〈日本知財学会誌〉Vol. 14 No. 2― 2017 : 27 43-

Outline of Patent Quality Management
System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan
Patent Office (JPO)
Sofia Rehan Ramli（Intellectual Property Corporation of Malaysia (MyIPO), Patent Engineering Division, Patent Examiner）【Abstract】 This paper highlights the efforts that has been made and proposed to be made at Intellectual Property
Corporation of Malaysia (MyIPO) on patent examination quality management. This paper also highlights the outline ofpatent quality management system done by the Japan Patent Office (JPO), and how such efforts could be done by MyIPO
as well.
【Keywords】 patentquality management

external experts

mality and examination matters pertaining to patent

1. Introduction

applications and registrations.
Malaysia has become a signatory of the Trans-PacificIntellectual property (IP) refers to the creation ofPartnership Agreement (TPPA)(The Star Online,

the mind. The purpose of IP legislation is to ensure2016) that requires Malaysia to align its intellectualthat the creators (inventors, authors, owners, etc.) of

property protection with the minimum standards stipu-

the IP has the exclusive right to exploit the IP. In pat-

lated under the provisions of the TPPA. With the Ma-

ent specifically, through a proper patent legislation, notlaysian Patents Act 1983 is expected to be amended byonly the patent owners will have the exclusive right toyearend, the time frame would enable Malaysia to car-exclude others from monetizing their inventions, thery out its obligations and commitments in the TPPA

patent system will also foster innovation that can drive

prior to ratification. Requirements such as disclosing

a nation’s economy.

patent examination report to the public and patent

In Malaysia, IP rights is administered by Intellectual

term restoration (Ministry of International Trade andProperty Corporation of Malaysia (MyIPO). MyIPO is

Industry, 2016) if the delay is caused by the patent of-

the granting authority for all industrial property rights

fice has never been implemented in MyIPO.

that want to get protection in Malaysia. The patent di-Patent Quality Management is essential because

vision in MyIPO currently has 103 staffs handling for-there is a need to avoid issues that may arise if exami-

ISSN 1349-421X© 2017IPAJ

All rights reserved.

27

〈日本知財学会誌〉 Vol.14 No.2― 2017

nations are done by inexperienced examiners. Poor un-

mark Office (USPTO), European Patent Office (EPO)

derstanding of technology and search strategy, errone-

and JPO) who are considered by many (including

ous decision regarding patentability and inadequate(Thomas, 2002)) as the patent giants have long beendrafting of examination reports could provide a draw-pressed to address the issue on quality patents, moreback to these inexperienced examiners in career ad-so since whatever practices adopted by these offices

vancement, and also would not be in line with MyIPO’s

are likely to be emulated by other patent offices aroundvision of becoming one of the leading intellectual prop-

the world.

erty organizations and MyIPO’s mission to provide

In USPTO, there is a division (namely the Office ofstrong legal infrastructure and effective administration

the Deputy Commissioner for Patent Quality) dedicat-

regime to enhance greater creativity and exploitation

ed to uphold the Enhanced Patent Quality Initiativeof IP.

pillars :i. Excellence in Work Products

2. Basic Information

ii. Excellence in Measuring Patent Qualityiii. Excellence in Customer Quality

2.1. Background on Patent Office Management/
Patent Quality

The office is comprised of four divisions, with thejob scope of each division is as shown in Figure 1.

Quality in patent management (and subsequently inMeanwhile in EPO ((EPO, 2015)), the department

patent examination report) is not a new global issue.

directly involved in quality management is as shown in

The trilateral offices (United States Patent and Trade-

Figure 2.

Figure 1

Job scope of each division in Office for Patent Quality in USPTO
provides legal,management, andleadership training

supports and instructs
process improvement
performs processreviews

reviews and analyzes
trends in training

analyzes trends
deﬁnes standards /metrics

Oﬃce of
PatentTraining

Stakeholder
Outreach andPatents
Ombudsman
ProgramOﬃce of
Patent Quality
Assurance

implements external
partnering andengagement

performs quality
reviews and provides
feedback

performs incident
management

assists technology
centers in theirreviews and training

handles complaints
28

Oﬃce ofProcess
Improvement

Outline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

Figure 2

An organizational chart showing all those bodies and individuals responsible for the
QMS in EPO
President

PD Internal
Audit

Quality Board

DG1

PD 1.1 Business
Services

DG3

Joint Clusters

DG4

DG5

PD Quality
Management

Directorate
Quality Support

DG2

Information
Management

DG2 Application
Management

PatentAdministration

Directorate
Quality Analysis& Policy

As can be seen from the chart, quality management

Recruitment & Talent Management (DG4 in the chart

are the responsibility even for the President of EPO.

above) together with Directorate HR Coordination

The Quality Board is responsible for upholding the(DG1), while training for formality officers is managed

quality principles of EPO :by the same directorate in DG4 together with Patenti.

