What Japan can teach us about PPH - ip-tanaka-lab.comWhat Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey This report was prepared for the Japanese

I

DIEGO BOSCHETTI MUSSKOPF

What Japan can teach us about PPH:

Important Features Extracted from Questionnaire Survey

This report was prepared for the Japanese Patent Office and Japan Institute of Invention and Innovation as a

requirement for the conclusion of the Six-month Study-cum-research Fellowship Program. The report shall be

presented during the fellowship and followed by a discussion including the JPO officials and the APIC staff.

Adviser: Prof. Yoshitoshi Tanaka Tokyo Institute of Technology – Japan

Tokyo

March, 2012

II

FROM PRO-PATENT TO PRO-INNOVATION

―From a historical viewpoint, the agricultural society grew into industrial society, which is

followed by knowledge society. Intellectual property policies in the industrial society have

been swinging between anti-patent and pro-patent policies. Today, we are evolving to the

knowledge society, which are changing the intellectual property value in terms of quality

compared to that in the industrial society. Therefore, it is necessary to promote the pro-

patent policy with emphasis on quality much more and address intellectual property policy

for pro-innovation.‖

Mr. Hisamitsu Arai

Former Secretariat-General of IP Strategy

Headquarters/former Commissioner of the JPO

About the Author

Diego Boschetti Musskopf is an Architect and Urbanist (UFRGS – 2004) and Master in

Civil Engineering in the Sustainable Construction Field (UFRGS – 2007). He has

researched topics focusing on Distance Education, Urban Ambiance, and Thermal Comfort.

He has experience in urban projects, buildings and equipment aiming at preserving the

environment, and he worked in the construction market from 2002 to 2009. He began

studying law in order to join the INPI (Portuguese acronym for ―National Industrial Property

Institute‖) in 2008.

At present, he is a patent examiner in the Human Needs Patents Division (DINEC) from

the Coordination of Patents IV (CGPAT IV), and a member of the PPH (Patent Prosecution

Highway) discussion group at INPI. He is qualified in (a) applications development and

technical advice for the granting of patent rights, (b) development of actions and projects

for the promotion and strengthening of industrial property, and (c) conducting studies and

research related to this area.

III

ACKNOWLEDGMENTS

First of all, I especially thank my family for all love they gave me all my life, and for the

support they gave me here in Japan, mainly in the critical moments.

I thank Professor Prof. Yoshitoshi Tanaka from the Tokyo Institute of Technology for

―opening my mind‖ with rich discussions in our weekly classes and meetings, with a fruitful

exchange of information and good conclusions.

I thank Mr. Yoshiyuki Iwai, JPO Commissioner; Mr. Kozo Oikawa, President of JIII; and Mr.

Takao Ogiya, General Director of APIC for having chosen me as researcher for this

Program, as well as JPO and JIII for sponsoring my studies from October 2011 to March

2012.

I thank my office, INPI, for the confidence in my work, primarily Dr. Júlio César Castelo

Branco, the General Director of Patents; and Dr. Carlos Hage, the head of CGPAT IV.

I am very thankful to Ms. Vivianne Cardoso Banasiak, the head of my division at INPI, for

telling me to apply for this research program, as well as for all the help she gave me before

and after the trip, and for keeping me updated with Brazilian information.

I am thankful to the Patent Examiners in the PPH division of JPO (as well as to Ms. Kaori

Ogino from International Affairs Division) for all the PPH knowledge, as well as for the

review of my questionnaire and report.

I thank Mr. Edi Braga, the leader of the PPH study group, and my team colleges for all the

knowledge and for sharing the information with me.

I thank the JPO and INPI International affairs staff for managing my trip, mainly Ms.

Claudia Campos and Ms. Atsuko Watanabe, as well as Ms. Miyuki Fukaura, and patent

examiners Mr. Akira Ogawa and Mr. Yusuke Okuda for the friendship and for the help with

the Brazilian Patent Seminar.

I am very thankful to my two coordinators, Ms. Yukiko Koyanagi- and Ms. Satoko Miyazaki

for all the logistic support offered to me before I arrived in Japan and during my stay, as

well as for the fast and accurate schedule of meetings, the help with translating documents,

the preparing of questionnaires and tables, and so many other professional and personal

things that the list will not fit in this page.

I would also like to thank the native speaker Ms. Kimberly Hughes for reviewing the text.

I offer thanks to all speakers in the short term courses I attended at APIC for all the

knowledge about the Japanese patent system and criteria.

I also thank my comrade Mr. Zhou Zheng from China and all JIII/APIC and JPO staff that

have helped me during this research program by sharing experiences, providing

information and emotional support as well for the good moments we had, as well to other

friends that inspired or cooperated somehow with this work.

IV

ABSTRACT

INTRODUCTION: Most patent offices around the world have a work backlog, and are

trying to reduce the delay in official actions through different methods. Once many

―corresponding applications‖ are filed in several patent offices, they try to share the work in

order to tackle the problem. At the same time, the PPH agreement shrinks the backlog and

mitigates its negative effects because it is based in a strong work-sharing framework and

accelerates examinations abroad. Although, the number of PPH users and signatory

countries is increasing, it still low. There are several background reasons why companies

use or do not use the program. METHODOLOGY: We conducted a questionnaire survey

in order to better understand the PPH-user stakeholders (Japanese companies and patent

law firms), with the final goal being that of improving PPH usability. CONCLUSIONS: We

could see that the respondents are worried about the backlog, and they consider solutions

related to work-sharing (like PPH) as the best. There is no clear ―PPH-user profile‖

concerning IPC fields. But we can barely say that companies with more patent applications

try to use it, or that patent firms with more patent agents recommend it more often. Most of

the PPH features described in the background are clear, and the stakeholders discerned,

except for the ones related to costs and burdens. The ―short time‖ and ―application type

restrictions‖ are new features we found that can be improved. The companies‘ main

focuses are to have the patent granted as fast as possible, and in as many countries as

possible. They also want to reduce costs and burdens. Patent firms want their clients‘

patents granted quickly, and they want options and flexibility to offer service and

information to support their clients‘ decisions. Patent offices must consider the

implementation of the accelerated examination system (or make it more user-friendly) in

order to allow domestic applicants to fulfill PPH requirements. The PPH program is a new

framework and its chances are increasing its acceptability. Although some features are still

not clear to the stakeholder and PTOs, the increase number of users and signatory

countries, as well as the number of pilot programs that are becoming permanent, are a

good clue to say that the PPH can be good option and have a huge potential.

V

TABLE OF FIGURES

Figure 1: PPH Composition ................................................................................................. 2

Figure 2: Graph showing number of world applications (WIPO, 2011) ................................ 7

Figure 3: Different levels of work-sharing (JPO, 2011) ...................................................... 10

Figure 4: Graph of the number of petitions for accelerated examination in JPO per year (JPO, 2011) ............................................................................................................... 14

Figure 5: PPH network (PPH Portal, 2012)........................................................................ 19

Figure 6: PPH Requirements (JPO, 2012)......................................................................... 21

Figure 7: PCT-PPH Requirements (JPO, 2012) ................................................................ 23

Figure 8: Workflow of Requirements (JPO, 2012) ............................................................. 25

Figure 9: Graph of average examination pendency time in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012) ................................................... 26

Figure 10: Graph of average rate of allowance in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012) ..................................................................... 27

Figure 11: Graph of average number of claims per applications for US-JP PPH applications when the OLE is the JPO, as of the end of September 2011 (PPH Portal, 2012) ................................................................................................................................. 28

Figure 12: Graphs of users‘ opinions about the PPH in August 2007 (JIPA, 2008) ............ 32

Figure 13: Graphs of nonusers‘ opinions about the PPH in August 2007 (JIPA, 2008) ...... 32

Figure 14: Graph of PPH merits and demerits as pointed out by the 81 companies with experience in the JPO-USPTO PPH (Maeda, 2011) .................................................. 34

Figure 15: Graph of the reasons for not using the PPH as pointed by the 460 nonuser companies (Maeda, 2011) ................................................................................................. 35

Figure 16: graph of companies‘ behavior on using the PPH and Patent Law firms behavior on recommending it ............................................................................................ 36

Figure 17: Graph of number of Patent Law Firms per Number of Attorneys ...................... 37

Figure 18: Graph of number of Companies per average number of applications from 2007 to 2009 ...................................................................................................................... 38

Figure 19: Graph of number of companies per technical field ........................................... 38

Figure 20: Graph of opinion about JPO time to grant a patent .......................................... 39

Figure 21: Graph of opinion about how to solve the backlog problem ............................... 39

Figure 22: Graph of user‘s knowledge about PPH types ................................................... 40

VI

Figure 23: Graph of level of satisfaction with PPH information .......................................... 41

Figure 24: Graph of main sources of PPH information ...................................................... 42

Figure 25: Graph of level of satisfaction with the PPH members ....................................... 42

Figure 26: Graph of expected behavior if Brazil signs the PPH agreement ....................... 43

Figure 27: Graph of opinion about the kind of applications accepted as PPH ................... 44

Figure 28: Graph of opinion about the possibility to choose the OFF ................................ 45

Figure 29: Graph of behavior of first filing .......................................................................... 45

Figure 30: graph of opinion about the importance to accelerate examination in order to fulfill the PPH requirements ........................................................................................... 47

Figure 31: graph of behavior on using the accelerated examination in JPO ...................... 47

Figure 32: Graph of opinion about the possibility of an OSF be the OEE .......................... 48

Figure 33: Graph of opinion about the PPH burdens compared to other applications ....... 50

Figure 34: Graph of opinion about the time to prepare PPH documentation ..................... 50

Figure 35: Graph of opinions about the homogenous understanding of patentability criteria ................................................................................................................................ 51

Figure 36: Graph of opinion about the time to answer the documentation ........................ 52

Figure 37: Graph of opinion about the variation of the granted claim scope ...................... 53

Figure 38: graph of opinion about the foreign examiner independence when JPO is the OEE ............................................................................................................................. 54

Figure 39: graph of opinion about the JPO examiner independence when the foreign PTO is the OEE ................................................................................................................. 54

Figure 40: Graph of opinion about the examination quality in a foreign PTO when JPO is the OEE ................................................................................................................. 55

Figure 41: Graph of opinion about the examination quality in JPO when a foreign PTO is the OEE ................................................................................................................. 56

Figure 42: Graph of opinion about the time to have a patent granted in several countries ............................................................................................................................ 57

Figure 43: Graph of behavior on using the accelerated examination abroad (except the PPH) ............................................................................................................................ 58

Figure 44: Graph of opinion about the PPH costs compared to other applications ............ 59

Figure 45: Graph of opinion about the PPH costs ............................................................. 60

VII

TABLE OF TABLES

Table 1: Table of main measures to tackle the backlog problem .......................................... 8

Table 2: PPH users and non-users .................................................................................... 36

Table 3: core of questions .................................................................................................. 61

Table 4: correlation between companies‘ questions........................................................... 62

Table 5: correlation between Patent Law Firms‘ questions ................................................ 62

Table 6: Factor extraction from companies‘ opinions (major factor method) ...................... 64

Table 7: Companies‘ main factor matrix results after rotating ............................................ 65

Table 8: Factor extraction from Patent Law Firms‘ opinions (major factor method) ........... 66

