11Quality Control (Management) of Operations Peripheral
to Formality Examination and Other Operations(*)

With the advancing globalization of corporate activities, it has become necessary to obtain and exploit intellectual
property rights in many countries in recent years. Along with this, diversified right protection systems have been
established on a global basis. Consequently, the competitive age has begun in which system users choose intellectual
property offices in the world in consideration of services provided and quality.
Some intellectual property offices in other countries, including Europe and the United States, are promoting
improvement of services, for example, by obtaining a qualification for an international-standard quality management
system (ISO9001) and making active efforts to maintain and improve the quality of the overall procedures, including
substantive examination.
On the other hand, the Japan Patent Office (JPO) has just started efforts for the quality control (management) ofoperations, and there is a high need for further quality improvement.
Against such backdrop, we gained an understanding of the need for quality control (management) on theuser side, conducted broad surveys on systems, rules, implementation frameworks, status of efforts, etc.
concerning quality control (management) of formality and substantive examinations at major intellectual
property offices in other countries, and conducted study through analysis and examination of the survey results.

I

Purpose of This Study

With the advancing globalization of corporate
activities, it has become necessary to obtain andexploit intellectual property rights in many
countries in recent years. Along with this,diversified right protection systems have been
established on a global basis. Consequently, thecompetitive age has begun in which system users
choose intellectual property offices in the worldin consideration of services provided and quality.1
Such trend is expected to further accelerate withfurther progress of harmonization of intellectualproperty right systems and work-sharing on aglobal basis.
The JPO has just started efforts for thequality control (management) of operations, andthere is a high external need for further quality
improvement. The Intellectual Property Strategic
Program 20112 also states that "The world-classquality management is to be implemented" andadvocates the strengthening of quality control.
Therefore, in providing high-quality services, theJPO also needs to promote designing of a control(management) system and establishment of acontrol (management) framework for the overall
operations of the JPO, including operations
peripheral to formality examination,3 by further
examining the quality control (management)
framework and methods for examination, etc.
toward realizing quality control (management)

beyond the international standard in reference toadvanced efforts made by intellectual property
offices in other countries.
Against such backdrop, in this study, we
gained an understanding of the need for qualitycontrol (management) on the user side,conducted broad surveys on systems, rules,implementation frameworks, status of efforts, etc.
concerning quality control (management) offormality and substantive examinations at major
intellectual property offices in other countries,
including specific examples of quality control(management) processes, etc., such as the actualconditions and outcomes of the latest quality
management system (QMS) and details of thechecking method in the PDCA cycle, andconductedstudy
throughanalysisandexamination of the survey results.

Ⅱ MethodStudy
1ofConductingThisOverseas intellectual property officesurvey(1) Survey targets
We conducted the survey targeting thefollowing 10 offices.

(*) This is an English translation of the summary of the FY2011 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●

IIP Bulletin 2012 Vol.21

1 ●Nameoftheintellectualpropertyoffice
USPTO (US)PRV (Sweden)
NBPR (Finland)
APO (Austria)
IPA (Australia)
Office A
Office B
Office C
Office D
Office E

Quality management framework/methods

Content of the survey

・ Quality
management
policy,qualitymanagement
organization,subject-matter,methods, and feed-backInterview survey
Interview survey
Questionnaire survey
Questionnaire survey
Questionnaire survey
Interview survey
Questionnaire survey
Interview survey
Interview survey
Questionnaire survey③(i) Formality examination and (ii) substantive
examination (including comparison among five
major intellectual property offices)(2) Survey perspectives
・ Status of implementation of quality evaluationof formality and substantive examinations byexternal users
・ Office's policy for improving the quality ofexaminations
・ Framework to monitor and measure the qualityof formality and substantive examinations in
the office・ Cases where quality management led toimprovements
2

Domestic user survey(1) Survey targets
20 patent firms and 10 applicants in Japan(2) Survey perspectives
We conducted the interview
following evaluation perspectives.
①

Evaluation of theexamination, etc.

qualityoffromDifference in quality between the JPO andintellectual property offices in othercountries

theformality(i)

Quality of documents issued by the JPO informality examination, etc.
・ Collective impression, quality of content ofstatements, and fluctuation (content ofstatements and determination of patentability)

3

Overseas patent firm survey(1) Survey targets
We conducted the survey targeting thefollowing 10 firms.
Country wherefirm is located
China
Denmark
Austria
Germany
SwedenUKUKSouth Korea
US

theSurvey item
Questionnaire survey
Questionnaire survey
Questionnaire survey
Questionnaire survey
Questionnaire survey
Interview survey
Interview survey
Interview survey
Interview survey(2) Survey perspectives
・ Quality of examinations at the intellectual
property office in the home country・ Quality of examinations at the JPO
・ Quality management methods adopted at theintellectual property office in the home country
・ Qualitymanagement
framework/methods
adopted by each of the firms subject to thesurvey(ii) Quality of responses by officials of the JPO
・ Collective impression, quality of responses toinquiries, and fluctuation②