Legal certainty

Administration training team. As a result of the re-ii. Service

forms to strengthen the structure and efficiency of pat-iii. Continual improvement

ent in Europe, in 2015 EPO achieved the best perfor-

iv. Involvement

mance yet, over 14% increase of searches, examinationsv.

and oppositions and 6% increase of patents being

Informed decision making

vi. Openness

granted over 2014 (EPO, 2015). In 2015 EPO also ob-vii. commitment

tained ISO 9001 certification for its patent information

The task of the Quality Board includes monitoringand post-grant activities (EPO, 2015).

the implementation and the effectiveness of the actions taken by operational departments and Principle
Directorate Quality Management. The Principle Direc-

2.2. Organizational chart of the Patent Division
in MyIPO

torate Quality Management includes two Directorates :The organizational chart of the Patent Division in

Directorate Quality Analysis & Policy (responsible for

MyIPO is at Figure 3. Patent is divided into threefacilitating the policy making process by providing in-divisions ; Patent Formality & International Registra-

formation, data, metrics analysis and recommendations

tion, Patent Science and Traditional Knowledge, andto management) and Directorate Quality Support (re-Patent Engineering. Currently there are around 103

sponsible for managing the Quality Management Sys-

staffs in patent, with 80 of them are patent examiners

tem by the development and maintenance of quality

from the examination divisions. Each examination divi-

services).

sion is further divided into several units led by a head

Regarding human resource development scheme,
the training for examiners is managed by Directorateof unit. Each head of unit may have around 3-7 patentexaminers under his/her supervision.
29

〈日本知財学会誌〉 Vol.14 No.2― 2017

Figure 3

Organizational Chart of Patent Divisions in MyIPO
Assistant Director
General (Technical,
Science & Technology)

Senior Director of
Patent Science &Traditional Knowledge
Division

Senior Director of
Patent Engineering
Division

Senior Director of
Patent Formality &International
Registration Division

Automotive

Mechanical &Mechatronics

Inorganix &Electrochemistry

Organic Chemistry

Formality Applicationand Examination
SectionCivil & Environmental

Telecommunications

Phytochemistry andTraditional Knowledge

Pharmaceutical

Patent Registration
SectionMicroelectronics

Management &Information Systems

PolymerPetrochemical &OleochemistryElectrical (Power)

Electronics

Biotechnology &Microorganism

Pre-classiﬁcation andExamination Report
SectionComponent &Networking

Below is the statistics of patent applications for thelast 10 years in MyIPO.

is of utmost importance, since a low quality patent
would likely trigger a series of patent disputes that areoften costly and time-consuming. The uncertainties of

2.3. Efforts in Quality Management

MyIPO receives around 7,400 patent applications,with around 83% of the applications are from foreigncountries. Table 1 shows the number of patent applications received for the last 10 years.
According to Picard (Prerre M. Picard, 2011),

a low quality patent can add to private and social costs
to the patent system, making the system unreliable.
Below are the initiatives taken by MyIPO towards
quality management of patent in Malaysia :i) Enhancement of examiner’s skill and knowledge
As stated above, there are competency-based

A high quality patent system can therefore be de-training module for newly recruited examiners,

fined as the one that discriminates between inven-refresher program using Regional Patent Exami-

tions keeping the same inherent and idiosyncraticnation Training (RPET) syllabus, and expert train-

error risk. A medium quality patent system makes

ing from other IP offices. Additionally MyIPO has

more errors and grants more than necessarily mo-also set up an education fund for patent examiners

nopolistic rights to applicants. A zero quality pat-to further their studies in their respective tech-ent system would always grant a patent and would

nology field. RPET program (IP Australia, 2016) issimply consist in stamping and recording the pat-a program provided by IP Australia to selected ex-

ent application files.

aminers, where the examiners will have to under-

Taking into account that most applicants are likely togo 2 years of training and assessment through vir-commercialize their inventions, a patent of high quality

tual lectures, one-on-one mentoring and online30

Outline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

Patent Applications and Growth 2006–2016
200%

7000

6000

150%

APPLICATION

5000

100%
PERCENTAGE

Figure 4

4000
50%
3000
0%

2000

Local
Applications
Foreign
Applications% LocalApplications% Foreign
Applications

-50%

1000

-100%
2016

2015

2014

2013

2012

2011

2010

2009

2008

2007

2006

0

YEAR
Table 1Patent Applications received 2006–2016

IPR

2006

2007

2008

2009

2010

2011

2012

2013

2014

2015

2016

PATENTS

4800

2372

5403

5737

6464

6559

7027

7350

7760

7907

7395

GROWTH (%)

－23.6

－50.6

127.8

6.2

12.7

1.5

7.1

4.6

5.6

1.9

－6.5

communities of practice facilitated by experienced

in the field of Computer, Biotechnology, Chemis-

examiners from IP Australia.

try and Pharmaceutical. These revisions are dueii) Standardization of standard clauses

to Malaysian’s accession to the TPPA, in which

A committee to standardize the standard clauses

the Malaysian Patents Act 1983 would also be

to be used in examination report has been estab-amended. Currently the guidelines and the stan-lished in 2015. The purpose of this standardization

dardization of standard clauses are awaiting con-is to ensure that examiners are conveying thefirmation of the legislation amendment.