Table 9: Patent Law Firms‘ main factor matrix results after rotating................................... 67

Table 10: Variables related to companies‘ opinions about the JPO backlog ...................... 68

Table 11: Variables related to patent law firms‘ opinions about the JPO backlog .............. 69

VIII

TABLE OF CONTENTS

1. Introduction ............................................................................................ 1

1.1 Rationale and objectives ........................................................................................ 2

1.2 Methodology ........................................................................................................... 3

1.3 Hypotheses ............................................................................................................ 5

1.4 Lineation ................................................................................................................. 6

2. backlog and efforts to reduce it ............................................................ 7

2.1 Strategies to reduce the backlog or mitigate its negative effects ............................ 7

2.2 International Agreements and Work-Sharing .......................................................... 9

2.3 Accelerated examination ...................................................................................... 11

2.3.1 USPTO........................................................................................................... 12

2.3.2 JPO ................................................................................................................ 13

2.3.3 EPO: .............................................................................................................. 15

2.3.4 Canada: ......................................................................................................... 15

2.3.5 Brazil: ............................................................................................................. 15

2.3.6 Germany ........................................................................................................ 16

2.3.7 Korean ........................................................................................................... 16

2.3.8 United Kingdom ............................................................................................. 17

3. PPH - Patent Prosecution Highway .................................................... 18

3.1 PPH outline .......................................................................................................... 20

3.1.1 PPH (or Paris-route-PPH) .............................................................................. 20

3.1.2 PPH-PCT ....................................................................................................... 22

3.1.3 PPH MOTTAINAI ........................................................................................... 24

3.2 Examination Procedures ...................................................................................... 24

3.3 PPH Merits ........................................................................................................... 25

3.3.1 How to take maximum advantage of the PPH ............................................... 28

3.4 PPH: Critiques and Changes ................................................................................ 29

4. PPH User Survey .................................................................................. 31

4.1 Users survey background ..................................................................................... 31

4.2 Observation from the PPH Survey results ............................................................ 35

IX

4.2.1 Backlog awareness and best solutions .......................................................... 39

4.2.2 Awareness about the PPH Program .............................................................. 40

4.2.3 OFF and CUP-Priority .................................................................................... 44

4.2.4 Time to make the first action (OFF x OEE) .................................................... 46

4.2.5 Period of time to prepare PPH documentation ............................................... 49

4.2.6 Reduction of ―notices of reasons for refusal‖ ................................................. 51

4.2.7 Period of time to answer the OLE reports ...................................................... 52

4.2.8 Examiner Independency ................................................................................ 52

4.2.9 Examination Quality / Patent Quality .............................................................. 55

4.2.10 Period of time to have the patent granted ...................................................... 57

4.2.11 General opinion about costs .......................................................................... 59

4.3 Statistical analysis ................................................................................................ 61

4.3.1 Pearson's Correlation between answers from two different questions ........... 61

4.3.2 Factor analysis ............................................................................................... 64

4.3.3 Multiple Regression Analysis ......................................................................... 68

5. Conclusions ......................................................................................... 70

6. Bibliography ......................................................................................... 75

Page: 1

What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

1. INTRODUCTION

On March 19, 2011, President Barack Obama was in Brazil to negotiate a series of treaties

between the two countries, including the Patent Prosecution Highway (PPH) Program.

As reported by the Agência Brasil: ―A pilot cooperation agreement on patents [PPH] will be

signed this weekend during the visit to Brazil by the President of the United States, Barack

Obama‖ (EBC, 2011).

The Brazilian domestic industry was not aware about the agreement, and several groups

representing Brazilian entities were against the PPH program. Among other criticisms, they

pointed out that (a) the agreement was negotiated without transparency; (b) the

examination quality is expected to run down in Brazil because the criteria of patentability in

U.S. law is different from Brazil´s; (c) the deal will seriously affect Brazilian examiners‘

independence and sovereignty, as they would be pressured not to redo prior art search;

(d) foreign applications will ―run‖ in a parallel line and take advantage over domestic ones.

(Simões, 2011).

This information led to great social pressure, and ―the Brazilian government has decided

that a further analysis of the [PPH] patent agreement […] is necessary. As result, the

agreement was not signed‖ (Gandra, 2011).

Such claims show that the PPH was discussed little in Brazilian society, and the way the

news was reported misled people‘s opinions. The information disclosed said the treaty

would be signed by the respective country presidents [if so, it would have law

enforcement] (EBC, 2011). In fact, until today, most PPH agreements were signed by

patent office CEOs (PPH Portal, 2012).

Currently, the PPH is one of the actions that the INPI structured in order to reduce its delay

in office actions (the so-called ―backlog‖) to four years. INPI intends to achieve this goal in

2014. Furthermore, Dr. Jorge Ávila said that Brazil would have signed similar agreement

with China and Europe during the second half of 2011 (Simões, 2011). It shows that,

although the dealing of the PPH agreement with the U.S. has been postponed, INPI is

interested in closing bi-lateral agreements or multilateral agreements in order to reduce its

backlog.

Page: 2

Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

1.1 Rationale and objectives

With the advancement of economic globalization, there has been an increased demand in

protection of industrial rights around the world. This has led to an increasing number of

―correspondent applications‖ filed in several countries. Accordingly, the rapid increase of

foreign applications in most countries has resulted in a backlog (Maeda, 2011).

There are several ways to reduce the backlog or mitigate its negative effects. One is

through work-sharing. The need for international-work sharing in the field of patent

examinations has been growing in many countries, and is even considered very important

by the patent offices of developed countries (JPO, 2008). On the other hand, the

accelerated examination can be a good strategy to mitigate the backlog problem, mainly to

those businesses that need the patent granted.

We propose a new definition of the PPH. In our opinion, the PPH is an international

agreement based in a framework with a high level of work-sharing among patent offices

where the office of Later Examination (OLE) can use the prior-art searches and judgments

from the office of Early Examination (OEE) in applications that have any claim determined

as patentable to assist its decision and mitigating its Backlog at the same time that

improve the patent standard and quality worldwide. Moreover, the PPH reduces the

backlog negative effects once it provides an accelerated examination in the OLE with a

simple procedure upon the applicant‘s request (Figure 1).

Figure 1: PPH Composition

The PPH is a relatively new work-share framework, having begun in 2006. There are three

different types and its requirements were eased a few times to make the program more

Page: 3


user-friendly. It means they can vary slightly in each bilateral agreement (PPH Portal,

2012). Most changes are spurred by meetings among the patent offices (PTOs) or

between PTOs and industry associations (JIPA, 2011).

The PPH program has proven to be an important step toward the harmonization of patent

systems and examination standards, as well as consistency in examination quality

(including thinking process, etc.) (JPO, 2011). Many companies from different countries

are taking advantage of PPH Program benefits, as are many patent offices, which are

striving to extend these benefits. Until today, 25 countries have already signed the

agreement, including some BRIC countries (Russia and China) (PPH Portal, 2012).

These 3 different types and the ―requirements variation‖ can bring good opportunities to

stakeholders‘ business, but it also can bring problems that can prevent its usage. The

main reason to conduct this study is to check users‘ point of view about these

opportunities and issues, and its final goal is to improve PPH usability. We believe the

survey is the best way to obtain data about the knowledge and usability of the PPH, as

well to grasp the ways in which users utilize the different systems. We also believe that

several improvements can be extracted from answers in terms of what applicants hope to

see, as well as users‘ latent new needs. Furthermore, it is possible to distinguish

secondary objectives such as:

1. Understanding applicants and attorneys opinions about the delay in office

actions, and how to tackle the problem;

2. Verifying PPH-related knowledge on the part of companies and patent law firms;

3. Understanding how stakeholders use the ―PPH types‖;

4. Understanding the level of certain PPH features‘ relevance to the stakeholder‘s

business;

5. Verifying whether some PPH ―steps‖ prevent the stakeholder from using it; and

6. Understanding stakeholders‘ opinions about some features when a foreign

company or firm requests the PPH in JPO.

1.2 Methodology

The background discloses several surveys about the PPH agreement, with most of them

focused on users X non-users companies and on a list of vantages X disadvantages of

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PPH. Just like the background, we divided the company‘s answers in the same way,

aiming to comparing the results with previous research, but in fact going even further.

We did not find references in the background surveys about patent attorneys or patent law

firms‘ opinions. On the other hand, many companies do not have their own group of patent

attorneys. This means that the patent agents are the interface between several companies

with the patent office. For this reason, we consider it important to also include the patent

law firms in the survey. In this case, we divided the patent law firms between those that

indicated the use of PPH to its clients, and those that did not. The addition of the patent

agent opinion is the first difference from this study when compared to the background.

The questions diverge slightly between companies and patent law firms, but the core is the

same. We aimed to allow comparisons between the answers from both stakeholders.

The responses of a survey can be divided into three degrees of depth. In the first level, we

identify the main characteristics (e.g. "Why do you use the PPH?"). Once we have

identified the critical characteristics, it becomes necessary to identify how relevant they are

to the user (e.g. "How important is it to accelerate the examination to your business?").

This means that the intermediate degree identifies how those characteristics are important

or not. The third level is the deepest, indicating the reasons why the respondent believes

this important feature (e.g., "Why is important to accelerate the examination to your

business?"). (Wikipedia, 2012)

Most surveys about PPH users‘ opinions carried out until today indicate the PPH features

that are responsible for whether or not companies use it (level 1). For this reason, we try to

expand the understanding of PPH by observing how each feature is relevant to the

business of the respondent (level 2) and sometimes the reason (level 3).

Another difference is that the questionnaire makes questions about the steps of PPH

prosecution. The questions were ordered to correspond to the PPH stages (e.g. file first

application request for accelerated examination at the OSF (or OEE) fulfillment of the

PPH requirements, etc.).

The fourth difference is regarding the respondents‘ behaviors. They were asked to indicate

―perceptions‖ from between two different points of view. In case 1, the situation was the

following: They work in the inventor‘s company (or they are the inventor‘s patent attorney).

Because the company wants to ensure the patent right as soon as possible and in as

many countries as possible, they have decided to use the PPH. In case 2, companies

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were asked to imagine that a competitor company is using the PPH at JPO; and patent

agents were asked to imagine that a foreign patent firm wants to use the PPH in JPO and

wants a partnership.

The questionnaire survey was conducted by:

1. sending one questionnaire to the 223 companies with the biggest number of

applications filed in JPO in 2011;

2. sending another (but similar) questionnaire to the 55 largest patent law firms in

Tokyo by number of patent agents; and

3. distributing both questionnaires among the 232 people who attended the

Brazilian Patent Seminar held at GRIPS (Tokyo, Japan) on January 31st.

The results of the surveys were analyzed and studied. We then divided the respondents

into four different groups: User companies, users patent law firms, non-user companies

and non-user patent firms. After that, we created tables and graphs in order to facilitate the

comparisons between different groups.

In the first analysis, we compared each group‘s answer for each question. Secondly, we

arranged the questions by main topic and extracted conclusions by matching similar

answers for 2 or 3 questions. Thirdly, we used the SPSS® and made three statistical

analyses: (a) Pearson's correlation between answers from two different questions, (b)

factor analysis, and (c) multiple regression analysis.

