitigating
adverse effects on the quality of search, such as
improvement of searchability (for example,
shortening of the time limit for the submission ofa translation of a PCT application) and an increasein the number of examiners. It is worth
considering that setting a priority for examination
based on the applicant’s need for early protection.
However, this study leaves some problems.
Specifically, more detailed analyses are necessary
concerning the direct relationship between atime-series change in the composition of reasons
for refusal/a change in document searchability andan increase in the grant rate.
(Isamu YAMAUCHI and Sadao NAGAOKA)

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3

Analysis of Distribution of Patent
Documents in Major Countries by
Technical Field and Efficiency ofPrior Art Document Search

In order to compare the comprehensivenessof patent document searches conducted by the
Trilateral Patent Offices, the JPO, the USPTO,
and the EPO, the “rate of patent documents foundin advance in the International Search Report(ISR)” by WIPO’s technical field was defined by
the following formula: the number of families ofpatent documents cited in the ISR divided by the
total number of families of patent documents
cited by the JPO, the USPTO, or the EPO. In
more detail, an indicator, the rate of the numberof patent documents cited in the ISR to all of thepatent documents that were subsequently
presented as citations by the JPO, the USPTO, or
the EPO concerning PCT applications that werefiled with all the Trilateral Patent Offices based on
an application filed with the JPO, the USPTO, or
the EPO, is calculated in units of citations
between international patent families. The rate
was calculated by eliciting PCT applications thatwere filed based on an application filed with the
JPO, the USPTO, or the EPO for which the dateof the first priority claim is between 2002 and2005, from the October 2013 edition of PATSTAT.
By comparing this result with the share of PCT
applications that were filed based on an
application filed with the JPO, the USPTO, or the
EPO by WIPO’s technical classification, it ispossible to examine whether the regions superior
in terms of the number of applications are alsosuperior in the rate of patent documents found inadvance in the ISR. In fact, the rate of patentdocuments found in advance in the ISR preparedby the EPO serving as an International Searching
Authority (ISA) is high in the fields where many
PCT international applications are filed from
Europe such as biotechnology and pharmaceuticals.
The rate of patent documents found in advance in
the ISR prepared by the JPO exceeds that
prepared by the EPO in the communication andmachine fields. The rate is thus consistent withthe technical superiority of the region. However,
the rate for the USPTO is lower than those for
the JPO and the EPO in general. Incidentally,
applicants from Japan or the United States canchoose the EPO as an ISA. The EPO is
designated as the ISA for more than a half of the
PCT applications filed from the United States
based on an application filed with the JPO, the
USPTO, or the EPO while the EPO is designated

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from Japan. In considerably many fields, the rateof patent documents found in advance in the ISR
prepared by the EPO in the cases where the EPO
is designated as the ISA for an application fromJapan exceeds the rate of patent documents foundin advance in the ISR prepared by the EPO as awhole. This suggests a difference in the ability of
applicants and the fact that such applications arethose filed after careful consideration by
incurring preparatory costs. The rate of patentdocuments found in advance in the ISR directly
indicates the comprehensiveness of search for
preparing the ISR and the efficiency of the search.
It is possible to presume that not only the abilityof the office in charge and geographical andtechnical conditions but also the ability of theapplicant, the content of the individual application,
and applicant’s behavior affect the rate.
(Tetsuo WADA)

4

Analysis of Exceptions to Lack of
Novelty in Japan

In this analysis, the actual conditions of useof exceptions to lack of novelty in Japan and theeffects thereof were analyzed. In analyzing theactual conditions of use, the types of applicants
were specified by linking to the information on
applicants provided in the Survey on Intellectual
Property-Related Activities, and channels for
publishing research results in advance, such as
academic meetings, the Internet, and exhibitions,were specified to the extent possible. In addition,
analysis was conducted on the effects ofexpansion of international applications on the useof the provisions on exceptions to lack of novelty.
As a result of the analysis, the following
results were confirmed. The rate of applications
for which the applicant has applied for exceptions
to lack of novelty was high for applications filedby universities and public research institutes,
14% and 11%, respectively. However, applications
for exceptions to lack of novelty filed bycompanies accounts for 60% of all suchapplications. In addition, in terms of channels for
publishing research results, academic meetings
account for over 60% and serve as the mostimportant channel. However, research results
published via the Internet are significantly
increasing owing to the relaxation of theregulations of the provisions on exceptions tolack of novelty.
The econometric analysis of factors forapplicants to decide whether to apply for

