Study of Effectiveness of PCT International Phase Opinions during
China National Phase
The Second International Affairs Committee
Japan Intellectual Property Association
Abstract: In the international phase of examinations of international patent applications filed under
the Patent Cooperation Treaty (“PCT applications”), an International Searching Authority or an
International Preliminary Examining Authority provides opinions about the patentability of theapplications. However, it has not been objectively assessed how effective such opinions are in
influencing national examinations conducted in IP developing countries, especially in China.
Therefore, to assess the effect of patentability opinions expressed in the international phase on
national examinations in China, this Subcommittee conducted research on the consistency between
patentability opinions of the International Searching Authority in Japan and patentability judgments
given in the national examinations in China, and other related matters. The following is a report of
the research results.
Table of Contents
1. Introduction
2. Research samples and analyticalmethod
2.1. Research samples
2.2. Analytic method
3. Analysis results
3.1. Consistency between patentability
opinions expressed in ISRs and patentability
judgments given in the 1st OAs in China
3.2. Citation of new documents
3.3. Findings of deficient descriptions
3.4. Relationship between the patentability
opinions expressed in ISRs and the OA
frequencies in national examinations in
China
3.5. ISR patentability opinions andduration of examinations
3.6. Effectiveness of international
preliminary examinations for national
examinations in China
3.7. Comparison with cases for European
ISA/IPEA
3.8. Comparison with the results of threepatent offices
4. Summary

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1.

Introduction

To assess the effect of ISRs1) on the patentapplication process via the PCT route, thisSubcommittee conducted research, from 2008
to 2010, including comparison between ISRs
created by ISAs2) in Japan, the U.S. and Europe(i.e., the patent offices of the respective
regions) for international patent applications
received by the respective patent offices and thepatentability judgments given in the national
examination phase by these patent offices, andprior art documents [1] (hereinafter, thisresearch is referred to as “2010 Research”). In
this 2010 Research of the three patent offices, it
was found that, in cases where the ISA was adifferent organization from the patent officethat examined the applications in the national
phase, positive ISRs3) were not as effective as
negative ISRs4) as a means of predicting thepatentability of applications.
In 2011, to assess quantitatively how
amendments and other similar procedures madein the international phase effectively work after
the patent applications proceed to the national
examination phase in the U.S. and Europe, thisSubcommittee conducted research, including
comparison of IPERs5) created by the JPO in
the capacity of an International Preliminary
Examining Authority with patentability
judgments given by the USPTO and the EPO in
the national phase [2] (hereinafter, “2011Research”). In the 2011 Research, it was foundthat the JPO’s positive IPERs 6 ) were notnecessarily supported in the examinations madeby the USPTO or the EPO.

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The 2010 Research and 2011 Researchcovered the JPO, the USPTO and the EPO. It
can be easily imagined that the effectiveness of
ISRs and other documents was not indicated bythese researches because these three patentoffices possess and use their own patentclassifications and data processing systems forsearching prior art documents and haveestablished their strong search and examination
abilities over many years. On the other hand, inthe case of patent offices in IP-developing
countries, their search and examination abilities
are still in the developing stage. Therefore, it
can be easily imagined that the effect of ISRs,
IPERs and other deliverables in theinternational phase is stronger in IP-developing
countries than in advanced IP countries. In suchsituations, many Japanese companies seem tohold the expectation that international-phasedeliverables created under the PCT work as
effective tools in accelerating the patent
granting speed in IP-developing countries.
Looking into global economic conditions,the Chinese market has achieved outstanding
growth. In 2010, China overtook Japan to takesecond rank in the world in terms of GDP, andits growth is still continuing. As the Chinese
market grows, the number of patentapplications in China is significantly increasing.
Under these intellectual property circumstancesin China, it seems that quite a few member
companies of JIPA are considering using the
PCT route or more effective use of the PCTroute to obtain patent rights in China.
Therefore, to quantitatively assess the effectthat opinions in the international phase have on
patent examinations in the national phasewithinChina(hereinafter,“national
examinations in China”), a rapidly growing
IP-developing country, the Subcommittee
conducted research on patent applications
examined in the international phase by the JPO
in the capacity of an ISA or IPEA andproceeded to the national examinations in
China, examining the consistency between
written patentability opinions created by ISAs
and the patentability judgments given in thenational examinations in China, as well as thecitation of new documents.
This Report was created by the following
members of the Third Subcommittee of theSecond International Affairs Committee of
JIPA: Yoshihiro Itou (FUJIFILM Corporation),
Norio Sakai (Asahi Group Holdings,Ltd.), Iori