1.3 Hypotheses

We believe the usage and awareness of the PPH is growing among Japanese companies

and patent law firms. We also believe that most of them are unsatisfied with the time to

grant a patent, and that work-sharing among PTOs may be suggested as the best solution.

Both stakeholders may recognize the PPH main features of the different ―PPH types‖, but

some of its potential (described in the background) may not be considered. We also

believe that other additional PPH features (opportunity or threat) will be identified because

(a) we add another stakeholder (patent law firms); (b) we ―split‖ the PPH process; and (c)

we request the stakeholder to change its point of view. We expect to identify the level at

which these features (new and old) are important to each stakeholder.

We also believe we can grasp the stakeholders‘ ―behavior‖ when comparing the results

through the SPSS® software. We think we will be able to relate the respondent‘s answer

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from two different questions, identify the reason, and better understand their opinions. We

also believe we can parse several variables and underlying constructs or factors that each

better explains its variation – thereby helping us to understand the main need for each

stakeholder.

1.4 Lineation

In chapter 2, the PPH is contextualized as a backlog reduction strategy through the

division of labor between offices, and as a system to mitigate the problem through

accelerated examination. Several other examples of work-sharing and accelerated

examination are reviewed.

In chapter 3, the most relevant literature related to PPH is reviewed. The focus is the key

stakeholders, with the main advantages and disadvantages identified for each. Several

PPH critics and changes over the time are pointed out.

In chapter 4, the results from the survey are exposed and analyzed. The data is compared

with former PPH surveys stipulating users and non-users, as well as companies and

patent law firms.

In chapter 5, the main conclusions are summarized. Some considerations are made

regarding PPH use, as well as some recommendations made about its future studies.

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2. BACKLOG AND EFFORTS TO REDUCE IT

―The expansion of global activities among business entities has resulted in the growing

need for the acquisition of patent rights in a plurality of countries (Figure 2). This has led to

the tendency to file the same invention with various patent offices and an upsurge in the

number of patent filings worldwide. This results in two problems: (a) an increase in the

duration of the examination period; and (b) a heavy increase in the workload on

examinations at each patent office.‖ (METI, 2011). This delay is called a ―backlog‖.

Figure 2: Graph showing number of world applications (WIPO, 2011)

―The workload of patent examinations has increased every year due to the following four

reasons: (1) the complex and sophisticated content of applications, (2) the increase in the

number of accumulated documents covered by prior art searches, (3) the increase in the

number of international search reports to be established within the time limit set by the

treaty, and (4) the increase in the examination workload per PCT application with the

introduction of the Enhanced International Search System‖ (JPO, 2011).

2.1 Strategies to reduce the backlog or mitigate its negative effects

Several countries are making efforts to reduce the backlog or mitigate its negative effects.

Some measures are described as ―desired‖ but still only on paper. The main measures

described in the background are described in the Table 1 (Arai, 1999) (IP5, 201_) (JPO,

2008) (Phillips, 2010) (Sajewycz, et al., 2010) (Taplin, 2010) (Thomas, 2011).

These measures focus on reducing the backlog, except the expedited examination. The

accelerated examination itself is not an action to mitigate the problem. But it can help

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foreign patent offices and it brings benefits to business that need the patent granted in

order to ―happen‖ (see 2.3 下の).

The main measures to tackle the backlog problem:

mitigate negative effects: accelerate examination

limiting applications: limited the number of claims

limited the ability of applicants to re-file their applications (USPTO continuing application).

ask for wider participation among actor (applicants and third parties);

classification;

state of art search made by certified companies;

third parties to present possible anteriority,

interviews;

Stimulating the abandonment or withdrawn of application:

expedited review of one patent application when the applicant agrees to withdraw another;

recover fees;

outsource: classification;

prior art search;

examination and judgment;

work- sharing among offices (e.g. PCT and PPH);

nonreciprocal / unilateral recognition of patents (e.g. MSE);

mutual recognition of patents between patent offices;

a world recognition of patent (ultimate goal);

Increasing and improving prosecution:

hiring examiners assistants;

hiring more examiners;

examiner reviewing the application before the trial;

Table 1: Table of main measures to tackle the backlog problem

―Roland Grossenbacher [Director of the Swiss Federal Institute of Intellectual Property in

2010] described […] measures to help the problem. A 'classical' measure would be to hire

more examiners, but he said young scientists should put their talent towards innovation

and not become patent examiners. Also, the multiplication of ‗hyper-specialized patent

examiners‘ would be hard for patent offices to manage, he said. A second, bolder measure

[…] would be a global patent. But at this stage when there is no sign of a European

Community Patent [ECP], it seems Utopian, he said, although the PCT has the potential to

grow in that direction. Another idea would be mutual recognition between patent offices,

but this is dangerous if prior conditions are not met. For the moment, that would probably

reduce patent quality, he said. Alternative solutions have been developed like sharing work

among offices, but this can be very controversial, he said. An example of work sharing is

the Patent Prosecution Highway [PPH], a pilot program which involves close cooperation

between some IP offices, such as the Canadian Intellectual Property Office, the United

States Patent and Trademark Office [USPTO] and the Japan Patent Office [JPO]. It is

meant to accelerate the examination of patents in collaborating national offices. There is

also the idea of asking wider participation of other actors, such as requesting the applicant

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to give thorough information on the state of the technology, or third parties to present

possible anteriority, prior use‖ (Taplin, 2010).

―The agency (USPTO) has launched a number of initiatives in recent years to address

perceived concerns over the patent-granting process, including: (a) The Patent Application

Backlog Stimulus Reduction Plan, which allows an individual who has filed multiple

applications to receive an expedited review of one patent application when he agrees to

withdraw another, unexamined application; (b) The Patent Prosecution Highway, which

allows certain inventors who have received a favorable ruling from the USPTO to receive

an expedited review from foreign patent offices; and (c) The Enhanced First Action

Interview Pilot Program, which allows applicants to conduct an interview with patent

examiners early in the review process‖ (Thomas, 2011).

―Hiring efforts are not sufficient to reduce the Patent Application‖ – many observers are of

the view that ―[d]ue to both monetary and infrastructure constraints, the USPTO cannot

simply hire examiners to stem the tide of applications.‖ The USPTO also proposed rules

with respect to claims and so-called continuing applications that were designed to reduce

its examination burdens. These rules would have limited the number of claims that could

be filed in a particular patent application, unless the applicant supplied the USPTO with an

―Examination Support Document‖ in furtherance of that application. They would have also

limited the ability of applicants to re-file their applications — an opportunity more

technically termed a ―continuing application‖ — absent a petition and showing by the

patent applicant of the need for such an application. These rules never came into effect

due to a temporary court ruling enjoining their implementation. In the face of considerable

opposition to these rules by many members of the patent bar and innovative firms, the

USPTO announced on October 8, 2009, that it was rescinding the rules package entirely‖

(Thomas, 2011).

In the first step in a JPO trial, the patent examiner from the examination period can review

its opinion. This examiner is taken to be the person with the best knowledge about the

matter, and it is easier for this person to review his or her opinion than another. It also

reduces the need for two more patent examiners (JPO, 2011).

2.2 International Agreements and Work-Sharing

―For Roland Grossenbacher, […] one of the main issues is the work overload in patent

offices around the world. This overload jeopardizes the whole patent system, he said. This

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challenge could be addressed with a new dimension of international cooperation, he

added‖ (Taplin, 2010). Moreover, the ―internet access and cloud computing have long ago

bypassed the old notion that each national office has to have its own databases of local

patent applications and prior art physically present in its own territory‖ (Phillips, 2010).

There are several levels of work-sharing among patent offices. This can be divided into

three major groups (Figure 3). In the first level, patent offices share information about the

prior-art search only, which reduces the time of prior-art search in the OLE. In the second

level, the PTOs also share judgments. In addition to only using results, they are therefore

able to learn logical structures from each other and increase the harmonization of

patentability criteria. In the third level, they also share the final judgment, allowing an

inclusive read of the final claim scope (JPO, 2011).

Figure 3: Different levels of work-sharing (JPO, 2011)

―Programs such as the PPH are seen by the TC as steps towards the ultimate goal, which

is that each of the TOs would give full faith and credit to the examination results of the

other offices. If this were ever achieved, then if a patent were granted in the USPTO, for

example, a corresponding patent would be granted by the EPO or the JPO without further

examination. However, it is clear that this goal cannot be reached until there is

harmonization of the legal system in Europe, Japan, and the USA, in particular the US

changes to a first-to-file system‖ (Grubb, 2007).

The meaning of patent system harmonization and standardization are closely related with

Patent Quality. ―Quality patents are said to enhance predictability within the marketplace,

by clarifying the ownership and scope of private rights associated with particular inventions.

When inventors, investors, managers, and other stakeholders possess confidence that

patents are reliably enforceable, they are said to have increased incentives to innovate, to

finance research and development, and to bring new technologies into the marketplace. In

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contrast, poor patent quality may encourage activity that is not socially productive. Private

parties may be required to engage in extensive due diligence efforts in order to determine

whether individual issued patents would be enforced by a court or not. Entrepreneurial

speculators may find it easy to obtain patents that can then be enforced against

manufacturers and service providers‖ (Thomas, 2011).

―Increasingly complex technologies appear to have resulted in patent applications that are

both lengthy and potentially more difficult for examiners to parse. In addition, technological

innovation is today a global phenomenon that is occurring at an increasingly rapid pace.

As compared to previous years, USPTO examiners may face more difficulty in locating the

most pertinent documents that describe the state of the art. Of course, the increasing

number of patent applications — along with a large backlog of unexamined applications —

also potentially impacts the ability of the USPTO to maintain high levels of patent quality‖

(Thomas, 2011)

Hisamitsu (1999) explains that the final goal of work-sharing can be seen as a ―World

Patent‖. It does not represent one certificate issued by one ―world office‖, but one common

understanding about the patent system. It is possible to achieve this goal through an

agreement under WIPO with a ―world decision‖, but this has been proving a hard mission.

In Hisamitsu‘s (1999) opinion, the TC (Trilateral Cooperation between USPTO, EPO and

JPO) has a four-step alternative approach: (1) Sharing prior-art search; (2) Recognizing

each other patents; (3) TC patents; (4) Worldwide extension (Arai, 1999).

From that time until now, another group was created with the TC countries with China and

Korea called IP5. Nowadays, about 90% of the world applications are filed in these five

offices, sharing their prior-art search and dossier (wrapper) data (IP5, 201_). However,

they still don‘t recognize each others‘ patents as previewed, perhaps because of the lack

of confidence between examiners. In this framework, the PPH can act as a catalyst to

enhance examiner confidence, as they can read others‘ work and learn one from another

(as better described in title 3 下の).

2.3 Accelerated examination

Each country has a different policy to accelerate the examinations, although the number of

expedited examinations is still low around the world. In 2009, accelerated processing was

requested in around 7% of cases undergoing examination in the EPO (Sajewycz, et al.,

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2010). ―This seems to be attributable to the fact that applicants carefully selected their

applications when petitioning for accelerated examination, as the target of the system is

limited to ‗working-related applications‘ and the system requires applicants to conduct a

prior art search before petitioning‖ (JPO, 2011).