right message in their reports and also in a cleariv) Mentoring

and concise manner. The standard clauses are in-

Recently introduced, each head of unit must now

corporated into report generated by system usedconduct quality assessment and checking of everyby the examiners.

search and examination report produced by his/iii) Revision of patent examination guidelines

her subordinates before the report is sent to theApart from the committee for standard clause, aapplicant. Other than the report itself, the exam-task force on the revision of patent examination

iner must also submit search strategies and pat-guidelines has also been set up. The guidelines

entability assessment for the application to be as-

would probably include general examination

sessed by the head of unit. The quality

guideline, and also specific examination guidelines

assessment is adapted from the one used by par31

〈日本知財学会誌〉 Vol.14 No.2― 2017

ticipants in the RPET program.
v) Quality management systemb. ASPECMyIPO has also implemented an expedited exami-

Launched in 2009, ASEAN Patent Examination

nation route, where an applicant can request for

Co-operation (ASPEC)(ASEAN Intellectual Prop-

his/her application to be examined and the exami-

erty Portal, 2017) is a regional patent work-shar-nation report be produced within 8 weeks froming program, where an applicant can file an AS-

such request (MyIPO, 2017). This type of exami-

PEC request to MyIPO if there is a first officenation for a clear cut case is certified with MS ISO

action issued with at least one allowable claim

9001 : 2008 since 2011.

from any of the ASEAN Member States (AMS)vi) Subscription of patent and non-patent searching(ASEAN, 2014). This could prevent duplication oftools

searching and examination, along with expediting

MyIPO also subscribed to a number of patent andthe granting process.

non-patent searching tools to complement thec. PPH / PCT-PPH

free searching tools available for examiners’ pe-

While ASPEC is a regional work-sharing programrusal. The subscribed searching tools are EP-among its AMS, Patent Prosecution Highway

OQUE Net, STN®, and MyTKDL (a closed sys-

(PPH) and its Patent Cooperation Treaty counter-tem database for specific users as reference forpart, PCT-PPH is the product of a bilateral agree-

examiners conducting search and examination forment between MyIPO and JPO. Similar to ASPEC,

applications related to traditional knowledge (My-an applicant who has filed an application in both

IPO, 2012).

MyIPO and JPO can use the patentability report ofvii) Work-sharing with other IP offices

one office to file a PPH request to another office

Regarding examination, MyIPO also implements

to accelerate examination process, provided atseveral work-sharing programs that are intended

least one of the claims is deemed allowable by theto reduce the workload of examiners by sharing

office. Figure 5 shows the outline of the PPH.

searching and examination results by examiners

A PPH pilot program has also been initiated be-from other IP offices for the corresponding patent

tween MyIPO and EPO (EPO, 2017), with similar

application.

requirements as the PPH pilot program between

a. Modified Substantive Examination
Under Section 29A(2) of Malaysian Patents Act

MyIPO and JPO.
d. Use of Foreign Examination Reports (FERs)

1983, an applicant can file for a request for modi-

Examiners are also always encouraged to makefied substantive examination instead of a request

use of reports produced by other IP offices as ref-for substantive examination. A request for modi-

erence during conducting substantive examina-

fied substantive examination must be accompa-

tion. Not only it could shorten the examination

nied by certified true copy of a granted patent cor-

period, it could also prevent duplication of work

responding to the Malaysian application from aamong patent offices, and thus improve the effi-prescribed country or a prescribed treaty or Convention (Regulation 27A(5) lists out the pre-32

ed patent and search report as a reference.

ciency of the patent office.
viii) New integrated system

scribed country, treaty and Convention). The fee

Currently, MyIPO examiners are using different

for this type of examination request is also lower

programs for different aspect of substantive ex-than the request for substantive examination, con-amination. These multiple systems are to be re-sidering the examiner in charge can use the grant-

placed with a single integrated system, due to beOutline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

Figure 5

Outline of PPH Request

Application in
the Oﬃce ofFirst Filing

Determined to bepatentable

Priority Claim etc.

Application in
the Oﬃce ofSecond Filinglaunched in 2018. This move is expected to makeIP management more efficient, and thus of better
quality.
2.4. Feedbacks from Users

In an effort to improve quality of examination, MyIPO makes use of feedbacks from users. There areseveral ways where users can leave their feedbacks.

PPH
RequestAccelerated
Examination

3. Patent Quality Management System in JPO
3.1. Overview of JPO

Figure 6 shows the organizational chart of JPO :The breakdown of personnel in JPO (for FY2015) are
as shown in Figure 7.

MyIPO has established a joint task force with Malaysian Intellectual Property Association (MIPA) to tackle

3.2. Quality Management of Patent Examination

quality-related issues on patent. Meetings are held

3.2.1. Background of Quality Management in

twice a year, where the outcomes of the meetings areconveyed to the management.