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Kiso (Siemens Japan K.K.), Kuniaki Sakamoto(TOYOTAMOTOR
CORPORATION),
Tetsunori Minato (IPICS CORPORATION),
Takuji Miyamoto (Sharp Corporation), andAkio Yoshioka (2012 Vice Chairman of theCommittee, NEC Corporation).
2.

Researchmethodsamplesandanalytical

2.1. Research samples
Considering the purpose of this research toconfirm the effect of ISRs on the national
examinations in China, the research samples
were selected by the following steps:(1) First selection
First, 204 patent applications that satisfied
the following conditions as of May 2012 wereselected from a commercial database:1) A PCT application whose priority date wasincluded in the first half of 2004 and whose
RO7) was the JPO;
2) The application proceeded to the national
phase in China, Japan, U.S. or Europe;3) A decision of refusal or decision of patent
grant was issued in Japan; and
4) Substantive examination in China wasstarted in May 2007.

(2) Second selection
Next, to examine the relationship between
the first Office Actions in the national
examinations in China (hereinafter, “the first
OAs in China”) and the opinions issued in theinternational phase, the statuses of the 204
applications selected in the first selection above(whose RO was the JPO) in the national phasein China were confirmed by a commercial
database. As a result, it was found that final
decisions of refusal or patent application were
given for 155 applications. Of these 155
applications, we selected 133 applications forwhich patents were granted. This was because
we needed to access file wrappers to confirm
the patentability judgments given in the first
OAs in China. However, as of the time of thisresearch, access to file wrappers in China wasallowed only to those for which patents were
granted.
Most of these 133 applications had been
examined by the JPO as an ISA or IPEA in theIntellectual Property Management

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2014international phase. Accordingly, unlessotherwise specified in this Report, references to
ISRs or IPERs in this Report are references to
ISRs or IPEAs created by the JPO as an ISA oran IPEA.
In the analysis sections of this Report below,
we selected several applications whose ISA was
not the JPO, for the purpose of comparison.
Such cases are identified as they are explainedin each analysis section.
(3) Third selection
Then, we examined the file wrappers of 133
applications selected in the second selection toconfirm the identicalness of Claim 1 examinedin the ISR or IPER and Claim 1 examined in
the first OAs in China. As a result, we excluded
those cases for which identicalness was notconfirmed. If any voluntary amendment ismade when an application proceeds to thenational phase in China, it may result ininconsistency in Claim 1. Such cases areinappropriate to be used in the review ofcorrelation between opinions of the ISR or
IPER and patentability judgments given in thenational examinations in China. As a result of
the third selection, 94 samples were selected.
2.2. Analytic method(1) Collection of basic data
To analyze the effect of international-phase
opinions on the national examinations in China,
basic data were collected from the samples
regarding opinions issued in the international
phase and details of refusals given in thenational examinations in China.
The 204 samples selected in the first
selection were examined to collect basic data
related to the international phase: specifically,
opinions expressed in ISRs or IPERs regarding
patentability; whether or not amendments weremade under Article 19 or Article 34 of PCT;
and whether or not the identicalness of Claim 1
was maintained after the amendment was madein the international phase. Data on cited
documents were also collected. In examining
the patentability opinions in ISRs or IPERs, anopinion was regarded as “positive” when thereport recognized novelty or an inventive stepin Claim 1. An opinion was regarded as“negative” when the report recognized that
Claim 1 did not have novelty or inventive steps.
Data on industrial applicability was not1123