―Since the Office of First Filing has the potential to provide the examination results most

efficiently and appropriately, it is preferable that the Office of First Filing provides the

search/examination results at the very first, and that other offices utilize the results. By

establishing various bidirectional work-sharing frameworks in which the Office of First

Filing provides the search/examination results at the very first and the Office of Second

Filing makes the most use thereof, the examination workload of the duplicate application

among patent offices is alleviated so that examination efficiency is promoted all over the

world.‖ (JPO, 2008).

2.3.1 USPTO

The USPTO offers several ways to accelerate the examination of a patent application. The

goal is to have a final disposition within one year, as follows:

1. An applicant may file a petition to make its application ―special‖ at the filing date.

The subject does not matter. Several circumstances are considered onerous and

cumbersome. The applicant must conduct a pre-examination search, including

patents and non-patent literature. The search must include the claimed invention

(including dependent claims) and disclosed features (that may be claimed). It is also

necessary to include an ―Examination Support Document‖ (ESD), with the

―Disclosure Statement‖ citing each reference deemed to be the most closely related

to the subject matter of the claims, an identification of all of the limitations in the

claims that are disclosed by the reference specifying where the limitation is

disclosed in the cited reference, a detailed explanation of how each of the claims is

patentable over the references cited, a concise statement of the utility of the

invention, a showing of where each limitation of the claims finds support in the

specification, and an identification of any cited references that may be disqualified

as prior art. A fee is required (except if the subject is related to environmental quality,

development or conservation of energy resources, or countering terrorism).

2. It is also possible to make the application ―special‖ based on age or health. The

applicant must be 65 years old or more, or with health "such that he or she might

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not be available to assist in the prosecution of the application if it were to run its

normal course". There is neither fee nor any other requirement unless the USPTO

requests further evidence. (Sajewycz, et al., 2010).

3. ―The Patent Prosecution Highway (better explained in title 3 下の).

4. Recently, the USPTO adopted the Three-Track Initiative, under which an application

would be placed into one of three queues: prioritized examination, traditional

examination, or delayed examination (Codd, 2011).

2.3.2 JPO

In most cases, the applicant is required to conduct a prior art search and explain the

difference between the claimed invention and prior arts. In the case of individuals and

SME-related applications, however, applicants are not required to conduct a prior art

search, but rather to simply disclose any prior arts of which they are aware. There is no

additional fee. (Sajewycz, et al., 2010). The rate of accelerated petitions is about 3.14% in

JPO (Figure 4) (JPO, 2011).

―In an effort to quickly support global economic activities and utilize R&D results, the JPO

has implemented the accelerated examination process in response to the submission of

‗written explanation of the needs of the accelerated examination‘ with respect to:

1. Applications relating to inventions that have already been put into practice or are

planned to be put into practice within two years (working-related applications),

2. Applications that have foreign patent families (internationally filed applications),

3. Applications filed by SMEs and venture businesses, or

4. Applications filed by universities/TLOs and public research institutions that are

expected to contribute their results to society‖ (JPO, 2011).

Moreover, JPO has other ways to accelerate the examination:

5. The super accelerated examination system targets more important applications,

which meet both the requirements for "working-related applications" and the

requirements for "Internationally filed applications" out of the requirements for

the conventional accelerated examination system.

6. Green-related applications became eligible for consideration under the

accelerated examination process in order to protect the achievements of R&D

activities conducted on environmental technologies, reward them as quickly as

Page: 14


possible, and promote further R&D activities in this area. This system was

launched in November 2009 as a pilot program (JPO, 2011).

7. JP-FIRST is a framework within which the JPO prioritizes the examination of

patent applications for which the examination has been requested within two

years from the filing date, among the patent applications which are the bases for

priority under the Paris Convention (applications which are the bases for the

PCT applications are not subject to JP-FIRST). The JPO conducts the

examination in principle within six months from the later date of the examination

request date and the publication date, and no later than 30 months after the

filing date (JPO, 2011).

Figure 4: Graph of the number of petitions for accelerated examination in JPO per year (JPO, 2011)

8. ―Through discussion on the possibility of fusing the international phase

procedures and the national phase procedures at the maximum level in a long

term view, the written opinion was to be made together with the international

search report for the applications filed after January 2004. The JPO has been

conducting a measure in which the PCT international search and the

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examination of the national application are processed simultaneously in the case

where the same invention is filed nationally prior to the PCT application and the

national application is being requested for examination‖ (JPO, 2011, p. 58).

9. Application filed those sustaining damage from the Great East Japan

Earthquake (Provisional program began Aug. 1st, 2011)

10. The PPH Program (better explained in title 3 下の)

2.3.3 EPO:

Many applicants can bypass the EPO backlogs by requesting accelerated processing. The

EPO provides a dedicated accelerated prosecution program for its applications called

PACE. Accelerated examination can be requested at any time for European or Euro-PCT

applications. No reasons need to be given; accelerated prosecution simply starts on

written request. When accelerated examination is requested, the EPO makes every effort

to issue the first examination communication within three months. It then aims to produce

subsequent examination communications within three months of receipt of the applicant's

reply. Accelerated applications are expected to be granted within 12 months. There is no

fee required for a PACE request (Sajewycz, et al., 2010).

2.3.4 Canada:

―Accelerated examination of a patent application may be requested under Rule 28(1) of

the Patent Rules. The applicant must make a statement establishing that failure to

advance the application is likely to prejudice the applicant's rights. Examples of the

requisite prejudice for triggering accelerated examination include the presence of

potentially infringing behavior by a competitor or a fee of C$500 ($487). While examination

typically takes about two to three years to commence in the normal course after requesting

examination, a request for expedited examination can reduce this delay to one to two

months. If the request for expedited examination occurs before 18 months after the earliest

priority date, a request for early publication must also accompany the request‖ (Sajewycz,

et al., 2010).

2.3.5 Brazil:

The INPI Resolution 191/2008 explains how to accelerate examinations in its 2nd to 5th

articles. The requirement for priority examination of patent applications can be done by (I)

the depositor when (a) he/she is 60 (sixty) years old or older; (b) the object of the patent

Page: 16


application is being reproduced by third parties without his/her permission, or (c) the grant

of the patent is mandatory for obtaining financial assistance from sponsor agencies or

national credit institutions, and the financial assistance will be available in economic grants,

funding or participation; (II) a third party, when he/she is been accused by the applicant of

counterfeit reproduction of the applied object without its permission. Patent applications

will have priority examination (III) (ex officious) when the matter is included in any federal

executive act that declares a national emergency or public interest, or (IV) when the

Ministry of Health request it because the application is related to drugs that are regularly

purchased by the SUS .

2.3.6 Germany

The acceleration of the proceedings can be requested at any time after the request for

examination. There is no official fee, but any reason for the request must be given. The

guidelines state that the proceedings will be accelerated if the expected duration of the

proceedings will be significantly disadvantageous to the applicant (DPMA, 2004). It is

possible to make informal calls to GPTO examiners to move the application to the top of

their stack of files and to issue the next substantive communication within a few months or

even weeks. The office's examiners are usually quite cooperative in this (Sajewycz, et al.,

2010).

2.3.7 Korean

The Korean Intellectual Property Office (KIPO) offers expedited examination under certain

circumstances. The applicant can request an accelerated examination only with or after

the ―normal‖ requested for examination. Expedited examination is eligible when (1) a third

party is practicing the claimed invention commercially in Korea after the invention has

been laid-open; (2) PPH; (3) The applicant requests a prior art search to an independent

prior art search institute designated by KIPO at its own cost and requires that the search

result is notified to the KIPO Commissioner; (4) there is the necessity for expediting

examination of an application within the following categories (the petitioner should submit

its own prior art search results): (a) the application is directed to subject matter relating to

the defense industry; (b) the application is directly related to green technology; (c) the

applicant is practicing or preparing to practice the invention commercially in Korea; (d) the

application is directed to electronic transactions; and (e) the application qualifies for certain

Page: 17


requirements mostly applying to applicants that are domestic entities. The fee is

proportional to the number of claims (Sajewycz, et al., 2010).

2.3.8 United Kingdom

Initially, there was only one route to the early grant of a British patent application. However,

in recent years, the UKIPO has developed a range of methods:

1. Through the separate acceleration of the search procedure and a subsequent

examination procedure, through the submission of a request together with

convincing reasons for the need for acceleration.

2. It is also possible to request a ―Combined Search and Examination‖ (CSE) together

on filing without any reason. In this case, the UKIPO issues the search report along

with a written examination report (similar to the combined search report and written

opinion of an International Searching Authority) with a statutory reply deadline. The

UKIPO aims to produce a CSE report within four months of receipt of a request. It is

possible to combine the CSE with the earlier publication request (below), in order to

see a British patent granted quickly. The possibility exists to obtain patents granted

in fewer than 12 months by filing using the CSE procedure (Sajewycz, et al., 2010).

3. The UKIPO permits a request for early publication without any reasons for such a

request. The application must meet the formal requirements before the early

publication. The UKIPO has an agency target to publish a patent application for

which an early publication request has been made, within six weeks of the request.

4. It is also possible to accelerate the search and/or examination on request by

applicant by request with reasons. No additional fee is payable. An examiner will

consider the merits of the request. The UKIPO does not prescribe an exhaustive list

of acceptable reasons.

5. The patent prosecution highway (see below).

6. Inventions related to environmental benefit also can be accelerated under the so-

called green channel (Sajewycz, et al., 2010).

Page: 18


3. PPH - PATENT PROSECUTION HIGHWAY

The PPH is a ―set of providing initiatives for accelerated patent prosecution procedures by

sharing information between some patent offices. It also permits each participating patent

office to benefit from the work previously done by the other patent office, with the goal of

reducing examination workload and improving patent quality" (Wikipedia, 2011). The PPH

is a procedure that will accelerate examination, have greater efficiency, decrease costs of

prosecution, reduce pendent time, and have no fee petition (USPTO, 2011).

The PPH outline is ―a framework in which an application whose claims have been

determined to be patentable in the Office of First Filing (OFF) is eligible to go through an

accelerated examination in the Office of Second Filing (OSF) with a simple procedure

upon an applicant‘s request. The PPH, through the exploitation of all the

search/examination-related information of the OFF, (1) supports applicants in their efforts

to obtain stable patent rights efficiently around the world, and (2) reduces the

search/examination burden and improves the quality of the examination of the major

patent offices in the world‖ (PPH Portal, 2012).

According the PPH Web Portal, the program started based on a pilot bilateral agreement

with the U.S. in May, 2006. These results led to the full program implementation in January,

2008, and the expansion of the agreements with other countries. This first ―type‖ is called

only ―PPH‖. Two others were created later: the PCT-PPH and the PPH-MOTTAINAI (better

described above). The Figure 5 shows the current PPH Network. All three types are under

expansion (PPH Portal, 2012).

There are two explanations for the PPH creation, both related to the backlog. One is

related is related to work-sharing and moving forward the discussion on patent law and

practicing harmonization (described in title 2.2 上の). Through this point of view, the PPH

can be seen as a catalyst to enhance examiner confidence. As we will see in detail below,

the second examiner can read and learn (or understand) how the first examiner thinks and

proceeds before granting the patent. The second reason is related to mitigate the backlog

negative effects in foreign countries where is difficult to accelerate application, because it

is too complicated, burdensome or expansive. It is clear to say that PPH is not mutual

recognition or transfer of rules or practices.