Quality management of paperwork for filingby each of the firms/applicants subject to thesurvey●2 ●IIP Bulletin 2012 Vol.21

Ⅲ Quality Management at the JPO
1Flow of monitoring and measurement of patent substantive examinations

Nameofthemeasurement
department
Formality/substantive(1) Specific methods of monitoring and measurement in the JPO

Patent (utility model)/design/trademark(i)Subject-matter ofmonitoring andmeasurement(ii) Sample
extraction method

Quality Management Office

Quality
Management Office

Quality ManagementOffice

Quality
Management Office

Substantive

Substantive

Substantive

Substantive

PatentPatentPatentPatentCases for which aPCT
application
has been filed

First actions

Cases for which a
decision of refusal
has been rendered

Office actions whichhave been approved

RandomRandomExtracted from thelayer of the cases forwhich the rate ofcases for which a
decision to the effectthat a patent is to be
granted was rendered
is low

Random(iii)
No. of samples

144 samples(2011)
0.04%
13 persons
About 2 hours persample
Compliancewithlaws
andregulations
andcommunication
with the applicant

Expected
tobe
around 440 samples
0.12% (estimation)
13 persons
About one and half
hours per sample(estimation)
Compliance with laws
and regulations andcommunication withthe applicant

About 4,800 samples
1.08%
16 persons
About 15 minutes(iv)
Evaluation
perspectives/items

120 samples(scheduled in 2011)
0.38%13 persons
About 2 hours persample(estimation)
Compliancewithlaws
andregulations
andcommunication
with the applicant

Extracted from thelayer of the cases
for which the rateof cases for which adecision to theeffect that a patent
is to be granted
was rendered islow
439 samples
0.12%
13 persons
About three and
half
hours
persampleA
userquestionnaire
survey concerning
the samples subject
to the checking is
conducted at thesametime.
Analysis
information
isprovided to theexamination
departments
andtheresultsofchecking
anindividual case areprovided to theimmediate manager(Director) of theexaminer in chargeof the case.

Auser
questionnaire
survey concerning
the samples subject
to the checking is
conducted at thesametime.
Analysis
information
isprovided to theexamination
departments
andtheresults
ofchecking
anindividual case areprovided to theimmediate manager(Director) of theexaminer in chargeof the case.

(2) Details of the methods of feeding back the monitoring andmeasurement results

Cases
whoseexamination
hasbeen completedCompliance
with
laws
andregulations
andcommunication
with the applicant

Analysis
information
isprovided to theexamination
departments
andtheresultsofchecking
anindividual case areprovided to theimmediate manager(Director) of theexaminer in chargeof the case.

Analysis information
is provided to theexamination
departments and theresults of checking anindividual case areprovidedtothe
immediate manager(Director) of theexaminer in charge ofthe case. (scheduled).

Check the formality
mattersof
thecontent of the drafts
from the perspectiveof compliance withlaws and regulations
and communication
with the applicant
Analysis information
is provided to theexamination
departments and theresults of checking
an individual caseare provided to theimmediate manager(Director) of theexaminer in charge
ofthecase.
(scheduled).

* In (iii), the number of samples, the rate of samples, the number of persons who check the samples, andprocessing time for one sample are indicated in this order.

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3 ●

2

Flow of monitoring and measurement of design/trademark substantive examinations

Nameofmeasurement
department

theDesign
Quality
Committee

Examination
Management

TrademarkExamination
Management
Committee

Quality

TrademarkExamination Quality
Management
Committee

TrademarkExamination
Quality
Management
Committee

Substantive

Substantive

Substantive

Substantive

Patent (utility model)/design/trademarkDesign

Trademark

Trademark

Trademark(i)
Subject-matter ofmonitoring/measur
ement

Cases which have been
approved

Decisionsofregistration as the firstaction which have not
been
approved(scheduled in 2011)

Notices of reasons
for refusal which
have
not
been
approved (scheduledin 2011)

Decisions
ofrefusal which havenot been approved(scheduledin2011)(ii)
Sample extraction
methodRandomRandomRandomRandom(iii)
No. of samples

72 (twice in a fiscal year)

72 (scheduled in 2011)

180 (scheduled2011)

in108 (scheduled in2011)(iv)
Evaluation
perspectives/items

Compliance with laws andregulations
andcommunication with theapplicant

The formality mattersof the content of thedrafts are checkedfrom the perspectiveof compliance withlaws and regulations
andcommunication
with the applicant.