collected as basic data.
The 94 samples selected in the third selection
were examined to collect data on refusals given
in national examinations in China. Before we
examined the details of refusals in national
examinations in China, we checked the format
of several Office Actions issued by the Chinese
patent office. As a result, it was found that a
uniform form of Office Action was used for the
samples selected. Thus, we examined these
forms to confirm judgments given in the first
OAs in China regarding novelty or originality
in Claim 1, cited documents, findings ofdeficient descriptions advised to theseapplications and applicable Articles, and thesending dates of the Office Action.
In examining the judgments given in the first
OAs in China regarding novelty or originality
in Claim 1, a judgment was regarded as“positive” when it recognized novelty ororiginality in Claim 1. A judgment was
regarded as “negative” when it recognized that
Claim 1 did not have novelty or originality.
It had been known from experience that quite
a few applications received advice of findingsof deficient descriptions in China. Accordingly,
we collected data of findings of deficientdescriptions and applicable Articles because
decisions of patent grants may not have been
given so quickly even if the opinions in ISRs or
IPERs were positive.
(2) Method of data analysis
The effect of opinions issued in theinternational phase on national examinations in
China was analyzed from the perspective below.
Focusing on ISRs, analyses were maderegarding the consistency between patentability
opinions expressed in ISRs and patentability
judgments given in the first OAs in China, thestatus of citation of new documents in the first
OAs in China, findings of deficient descriptions,and the relevance of the examination period.
When we examined new documents in the first
OAs in China, the following criteria were used:
・ If a patent document cited in an ISR andthat cited in a national examination in
China are in the same family, the patentdocument cited in the national examinationin China was not regarded as a new
document.
・ A document was not regarded as a new
document if it was cited as an “A”
document in an ISR and subsequently

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3.

Analysis results

3.1.

Consistency between patentability
opinions expressed in ISRs andpatentability judgments given in the
1st OAs in China

This Section explains the consistency foundbetween the ISRs issued by the JPO as areceiving office and as an ISA, and the first
OAs in China.
Fig. 1 shows the percentages of positive andnegative judgments given in the first OAs in
China for Claim 1 that were judged as positive
and negative in ISRs.

Relationship between ISRs andthe first OAs in China
Judgments in the first OAs in China

adopted in a national examination in China
as a ground for lack of novelty (Xdocument) or lack of inventive step (Ydocument). The same applied to opposite
cases.
・ A document cited in an ISR as a ground formaking a judgment on Claim 1 andsubsequently cited in a national
examination in China as a ground formaking a judgment on any other claim thanClaim 1 was not regarded as a new
document.
In addition, focusing on IPERs, we analyzed
the effect of amendments made in theinternational phase. Specifically, of the 94
samples selected in the third selection, 48
applications proceeded to the national phase in
China after receiving a negative ISR andwithout request for an international preliminary
examination, and 9 applications proceeded to
the national phase in China after receiving a
positive IPER that overturned a negative ISR.
These 48 cases and 9 cases were examined tocompare the percentages of national
examinations that supported the patentability
opinions expressed in the relevant ISRs or
IPERs.

ISR opinions
Fig. 1 Relationship between ISRs issued by the
JPO and the first OAs in China
As shown in Fig. 1, 88% of applications (30out of 34 cases) which had received positive
ISR opinions received positive judgments in thefirst OAs in China. On the other hand, 72% of
applications (43 out of 60 cases) which hadreceived negative ISR opinions received
negative judgments in the first OAs in China.
From these results, it seems that the judgments
to be given in the national examinations in
China could be predicted based on the ISR
opinions.
It should be noted that these results included
applications which had received negative
opinions in ISRs and were subsequently
reviewedininternational
preliminary
examinations. As analyzed in detail in Section
3.6 below, assuming that the seven applications
that received positive IPERs and then received
positive judgments in the first OAs in China
had not requested an international preliminary
examination and had received negative
judgments in the first OAs in China, thepercentage would have been at 83% (50 out of
60 cases) and the correlation of negative ISRs
to negative judgments in the national phasewould have been stronger.
3.2. Citation of new documents
In this Section, we examine the effect of1124Intellectual Property Management