JPO

Before 2007, quality of notices produced by examin-

Users are also encouraged to provide feedbacks

ers was monitored by a quality subdivision under ex-

through email. The users can either email directly toamination guidelines division. The directors of eachthe examiner in charge, to the senior directors, or evenexamination department also managed the quality ofto the general email found on MyIPO’s website.

examination of their subordinates on a routine basis. In

Apart from emails, users can also leave their feed-

addition to working as a member of the committee andbacks to MyIPO’s social medias like Facebook or Twit-

managing the examination process, directors of the ex-ter. MyIPO also regularly conduct public sessions

amination departments at the JPO also conducted ex-

where users / stakeholders can come and meet up withaminations on actual applications and check and ap-

the representatives of MyIPO.

prove the drafts issued by examiners. However, a
proposal to set up an independent office handling quality matters was raised due to the heavy burden of theguidelines division, since the quality division would
also have to involve in the planning and implementation of quality management. Additionally quality was33

〈日本知財学会誌〉 Vol.14 No.2― 2017

Figure 6

Organizational chart of JPO

Japan Patent Oﬃce

Policy Planning and
Coordination Department

Personnel Division
General Coordination Division
Legislative Aﬀairs Oﬃce

Commissioner

Information Technology and Patent Information management Oﬃce
Budget and Accounts Division

Deputy Commissioner

Policy Planning and Research Division

Industrial Property Council

Information Dissemination and Policy Promotion DivisionInternational Policy DivisionInternational Cooperation Division

Trademark and Customer Relations
Department

Customer Relations Policy Division
Formality Examination Oﬃce
Registration Oﬃce
Application DivisionOﬃce for International Applications under the Patent Cooperation Treaty (PCT)Oﬃce for International Design Applications under the Geneva Act of the Hague
Agreement and International Trademark Applications under the Madrid Protocol
Patent Administration Service Oﬃce
Trademark Division
Director

Patent and Design Examination
Department (Physics, Optics, Social
Infrastructure and Design)

Administrative Aﬀairs Division
Examination Promotion Oﬃce
Examination Standards Oﬃce
Design Division
Director

Patent Examination Department(Mechanical Technology)

Director

Patent Examination Department(Chemistry, Life Science and Material
Science)

Director

Patent Examination Department(Electronic Technology)

Director

Trial and Appeal Department

Trial and Appeal Division
Infringement and Invalidation Aﬀairs Oﬃce
Chief Administrative Judgealso a pressing issue from users during meetings held

fully functional as well as to maintain and enhance thebetween JPO and private sectors. As a result, a Quality

quality of examinations.

Management Office (QMO) was established in 2007,

Within the first five years of establishment, thewhich is a separate office under Administrative Affairs

Quality Management Office (QMO) dealt mostly with

Division. QMO specially focuses on managing the qual-

Human Resource matters, as the staff in both guide-

ity of examinations collaboratively on a cross-sectionallines division and QMO were also patent examiners

basis in terms of technology, in order to evaluate

who were doing concurrent work as patent examiners.

whether quality management practices underway were

QMO also looked into the quality management model

34

Outline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

Figure 7

Personnel composition of JPO

Clerical Oﬃcials

Patent/Utility

546

Model 1702

Examiners
1888

Administrative
JudgesDesign387

48
Trademark138

used by the EPO and USPTO, especially EPO sincewith quality policy on patent examination and quality

EPO is known to be quite advanced in that area. In

management manual (which both were released in2012, the first user satisfaction survey was conducted2014 afterwards).

in order to assess the quality level of patent granting

JPO has come up with an all-inclusive quality man-procedures. The respondents of the survey were com-agement system in order to realize globally reliable ex-panies who filed many applications in that year (90%amination of high quality so patent owners can easily

from the respondents were large companies). As a re-obtain their rights overseas through examination re-sult of the survey, the management decided to come up

sults produced by the examiners of JPO, Such as work-

Figure 8 : Overview of JPO’s Quality Management System
Commissioner

JPO

Deputy Commissioner**Director-General of Trademark and Customer
Relations Department handles trademark mattersinstead of Deputy Commissioner

Users

Formality
Check
Filing(Applicants/ Attorneys)

Substantive
Examination
PatentDesignTrademarkExamination

Notice(Reasons for refusal/ Decision)

HR/ Recruitment

User

Laws & Regulations

Satisfaction

Examination Standard

Planning

Filing Trend Survey(Patent/Design/Trademark)Understanding Quality,
IssuesFormulating & revising QM

Classiﬁcation

Survey, etc.

Analyzing and Identifying

policies and manuals

Conducting quality audit andPlanning initiatives

analyzing the results

Improving QM System

Analyzing the survey on user

Examination
Information,etc.

satisfaction

IT System

Request for
Improvement

Training Program
Pre-search(Registered Search
Agency)Foreign IP oﬃces
Evaluation/Suggestions
Are policies, procedures, and system concerning QM well established?
Is QM Implemented according the established policies and procedures?