The
formality
mattersofthecontent of the drafts
are checked from theperspectiveofcompliance with laws
and regulations andcommunication withthe applicant.

The
formality
matters of thecontent of thedrafts are checked
fromtheperspectiveofcompliancewithlaws
andregulations
andcommunication
with the applicant.

A
user
questionnaire
survey concerning cases
subject to the checking is
conducted at the sametime in the sample checkat the later stage. Analysis
information is provided totheexamination
department
andtheresults of checking anindividualcase
areprovided to the immediate
manager of the examinerin charge of the case.

Analysis information isprovided
totheexamination
department and theresults of checking an
individual case areprovided
totheimmediate
manager(Director)of
theexaminer in charge ofthe case.

Analysis information
is provided to theexamination
department and theresults of checking
an individual case areprovided
totheimmediate manager(Director) of theexaminer in chargeof the case.

Analysis
information
isprovided to theexamination
department
andtheresultsofchecking
anindividual case areprovided to theimmediatemanager (Director)of the examiner incharge of the case.

(1) Specific methods of monitoring and measurement in the JPO

Formality/substantive(2) Details of the methods of feeding back themonitoring and measurement results

3

User evaluation offormality examinationthequalityof(1) Quality of documents issued by the JPO
Users' opinions concerning documents
issued by the JPO as a whole were that thedocuments are "basically easy-to-understand."●Users pointed out fluctuation in statements,fluctuation among examiners, and fluctuation
among organizations. In addition, users expressed
opinions concerning procedures for a Japaneseapplication by a foreign applicantand identification
number.
Many users said that they did not feel much
4 ●IIP Bulletin 2012 Vol.21

fluctuation in statements.
Regarding fluctuation among examiners,
users pointed out that examiners are divided interms of responses, for example, receiving/not
receiving
andgiving
aninvitation
tocorrect/making a correction by ex officio.
Regarding procedures for a Japaneseapplication by a foreign applicant, there weremany opinions concerning signed documents
which are submitted by foreign companies.
Regarding identification number, users pointed
out that unavailability of number search isinconvenient for users.
(2) Quality of responses
As a collective impression, users answeredthat most of the responses are basically good
through some users said that improvements werenecessary for some points.
Many users said that the responses weregenerous. However, some responses requireimprovements.
While some users said that they did not feelfluctuation, other users pointed out fluctuation
among examiners and fluctuation amongorganizations. Users also pointed out thatdifferent answers were given to the same inquiry
in some cases.
4

User evaluation of thesubstantive examination

qualityof

The substantive examination at the JPO ishighly evaluated by domestic users and overseas
patent firms.
In comparison with overseas offices,
domestic users evaluated the JPO as follows.
Domestic users most highly evaluated theJPO in terms of patents, designs, and trademarks.
Patent: JPO>EPO>KIPO>USPTO>SIPODesign: JPO>KIPO>USPTO
Trademark:
JPO>OHIM>KIPO>USPTO>CTMO
The offices are lined from the left indescending order of the quality.
Many overseas patent firms answered thatpatent, design, and trademark examinations at theJPO were "appropriate."

Ⅳ Quality Management at OverseasIntellectual Property Offices
1

Characteristics of quality managementin each country

All the offices make the propriety of search,appropriateness of notices of reasons for refusal,
and compliance with laws and regulations subject
to evaluation. In addition, the USPTO (UnitedStates) make conformity with best practices
subject to evaluation, office A makes conformity
with customer service standards subject toevaluation, and the IPA (Australia) makes
conformity with the Product Quality Standard(PQS) subject to evaluation.
The length of the hours required for sample
check is basically longer for patent substantive
examination, design substantive examination,
trademark substantive examination, and formalityexamination, in this order.
The subject-matter of monitoring andmeasurement in terms of patents includes (1)search, (2) first notice of refusal, (2) second andsubsequent notices of refusal, and (4) final
disposition (decision of refusal and decision to theeffect that a patent is to be granted). In addition,some offices make "PCT applications" and"approach to solve the problem of inventive step"
subject to monitoring and measurement.
The PRV (Sweden), the NBPR (Finland), andAPO (Austria) do not conduct sample check but
evaluate all the relevant cases for some kinds ofcases.
At the PRV, two examiners double-check all
the first office actions. The NBPR compares
differences between search report of an
application at the national phase and search reportof the application at the PCT phase for all newcases. The APO answered that its PCT
department conducts additional check on all thePCT applications though the additional check is
not described in the flow of monitoring andmeasurement. In addition, the APO conducts
sample check in the manner that all theexaminers become subject to it at least biennially.
Medium-sized offices in Europe appear to take alot of time and effort to evaluate examination
results.
2