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Presentation of new documents

ISR Opinions and Presentation of
New Documents

Cited
Not
cited

ISR opinions
Fig. 2 ISR opinions and presentation of new
documents
As shown in Fig. 2, out of 94 samples
selected in the third selection in 2.1.(3) above,
29% (27 (24+3) out of 94 cases) cited new
documents in the first OAs in China, in
addition to documents cited in ISRs. Of these
27 applications, 44% (12 applications) cited
new (patent) documents created in Chinese (notshown in Fig. 2).
Comparing cases with positive ISRs andcases with negative ISRs, 12% of cases withpositive ISRs (4 out of 34 cases) cited new
documents in the first OAs in China, while
38% of cases with negative ISRs (23 out of 60
cases) cited new documents. The percentage forwhich new documents were cited in the first
OAs in China was higher in the cases withnegative ISRs than in the cases with positive
ISRs.
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These results and the results explained in
Section 3.1 above indicate that judgments in thefirst OAs in China tended to support the ISR
opinions, while new documents were often
cited in the national examinations in China.
3.3. Findings of deficient descriptions
In this Section, we will compare andexamine the relativeness of ISR opinions tofindings of deficient descriptions pointed out inthe first OAs in China (in accordance with
Article 25, Article 26.4, Article 31.1, andArticle 33 of the Chinese Patent Law, andArticles 2.1, 13.1, 20, 21, 22 and 23 of theChinese Patent Rules) and look into how ISR
opinions affected the judgments given in thenational examinations in China regarding
deficient descriptions. The bar chart in Fig. 3
shows the relativeness of ISR opinions tofindings of deficient descriptions in the first
OAs in China.
Relationship between ISR Opinions and
Deficient Descriptions
Findings of deficient descriptions

opinions expressed in the international phase on
national examinations in China, from theperspective of citation of new documents in thefirst OAs in China. Specifically, we examined
whether new documents (not cited in ISRs)
were cited in the first OAs in China, bycomparing cases with positive ISRs on the one
hand and cases with negative ISRs on the other.
Fig. 2 shows the status of citation of new
documents in the first OAs in China, comparing
positive ISRs and negative ISRs.

AdvisedNot
advisedISR opinions
Fig. 3 Relationship between ISR opinions by
the JPO and findings of deficientdescriptions in the first OAs in China
As shown in Fig. 3, findings of deficientdescriptions were advised to 88% of cases withpositive ISRs (30 out of 34 cases) in the first
OAs in China, while 63% of cases withnegative ISRs (38 out of 60 cases) received
advice of deficient descriptions in the first OAs
in China.
Findings of deficient descriptions wereadvised mainly on the grounds of the following

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Table 1 Relationship between ISR opinions andpatentability judgments in the first OAs
in China, for applications that received
advice of findings of deficientdescriptions in the first OAs in China
First OAs in China
Positive
Negative

Total

Positive

27

3

30

Negative

15

23

38

Total

42

26

68

ISR

As shown in Table 1, when we look into the68 cases with findings of deficient descriptions
to examine the relationship between ISR
opinions on the one hand, and findings ofdeficient descriptions and patentability
judgments given in the first OAs in China on
the other, 62% of these cases (42 out of 68
cases) received positive patentability judgmentsin the first OAs in China, which was higher
than the percentage of cases that received
positive ISRs, at 44% (30 out of 68 cases). The
relationship between patentability judgments
given in first OAs in China and findings ofdeficient descriptions was as shown in Fig. 4.