Subcommittee on Examination Quality Management35

〈日本知財学会誌〉 Vol.14 No.2― 2017

sharing initiatives with MyIPO through PPH / PCT-

for review, and these senior quality management

PPH as mentioned in 2.3 above. The overall quality

officers will provide feedbacks to the examiner in-management system practiced by JPO is represented

volved and the director in charge of the examiner.

as Figure 8 :Regarding the senior Quality Management Offi-

JPO published its Quality Policy on Patent Examina-

cers, they are generally patent examiners withtion in April 2014 as fundamental principles for exami-

also more than 20 years of experience and havenation quality management in order to grant high qual-

been a director. They oversee the work of the

ity patents. Along with the quality policy, JPO has also

quality management officers, including give brief-

established several committee / offices to uphold theings to newly-appointed Quality Management Of-

quality policy as follows :ficers. The Quality Management Officers are

I. Subcommittee on Examination Quality Management
Established in August 2014, this subcommittee is

QMO is the driving force of QMS in JPO. Its staff

under Intellectual Property Committee of the In-

consists of 5 patent examiners (with more than 10

dustrial Structure Council (Industrial Structure

years of experience) as the director, deputy direc-

Council Organization Chart)(METI Japan, 2013).

tor and specialists, assisted by 27 researchers

The purpose of this subcommittee is to receive(also called quality management assistants), as

objective validation and evaluation on quality man-written in Report of the Subcommittee on Exami-

agement in JPO and the impact of the manage-

nation Quality Management (FY2015)(JPO, 2016).

ment towards examination quality. There are 11

QMO is responsible for supporting and planningexternal experts in the subcommittee. The sub-initiatives decided by top management and obtain-committee produces a written report based on

ing facts and feedbacks on examination processes

their findings annually. The reports are publishedthrough the initiatives. It is necessary for theon JPO’s website.

QMO to have patent examiners, as the skills and

II. Quality Management Officers

36planned to hold the post for 2-3 years.
III. Quality Management Office (QMO)

knowledge on patent examination is necessary inSince April 2014, around 90 patent examiners

order to do quality management on examination.

have been designated as Quality Management Of-

That would include planning and implementation

ficers under Administrative Affairs Division. Theof quality-related matters. QMO would also have

Quality Management Officers are patent examin-

to extract and analyze statistical data and apply

ers with more than 20 years of experience in ex-

the result into quality management. Usually QMO

amination department and preferably also in ad-

will have to handle 10 quality-related projects at

ministrative department (e.g. Trial and Appeal

one time.

Division). Usually the director of examination de-

The researchers’ task is similar to that of thepartment will appoint the patent examiners in his/quality management officers in item (II) above,

her department to become quality management

however they are only conducting random checkofficers. The task of these officers is to audit theon formality aspect of the notices drafted by ex-

notices drafted by examiners. Random sampling isaminers (partial audit).

done to notices before they are dispatched to ap-

QMO also has access to monitor the output ofplicants. Any deficiencies found is reported to se-each examiner, so if an examiner has granted anior Quality Management Officers (currently

questionable number of cases on first office action,

there are 4 senior Quality Management Officers)

QMO will alert the Director of the department inOutline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

charge, and the action taken would be up to the

All of the aforementioned committees and units

Director.

work together for the purpose of maintaining that all

Every year, QMO would receive 2-3 Assistantnotices issued by examiners are of utmost quality, andExaminers as interns in the Office. Usually the in-consequently the patents granted are also of high qual-

terns are given projects to work on, particularly toity. They conduct quality verification through various

expose them to the quality management of patent

methods that will be further explained below.

examination in JPO.

3.2.2. Quality Audit

IV. Quality Management Committee (QMC)

The first step in quality assurance is by directors of

QMC consists of a senior director as the chairper-

an examination division. Directors are responsible forson and 3 directors from each of the 4 patent ex-

examination quality in the technical field in charge by

amination departments, making the total of thereviewing the notices drafted by their subordinates. Ifcommittee to 13. Its roles is to analyze and evalu-

there are any deficiencies, the directors will ask theate data on quality collected by QMO and to reportexaminer in charge to correct them. If the notices are

the analysis to related units / departments / par-approved by the directors, the notices will be dis-

ties.

patched to users. However, as stated above, these no-

These committees and their places in the organizational chart of JPO is illustrated in Figure 9 :Figure 9tices are subject to random sampling by quality management officers, so some of notices may go throughOrganizational Chart of Quality Management System in JPO ; the green boxes are units thatare directly responsible for quality management
Commissioner

DeputyCommisioner

Policy Planning& Coordionation
Dept.

Trademark &Customer
Relations Dept.

Exam. Dept 1

Exam. Dept 2

Exam. Dept 3

Exam. Dept 4

Trial & Appeal
Dept

AdministrativeAﬀairs Div.

QMO

Quality
ManagementOﬃcersDesign Div.

Exam. Div.

QMC

Exam. Div.

Exam. Div.

Exam. Div.

Subcommittee on Examination Quality
Management37

〈日本知財学会誌〉 Vol.14 No.2― 2017

quality management officers before being dispatched.

various stakeholders (users) on examination quality.

