22 On the Efficiency of Patent Examination Process
for Economic Growth(*)
Overseas Researcher: Isamu YAMAUCHI(**)

This research empirically analyses the effects of the reforms of patent examination system and theinternational cooperation for patent examination on the firms’ patenting activities and the efficiency of
examination process.
In recent years, the complexity of inventions and the applicants’ need for early patent protection have been
increasing. We find that these factors increase the necessity for communications between applicants andexaminers, and thus extends the examination period. We also find that the accelerated examination systemeffectively works to accelerate examination process and that the system is used for high-quality inventions. On
the other hand, our results suggest that the reduction of the allowable period of examination request makes it
difficult for each applicant to assess the value of the application and decreases the average quality of patent. The
reform of fee structure functions as an effective policy tool to mitigate such negative effect on the patent quality.
Furthermore, this research shows that the use of the search report provided by a foreign patent office significantly
enhances the examination efficiency.

Ⅰ Introduction
The patent system should be designed tocontribute to industrial development. In particular,
the length of the examination period and theexamination quality affect patent prosecution
activities and R&D activities of applicants andthird parties and also affect the quality of patents.
Therefore, it is important to design an efficientexamination process to ensure the effectivefunctioning of the patent system.
Despite such importance, sufficient analysis
has not been conducted based on objective data inorder to check the effects of the system reform
related to the examination process and the effects
ofinternational
cooperationforpatentexamination. The purpose of this research is toconduct an empirical analysis on the effects of theexamination system reform in Japan and theeffects of international cooperation for patentexamination and to gain insights into how to
improve the efficiency of the examination system.
More specifically, in this research, we haveconducted an empirical analysis on such specificissues as (1) the chronological and technicalfield-specific trends in the characteristics ofinventions, (2) the deciding factors of examination
efficiency, (3) the effects of the reform of theaccelerated examination system and theexamination request system, (4) the effects of therevision of the patent-related fee system, and (5)the effects of international cooperation for patentexamination.
Issue (1) will be analyzed in order to figureout what the chronological change is and what thetechnical field-specific distinctiveness is in termsof the complexity of the invention claimed in an
application, and the applicants' need foraccelerated patent grants, and examination
efficiency. Issue (2) will be analyzed in order to
identify a situation that would lead to a longer
examination period and a higher trial occurrence
rate from the perspective of the characteristics(complexity, etc.) of inventions and the applicants'need for accelerated patent grants. Issue (3) will
be analyzed with a focus on the system reform,i.e., the relaxation of the requirements for the useof the accelerated examination system and theshortening of the period during which an
examination request may be filed, in order toexamine the possibility that such changes in thesystem have lowered the quality of patentapplications. Meanwhile, Issue (4) will be analyzed
in order to determine whether the patent-related
fee system, which is a type of policy tool, has theeffect of reversing the patent quality deterioration(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2012 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
(**) Fellow, Research Institute of Economy, Trade and Industry (RIETI), at the Intellectual Property Research Instituteof Australia, University of Melbourne in Australia, as Overseas Researcher under the Program for the FY 2012.
●

IIP Bulletin 2013 Vol.22

1 ●caused by the promotion of accelerated patent
grants. Issue (5) will be analyzed in order toexamine whether the use of the search results
provided by foreign patent offices would enhancethe examination efficiency of the JPO.
The major findings of this research may besummarized as follows.
(1) Since 1990, the complexity of theinventions claimed in patent applications has been
increasing. At the same time, the need foraccelerated patent grants has been growing. The
examination quality measured in terms of theregistration decision rate and the trial occurrence
rate has been improving as well. Due to anincreasing backlog, the period between theapplication filing date and the date of final action
has been getting longer, while the communication
period (the period from the date of first action to
the date of final action) has been getting shorter.
This indicates that examination results havebecome more convincing.
(2) Such an increase in the complexity of
inventions would heighten the necessity forcommunications
betweenapplicantsandexaminers and would also extend the examination
period. Furthermore, an increase in the need foraccelerated patent grants has the effect ofextending the communication period, while it isexpected to shorten the period between theapplication filing date and the examinationcommencement date. This suggests that suchinventions tend to be important for applicants andtend to be subject to prolonged disputes over thereasons for refusal. Moreover, we have found thatan increase in the complexity and importance of an
invention would result in a higher rate of theoccurrence of a trial against an examiner's decisionof refusal and in lower examination quality.
(3) The accelerated examination systemdesigned to meet the applicants' need foraccelerated patent grants is used for highly
important inventions for which a strong need foraccelerated patent grant exists. The relaxation of
the requirements for the use of the system has
greatly contributed to the promotion of the use of
the system. In particular, the relaxation of therequirements imposed on foreign applications has
increased the use of the system for the purpose ofaccelerated patent grants in other countries.
Furthermore, the relaxation of the requirements
has not necessarily deteriorated the quality ofpatent applications that are filed under the system.
The shortening of the examination request
period for the purpose of accelerating
patentability judgment has significantly increased●