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Findings of deficient descriptions

provisions in the Chinese Patent Law and theChinese Patent Rules:
1) Rule Article 20
57 cases
2) Law Article 26.4
23 cases
3) Rule Article 23
23 cases
4) Law Article 25
8 cases5) Law Article 31.1
7 cases
6) Rule Article 21
7 cases
7) Rule Article 22
4 cases8) Law Article 33
2 cases
Deficient descriptions were advised mostoften on the ground of Article 20 of the Rule
(Requirements for Independent and Dependent
Claims) ( 83%, or 57 out of 68 cases), followed
by Article 26.4 of the Law (Description of
Scope of Patent Claim) and Article 23 of theRule (Summary of Patent Specification) (both34%, 23 out of 68 cases).
Table 1 shows the relationship between ISR
opinions and patentability judgments given in
the first OAs in China, for applications thatreceived advice of findings of deficientdescriptions in the first OAs in China.

Advised
Notadvi
sed

Judgments in first OAs in China
Fig. 4 Relationship between patentability
judgments given in first OAs in China
and findings of deficient descriptions
The following are our findings regarding theeffect of ISR opinions on the national-phaseexaminations in China. As shown in Fig. 4, ahigh rate of the sampled applications received
advice of findings of deficient descriptions in
the first OAs in China (72%, or 68 out of 94
cases). Regardless of whether the ISR opinions
were positive or negative, 89% of the cases forwhich positive judgments were given by the
first OAs in China (42 out of 47 cases) received
advice of findings of deficient descriptions.
Based on these analyses, it seems that findingsof deficient descriptions in the first OAs in
China were more affected by the patentability
judgments given in the same first OAs in China,rather than the ISR opinions.
3.4.

Relationship between the patentability
opinions expressed in ISRs and the
OA
frequencies
innational
examinations in China

This Section explains the relationshipbetween the patentability opinions expressed in
ISRs and the OA frequencies in the national
examinations in China.

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ISR Opinions and Days until Publication

Days

OA frequency in China

Relationship between ISR Opinions
and OA Frequency in China

ISR opinions

ISR opinions

As shown in Fig. 5, the average frequency of
OAs during national examinations in China was
1.29 times for cases with positive ISRs, a figure0.49 lower than the corresponding frequency
for cases with negative ISRs (1.70 times).
These figures seem to indicate that positive ISR
opinions worked to reduce the OA frequencies
in national examinations in China to someextent.
3.5.

ISR patentability opinions
duration of examinations

Average Days until First OA in China

andThis Section explains the relationshipbetween the patentability opinions expressed in
ISRs and the durations of examinations in
China.
Fig. 6 shows the relationship between
patentability opinions in ISRs and the average
number of days taken within China until the
publication dates. Fig. 7 shows the relationshipbetween patentability opinions in ISRs and theaverage number of days taken until the sending
date of the first OA in China.

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Fig. 6 Relationship between ISR opinions andthe number of days taken until the
publication date

Days

Fig. 5 Relationship between patentability
opinions in ISRs and OA frequencies
in national examinations in China

ISR opinions
Fig. 7 Relationship between ISR opinions andthe number of days taken until the first
OA sending dateFig. 6 shows that the number of days taken
until the publication date was 137 days lower
on average when ISRs were positive. On theother hand, Fig. 7 shows that 28 more days
were taken until the first OA was sent in China
on average when ISRs were positive. The
number of days taken until the publication date
was lower when ISRs were positive, despite thefact that more days were taken until the first
OA was sent in China. It seems that this shorter
duration until the publication date was due tothe fact that the frequency of OAs was lower asshown in Fig. 5. above.
In the cases for which positive ISRs were
issued, more days were taken until the first OA
was sent in China, compared with cases withIntellectual Property Management

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3.6.

Effectivenessofinternational
preliminary examinations for national
examinations in China

In Section エラー! 参照元が見つかりません。 above, for cases with positive ISRs, it
was confirmed that a high rate of the first OAs
in China tended to be positive, while a high rateof cases with negative ISRs tended to be
negative.
However, as is evident from the above
explanation, ISRs are not always positive. To
handle such a situation, the PCT provides foramendments under Article 19, amendments
under Article 34, international preliminary
examinations, and other procedures. Thus, aninternational preliminary examination may berequested in order to receive a positive IPER
for a claim which is amended under Article 19
or 34 in response to a negative ISR.
To examine the effectiveness of theseamendments made in the international phaseand the effectiveness of international
preliminary examinations, we compared andanalyzed the cases which received negative
ISRs but then proceeded to the national phasein China, with the cases which underwent aninternational preliminary examination after anegative ISR, received a positive IPER that
overturned a negative ISR, and then proceeded
to the national phase in China.