Random sampling is done via a system monitored byAmong them are Japan Intellectual Property Associa-

the staffs in quality management office. The system istion (JIPA), Japan Patent Attorneys Association (JPAA),

also capable of filtering the notices based on certain

applicants and also inventors.

criteria (e.g. sampling from a specific technology field,

JPAA, a professional bar association of Japanese pat-a notice to grant first office action, etc.). A revised sys-

ent attorneys, has extensive collaboration with JPO,

tem is being developed so samples can be picked every

extending beyond the normal interaction between aday (currently samples are not picked every day).

patent attorney and a patent examiner. JPAA has set up

During quality audit, the officers will conduct exami-

various committees (29 committees as of FY2016) con-nation as if the cases are their own, so they will needcerning IP in Japan that sees these committees collab-

to understand the invention, conduct additional priororate with JPO and other agencies on further develop-

art search and make their own judgment based on thements in IP ecosystem. JPAA also has a representative

prior art. Based on the results, these officers willin the Industrial Structural Committee established bycheck the notices in terms of substantive and formality

METI as explained earlier, so there is no denying thatissues and make a report for senior quality manage-

JPAA has first-hand involvement on JPO’s quality man-ment officer’s review. After reviewing, the senior offi-

agement.

cer will either give feedback to the examiners inRegarding patent quality, the committee involved

charge and their director if there are any deficiencies

conducts meetings with QMO of JPO once or twice ain the notices, or send the notices to be dispatched if

year. During that meeting, the members are presented

everything is according to examination guidelines.

with results and analysis of the user satisfaction sur-Around 3,000 notices are audited by the quality man-vey, followed with action plan to overcome any issues

agement officers every year, so one examiner could

raised from the survey. Other than that, the meeting

have been audited 0 – 2 cases per year. As a compari-

would also involve any cases concerning quality thatson, on average, 500,000 notices are dispatched every

are received by the patent attorneys for JPO’s atten-

year (including further and final notice of refusals).

tion. The QMO would also ask JPAA’s opinions on pub-

Therefore only around 0.5-0.6% of the notices are sub-lic relations aspect, for example on the attitude ofject to quality audit.

JPO’s examiners during interviews and when answer-

3.2.3. Partial Audit

ing the phone.

Similar to quality audit, some of the notices drafted

Other than examination quality, JPAA also contrib-by examiners are also subject to random sampling inutes by providing opinion on revision of examination

partial audit. While quality audit means a thorough au-standards (which is handled by Examination Standards

diting on entire examination process by an examiner,

Office) and PCT route. JPAA is also an accredited ob-

partial audit is focusing on the formality of the notices.

server in WIPO and usually sends delegates in WIPO’s

This partial audit is carried out by the researchers

PCT sessions. Usually the delegates will discuss withfrom QMO. These researchers will report any deficien-

JPO (as users of the PCT route) on feedback and ways

cies found to the QMO officers (who are also patentto improve the PCT route. Similarly, JPO also provides

examiners), and upon reviewing the QMO officers will

instructors and materials for the training of patent at-give the feedback to the examiners responsible for thetorneys of JPAA for some of the courses that patent at-

notices and their directors.

torneys have to take organized by the Training Insti-

3.2.4. Meeting with Users on Examination Quality

tute of JPAA.

JPO conducts around 380 meetings annually with
38

Other than regular meetings, one of the other JPO’s

Outline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

initiative on quality improvement is discussions / study

and international preliminary examinations on

sessions with patent attorneys and applicants of cases

PCT applications

involved in court (appeal cases). These study sessionsd) Quality of international searches and international

are usually for cases that have passed the court phasepreliminary examinations on specified PCT appli-

and are brought back to JPO for further examination. It

cations

is likely that the aim of study sessions is to increase

Around 780 users of more than 2,000 applications werethe likelihood of the patent application reaching a posi-

invited to answer the survey, and around 90% of thetive final stage.

users responded to the survey.

3.2.5. User Satisfaction Survey

The survey uses a 5-grade evaluation scheme for

One of the ways to assess the impact and to formu-

each question, ranging from ‘Satisfied’ to ‘Dissatisfied’.

late future planning for quality management is by

QMO will calculate the grading for each question, andknowing the level of acceptance of the end-users of

QMC will analyze and evaluate the results obtained in

the notices, meaning the applicants, attorneys andorder to prioritize the next implementation plan to im-

third parties. User satisfaction survey has been con-prove the quality of examination. The analysis will also

ducted annually since FY2012 (JPO, 2015). The survey

be shared with the Examination Divisions, and if nec-

revolves around four different topics :essary, to the examiners in charge of the applications.

a) Overall quality in general of patent examinations

As an example, the result of the analysis derived fromon national applications

the survey for FY2014 is as shown in Figure 10.

b) Quality of patent examinations on specified na-

For the first time in FY2014, users can answer thesurvey anonymously as an opportunity for the users totional applications

express themselves freely and honestly in the survey.

c) Overall quality in general of international searches
Figure 10

Current level of satisfaction for each questionnaire item and correlation coefficientwith the overall evaluation level (national applications)
Unsatisﬁed