the examination request rate. In particular, thiseffect is greater in the case of a complex
invention or an invention that may be found low
in quality based on the number of instances ofbeing cited as a reference in other inventions.
This indicates that the shortening of theexamination request period has increased thelevel of unpredictability faced by applicants andlowered the average level of patent quality.
(4) The 2004 revision of the patent-related fees
raised the examination request fee and lowered
the patent fee, while maintaining the average levelof the total amount of payment at the same level.
The purpose of this revision is to encourage
applicants to make examination requests more
selectively and to reduce the burdens for the
long-term maintenance of such high quality
patents registered selectively. The analysis results
have shown that this revision of the fees has notaffected ordinary patents, while greatly improving
patent quality (the number of instances of being
cited as a reference in other inventions) in thefields characterized by a short patent maintenanceperiod. In other words, the revision of the fees has
improved the quality of the patents for which
examination requests are made. This indicates thatthe patent-related fee system is an important
policy tool to control patent quality.
(5) We have analyzed the inventions claimed in
PCT applications filed with the JPO and the EPO
and compared inventions for which the JPO's
action came before the issuance of the EPO's
supplementary search report and the inventions
for which the JPO's action came after the issuanceof the EPO's supplementary search report. The
applicants of the latter inventions have faced alower trial occurrence rate in Japan and a lower
risk of receiving inconsistent examination resultsfrom the JPO and the EPO. The results of aregression analysis have shown that the use of a
supplementary search report would reduce therate of the occurrence of a trial against an
examiner's decision by 46.3% in terms of the rateof change and would reduce the risk of obtaining
inconsistent examination results from the JPO
and the EPO by 86% in terms of the rate ofchange. In short, the use of the search results
provided by other countries would significantly
improve examination quality.
The analysis results described above haveindicated the necessity of enhancing the system inorder to fulfill the applicants' increasing need foraccelerated patent grants and have also shown thepossible benefits thereof. At the same time, theanalysis results have also indicated that accelerated
2 ●IIP Bulletin 2013 Vol.22

examination could lower examination quality andpatent quality and that the negative effects ofshortening the examination process could be
mitigated by revision of the patent-related fee
system and international cooperation for patentexamination.

Ⅱ Related Studies
Today, we do not have a sufficient accumulationof empirical studies on the patent examination
process. However, given the worsening of thebacklog problem in recent years, researchers
have started publicizing relevant studies.
For example, regarding examination efficiency,
many studies have been publicized such as astudy concluding that the effect of the complexityof inventions is greater than the effect of thecharacteristics of applicants (Pop et al., 2003), a
study concluding that applicants' cooperativenessfor patent examination (in terms of the length of
the response period, the number of cited priorarts, etc.) varies depending on the level ofimportance of each invention and that applicants'
cooperativeness has a significant effect on
examination efficiency (Harhoff and Wagner,
2009; Sampat, 2010; Regibeau and Rockett, 2010),
a study concluding that applicants tend to extend
the examination process period in order tomaintain an opportunity for amendment (Lemley
and Sampat, 2010), and a study concluding thatapplicants tend to delay the filing of an
examination request in order to inhibit othercompanies' activities (Palangkaraya et al., 2008;
Henkel and Jell, 2010).
Based on these earlier studies, we haveanalyzed, in this research, the deciding factors of
examination efficiency in consideration of thetypes of inventions and the applicants' need foraccelerated patent grants. We have used theanalysis results to determine whether the resultsof the earlier studies are applicable to thesituation in Japan and to identify the effects of thesystem reform that are unique to Japan.
Some studies have been conducted to analyze
the effects of patent-related fee systems on thepatent maintenance period and patent prosecution
activities(Pakes(1986),
Deng(2007),
Archontopoulos et al. (2007), de Rassenfosse andvan Pottelsberghe (2011)). Many of these studies
have shown that patent-related fee systems
greatly affect the patent maintenance period andpatent quality. This indicates that patent-related
fee systems are an important policy tool tocontrol patent quality. In this research, we have●