Page: 19


Figure 5: PPH network (PPH Portal, 2012)

Inside the JPO, the PPH is one variation among other ―accelerated examination‖ methods

(describe in the title 2.3.2 上の), and it has the same processing priority with an average

pendency of two months. Like other accelerated examinations, ―although the number of

requests for PPH has been increasing, it is still low compared to the total number of patent

applications being filed in the world. PPH participating offices have been discussing ways

to promote the utilization of PPH programs‖ (PPH Portal, 2012).

―The PPH is a system that is still in the process of being developed. While expecting

further improvement of practices and expansion of the number of eligible countries from

each office, users should probably understand the latest system practices and work out an

effective and practical method according to each business strategy of the users‖ (Nagano,

2010).

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3.1 PPH outline

As said before, the PPH has three types. There are small differences between the

requirements and outlines for each, and all are still in use and expansion.

3.1.1 PPH (or Paris-route-PPH)

This is the first PPH launched between US and Japan, and is the one with the largest

number of signatory countries at present. Once it is based in bilateral agreement, there are

some differences related to requirements.

This presents the simplest framework. Suppose an applicant files an application ―A‖ first in

one PPH-member patent office. This office receives the title of ―Office of First File‖ (OFF).

Second, the applicant files a ―corresponding application‖ in several other countries. The

corresponding applications can be:

1. An application which validly claims priority under the Paris Convention to the

corresponding OFF application(s);

2. A PCT national phase application without priority claim (direct PCT application);

3. An application which validly claims priority under the Paris Convention to the

PCT application(s) without priority claim;

If any of these countries are also Paris-route-PPH signatories, it will be called the ―Office of

Second File‖ (OSF). The applicant will be able to request an accelerated examination in

one or more OSFs if (Figure 6):

1. The OFF determines there is at least one patentable claim;

2. The examination has not begun in the OSF1;

3. The OSF application has a particular relationship with the OFF application (e.g.

the application claims Paris Convention priority in the OSF);

4. All claims in the OSF application sufficiently correspond or all the claims are

amended to sufficiently correspond to the allowable/patentable claims in OFF

applications.

It is important to highlight that it is not necessary to have the patent granted. Neither office

action must be the ―decision to grant a patent‖ to be qualified to use PPH Program in all

patent offices. In several agreements, it is possible if the office action identifies the claims

1 Some PPH-Paris agreements allow the applicant to request accelerated examination even if the exam has already started in the OSF (e.g. Korea, Denmark, Finland, Austria, Hungary and Spain).

Page: 21


that are allowable/patentable. For example, the office action of the JPO may be a

―notification of reason for refusal‖, but it includes the standard expression ―no reason for

refusal is found for the invention claimed in the Claim(s)…‖

Figure 6: PPH Requirements (JPO, 2012)

Claims are considered to ―sufficiently correspond‖ where (a) they are the same or have a

similar scope as those determined as patentable/allowable in the latest OFF office action

(except for differences due to translations and format); (b) the claims of the application are

narrower in scope than those determined as patentable/allowable in the latest office action.

Claims which introduce new or different categories of claims to those determined as

patentable/allowable in the latest office action are NOT considered to sufficiently

correspond (e.g. product claim vs. process claim).

If all the requirements are met, the applicant must submit to the OSF:

1. A copy of all claims and its translations;

2. A copy of the OFF office actions and its translation;

3. Copies of all cited documents;

4. A claims Correspondence Table.

Several patent offices do not require a ―copy of claims and its translations‖, nor a ―copy of

the OFF actions and its translation‖ if one (or both) documents are provided by the Dossier

Access System. The applicant is not required to submit the ―cited document‖ in most

offices if they are patent documents. However, the applicant may be asked to submit these

Page: 22


in case the patent office has difficulty in obtaining the document. If a cited document is

non-patent literature, the applicant must always submit it.

Once the OSF examiner is able to read all dossiers (including the prior-art search and the

final judgment) and the application is already amended in the OSF, the examination

burden is expected to be reduced, along with the number of ―reasons for refusal‖ reports. It

is necessary to emphasize that the second examiner may (or may not) accept what has

been done by the first one.

3.1.2 PPH-PCT

This framework began in January, 2010 among the TC countries (the U.S., Japan and

EPO). It has been expanded based in bilateral agreements, and there are also some

differences related to procedures.

The framework, requirements and required documents are very similar to the Paris-rout-

PPH. This program utilizes the PCT work products as the basis of a PPH request in the

second office.

In this case, the applicant first makes an international file for an application ―A‖ in a PCT

Receiving Office (PCT/RO). It is possible to claim unionist priority for this application. This

office receives the title of ―Office of First File‖ (OFF). Secondly, the applicant files

―corresponding applications‖ in several other countries, as follows:

1. The application is a national phase application of the corresponding international

application.

2. The application is a national application as a basis of the priority claim of the

corresponding international application.

If any of these countries are also PCT-PPH signatories, it will be called the ―Office of

Second File‖ (OSF). The applicant will be able to request an accelerated examination in

one or more OSFs if (Figure 7):

1. The application has at least one claim that was indicated as having novelty,

inventive step and industrial applicability by the ISA/IPEA in the latest

international work product:

a. Written Opinion of the International Searching Authority (WO/ISA);

b. Written Opinion of the International Preliminary Examining Authority

(WO/IPEA) or

Page: 23


c. International Preliminary Examination Report (IPER)

2. The examination has not begun in the OSF2;

3. The application has a particular relationship with the PCT application (e.g. the

application is a national phase application of the corresponding international

application);

4. All claims in the application sufficiently correspond or are amended to sufficiently

correspond to the allowable/patentable claims in PCT applications.

Figure 7: PCT-PPH Requirements (JPO, 2012)

The following documents are required to be submitted along with a PCT-PPH request

form:

1. Copy of the claims from the corresponding PCT application which are indicated

as patentable/allowable, and a translation thereof;

2. Copy of WO/ISA, WO/IPEA or IPER which forms the basis for the PCT-PPH

requests, and a translation*1 thereof;

3. Copy of all cited documents;

4. Claims correspondence table.

In several agreements, the applicants are not required to submit the ―copy of the claims‖,

nor the ―WO/ISA, WO/IPEA or IPER documents‖ or the ―translations‖ if they are available

2 Some PPH-Paris agreements allow the applicant to request accelerated examination even if the exam has already started in the OSF (e.g. Korea, Denmark, Finland, Austria, Hungary and Spain).

A

B

Examination

Request

for PPHC

International Phase National/Regional Phase

PCT

ApplicationsWO or IPER

Positive

Opinion Accelerated

Examination

PCT Work Products

3. PCT applications

have one or more

claims that are

indicated as allowable.

4. All claims of the application must

sufficiently correspond to the allowable

claims in the PCT application.

2. Relationship between

the application and the

corresponding PCT

application

1. The OSF has not

begun examination of

the application.

Submission of

required documents.

Page: 24


via the ―PATENTSCOPE®‖. Applicants are neither required to submit the ―cited documents‖

if they are patent documents.

3.1.3 PPH MOTTAINAI

The PPH MOTTAINAI pilot program was set to be launched in July, 2011. Eight offices

agreed to launch a pilot from the ―revised PPH‖: JPO (Japan), USPTO (USA), UK-IPO

(UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and

SPTO (Spain). The EPO (European Patent Office) has commenced the "PPH

MOTTAINAI" pilot program on January 29, 2012. This multi-lateral agreement is unique

and has no requirement variations among the countries (PPH Portal, 2012).

―The ―normal‖ PPH programs accept only PPH requests based on the examination results

of the Office of First Filing, or the patent office with which the corresponding application

was filed first. This restriction on PPH requests has created a ―wasteful‖ (MOTTAINAI in

Japanese) situation where useful examination outcomes are not fully utilized at the

international level. Thus the pilot program was named PPH MOTTAINAI‖ (PPH Portal,

2012).

This framework has no relation with the OSF or OFF. The applicant can file an application

―A‖ and its ―corresponding applications‖ in several countries, whether they are PPH-

MOTTAINAI members or not. When the first PPH-MOTTAINAI member makes the

examination, this office is called the OEE (Office of Early Examination). This allows the

applicant to request an accelerated examination in one or more office signatories of the

program. Such offices are called the OSE (Office of Second Examination).

3.2 Examination Procedures

The PPH application workflow is the same as an ordinary one. It will only be advanced out

of turn for examinations. Before starting the examination, the patent examiner must

evaluate if the requirements are attended. Some ―defects‖ cannot be resolved, while some

can be resolved by submitting required documents, and others can be resolved if the

applicant requests the accelerated examination once again (Figure 8).

The examination procedure for granting a patent also does not change between PPH

applications and non-PPH applications. In the JPO case, the PPH manual recommends

that examiners consider that the reasons for refusal notified by the OFF are already

resolved. Since the OFF has already allowed patentable claims based on searches for

Page: 25


prior arts, we have expected OSF examiners to be able to reduce the burden of searching

(JPO, 2012).

Figure 8: Workflow of Requirements (JPO, 2012)

3.3 PPH Merits

JPO points out that the first benefit is the improvement of patent quality3 (JPO, 2011). The

quality of the patent offices‘ search and examination increases, because the OLE is in

possession of the search and examination reports from the OEE when performing its own

searches and examinations (Meji & Suhr-Jessen, 2011). If the quality is improved, it is

possible to acquire a more stable right (JPO, 2011).

The JPO points out as a second benefit the acceleration of examinations. For example, in

the JPO, the average examination pendency from the filing of an application to the

commencement of an examination is usually about 26.3 months in December 2011. The

examination pendency of the PPH applications from the acceptance of the PPH request to

the commencement of the examination is reduced to about 1.8 months in the same period.

In addition, the average pendency from the commencement of examination to the final

3 The concept of ―quality‖ is strongly related with the concept of ―standard‖.

1. Has the examination already begun ?

2. Does the relationship between the OFF and the

OSF application satisfy the requirement ?

3. Have the required documents been submitted ?

4. Does the OFF application have one or more claims

that are determined as allowable ?

5. Do all claims of the OSF application sufficiently

correspond to the allowable claims in the OFF ?

Examine as

regular application

Examine as PPH application

Administrative Affairs Division

Patent Examination Division

NO

YES

YES

YES

YES

Examine as

regular application

Examine as

regular application

Examine as

regular application

Examine as

regular application

YES

NO

NO

NO

NO

De

fect c

an

no

t

be

reso

lve

d.

De

fect c

an

be

reso

lve

d b

y

su

bm

itting

req

uire

d

do

cu

ments

.

Th

e a

pp

lica

nt c

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file a

PP

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ue

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nce a

ga

in b

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reso

lvin

g th

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ct.

Page: 26


decision is usually about 32.4 months for general applications filed in JPO, while that of

applications using the PPH is reduced to about 7.1 months in the same period (Figure 9)

(PPH Portal, 2012).

Figure 9: Graph of average examination pendency time in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012)

As described in the title 2.3 上の, the acceleration of examination is a good strategy to

mitigate the backlog problem. Moreover, the Reduced Pendency in the PPH enables

applications filed in multiple jurisdictions to be fast-tracked based on another office's work

product. It allows the applicant to build a fast portfolio with one simple and inexpensive

petition (Wernli & Bowley, 2011).