ImportantCorrelation coeﬃdent between evaluation level oneach item and overall evaluation level

0.65

Satisﬁed

Issues with High Priority Leveldescription ofreasons for refusal

practice of
inventive step
0.55

level of examiners’
judgment without
discrepancies

0.45

technical expertise

patent-granted scope

practice of descriptive

national patent
literature searches

practice of novelty

description of decision

requirementsof refusal
practice of amendment requirements

0.35

communication with2014 Survey

NPL searches

examiners

2013 Survey

0.25

judgment of the main

foreign patent
practice of unity ofliterature searches

paragraph of Article
29(1)invention
0.15
2.50

2.70

2.90

3.10

3.30

3.50

Average evaluation level on each item

3.70

3.90

39

〈日本知財学会誌〉 Vol.14 No.2― 2017

The questionnaires were emailed to respondents whoback on the general email at the English version ofwere asked to participate in the survey beforehand,

JPO’s website, which is also a general email for any is-

and they were given one month to complete the ques-sues of concern.

tionnaires. The questionnaires were distributed and3.2.7. Continuous Enhancement by PDCA Cycles

collected between August and November 2014. The

As highlighted above, JPO established a Quality Pol-

respondents were selected randomly based on criteria

icy on Patent Examination in April 2014 with 6 funda-

determined, such as companies with 50 or more appli-

mental principles of quality management in patent ex-

cations in 2012, enterprises capitalized at 300 million

amination (JPO, 2016) :yen with 20-150 employees (manufacturers only) and• We grant robust, broad and valuable patents

so on (JPO, 2015).

• We meet wide-ranging needs and expectations

3.2.6. Acceptance of Opinions on Examination• We all dedicate ourselves to improving quality, co-

Qualityoperating with concerned persons and parties

Another venue to for the QMS in JPO to gather information on examination quality is via the JPO web-• We contribute to improving the quality of patentexamination globallysite itself. Users can leave feedback regarding exami-• We continually improve operations

nation quality by filling out the form on the website,• We raise the knowledge and capabilities of ouralthough at the moment the form is only available inJapanese. For English version, users can leave feed-

Figure 11

staff
In order to consistently improving the QMS in JPO,

Conceptual diagram of PDCA cycle for on the patent examination quality

ACT:
Considering and modifying
initiatives on patentexamination procedures

PLAN:
Formulating patentexamination policy

Continuous
improvement
CHECK:
Evaluating patentexamination procedures
Quality Audit
User Satisfaction Survey

DO: Conducting patent examination procedures
act:
Approvers’supervision
Improving the performanceon patent examination
Raising level of knowledge
and capabilities
Knowledge-sharing

plan:

Deciding policies for patentexamination

Support for improving theperformance on examinationby providing information on
quality
check:

Approvers’checks

40

do:

Conducting patentexamination proceduresConsultations
Interviews

Outline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

JPO adopts the PDCA cycle which consists of two levels : all patent examination departments as a whole,

4. Recommendations to MyIPO

and each examination division individually. PDCA
(plan–do–check–act) is an iterative four-step management method used in business for the control and continual improvement of processes and products.

4.1. Quality Management of Patent Examination
in MyIPO

Regarding quality management, MyIPO is in theIt can be seen that quality verification is done in all

right direction for implementing the requirement thatstages of the PDCA cycle. Other than the items de-the adverse report of cases must be checked by thescribed previously (that mostly fall under ‘plan’, ‘check’

Heads of Unit before being dispatched. However, anand ‘act’), quality assurance is also achieved throughoverall quality management should be conducted as

various other means. For example, under the ‘do’ cycle

well, utilizing the PDCA cycle implemented in JPO.

within conducting patent examination procedures, an

4.1.1. Quality Management Unit

examiner may consult with other examiners. Consulta-

A Quality Management Unit similar to the Quality

tions enable the examiners to share their expertise

Management Office under the Administrative Affairs

through exchange of opinions. This would reduce dis-Division could be set up to monitor all the quality man-crepancies in prior art searches or judgments on pat-agement matters concerning patent examination. This

entability, and at the same time would encourage

unit could be placed within the Patent Division itself,

knowledge-sharing among examiners. JPO requires

and for starters this unit could focus only on the quality

cases with certain criteria to be discussed through con-of reports issued by the examiners. Depending on suit-sultations. For example, every examiner must include

ability, the task of this unit may be expanded to coverconsultations for 6 PCT cases every year. The consul-

the reports issued by the Formality Department, or

tation sessions are recorded on the case’s report.

even to other departments such as Trade Mark Divi-

Around 83000 cases in FY2015 involved consultation

sion or Industrial Design Division.

among examiners. Consultations can be conducted not
only with an examiner(s) from the same Examination
Division, but also with a Director or an examiner(s)from another Examination Division.