IIP Bulletin 2013 Vol.22

analyzed how patent quality has been affected by
the 2004 revision of fees in Japan.
There have been some studies on theinternational harmonization of patent systems andthe inconsistency in examination results (Jensen
et. al. (2005), Palangkaraya et. al. (2005), Webster
et. al. (2012)). These studies have shown that theinconsistency between countries in terms of
examination results tends to occur if theinvention has certain characteristics or if theapplicant falls under a certain category.
International cooperation for patent examination
might not only contribute to the shortening of theexamination period but also to the elimination of
the inconsistency in examination results byimproving search efficiency. Since no studies havebeen conducted from this perspective, we haveconducted this research in order to analyze theeffects of the use of search reports issued byforeign patent offices on examination efficiency
and on the level of consistency in the examination
results given by multiple patent offices.

Ⅲ Brief overview of Data
This research uses, as the variables indicating
the need for accelerated patent grants, the ratio of
patent applications for which examination requests
have been filed simultaneously with the filing of
the applications (simultaneous examination
request rate), the ratio of patent applications filed
under the accelerated examination system(accelerated examination rate), and the period
between the application filing date and theexamination request date (examination requestlag). The simultaneous examination request rate
and the accelerated examination rate are on arising trend in the long run, while theexamination request lag is getting shorter. Thismight indicate the possibility that the ratio of theinventions for which accelerated patent grants aresought has been rising in recent years.
This research uses the registration decision
rate and the trial occurrence rate as the indexesof examination quality. The proportion of thenumber of decisions of registration to thenumber of final actions has been on the decline.
This indicates that examination quality has beenenhanced as a result of the adoption of stricter
examination standards. The examination quality
measured based on the trial occurrence rate also
shows a rising trend in the long term. The rateof the occurrence of a trial against an examiner's
decision was about 26% as far as the patentapplications for which examination requests
3 ●were filed in 1999 are concerned, while the ratio
dropped to about 10% as far as the patentapplications for which examination requests werefiled in 2007 are concerned.
The examination speed is an important
indicator of examination efficiency. In thisresearch, we differentiate different time phasesby calling the period from the date of examination
request to the date of final action the“examination period,” the period from theexamination request to the date of first action the“first action period, ” and the period from the dateof first action to the date of final action the“communication period. ”
The examination period has been getting
longer since the late 1990s due to the extensionof the first action period. While the average
examination period for the patent applications forwhich examination requests were filed in 1998
was about 29 months, the corresponding period in2007 was about 34 months.
The change in the length of the first action
period has been linked to the change in thenumber of examination requests. This indicatesthat the increasing backlog is the cause of theextension of the first action period. In contrast,
the communication period has consistently
become shorter. This may be attributable, in part,to the applicants' growing need for accelerated
patent grants. Despite the extension of theexamination period due to the increasing backlog,
the examination results given by individual
examiners might have become more convincing.
The examination efficiency is greatly affected
not only by the amount of backlog but also by thecomplexity of inventions. In order to measure
the complexity of inventions, we have used asindexes the number of claims, the number of
IPCs, the number of inventors, and the use ornonuse of the PCT route.
Since 1990, the number of claims has been
constantly on the rise, while the number of IPCs
has been on the decline since 1999. The numberof inventors and the proportion of PCT
applications have been increasing. This indicatesthat technologies have become increasingly
specialized and advanced year after year and thatthe amount of input necessary to create one
invention
might
have
been
increasing.
Consequently, the difficulty of examination ispresumed to have been rising.