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exceptions to lack of novelty revealed thefollowing: (1) In terms of technical fields,
exceptions to lack of novelty are likely to be usedin the fields that are closely related to scientificprogress, such as medicines, bio, genetic
engineering, and organic chemistry; (2) In termsof characteristics of inventions, exceptions to lackof novelty are likely to be used when the numberof inventors is large, the number of cases where
the invention is cited is large, and the possibilityof being patented is high; (3) Exceptions to lack ofnovelty are little likely to be used in the fields inwhich an international application tends to be
filed for an invention.
(Sadao Nagaoka and Yoichiro NISHIMURA)

5

Statistical Analysis of Trial-RelatedInformation in the East AsianRegion (Except Japan)

This study analyses the characteristics ofpatents subject to a request for a trial for patent
invalidation in China was analyzed by gathering
information on decisions on invalidation trials
from the website of SIPO’s Patent Review Boardand by using patent indexes prepared based on
the CNIPR, the EPO PATSTAT database andother patent databases.
The number of trials for patent invalidation
filed in the past is 2,260 in terms of the number ofsuch trials for which a decision has been disclosed.
It has been rapidly increasing since the first halfof the 2000s. For patents subject to such trials,
patents for which the first applicant resides in
China account for 60% of the total. The share ofsuch patents has been increasing, particularly, inrecent years, compared to the share of patents forwhich the applicant resides outside China.
Moreover, patents based on a PCT application andthose based on an application claiming a priority
outside China have a relatively low probability of
becoming subject to a trial for patent invalidation.
By technical field, a relatively large number ofrequests for a trial for patent invalidation are filedin such fields as pharmaceuticals, materials,
machine tools, textile, and civil engineering.
A regression analysis was conducted by
preparing a sample for Chinese patents as a whole,a sample for patents for which an application has
also been filed in Japan, a sample for patents forwhich an application has also been filed in the
United States, and a sample for patents for which
an application has been filed in Japan, the UnitedStates, and Europe and by controlling the trend
by technical field and by application year using adummy variable of whether a request for a trial
for patent invalidation has been filed as an
explained variable. This regression analysis
revealed the following: (1) The probability of arequest for a trial for patent invalidation being
filed is significantly low for patents for which an
application has been filed by an applicant residing
outside China in terms of the relationship ofpriority claim; (2) Patents whose technical value
is higher as measured on the basis of the numberof times of being cited in examination of subsequent
applications are more likely to be subject to arequest for a trial for patent invalidation; (3)Patents to which an opposition has been filed at
the EPO are also highly likely to be subject to atrial for patent invalidation in China.
(Naotoshi TSUKADA)

6

Analysis of the Complementary Useof the Design Patent System andthe Trademark System

Under such slogans as “mixing of intellectual
property rights” and “IP bundle,” emphasis has
recently been placed on the importance of securing
competitive advantage through the combined useof several types of intellectual property rights,
namely, patent rights, design patent rights andtrademark rights. In this Chapter, analysis was
conducted on the complementary use of the design
system and the trademark system, which has been
hardly examined in the past, as one type of themixing of IP.
Major results are as follows. The analysis
revealed that there have been approximately
7,000 applicants for design registration andapproximately 40,000 to 50,000 applicants for
trademark registration annually but that the
number of persons who apply for design patentand trademark registration has been relatively
small, approximately 2,500. Designs can beprotected as three-dimensional trademarks after
the expiration of the term of design patent rights,
and a survey on the number of applications forregistration of three-dimensional trademarks andthe rate of registration revealed that only about
150 applications have been filed for registration of
three-dimensional trademarks annually and thatthe rate of registration of such trademarks has
been relatively low, approximately 55%.
Furthermore, a survey on the goods subject toapplications for three-dimensional trademarks
filed by those who frequently file suchapplications revealed that most of the goods are
the applicants’ regular products. These findings