Responsibilities of the Quality Management Unit
may be as follows, according to priority :1. Coordinating the quality audit method and review
reports

Another measures towards quality assurance is theIt would be efficient to have an electronic systemstandardization of notices (JPO, 2016). Starting April

to pick random sampling of the reports issued by

2015, a standardized notification form is used to makeexaminers, however as a start the random sam-

it easier for users to understand its content. A comput-

pling could be picked manually. The unit could

er-aided drafting tool was provided to all examiners toalso come up with the criteria to be audited forfacilitate with the standardization, which includes theuse of the Heads of Unit, so that the report couldorder of items in the notices, automatic detection of

be reviewed and analyzed accordingly.

non-compliant descriptions and formality flaws. This is

2. User satisfaction survey

well-received by the users, as shown in the user satis-

Considering the examination reports are eventu-

faction survey (26% of the respondents answered “Im-ally for the understanding of the users, it is im-proved”, 4.6% answered “Worsened”).

perative to know what the users think and want of
the reports. The Quality Management Unit may
propose a suitable form of survey to get the users’
views. However the survey must be of an in41

〈日本知財学会誌〉 Vol.14 No.2― 2017depth nature, as it would be more effective to get

4.1.2. Quality Management Committee

an honest opinion on a specific application, rather

In JPO, the Quality Management Committee serves

than a general opinion on general matters. The

as a think tank of quality management system. Thissurvey could be in the form of a face-to-face in-committee analyzes and evaluates data on quality col-terview or a questionnaire accessible by the us-lected by the QMO and reports the analysis to manage-ers. The Quality Management Unit would thenment and related parties. MyIPO could adopt a similar

analyze the result of the survey and propose theapproach by establishing a quality management com-appropriate measures to the management in ordermittee as well. This committee will be responsible toto address the issues raised from the survey.

achieve the objective of MyIPO’s management through3. Meeting with users on examination quality

the work done by the Quality Management Unit.

Apart from getting opinions from individual users

Considering the limited resources of MyIPO, bothfor specific applications, the Quality Management

Quality Management Committee and Quality Manage-

Unit could conduct regular meetings with groups

ment Unit could be the same group of people, howeverof the same interest to obtain collective views on

it would be advantageous to have separate units as theexamination quality. For example, the Unit could

differing job scope would likely mean different require-

have a meeting with the IP unit of research insti-

ments. For example, the Committee preferably con-tutes or industries and discuss the way forward

sists of Patent Directors and Head of Units as they are

regarding examination quality. This avenue could

capable of analyzing and proposing measures that

also be utilized for discussing other IP-related

would impact the Human Resource Development ofmatters.

patent examiners, while the Quality Management Of-

4. Monitoring the Quality Audit team

fice would consist of senior and junior patent examin-

JPO has a team of patent examiners who are doingers who have to do the ground work of quality manage-

concurrent work as patent examiners and quality

ment.

auditors, where 20% of their time is allocated forreviewing the random samples of notices made byexaminers before the notices are dispatched. Sim-outside MyIPO

ilar approach has already been initiated in MyIPO,

The recommendations above, while may be quite

where the Head of Units check the first adverse

straightforward to be implemented, would mean areport for an application before the reports are be-number of examiners have to be pulled out of the ex-ing dispatched. Nevertheless, this approach could

amination sections. Subsequently it would mean thebe extended to interested and qualified examiners

number of cases examined per year would decrease.

so more samples could be picked and reviewed.

Increasing the number of cases of remaining examin-

The selection of potential examiners would be

ers to prevent potential backlogs would not be a rec-much easier if a proper training and assessment

ommended move, since it does not directly address theplan for examiners were being executed, since theissue of quality management.

management would know for sure who is alreadyIf MyIPO wants to maintain or increase the number

at the expected level of knowledge and capabilityof examination reports outputted and to reduce back-to become one. The Quality Management Unitlogs, it is highly recommended to utilize the existing

would have to coordinate the cooperation between

experts outside of MyIPO. The utilization can be done

the Patent Examination Department and the man-in two ways, namely :agement.
424.2. Collaboration and/or Utilization of Experts

1. Outsourcing prior art searchOutline of Patent Quality Management System in Intellectual Property Corporation of Malaysia (MyIPO) and the Japan Patent Office (JPO)

In JPO, some of the prior art searches are outsourced to Registered Search Organizations(RSO). MyIPO could also implement the outsourcing of prior art by utilizing the existing Technology Innovation Support Centers (TISC) in Malaysia, and also private companies that provide
prior art searching services to clients. This would
surely be a cost-efficient move, because not only
MyIPO would be utilizing existing staffs that are
already trained in prior art searching, a good relationship between these centers and companies
would also be formed that would reflect in thequality of the examination reports produced.
2. Hiring technical experts as technical advisors andtrainers for patent examiners
A relatively small number of examiners in MyIPO
compared to various fields of inventions filed
would mean an examiner would get applicationthat is not of his/her expertise. Instead of letting
the examiner learns about the related technology
background by himself/herself, MyIPO could makeuse of technical experts to become technical advisors to examiners. This way could reduce time
taken in conducting examination and thus producing more examination reports of higher quality,
and at the same time MyIPO could make use ofexisting knowledgeable experts available in Malaysia.
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