●Ⅳ Determinants
Efficiency

ofExamination

We have examined to what extent examination
speed (communication period) and examination
quality (trial occurrence rate) vary depending on
the characteristics of inventions. For this purpose,
we have conducted a regression analysis by using
data on patented inventions by controlling theeffects of the difference between technical fields
and the market trends, technological trends, etc.
First, as far as the communication period isconcerned, the indexes for complexity (thenumber of claims, the number of IPCs, thenumber of inventors, the use of the PCT route,the number of cited references) are all positiveand significant, indicating that the more complex
an invention is, the more the applicant and theexaminer need to communicate with each other.
The examination request lag, the need foraccelerated patent grants measured by the use ornonuse of the accelerated examination system, andthe level of importance of an invention measured
by the number of instances of being cited as areference in other instances have a positive effecton the communication period. In other words, thisreflects the fact that, in the case of an invention forwhich a strong need for accelerated patent grant
exists or an invention that is expected to have agreat value after a patent grant, the applicant tends
to be involved in a long dispute over an examiner's
decision of refusal until a decision for patentregistration is made.
An examination of the inventions subject totrials has revealed that the more complex or
more important an invention is, the higher therate of the occurrence of a trial against an
examiner's decision would be. On the other hand,
as far as invalidation trials are concerned, theindexes for complexity do not have any clear
effect. This is probably attributable to twocontradicting effects, namely, the effect of
decreasing the rate of the occurrence ofinvalidation trials as a result of the fact that themore complex an invention is, the more difficult
it would become for third parties to determine
whether the patent should be invalidated or not,and the effect of increasing the rate of theoccurrence of invalidation trials as a result of thefact that the more important and complex aninvention is, the greater effect it would have on
third parties' business activities.

4 ●IIP Bulletin 2013 Vol.22

Ⅴ Determinants of the Use of the
Accelerated Examination Systemand the Effect of the Relaxationof the Requirements
The accelerated examination system wasestablished to satisfy the applicants' need foraccelerated patent grants by giving higher
examination priority to the applications forregistration of inventions that satisfy certain
requirements (as far as applications for which
examination requests were filed in 2007 areconcerned, the period between the date of
examination request and the date of first action is
6.5 months in the case of a patent application
processed under the accelerated examination
system, which is much shorter than 29.5 months
in the case of a patent application processed
under the regular examination system.)In this section, we have conducted a regression
analysis on patented inventions and, after
removing the effects of the difference between
technical fields and the effects of the market
trends and technological trends at different times,
examined what types of inventions have been
subject to the accelerated examination systemand how such types of inventions have beenchanged by the relaxation of the requirements.
Since the patent data does not distinguish small
and medium-sized companies from othercompanies, this analysis has examined the effectof adding the requirement to the effect that aninvention must have been filed with a foreign
patent office (“overseas filing requirement”)(January 1996) and the relaxation of therequirement (July 2004). The introduction of theoverseas filing requirement has the following two
purposes. The first purpose is to provide ascreening function for important inventions.
Since an invention for which a patent application
is filed in a foreign country is likely to beimportant in Japan as well, it would be beneficial
to accelerate a patent grant. The second purpose
is to allow foreign patents offices to use the JPO's
examination results in order to promoteaccelerated patent grants in other countries. Thisfunction has been provided by the Patent
Prosecution Highway (PPH) as well.
In particular, in the case of a patent for which
an application is filed with a foreign patent officebased on a Japanese application, the latter
purpose is relatively more important than theformer. In this case, since an applicant needs toobtain examination results from the JPO before
the commencement of examination by a foreign●

IIP Bulletin 2013 Vol.22

patent office, the applicant tends to file a request
for accelerated examination as soon as possible
after the filing of a patent application. On theother hand, in the case of a patent for which an
application is filed with the JPO based on a foreign
application, it is relatively more common to use
the accelerated examination system simply for the
purpose of accelerating a patent grant in Japan.
We have conducted an analysis on samples fordifferent phases defined by whether it is before orafter the introduction of the overseas filing
requirement and before or after the relaxation of
the requirement and have found that both theindexes indicating the level of importance of an
invention and the applicants' need for accelerated
patent grants have a positive effect on theaccelerated examination rate. This indicates thatthe accelerated examination system is used forimportant inventions for which a strong need foraccelerated patent grants exists.
Furthermore, we have found that, after the
introduction of the requirement and after therelaxation of the requirement, the coefficient of
PCT applications increased from the level prior to
the introduction of the overseas filing requirement.
This indicates that the use of the system waspromoted by the relaxation of the requirement.
We have also found that the accelerated
examination rate is higher in the case of an
invention for which a patent application is filed ina foreign country by claiming priority right basedon a patent application filed in Japan than in thecase of an invention for which a patent application
is filed in Japan based on a foreign application.
This suggests that applicants are using thesystem in order to obtain examination results inJapan at the earliest date so that they can receive
patent protection in other countries as soon as
possible.
Regarding the indexes concerning the use of
the accelerated examination system, since thecoefficients of the number of IPCs and thenumber of instances of being cited as a referencein other inventions have been on the rise since
the relaxation of the requirement, it can be said
that the relaxation of the requirement has notnecessarily deteriorated the quality of patentapplications processed under the system.