1128

Comparison between Cases with Negative
ISRs and Cases in which Negative ISRs
Were Overturned by Positive IPERs
Judgments in the first
OAs in China

negative ISRs (by about 5%). This suggests atendency for more days to be spent for national
examinations in China for patent applications
with positive ISRs.

na: Cases with negative ISRs proceeded to China
Positive: Cases with negative ISRs which were
overturned by positive IPERs and then proceeded to
China

Fig. 8 Effect of a positive IPER overturning anegative ISR
Fig. 8 shows the results of the examinations.
As shown in Fig. 8, only 19% of the cases thatreceived negative ISRs and then proceeded to
the first OA in China (9 out of 48 cases)
received positive judgments in the first OA,
with 81% (39 out of 48 cases) supporting thenegative judgments. On the other hand, in thecases that proceeded to the national phase in
China after having received a positive IPER in
the international preliminary examinations that
overturned a negative ISR, positive judgments
were supported in the first OAs in China in
78% of them (7 out of 9 cases).
Although the number of samples is small,this suggests that there is a strong tendency forcases with negative ISRs to receive positive
judgments in the first OAs in China if they
make amendments in the international phaseand receive positive IPERs. It could be inferredthat amendments in the international phase andpositive IPERs are highly effective in
influencing the national examinations in China.
Moreover, regardless of whether ISR
opinions are positive or negative, from Fig. 9,
which shows the relationship between IPER
opinions and the patentability judgments in thefirst OAs in China, the tendency can beobserved that the patentability judgments in thefirst OAs in China support the IPER opinions,as with the ISRs discussed in Section 3.1.

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IPER opinions
Fig. 9 Relationship between IPERs and the first
OAs in China
3.7.

Comparison with cases for European
ISA/IPEAThis Section discusses the patentability
judgments given in the first OAs in China forcases with positive IPERs that overturned
negative ISRs, by comparing the cases forwhich the JPO was the ISA and IPEA withcases for which the EPO was the ISA and IPEA.
Samples used in the comparison comprised 9
cases for which the JPO was the International
Searching Authority and 10 cases for which the
EPO was the International Searching Authority.
Although the number of samples is small, theresults of the comparison show the tendency of
the IPER opinions of the JPO to have stronger
relativity to the patentability judgments in thefirst OAs in China than the IPER opinions of
the EPO.
Fig. 10 shows the percentages of positive andnegative judgments given in the first OAs in
China for the sampled cases.

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Judgments in the first OAs in China

Judgments in the first
OAs in China

Relationship between IPERs andthe First OAs in China

Fig. 10 Comparison of JPO and EPO
In the national examinations in China, OAs
were issued to all patent applications for which
the JPO’s IPERs overturned negative ISRs andgave positive opinions. As shown in Fig. 10,
22% (2 out of 9 cases) were refused on the
ground of lack of patentability, while 78% (7out of 9 cases) were refused on the ground of
deficient descriptions or other reasons.
OAs were issued in the national
examinations in China to all the applications
for which the EPO’s IPERs overturned negative
ISRs and gave positive opinions, as in the caseswith the JPO. As shown in Fig. 10, 50% (5 out
of 10 cases) were refused on the ground of lackof patentability, while 50% (5 out of 10 cases)
were refused on the ground of deficientdescriptions or other reasons.
The two applications which received
negative judgments in the first OAs in China
despite a positive IPER issued by the JPO wererefused with referral to new documents notcited in the ISR and IPER issued by the JPO.
On the other hand, regarding the fiveapplications which received negative judgmentsin the first OAs in China despite a positive
IPER issued by the EPO, three were refusedwith referral to new documents not cited in the
ISR and IPER issued by the EPO, as in thecases with the JPO, while the remaining two
applications were refused with citation of thesame documents cited in the ISR and IPER
issued by the EPO. To be brief, these data showthat the national examinations in China gave
patentability judgments that were opposite tothe opinions expressed in the IPERs issued by
the EPO, in some cases with citation of thesame documents cited by the EPO.
Because the sample numbers for thiscomparison were very small, furtherIntellectual Property Management

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3.8.