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suggest that although there is an intellectual
property strategy of making up for the loss of thedesign patent right by the right for athree-dimensional trademark, filing an application
for design patent is still a basic means to protect
the shape of an article, and it is common that an
application for a three-dimensional trademark is
filed after the product has become popular during
the term of protection based on the design rightand its shape has acquired the capability of
distinguishing the trademark holder’s productfrom others.
Moreover, the effect of the complementary
use of the design system and the trademark
system on corporate performance (operating
income margin was adopted) was analyzed
quantitatively by (mainly) using manufacturing
companies in the “FY2012 Survey on Intellectual
Property-Related Activities” as a sample. The
analysis method is the estimation of the Average
effect of Treatment on the Treated (ATT) bypropensity score matching (PSM). The ATT was
estimated by regarding the companies which
engage in the complementary use of the design
patent system and the trademark system as “thetreatment groups” and those which do not engage
in such complementary use (mainly those which
file applications for registration of trademark) as“control groups.” There was no significant
difference in terms of corporate performance
between the treatment groups and the control
groups, which suggested that there is no effect of
the complementary use of the design patent
system and the trademark system on corporate
performance.
(Kenta NAKAMURA)

7

Case Study of Economic Analysis
Methods
Concerning
Industrial
Property Rights in Foreign Countries

Analyses using patent data have become
increasingly important in terms of evaluation andplanning of patent system-related policies,
consideration of science and technology
innovation policies, formulation of corporate IP
strategies, etc. Under such circumstances, aninternational conference concerning patentstatistics, “Patent Statistics for Decision
Makers,” marked the ninth conference this year.
Many studies reported at the conference areparticularly related to PATSTAT. However,studies on innovation using patent data andpolicy-oriented studies are also included. This
chapter gathers information concerning studies

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Decision Makers” conference held in Rio deJaneiro and economic analyses concerningindustrial property rights that were reported at“The PATSTAT user day” held prior to theconference, and summarizes the case examples of
economic analysis methods.
Concerning the trends of OECD patentstatistics meetings in recent years, many reportsthat suggest the trends and possibility of use instudies of PATSTAT have been made at “ThePATSTAT user day.” PATSTAT provides precious
data for conducting the economic analysis ofpatents. It is an outcome obtained byaccumulating and processing an enormous
quantity of data supplied from the intellectual
property offices of many countries. Therefore,
defects and mistakes, etc. are often found in
PATSTAT. In addition, as changes of data
structure and additions of new items are frequent,gathering of information at this workshop has asignificant meaning for the purpose of planningand implementing studies using PATSTAT. Under
such circumstances, in this fiscal year, there weremany reports on the use of patent data for
analysis in connection with corporate data andconcerning connection between PATSTAT’s
non-patent document citation information anddocument database. At present, attempts toconnect patent data and non-patent data to usethem for analysis are becoming increasingly
active, and these reports are in line with such
trend.
On the other hand, reports under morewide-ranging themes are made at the “Patent
Statistics for Decision Makers” conference. As
the conference was held in Brazil in this fiscal
year, reports were made on the status ofdevelopment of patent data in Brazil and on
multiple studies using said data. Moreover,development of inventor data is now ongoing;
mainly in European countries. The analysis of the
movement of human resources by using theresult thereof also drew strong attention from theparticipants of the conference. In addition, othercharacteristics of the conference this year arethat analyses concerning IP bundles (mixing ofIP) whereby other intellectual property rights,
such as designs and trademarks, are concurrently
used in addition to patents were reported at
multiple sessions and there were sessions
concerning
environmental
technologyor
environment-related patents.
(Kenta NAKAMURA and Naotoshi TSUKADA)