Results of implementation of quality
management

At all the offices, feedback of quality
management is communicated to examiners and●IIP Bulletin 2012 Vol.21

5 ●managers. Other examples of cross-organizational
improvements include improvements concerningsearch, revision of examination standards, andprovision of training for examiners.
All the offices answered that quality
management activities greatly contributed toimprovements in process.
3

Policy for improving the quality ofexamination

According to the tabulation results ofanswers of all the offices, the following processes
appear to be attached importance.
Regarding patents, search process, processof communication between examiners and users,and classification process are attached importance.
Regarding designs, process of communicationbetween examiners and users is attachedimportance. Regarding trademarks, search
process is attached importance.
According to the tabulation results ofanswers of all the offices, matters which theoffices are now working on or intend to work onin the future are the enrichment of training for
examiners and the formulation of a check list forthe content of drafts to be used by examiners or
those who give approval. Other examples of theirefforts include enrichment of the control indicator(quality index) and continuous renewal of
ISO9000.
According to the tabulation results ofanswers of all the offices, personnel evaluation ofexaminers/departments in charge in terms ofprocess improvement activities (including sharingof search strategies) is considered as effective inenhancing the motivation of examiners in quality
management activities. As an actual example,
efforts have been made in the form in which "allthe examiners have an individual target
concerning quality and productivity and the target
is used for annual operation assessment."

Ⅴ User Evaluation of OverseasIntellectual Property Offices
Formality examination
The KIPO (South Korea) was evaluated as anoffice where office procedures are very
high-quality.
PatentAppropriateness of prior art search
The EPO (Europe) was evaluated as having
high search ability for patents outside the●English-speaking sphere.
Appropriateness of statements in notices ofreasons for refusal, etc.
The USPTO (United States) was evaluatedas an office whose statements in notices ofreasons for refusal, etc. are easy-to-understand as
all constituent features of all the claims are statedand examiner's responses to applicant's opinions
are also stated.
DesignThe OHIM (Europe) was evaluated as anoffice where the examiner responds to inquiries
at any time.
Trademark
Appropriateness of statements in notices ofreasons for refusal, etc.
The KIPO was evaluated as an office where
examiners state their own opinions in detail.
Fluctuation in examinations
The UKIPO was evaluated as an office whose
examinations fluctuate very little and fluctuate
least compared to the OHIM and the JPO.
Quality management
The DKPTO (United Kingdom) wasevaluated as an office whose quality wasimproved as a whole trough introduction of thesame examination approach as the EPO.

Ⅵ Quality Management Frameworks
and Methods of Companies
Most domestic users and overseas patentfirms have not obtained ISO9001 certification.
However, they are firmly aware of (1)commitment as an organization and (2) active
participation of all constituent members. In
addition, their intention to control factors thathave a significant effect on outputs with a focus
on the process is apparent in the management
methods, and they have realized quality
management-conscious operations.

Ⅶ Conclusion
1

Quality
management
examination in Japanofformality

This study indicates that division in terms ofresponses among examiners in charge has beenbecoming obvious with regard to specific subjects,
6 ●IIP Bulletin 2012 Vol.21

such as signed documents submitted by foreigncompanies
andprocessing
concerning
identification number. A possible measure forfurtherimproving
thequality
isanwell-modulated efficient method in which
intensive double-check is conducted on subjects
and cases for which determination tend tofluctuate as mentioned above and sample check isconducted on other subjects and cases.
2

Quality management
examination in Japanofsubstantive

Overseas intellectual property offices
generally adopt additional search by a third party
in their monitoring and measurement methods aspart of quality management. Overseas intellectual
property offices are highly interested in search interms of both specially emphasized processes andmatters to be worked on in the future. The JPO
also has room to consider introduction of quality
management of search, including management ofoutsourcing of search.
(Senior Researcher: Hidetake NISHIZAWA)
1

2

3For example, for an international application under thePatent Cooperation Treaty, the applicant may choose
an International Searching Authority (4.1(b)(iv) of theRegulations under the Patent Cooperation Treaty).
"31. Strengthening of quality control of patentexamination(short/medium-term),"
IntellectualProperty Strategy Headquarters (June 3, 2011).
Chapter 21 of the PCT International Search andPreliminary Examination Guidelines provides not only
quality control (management) of examination but also
quality control (management) of formality operations
and establishment of a framework thereof.

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7 ●