Ⅵ Effect of the Shortening of the
Examination Request Period
The examination request period is considered
to have the effect of inhibiting the patentregistration of unnecessary inventions by giving
5 ●each applicant who has filed a patent application acertain period of time to carefully determine thenecessity of the patent registration of theinvention. This would allow both applicants andthe JPO to reduce the social costs related topatent examination not only in the sense of
examination costs but also in the sense of theexamination period, etc.
On the other hand, if a patent application ispending without being subject to patentexamination, there would be such an adverse
effect that other companies would not be able toconduct R&D activities freely for fear of
infringing other companies' patents. This meansthat a company could use the examination request
system for such an opportunistic purpose as
imposing restrictions on other companies'
activities by filing a patent application for an
invention that has little patentability and choosing
not to file an examination request.
The shortening of the examination request
period enforced in 2001 is considered to be asolution for eliminating such an adverse effect.
However, there is a possibility that the
shortening of the period during which eachapplicant is expected to carefully determine thenecessity for patent registration has promoted thepatent registration of inventions that should not
be registered in the first place.
The purpose of this analysis is to examine suchpossibility. We have examined the hypothesis thatthe increase in the examination request ratecaused by the shortening of the examination
request period is greater in the case of a complex
invention that inherently gives the applicant
difficulty in determining the necessity for patentregistration than in the case of an invention thatis found to be low in quality based on the numberof instances of being cited as a reference in otherinventions.
A regression analysis on patented inventions
has revealed that the shortening of theexamination request period would have the effectof increasing the examination request rate by
about 10.6% on average and that the effect would
be strengthened by the complexity of an
invention (a large number of claims, the filing of
PCT applications).
The analysis has also revealed that the lower
the patent quality measured based on the numberof instances of being cited as a reference in otherinventions is, the stronger the effect of increasing
the examination request rate would be. Thissuggests that the change in the system has
lowered the average level of patent quality.
●

In other words, the shortening of theexamination request period has increased theunpredictability faced by applicants and decreased
the average level of patent quality.
Therefore, unless accelerated patent grants
promote R&D and innovation activities to such an
extent that the abovementioned adverse effects
become negligible, the social conditions andpublic welfare would deteriorate.

Ⅶ Effect of the Revision of the Fee
Structure on Patent Quality
The patent-related fees, i.e. application fee,
examination request fee, and patent fee, havebeen established based on the principle ofequivalence (the fees should be set at a level thatis sufficient to compensate administrative costs)
and the principle of beneficiary liability (theperson who benefits from administrative service
should be liable to pay the costs as compensation).
The application fee is set at a level that is
considered appropriate from the perspective ofpromoting inventions. The examination request
fee is set at a level that is considered appropriate
from the perspective of maintaining a proper levelof examination request activities. In considerationof these fees, the patent fee is set at a level thatis considered appropriate from the perspective ofcompensating all of the administrative costs.
In short, the patent-related fee system is
expected to set fees at a level that is sufficient tocompensate administrative costs and to performthe function of promoting applicants' R&D
activities and the applicants' function of screening
inventions. Since the application fee is not so
expensive, the latter function, i.e., the function ofcontrolling patent quality, may be considered tobe more important.
In this section, we have identified the effects of
the revision of fees on the number of times thatpatent applications have been cited as a reference
and confirmed the importance of the revision offees as a policy tool to control patent quality.
Based on the results of a regression analysis
conducted on patented inventions after removing
not only the effect of the difference between
technical fields and the change in the market
trends and the demand trends but also the effectof the shortening of the examination request
period and the difference in the need foraccelerated patent grants, we have found that the2004 revision of fees had little effect on the
average number of instances of being cited as areference in other inventions and, in contrast,
6 ●IIP Bulletin 2013 Vol.22

that the number of instances of being cited as areference in other inventions has greatly
increased since the revision of fees in the fields
where the maintenance period is relatively short.
This indicates that the revision of fees has theeffect of improving the quality of patentapplications for which examination requests are
made, while maintaining the average amount of
total payments at the same level and adjusting theamount of payment in accordance with the lengthof the maintenance period. In other words, thepatent-related fee system is a very effective
policy tool to control patent quality.