Comparison with the results of threepatent offices

This Section discusses the consistency ofpatentability judgments given in the first OAs
in China with the ISR opinions as described in
Section 3.1 above, by comparing them with theconsistency of patentability judgments given by
the JPO, the USPTO and the EPO in their first
OAs with ISR opinions, using data collected inresearch conducted in 2010.
The research paper in 2010 examined theconsequences of 60 ISRs after they had
proceeded to the national examinations in Japan,
the U.S. and Europe. That research paper
conducted three-aspect examinations: A, X andY assessments. To compare these results withthe analyses in this report, the results of thesethree-aspect assessments were converted to two
aspects: positive or negative. The results of thecomparison are shown below.
[Results of examination of the 2010 research
paper]ISR (by JPO) → National examination (byJPO)
Positive opinions supported: 70%
Negative opinions supported: 88%
ISR (by JPO) → National examination (byUSPTO)
Positive opinions supported: 37%
Negative opinions supported: 88%
ISR (by JPO) → National examination (byEPO)
Positive opinions supported: 48%
Negative opinions supported: 91%
Next, adjustments were made to theexamination results explained in Section 3. 1
above to make them comparable to these resultsin the 2010 research paper. Specifically, Section
3.1 examined only applications for whichpatents were registered, while the 2010
research paper examined both applications forwhich patent registrations were granted andapplications for which patent registrations wererefused. Considering this difference, for refusedcases excluded from the present examination(14 cases with positive ISRs (on estimation)and 36 cases with negative ISRs (onestimation)), we chose the most negative
assumption that the first OA judgments in the

1130

national examinations in China were negative.8
The results of the comparison are shown below.
[Results of the present examination]
ISR (by JPO) → National examination (bypatent office in China)
Positive opinions supported: 63%
Negative opinions supported: 82%
The comparison of the examination results ofthe 2010 research paper with the present
examination shows the following facts: Morethan 80% of the negative ISRs were supported
after
the
cases
proceeded
tothenational/regional phase, regardless of whether
the region was Japan, the U.S. or Europe. Next,
in the U.S and Europe, 37% and 48%,
respectively, of the positive ISRs were
supported in the national/regional phase, while
the consistency was very high in China, with
63% of positive ISRs supported in the national
examination phase in China. This consistentpercentage in China is close to that for thecases for which the JPO created ISRs andunderwent the national examination phase(70%). Accordingly, the results suggest thatpatentability judgments to be given in thenational examinations in China can bepredicted with a considerably high degree ofprobability, based on the ISR opinions.
4.

Summary

The present research revealed thequantitative
relationshipbetweenthepatentability opinions expressed in ISRs and
IPERs and the patentability judgments given in
the first OAs in China. Although the number ofsamples was limited, in cases for which we
could access and confirm the first OAs in China,i.e., international patent applications for whichpatents were granted, it was found that 88% of
positive ISRs and 72% of negative ISRs were
supported in the first OAs in China.
To compare this tendency with cases forwhich the EPO or the USPTO conducted thenational examinations, we also compared theresults of the present research with the research
results reported in the 2010 research paper andthe 2011 research paper. Unfortunately, exact
comparison is not easy. This is because the first
OAs in China become accessible only after
patents are granted. Thus at present, any patent
research related to China cannot examineIntellectual Property Management