―Therefore, an applicant can use an accelerated examination more easily than through

the usual accelerated examination process [in USPTO]. In other words, the applicant is

required to tile a statement of correspondence of claims, as opposed to a detailed

explanation of how a claimed subject matter is patentable over most pertinent references,

as is currently required for the usual accelerated examination‖ (Ono & Ueda, 2009).

The third benefit pointed out by the JPO is the cost reduction for acquiring a right. ―It can

be assumed that a reason for refusal already notified at one office has been solved

through the examination by such office, so that it is not notified redundantly in each office.

As a result, the number of communications between the examiner and the applicant are

reduced, thereby reducing the cost. This enables the applicant to save the costs in

acquiring a patent and invest the saved costs in further R&D‖ (JPO, 2011). This third

benefit is strongly associated with the increase of predictability of allowance (Figure 10).

0 5 10 15 20 25 30 35

PPH Application

Normal Application

Average Examination Pendency (months)

1º action final decision

Page: 27


The average grant rate of applications in JPO is 58.9%, while the grant rate of applications

using the PPH is 76.6% in December, 2011 (PPH Portal, 2012)

Figure 10: Graph of average rate of allowance in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012)

The USPTO publishes an economic survey in the AIPLA Report. According it, the average

cost per applicant action is about US$2100. Considering the decrease in the number of

actions, it is possible to assume an average saving of US$1800 per PCT-PPH application

and US$700 per Paris-PPH application. It also means the PPH has a smaller file history

compared with other Accelerated Examination programs (Wernli & Bowley, 2011).

There are also benefits to patent offices. For example, the work-sharing framework will a

reduce duplication of efforts (Godici, 201_). ―The examiners can examine applications

using the examination results of other offices, so that it is possible to reduce the work load

and to dedicate the examination capacity to other applications‖ (JPO, 2011). It will also

simplify the analysis of the claims. In general, the company or inventor describes

everything they want to protect in the application. Each item in the request claim is

pleaded. The examiners review each claim, and may accept some and not others. With

the PPH, the patent application that comes to the OLE has the set of claims previously

examined by OEE examiners. Therefore, the examination of the application becomes

faster because the request comes with a limited number of claims (Figure 11), and there

are fewer elements to be analyzed in the proposal (Simões, 2011). At the same time, the

―success of the PPH may also depend on examiners being willing to place their faith upon

patents in the work done by fellow examiners overseas, and supplementing the work done

by colleagues overseas‖ (Sadasivan, 2010).

0 10 20 30 40 50 60 70 80 90

PPH Application

Normal Application

Average rate of allowence

PPH Application Normal Application

Page: 28


Figure 11: Graph of average number of claims per applications for US-JP PPH applications when the OLE is the JPO, as of the end of September 2011

(PPH Portal, 2012)

3.3.1 How to take maximum advantage of the PPH

Some measures are necessary in order to take advantage of the PPH. ―Efficient use of the

PPH is possible in conjunction with good professional advice so that the appropriate filing

strategy in terms of office of first filing is decided. Accordingly, patent claims are drafted

such that the additional costs for filing of divisional patent applications and their

prosecution are avoided. The underlying concept of 'at least one claim should be

patentable' might cause or result in a high number of divisional patent applications.

Accordingly, unless patent filing strategy requires it, claims should be drafted in such a

streamlined way that the claims stand a high chance of being allowed in a single

application, saving applicants the cost of filing and prosecuting an additional divisional

patent application. Patent specification drafting too should be specifically aligned and

executed accordingly‖ (Sadasivan, 2010).

Some authors make considerations and questions in order to take maximum advantage.

The first consideration is the choice of OFF. In their opinion, this question must involve the

(a) coverage sought; (b) quality of search/exam authorities; (c) pendency time for the

examination; and (d) subject matter searched. They also describe some offices and its

methods of search and examination. In their opinion, USPTO has business methods, but

the result can change according to examiner; the EPO has high quality of search and

opinion and allows the expedite prosecution (PACE), but has no business methods; and

the KPO is inexpensive for additional inventions, but has a lower quality of searches

(Wernli & Bowley, 2011).

0 5 10 15 20 25 30

at the first action

at the filing date

Average number of claims

average number of claims

Page: 29


3.4 PPH: Critiques and Changes

Some authors and users criticized (and criticize) the PPH. We listed here some critics we

have met in the background sorted by chronological time. We will see, that some of than

have already been solved and others are on the way. The solution is two-sided, as some

questions depend on the performance of each PTO; and others on the understanding

between two or more offices.

―It must be doubted whether this program will be of much use to applicants. PCT filings

(which comprise the great majority of all filings) are excluded and, even with incentives to

apply for early examination in Japan, the number of cases in which claims are found

allowable in Japan before examination even starts in the USPTO must be very small‖

(Grubb, 2007).

―The patent offices are seeking ways for work sharing in addition to PPH, including the

New Rout, the Triway, the SHARE proposal, and others. However, it is regrettable that

they are turning their backs on the most significant work-sharing opportunity which we

already have – the PCT. One of the original goals of the PCT was to avoid the duplication

of work and reduce costs for applicants‖ (Helfgott, 2008).

―One of the basic problems is that the applicant must first get an allowance in the Office

of First Filing (OFF) before the Office of Second Filing (OSF) has begun their own work.

Because of the long delays in prosecution in most patent offices, to make use of the PPH,

it is necessary to request accelerated examination in the OFF. For those patent offices

providing simplified requests for such accelerated examination, users may be able to use

the PPH.‖ (Helfgott, 2008).

―The respective patent offices may have a role to play in popularizing the option. For

example, participation in the PPH may make filing for accelerated examination inevitable

at USPTO. However, fulfilling the current onerous requirements for such a request, having

to attend to a large number of objections from the patent office, not to forget the underlying

involvement and linkages with inequitable conduct law, might deter applicants from using

the PPH and, worse, might even work out as a more expensive and risky option affecting

both attorneys and applicants. The patent office can help by providing simpler qualification

criteria for patent applications for PPH programs‖ (Sadasivan, 2010).

―The PPH may actually add to the workload of the patent attorneys as they would be

required to attend to the differences in the patent laws operating in two different

Page: 30


jurisdictions! Be mindful of at least leading patent cases, tight petitions at least in the USA

or where applicable, remain careful of the operation of inequitable conduct law, align

deadlines, amend specification in view of the corresponding application, prepare claim

correspondence tables, and remember grounds for patent revocation while amending the

patent applications and so forth.‖ (Sadasivan, 2010). ―Claims granted in two different

applications cannot be combined, as in that case the claims will not be related‖ (Sadasivan,

2010).

The PPH has attracted a limited number of users. For example, from its inception in July

2006 until December 2011, the JPO received only 1438 PPH requests from the US (an

average of 22 per month) (PPH Portal, 2012). There are several reasons for not

participating when the US is: (a) the cost and uncertainty of accelerated examinations in

the JPO; (b) Uncertainty regarding how foreign patent offices will treat the US examination;

(c) EPO usually cites different or better prior art; (d) OSF often acts before USPTO; and (e)

High translations costs are (Godici, 201_).

The same author describes the following as challenges to using the PPH: (a) the need to

plan ahead for use; (b) no acceptance of the U.S. provisional application for some uses;

(c) the scope of claims varies among offices and may reduce coverage; (d) the U.S.

accelerated examination is burdensome, expensive and undesirable; and (e) the

preparation effects are uncertain on the later applications (Godici, 201_).

As we could see, most of critics come from users that want to increase usability of the

program. At first, the issues are treated in meetings between the Patent Office and the

industry association (like JIPA in Japan). The PTO can solve it by itself in its several

bilateral agreements or deal it in ―Plurilateral Patent Prosecution Highway Working-Level

Meetings‖ held every year to have a homogeneous understanding. Considering sign a

program is a good option to countries that want to contribute to these meetings.

The oldest critics related to the inclusion of PCT applications have already been solved in

many agreements. Several offices also are creating the accelerated examination system

(or making it more users friendly). The requirements are becoming easy and standard and

it is reducing the workload. Some uncertain are becoming clear and the number of users

and signatory countries are increasing. Probably, very soon other issues will also be

solved and we may face a more standard and user-friendly agreement soon.

Page: 31


4. PPH USER SURVEY

A questionnaire survey was conducted among Japanese companies and patent law firms.

We tried to identify new opportunities and issues related to the PPH program from the

users‘ and non-users‘ point of view.

Several surveys were held related to PPH since its start. The Japan Intellectual Property

Association (JIPA) held one in August 2007, and another in mid-June 2010. Another

survey was held by the Institute of Intellectual Property (IIP) under the Research Study

Project on Issues with Industrial Property Rights System FY2010 entrusted by the Japan

Patent Office (JIPA, 2008) (Nagano, 2010) (Maeda, 2011).

4.1 Users survey background

JIPA is a non-profit and non-governmental organization of users of the IP system. It aims

to (a) appropriately utilize and make improvements to various IP systems, (b) to contribute

to the progress of technology and development of Japanese industries, and (c) to help the

management of member companies. There are three committees affiliated with JIPA to

study various IP issues, provide information, and exchange views with relevant

organizations, among others, as follows:

1. The First Patent Committee is responsible for research and study of various

issues involved in the creation to patenting of inventions under the Japanese

patent system;

2. The Second International Affairs Committee is responsible for research and

study on the system of acquiring and enforcing patent rights in Europe and PCT;

3. Trilateral Users/Committee on Promoting Harmonization of the IP System

(Former Trilateral Users Project) is responsible for research/study and provision

of views for the purpose of international harmonization of patent systems and

their utilization.

In August 2007, the First Patent Committee conducted the survey in order to learn about

the usage of the JP-US PPH Pilot Program after a lapse of one year since its start. Forty-

eight JIPA member companies (23 electronic companies, 16 chemical companies, and 9

machinery companies) were interviewed (Figure 12 and Figure 13).

Page: 32


Figure 12: Graphs of users’ opinions about the PPH in August 2007 (JIPA, 2008)

The survey questions given to companies that are using the PPH (13 companies) covered

the following: (a) advantages of using the program; (b) disadvantages of using the

program; (c) comments on the program or usage of the program. The questions to the

companies that are not using the PPH (35 companies) covered the following: (a) the

concerns that prevent you from using the program; (b) improvements that should be made

for using the program; and (c) disadvantages of using the PPH (at that time). The results

are show in the Figure 12 and Figure 13.

Figure 13: Graphs of nonusers’ opinions about the PPH in August 2007 (JIPA, 2008)

In mid-June 2010, the First Patent Committee and The Second International Affairs

Committee conducted a spontaneous (not structured) hearing from companies via e-mail.

This second survey took about two weeks, and it aimed to measure the usage of PPH.