Ⅷ

Effect of International Cooperation
for Patent Examination

Currently, in order to enhance the efficiency ofpatent examination, the JPO has been promoting
mutual sharing of examination results withforeign patent offices. The purpose of thisanalysis is to determine the significance of theactual effect of such sharing and to evaluate what
effects the use of other countries' search reports
would have on domestic examination efficiency.
Since we are unable to obtain data that clearlyshows whether examiners have used othercountries' search reports or not, we assumed that if
domestic examination results are given after the
publication of the results of a search conducted byanother country, the examiner who engaged in thedomestic examination has referred to the search
results of that country. Similarly, we assumed that if
domestic examination results are given before thepublication of the results of a search conducted byanother country, the examiner who engaged in thedomestic examination has not referred to the search
results of that country.
In the case of an invention claimed in a PCT
application filed with the EPO, if the EPO is not
an International Searching Authority, the EPO
will issue a supplementary search report. In thissection, regarding the inventions for which PCT
applications were filed with the EPO by using the
JPO as the Office of First Filing, we have made acomparison between the following two types ofinventions from the perspective of the trial
occurrence rate and the ratio of consistency in
examination results; the inventions for which the
JPO has given examination results prior to theissuance of the EPO's supplementary search
report and the inventions for which the JPO has
given examination results after the issuance of
the EPO's supplementary search report.
If it is correct to understand that the use of the●

IIP Bulletin 2013 Vol.22

EPO's supplementary search report improves
examination quality, we should be seeing a lower
trial occurrence rate and a higher ratio ofconsistency between the two countries in terms of
examination results in the case of the inventions
patented based on a supplementary search reportthan in the case of the inventions patented without
using a supplementary search report.
In this analysis, it is necessary to remove theeffects of the endogeneity that may be summarized
as that, in the case of highly patentable, importantinventions, applicants tend to receive examination
results within a relatively short period of time andsuffer a relatively high rate of the occurrence of atrial against an examiner's decision as well as theendogeneity that may be summarized as that the
shorter the examination period is, the lower theexamination quality would be. In this analysis, wehave conducted a two-stage estimation by using
the search commencement lag at the EPO as an
instrumental variable.
The analysis results have shown that theuse of the EPO's supplementary search report
reduced the rate of the occurrence of a trial
against an examiner's decision to 5.9% (the rateof change is 46.3%), which is a 5.2 % decrease
from the average level of 11.1%, and also reduced
the ratio of inconsistency between the JPO andthe EPO in terms of examination results to 6%(the rate of change is 86%), which is a 36 %decrease from the average level of 42%. This
indicates that the use of other countries' search
results greatly affects examination quality.