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Ⅲ Review of Design of the Survey onIntellectual Property-Related Activities

1

Consideration on Online Survey

In this study, interviews were conducted on
the implementation status of online survey, etc.,
targeting persons in charge of such survey for the“Basic Survey of Japanese Business Structure
and Activities” implemented by the Ministry of
Economy, Trade and Industry, the “Survey on
Science and Technology Research” implemented
by the Ministry of Internal Affairs andCommunications, and the “Survey on Research
Activities of Private Corporations” implemented
by the National Institute of Science andTechnology Policy, all of which are relatively
similartothe
SurveyonIntellectual
Property-Related Activities in terms of the object
and content of the survey and have already been
conducted online, in part. Then, the problems
supposed to occur in implementing the “Survey
on Intellectual Property-Related Activities”
online were organized, and the possibility oftransition to an online survey was considered.
The following matters were revealed through theinterviews: (1) Paper and online surveys areconcurrently used for all of those surveys; (2)One of the advantages of implementing an online
survey is an increase in the accuracy of responses
through logic check, etc.; (3) It is possible forrespondents to adopt a variety of response
methods and it is also possible for those who
implement the surveys to promptly makeinquiries about doubts and conduct reminders,which is expected to increase the collection rate
to a certain extent. On the other hand, (4) the
burden of those who implement the surveys is
reduced in some parts and is newly increased inother parts, and this strongly relies on matterssuch as the method of conducting the surveys andthe status of changes of the survey sheet.
(Koichiro ONISHI, Isamu YAMAUCHI, andHideki TAKAHASHI)

2

Consideration of Changing the
Method of Conducting the Otsu
Survey to the Stratified Random
Sampling Method (Neyman Allocation
Method)In the Survey on Intellectual Property-Related
Activities, the Otsu survey is conducted once every
three years. The Otsu survey covers applicants
who have filed four or less applications under allof the four intellectual property laws. The Otsu
survey is a sample survey, and the sample ischosen by a stratified sampling method. This
study considers whether it is appropriate to use
Neyman allocation as a method of deciding thesize of a sample allocated to each stratum in placeof proportional allocation. However, proportional
allocation means a method whereby a sample of alarger size is allocated to a stratum with more
applicants in the parent population. The Neyman
allocation is a method whereby a sample of alarger size is allocated to a stratum with more
applicants in the parent population whose
standard deviation of a variable is larger.
First of all, Neyman allocation by using thenumber of applications under any one of the four
intellectual property laws while using theprefecture as a stratification variable showed atendency of the error being smaller for a variable
used for the allocation compared to proportional
allocation. However, the error is larger as a wholefor other variables. By allocating a sample of asize that is the average of the sizes of samples
allocated by Neyman allocations conducted basedon the number of applications under the four
intellectual property laws, it was possible to makethe error equivalent to or smaller than that for
proportional allocation in relation to all variables.
However, the reduction in the error compared toproportional
allocation
wasverysmall.
Furthermore, the accuracy of Neyman allocation
was almost equivalent to that of proportional
allocation when we use the data with different
fiscal year from the target year of the survey.
Next, comparison of proportional allocation
and Neyman allocation by using type of industry as
a stratification variable showed the same tendency
as that shown by Neyman allocation conducted byusing the prefecture as a stratification variable.
That is, a significant improvement in the accuracy
was not recognized compared to proportional
allocation, and the error was larger for somevariables. Putting together all of the above, it was
impossible to find the advantages of adopting
Neyman allocation in place of proportional
allocation from the results of this analysis.
At last, which is a desirable stratification
variable: prefecture or industry, was considered.
Neither could be regarded as particularly
desirable from the perspective of the standard
error of the estimate.
(Takahiro TSUCHIYA)

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