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applications for which final refusal decisions
have been given. However, by choosing themost negative assumption for the national
examinations in China, we compared the resultsof the present research with the results of the2010 research. The results of this comparison
show that positive opinions expressed in JPO
ISRs were supported at a higher rate in the first
OAs issued by the SIPO in China than the first
OAs issued by the EPO or the USPTO. Thissuggests that patentability judgments to begiven in the national examinations in China canbe predicted with a considerably high degree ofprobability, based on the patentability opinions
expressed in the ISRs.
As the Chinese market expands and thenumber of patent applications in China is
rapidly increasing, it seems quite a few JIPA
member companies are planning patentapplication strategies to rapidly increase thenumber of patents they own. Considering thehigh probability suggested by the results of thisresearch that positive ISRs or IPERs will besupported in the patentability judgments given
in national examinations in China, it isexpected that the time taken until the patent isgranted could be shortened by following theprocess to obtain a positive opinion in theinternational phase and then quickly proceeding
to the national phase in China, while using the
PCT-PPH system at the same time, althoughapplicants must be careful in satisfying therequirements for using the system and avoiding
deficient descriptions.
As organizations and nations participating in
the PCT-PPH system are increasing, it seems
that one of the new advantages of using the
PCT route is that patent applicants can follow
strategic patent acquisition procedures by using
this system. Under these circumstances, tocarry out the patent acquisition procedures
more effectively and strategically as systemusers, we believe that an environment thatfurther facilitates the acquisition of necessary
data should be created, such as data on to what
extent the patentability judgments given in thenational phases of individual countries/regions
can be predicted based on the patentability
opinions expressed in ISRs.
We hope this research report will help
member companies in their patent acquisition
strategies.
Reference Materials

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1. Research on International Examination of
PCT Applications in Japan, the U.S. andEurope (The Third Subcommittee, the Second
International Affairs Committee, JIPA, 2011, IP
Management Volume 61, pp. 549-562)
2. Study on Effectiveness of Amendments of
PCT Applications in the International Phase(The Third Subcommittee, the Second
International Affairs Committee, JIPA, 2012, IP
Management Volume 62, pp. 951-959)
1International Search Reports. An ISR iscreated by the end of three months from thereceipt of a “search copy” or nine months fromthe “priority date,” whichever comes later, andis sent to the applicant and the International
Bureau (Article 18 (1) and (2) of PCT, and Rule42.1). An ISR for an international application
received by the JPO shall be created by thedesignated JPO or EPO. Strictly speaking, thewritten opinion of an international searchingauthority (WO/ISA) is a different documentfrom an ISR, but for the purpose of this Report,
they are collectively referred to as ISRs.
2

International Searching Authority

3

For the purpose of this Report, any written
opinion issued by an International Searching
Authority that recognizes novelty or an
inventive step for Claim 1 is referred to as apositive ISR, regardless of whether or not theclaimed invention is applicable to industrialuse.
4

For the purpose of this Report, any written
opinion issued by an International Searching
Authority that recognizes no novelty or
inventive step for Claim 1 is referred to as anegative ISR, regardless of whether or not theclaimed invention is applicable to industrialuse.
5

For the purpose of this Report, International
Preliminary Examination Reports (Chapter II,
PCT) are referred to as IPERs.
6

For the purpose of this Report, anyInternational Preliminary Examination Report(Chapter II, PCT) that recognizes novelty or an
inventive step for Claim 1 is referred to as apositive IPER, regardless of whether or not theclaimed invention is applicable to industrial

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use.
7

Receiving Office8

Section 3.1 is excluded from the examinationsome refused cases, totaling 20 cases withpositive ISRs and 51 cases with negative ISRs.
Of these, we estimated the number of cases
whose claim at the time of issuance of the first
OAs in China remained the same as at the timeof issuance of the ISR was 14 cases withpositive ISR (20 × 94 / 133 = 14) and 36
cases with negative ISR (51 × 94 / 133 = 36).
Because we assumed that the patentability
judgments given to these cases in the first OAs
in China were all negative, we estimated thatthe patentability judgments given in the first
OAs in China did not support the positive ISRs
for the 14 cases with positive ISRs, but
supported the negative ISRs for the 36 caseswith negative ISRs.

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