Ⅸ Conclusion and Political Implications
In this research, we have conducted an empiricalanalysis to figure out what effects the system
reform related to the patent examination process inJapan and international cooperation for patentexamination would have on applicants' patent
prosecution activities and examination efficiency.
In recent years, inventions have become
increasingly
complicatedandadvanced.
Furthermore, the applicants' need for accelerated
patent grants has been growing. The analysis
results have revealed that the increasingly
complex inventions and the growing need foraccelerated patent grants have increased thenecessity for communications between applicantsand examiners and have extended theexamination period. Against this background, theaccelerated examination system is found to be an
important policy tool to facilitate accelerated
patent grants. We have also found that the system
7 ●is used for high-quality inventions. On the other
hand, while the shortening of the examination
request period has accelerated patent grants, it
could deteriorate patent quality by making it
difficult for each applicant to determine thenecessity of the invention. The analysis conductedin this research has revealed that the patent-related
fee system is effectively functioning as a means to
mitigate such patent quality deterioration.
Furthermore, this research has shown that the useof the search results of other patent offices could
greatly improve examination efficiency.
These findings suggest that the applicants'
screening function is important (the function ofdifferentiating the inventions for which accelerated
patent grants should be sought from the inventions
for which deferred patent grants should be sought)
in enhancing examination efficiency andconducting patent examination at each applicant's
preferred timing within the limited examination
resources (in terms of personnel and budget). Thisis obvious from the fact that the shortening of theexamination
requestperiodhas
greatly
deteriorated patent quality.
The accelerated examination system, though it
is free of charge, is not necessarily used for all of
the inventions that satisfy the requirements,
while it is observed that the system is used forhigh-quality inventions. This indicates that therequirements for the use of the system have been
imposed for the purpose of simultaneously
achieving the maintenance of patent quality andthe fulfillment of the need for accelerated patent
grants. However, increasingly complicated andadvanced inventions and the applicants' growing
need for accelerated patent grants would
necessitate further relaxation of the requirementsin the future. On the other hand, since therelaxation of the requirements for the use of theaccelerated examination system would increase thepossibility of the use of the system for inventions
that are low in patentability and value, it could
deteriorate the average level of patent quality.
Such deterioration in quality could be reversedby the enhancement of the applicants' screening
function by revising the patent-related fee system.
In fact, the results of the analyses conducted inthis research have shown that the patent-related
fee system is a very effective tool for patentquality control.
Currently, while discussions are being held on theidea of increasing the number of phases in patentexamination, significant relaxation (for example, theremoval of the requirements so that any person can
use the system) of the requirements for the use of●

the accelerated examination would bring about asimilar (or more desirable) effect.1 In this case, itwould be necessary to inhibit the filing of requests
for accelerated examination to such a level thatallows for the proper setting of priority for patentexamination by charging a fee for the use of thesystem so that the system is used only for inventions
for which accelerated patent grants are truly needed
and by encouraging applicants to provide thescreening function. It is also necessary to provide
support for small and medium-sized companies, etc.,that do not have sufficient financial resources.
Moreover, it would be beneficial to consider
lowering the examination request fee if
applicants are newly charged for the use of theaccelerated examination system and thereby toreduce the burdens on applicants who have to
face greater unpredictability caused by theshortening of the examination request period,
while maintaining the expected total amount of
payment at the same level.
As described above, it would be possible togrant a patent at an appropriate time without
lowering patent quality by giving applicants anopportunity for making a decision at two timings,
i.e., the time of filing an examination request andthe timing of filing a request for accelerated
examination. At these two timings, each applicant
is expected to determine the necessity for apatent grant and the priority for patentexamination. In particular, since no limitations are
imposed on the filing of a request for accelerated
examination, the system could be used in a
flexible manner by choosing an appropriate timingin accordance with the timing requested by theapplicant for a patent grant. However, it would
have an adverse effect on third parties to keep apatentability judgment on an unpatentable
invention pending for a long time. Therefore, it
might be necessary to set a limit on the length ofthe period before the commencement of
examination as far as the regular examination
system is concerned. Also, it might be beneficial
to permit a third party to file a request for
accelerated examination in order to reduce theadverse effect caused by a pending patentability
judgment (in this respect, this might be moredesirable than the idea of increasing the numberof phases in patent examination.).
Furthermore, this research has revealed thatinternational cooperation for patent examinationis very effective in increasing examination
efficiency. It would become increasingly
important to promote such activities.

8 ●IIP Bulletin 2013 Vol.22

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Sub-committee on the Patent System, Intellectual
Property Policy Committee, Industrial
Structure Council (2004), “Saiteki na tokkyo
shinsa ni muketa tokkyo seido no arikatani
tsuite Chukan torimatome” (Interim reporton the future patent system for optimum
patent examination)1

9 ●For example, if the number of cases of the use of theaccelerated examination system increases, theexamination of a patent application processed without
using the system would take longer than the current
level as long as other conditions are the same. Thismeans that the nonuse of accelerated examination
would have the same effect as the effect of the use ofdeferred examination. Meanwhile, if the requirements
for the use of the system are abolished, it would be
more desirable than increasing the number of phases inpatent examination in the sense that it would allow athird party to use the accelerated examination system
to accelerate patentability judgment on an unpatentableapplication.