35%

40%

20%

5%

USERS: Advantages of PPH Usage

Accelerated patent grants

Simple procedures

Reduced exapenses

Enhanced quality

15%

25%

35%

25%

USERS: Disadvantages of PPH Usage

Necessary preparations for use

Procedural burden

Burden of expenses

Issue of quality

79%

5%

16%

USERS: Comments on PPH or PPH Usage

Simplifying and easing procedures

Continuating the program

Spreading the program and more information

49%

13%

10%

5%

23%

NON-USERS: Concerns that prevent you from using the program

No need for accelerated examination

Cumbersome procedures and burden of translation fees

Dif ferences in examinations level and criteria

Signif icance of using the program is unclear

Other

37%

22%

11%

8%

22%

NON-USERS: Improvements that should be made to the program

Program to be made more f lexible

Simplifying of procedures and increasing cost-ef fectiveness

Accelerating examinations at the JPO

Reducing negative ef fects of dif ference examinations level and criteria

Other

Page: 33


Eleven companies (six electronic and machinery companies and five pharmaceutical and

chemical companies) answered the survey. The contents of the hearing covered the

current situation regarding usage of the PPH program, and their candid views on the

program related to (a) issues that were improved; (b) issues that should be improved; and

(c) any other comments (Nagano, 2010).

The improved issues (when USPTO is the OSF) were as follows: (a) exemption for the

submission of certain documents; (b) PCT applications became eligible to participate in the

PPH; and (c) the petition fee to participate in the PPH was eliminated. The requests for

improvement (PPH in general) were: (a) to further fulfill PPH portal site statistics; (b) to

expand the number of eligible countries for PPH (mainly PCT-PPH)4; and (c) to unify the

standard of requirements and formats needed for making a PPH request.

The new requests for improvement (for the US) were: (a) to shorten the first action period,

because there are some cases where it takes more than six months to grant PPH

requests; (b) to further exempt document submissions, mainly those that are available

through the Dossier System; (c) to clarify the meaning of ―sufficient correspondence‖

between claims; (d) to review the requirement for ―sufficient correspondence‖ between

claims after the examination starts5; (e) to ease the time limit for requesting for the PPH

and to accept PPH requests after the start of examination; (f) to provide information for

users to know the start time of examination. The study also shows that there are still a

number of companies that have hardly used the PPH because: (a) the need for obtaining

rights via accelerated examination are low; and (b) the procedural burdens for utilizing the

PPH such as drafting PPH request papers and also different irregular management from

the usual processing are required.

The Institute of Intellectual Property (IIP) conducted a questionnaire survey in 2010. 241

companies in Japan and 21 companies abroad answered the questionnaire, while an

additional 20 companies in Japan were interviewed (Maeda, 2011). We relate here the

4 Especially in China, because it has no accelerated examination system for foreign users.

5 The issue was regarding the ―sufficient correspondence‖ on other actions except the first one. Once the application had its claims amended in the OLE, the ―sufficient correspondence‖ may no longer exist. It means the application used to lose its ―accelerated‖ status. Moreover, if an examiner judges that the amendment ―does not sufficiently correspond to Japanese allowable claims,‖ the amendment is considered as a ―non- responsive reply‖ and is dismissed.

Page: 34


answers from the Japanese companies to the questionnaire survey only (Figure 14 and

Figure 15).

The results show that 15% have used the PPH, while 72% have been aware of the

existence of the PPH but have not used it. Large companies were more likely to answer

―We have used the PPH‖ than others.

Figure 14: Graph of PPH merits and demerits as pointed out by the 81 companies with experience in the JPO-USPTO PPH (Maeda, 2011)

81 companies with experience in using the JPO-USPTO PPH provided answers regarding

the merits of the JPO-USPTO PPH. The top answer was ―fewer notices of reasons for

refusal‖ (38%), followed by ―early patent registration in the U.S.‖ (36%). The same

companies answered that the demerits of the JPO-USPTO PPH were ―the burden of

preparing documents for PPH applications‖ (33%), ―the burden of making preparations and

checking requirements for PPH applications‖ (20%), and ―higher application costs‖ (17%).

In addition to these demerits, which would increase procedural and monetary burdens

imposed on PPH applicants, respondents also pointed out demerits that would prevent

applicants from obtaining patents of their desired scope in some cases, such as

―inflexibility in amending claims after the application is approved‖ (22%) and ―the scope of

the patent granted in the U.S. is often the same as or narrower than that of the patent

granted in Japan‖ (19%).

460 respondents answered the reasons for their non-use of the JPO-USPTO PPH. The

top answer was ―none of our patent applications seek early registration in the U.S.‖ (70%).

Other common answers are related to the increase in procedural and monetary burdens,

such as ―heavier procedural burdens‖ (40%) and ―heavier monetary burdens caused by

38% 36% 33%

20% 17% 22% 19%0%

10%20%30%40%50%60%70%80%90%

100%

Fewer notices of reasons for

refusal

Early patent registration in

the U.S.

Burden of preparing

documents for

PPH applications

Burden of making

preparations

and checking requirements for

PPH

applications

Higher application costs

Inf lexibility in amending

claims af ter the

application is approved

The scope of the patent

granted in the

U.S. is of ten the same as or narrower

Merits and Demerits of JPO-USPTO PPH among users

Page: 35


PPH applications‖ (35%), and ―the burdens of managing PPH applications separately from

regular applications‖ (23%).

Figure 15: Graph of the reasons for not using the PPH as pointed by the 460 nonuser companies (Maeda, 2011)

546 respondents made comments about overall improvement of the PPH. This included

―simplification and streamlining of the requirements for the documents for PPH

applications‖ (49%), ―use of the uniform PPH application form in all the PPH-participating

countries‖ (27%), and ―a higher likelihood of the instantaneous grant of a patent for a PPH

application‖ (23%). Another common request was ―an increase in the number of PPH-

participating countries‖ (31%).

4.2 Observation from the PPH Survey results

Before disclosing the results, it is necessary to point some observations. The level of PPH

awareness could vary (too much) among respondents. For this reason, some explanations

were added to the questions in order to facilitate interpretation of the answers. The

questions varied slightly between companies and patent law firms. To allow comparisons,

the sentences written in the graphs are the ―core‖ of the question, which are common to all

respondents. The order of questions was changed in order to facilitate comparisons. We

also made some comparisons with the background, but please keep in mind that the target

audience and methodology of each study is different.

First we will divide the respondents in 4 different groups. The Figure 16 shows the

percentage of companies using the PPH and Patent Law Firms that indicate the use of

PPH to its users. We observed that 57% of companies use the PPH and 78% of Patent

70%

40%35%

23%

0%

10%

20%

30%

40%

50%

60%

70%

80%

90%

100%

None of our patent applications seek early registration in the U.S.

Heavier procedural burdens Heavier monetary burdens caused by PPH applications

The burdens of managing PPH applications separately

f rom regular applications

Reasons from non-user of the JPO-USPTO PPH

Page: 36


Law Firms PPH indicate it to their customers. This number is bigger than the results

showed in the IIP survey in 2010, where only 15% of companies used the PPH. The target

companies‘ size may explain this difference between the results.

Figure 16: graph of companies’ behavior on using the PPH and Patent Law firms behavior on recommending it

PPH User Non-user

SME 1 1

Large Company 52 39

Unknown CO. 5 3

Patent Law Firms 32 10

Total 93 53

Table 2: PPH users and non-users

We also can see that 15% of the companies do not use the PPH, because they do not

need to register their patents quickly. This number was significantly lower than in previous

studies, with 49% of non-users saying, "there is the need for accelerated examination" in

the survey done by JIPA of 2007; and 70% of the non-users saying "none of our patent

applications seek early registration in the U.S." in the IIP survey of 2010. The chart

identifies a small group of users who "no longer use the PPH" and "no longer recommend

1%

56%

15%

3%

25%

Q6 (Companies): How often does your company use the PPH?

all patent applications

patent applications that need fast grant

we don't use becase we don't need fast grant

We no longer uses the PPH

We never used the PPH Program.

0% 2%

74%

2%

22%

Q6 - (Patent Firms): How often does your firm recommend the

use of PPH?

To all patent applications.

To most of patent applications

To patent applications that need fast grant.

My of f ice no longer recommends the use of PPH.

My of f ice never recommends the use of PPH Program.

Page: 37


the PPH." This group is not the focus of this work, but we believe it is important understand

why and improve the PPH usability even more in future studies.

Among the small number of non-users, some of them pointed out the reasons why they do

not use the PPH. The main reasons among the Companies are: ―unnecessary or don‘t

need early examination‖ (8x), ―none or a few applications abroad‖ (4x), ―don‘t know or

consider the procedures more complicated than ordinary applications‖ (3x), ―no chance or

don't meet the PPH requirements‖ (2x), ―anticipation of work‖, ―more expensive than

expected‖, ―limitation of scope‖, and under consideration‖. The main reasons among the

patent firms were: ―Higher costs‖ (2x), ―depends on client or no request from clients‖ (2x),

―low effectiveness‖, ―difficult to obtain broad rights‖, ―PPH applications from foreign

companies are not (really) accelerated‖, ―PPH only accelerates Office Action, but it doesn‘t

mean early right obtainment‖, ―At the point of recommending PPH, written opinions have

not been submitted yet‖, and ―haven't studied yet‖.

In order to continue the study, we grouped the companies that use the PPH for "all patent

applications" and for "patent applications that need fast grant" as "PPH user companies".

We grouped the remaining companies as "PPH non-users companies". We also grouped

the patent law firms that recommend PPH to "all patent applications", "most patent

applications‖ and "patent applications that need fast grants as ―PPH user Firms‖ and the

remaining patent law firms as "PPH non-user firms". We show the results in Table 2.

Figure 17: Graph of number of Patent Law Firms per Number of Attorneys

Figure 17 shows the number of patent law firms divided by the number of patent agents.

We can observe that most companies in all ranges recommend the use of the PPH

program, including all patent law firms with more than 30 patent agents. It is important to

0

2

4

6

8

10

1 6 11 21 31 41 51 61 71 81 91 101 not

5 10 20 30 40 50 60 70 80 90 100 or more available

Nu

mb

er

of

Pate

nt

Fir

ms

Number of Attorneys

Number of Patent Firms acording the Number of Attorneys

PPH User Attorneys PPH no-user Attorneys

Page: 38


note that there is a small number of patent law firms that do not recommend the PPH, and

this can create distortion in the results.

Figure 18: Graph of number of Companies per average number of applications from 2007 to 2009

Figure 18 shows the number of companies distributed by the average number of

applications during 2007, 2008 and 2009. We can observe that firms with higher number of

applications are more likely to use the PPH that companies with fewer applications.

Figure 19 shows the number of companies distributed by the technical field in which they

file patent applications. The technical fields cannot be safely correlated with the PPH use

(or not), for two reasons: (a) the number of respondents is relatively small, or (b) the

difference between the results is not significant. We can observe a significant preference

for use in the fields of "chemicals" and "electric appliances".

Figure 19: Graph of number of companies per technical field

0

2

4

6

8

10

12

14

16

18

1 101 201 301 401 501 601 701 801 901 1001 2001 5001 not

100 200 300 400 500 600 700 800 900 1000 2000 5000 or moreavailable

Nu

mb

er

of

Co

mp

an

ies

Average Number of Applications (2007 - 2009)

Number of Companies acording the Number of Applications

PPH User Companies PPH no-user Companies

0

2

4

6

8

10

12

14

Ch

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ical

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Co

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ion

Ele

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Ap

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(2

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Technical Field

Number of Companies acording the Technical Field

PPH User Companies PPH no-user Companies

Page: 39


4.2.1 Backlog awareness and best solutions

In the first question we try to identify the level of dissatisfaction with the JPO delay to make

the examination. Figure 20 shows the degree of satisfaction with the time of the JPO to

grant the patent. If we sum the absolute number, we see that most respondents are

"unsatisfied" or "very unsatisfied". PPH users and Patent Law Firms are a little more

dissatisfied than the others.

Figure 20: Graph of opinion about JPO time to grant a patent

Figure 21: Graph of opinion about how to solve the backlog problem

very satisf ied satisf ied neutral unsatisf iedvery

unsatisf ied

PPH-User Companies 1.72% 20.69% 36.21% 36.21% 5.17%

PPH-User Firms 0.00% 15.63% 31.25% 46.88% 3.13%

Non-User Companies 0.00% 16.28% 55.81% 25.58% 0.00%

Non-User Firms 0.00% 10.00% 30.00% 60.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q1: Are you satisfied with the JPO time to grant a patent?

0

20

40

60

80

100

1 2 3 4 5

Q4 (Companies): What solutions should the Patent Offices take to

tackle the Backlog problem?

International agreements like PCT and PPH

Share prior-art and examination information

Outsource (e.g. prior art, classif ication...)

Of f ices accept patent without examination

Hire more patent examiners

0

10

20

30

40

1 2 3 4 5

Q4 (Patent Firms): What solutions should the Patent Office take to

tackle the Backlog problem?

International agreements like PCT and PPH

Share prior-art and examination information

Outsource (e.g. prior art, classif ication...)

Of f ices accept patent without examination

Hire more patent examiners

Page: 40


The second question is related with possible solutions to solve the backlog problem. It is

well-known that the backlog is an issue in almost every patent office. The participants were

asked to put the solutions in the order they consider Patent Offices should act (the best

solution is the number 1 and the worst is the number 5). Some solutions were extracted

from the background.

Companies and Patent Law Firms have similar points of view, as we can see in Figure 21.

The solutions that appear more often as "best" are those related to "work-sharing"

between PTOs (e.g. "sign international agreements" and "share the prior art and

examination information"). "Outsource" and "accept patent without examination" had an

irregular distribution, but mainly in the rankings 3 and 5. "Hire more patent Examiners"

figures strongly as the option number four.

4.2.2 Awareness about the PPH Program

Figure 22 shows the level of knowledge about the three types of the PPH on the part of

respondents. We can see that the majority of them know the "Paris-route-PPH" and "PCT-

PPH." The rate of PPH awareness in this questionnaire is higher than the rate of 72% from

the IIP survey in 2010. The PPH-MOTTAINAI program is the less known. The number of

participating countries (nine) and the short duration of the agreement (started in July 2011)

may be the main reasons.

Figure 22: Graph of user’s knowledge about PPH types

I Know the PPH (Paris-PHH).

I know the PCT-PPH Program

I know the PPH-MOTTAINAI

Program

I don‘t know the PPH program.

PPH-User Companies 84.48% 94.83% 48.28% 1.72%

PPH-User Firms 96.88% 81.25% 59.38% 3.13%

Non-User Companies 76.74% 65.12% 16.28% 6.98%

Non-User Firms 90.00% 90.00% 50.00% 10.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q5: Do you know the PPH (Patent Prosecution Highway) Program?

Page: 41


In general, the number of attorneys who are aware of the program is larger than the

number of companies, except among PCT-PPH users. The number who is unaware of the

program is small. Strangely, some users of the PPH reported not knowing the program,

although the number was low.

Figure 23 shows the level of satisfaction with the quantity and quality of PPH information

to: (a) companies decide to use the PPH and (b) patent firms that support the client

decision to use it. As we can see, the answers are distributed between "satisfied", "neutral"

and "unsatisfied". There is a predominance of "neutral" for most groups, except for "PPH

non-user patent law firms". Among PPH users, the patent law firms are slightly more

―unsatisfied‖ than the companies. We can highlight that the "non-user patent law firms" are

the ones mainly ―unsatisfied‖ with the amount of information available. The lack of

information may be one reason to reduce the recommendation of the PPH to their clients.

Figure 23: Graph of level of satisfaction with PPH information

Figure 24 shows where respondents seek information about the PPH. We found that the

vast majority of respondents look for information on patent office websites. This should

justify the request for "further fulfilling PPH portal site with statistics" from users of the

survey done by JIPA in 2010. The "non-users" limit their queries to the website more than

others. On the other hand, the "PPH users" search for more information, especially in

magazines, journals, newspapers and news. The demand for information in books and

academic papers is small, as there is perhaps a lack of information existing in these fields.


unsatisf ied


PPH-User Firms 0.00% 21.88% 40.63% 37.50% 0.00%


Non-User Firms 0.00% 10.00% 40.00% 50.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q8: Are you satisfied with the quantity of PPH information to support you (your clients) to take decisions?

Page: 42


Figure 24: Graph of main sources of PPH information

The amount of the "other" response was significant. 6 in 7 patent law firms was "foreign

patent agent" (and the other answer was JPAA). Among companies, 9 in 18 responded

―patent law firms" (with variations between "agent", "association" and "foreign"). Another

source of information for 6 in 18 companies were associations such as JIPA and JBMIA.

Internet searches, lectures, seminars and government publications were also cited as

sources of information. This shows the importance of patent attorneys in the dissemination

and popularization of the PPH program.

Figure 25: Graph of level of satisfaction with the PPH members

Patent of f ice website

booksacademic

papersmagazines /

journalsnews /

newspaper others

PPH-User Companies 91.38% 5.17% 8.62% 31.03% 27.59% 20.69%

PPH-User Firms 96.88% 6.25% 0.00% 0.00% 9.38% 15.63%

Non-User Companies 79.07% 9.30% 2.33% 27.91% 16.28% 18.60%

Non-User Firms 100.00% 0.00% 0.00% 0.00% 10.00% 10.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q9: Where do you obtain information about PPH?


unsatisf ied


PPH-User Firms 0.00% 34.38% 31.25% 34.38% 0.00%


Non-User Firms 0.00% 20.00% 70.00% 10.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q7: Are you satisfied with the PPH members?

Page: 43


At the time of the survey, 24 countries were signatories to a PPH agreement, with the list

including the biggest world economies (both developed and emerging). Figure 25 shows

the degree of satisfaction with this number of countries. We can observe that user opinions

are distributed homogeneously between "satisfied", "neutral" and "dissatisfied". The "non-

users" are largely "neutral". The number of "unsatisfied" with the PPH-signatory countries

remained unchanged when compared with the study done by IIP in 2010. In that study,

31% of respondents said that an important improvement that could be implemented in

PPH was an "increase in the number of PPH-participating countries". The numbers of this

study show that 27.45% of Companies and 29.27% of Patent Law Firms remain

unsatisfied.

Figure 26: Graph of expected behavior if Brazil signs the PPH agreement

Figure 26 shows respondents' opinions about Brazil if it signs the PPH agreement. The

chart attempts to show (a) how much companies expect to increase the number of patent

applications in Brazil, and (b) how much the patent law firms may increase the intensity of

recommendations that their clients file patent applications in the country. We can observe

that between 30% and 40% of companies and patent law firms are neutral about it (this is

the highest absolute number of responses). Many Companies are positive about it, but the

patent law firms users of PPH are the most positive, in increasing the indication of filing

patent applications in Brazil, followed by patent law firms that do not use it. Some non-

users considers "the signing of the agreement" by the PTO as a negative characteristic.

Very positive Positive Neutral Negative Very negative


PPH-User Firms 6.25% 59.38% 31.25% 3.13% 0.00%


Non-User Firms 0.00% 40.00% 40.00% 20.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q11: How much are you positive to file (to recomend your clients to file) application in Brazil, if it signs the PPH Program?

Page: 44


Figure 27: Graph of opinion about the kind of applications accepted as PPH

Although some PPH agreements accept Utility Models applications, currently most of them

accept only patent applications for inventions. Figure 27 shows how important to their

business the respondents consider that other types of patent applications were also

accepted. As we can see, most respondents are "neutral" about this possibility (among

PPH users and non-users). However, some users considered it "bad" or "very bad" that

they could not apply for expedited examination for these applications. This shows that

countries with other types of application can take advantage of this flexibility in the PPH

agreement and include than.

4.2.3 OFF and CUP-Priority

The following questions refer to PPH procedures. As described in the title 0 上の, some

authors point toward considerations about how to take maximum advantage of PPH. Some

authors say that the first step is the choice of OFF. In their opinion, this question must

involve the (a) coverage sought; (b) quality of search/exam authorities; (c) pendency time

for the examination; and (d) subject matter searched (Wernli & Bowley, 2011).

Figure 28 shows how much companies and patent law firms consider the possibility to

choose the OFF that will be good for their business. As we can see, most companies and

patent law firms consider the opportunity ―good‖ or ―very good‖ (in absolute number). The

ratio is bigger among companies than among patent law firms. Several companies and

Very good Good Neutral Bad Very Bad


PPH-User Firms 0.00% 3.13% 62.50% 31.25% 3.13%


Non-User Firms 0.00% 0.00% 60.00% 40.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q18: How much is good for your business that some OSF do not accept some kinds of applications (e.g Utility Models) as PPH applications?

Page: 45


patent law firms are neutral, and a small group considers it a ―bad‖ feature (among non-

user Patent Law firms only 4 consider it ―bad‖).

Figure 28: Graph of opinion about the possibility to choose the OFF

Figure 29: Graph of behavior of first filing

Figure 29 shows (a) where companies are predisposed to file the patent application first

and (b) where patent law firms recommend that their clients file patent applications first.

We can observe that most companies do not use the possibility to choose the OFF and file

its applications mainly in the PTO (country) where its headquarters is located. Patent law



PPH-User Firms 0.00% 50.00% 34.38% 15.63% 0.00%


Non-User Firms 10.00% 20.00% 30.00% 40.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q13 - How much do you consider the possibility to choose the OFF is good for your business?

PTO where the Head Company Office is

PTO where the Head

Patent Firm is

PPH-PTO with faster

examination

PPH-PTO with brodest protection

PPH-PTO with best prior art search

I‘ve never thought

about this

Other

PPH-User Companies 74.14% 0.00% 3.45% 1.72% 5.17% 5.17% 10.34%

PPH-User Firms 28.13% 25.00% 6.25% 6.25% 28.13% 3.13% 0.00%

Non-User Companies 76.74% 0.00% 4.65% 4.65% 4.65% 4.65% 2.33%

Non-User Firms 30.00% 10.00% 10.00% 30.00% 10.00% 0.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q12: Where do you file (recomend to file) the application first (CUP priority) when using the Paris-route PPH or the PCT-PPH?

Page: 46


firms seem more aware of this potential and recommend different locations to their clients.

However, the opinion on what would be the best strategy varies. Patent law firm users

consider the "best prior art search" the most important OFF feature; while "non-users"

consider that the OFF chosen should be the one that grants "the broadest scope" of

protection.

Seven PPH-user companies answered ―other‖. Three of them file the application first in

―the country where the invention was made‖, while the other two file it first ―where the

examination is quick and it has a good quality [at same time]‖. The other answers are ―the

country where our rival has its manufacturing or our target market‖ and ―the country where

we highly need to do business‖. Only one patent Law firm answered ―other‖ as the ―country

where the earliest application can be made or where the clients want to start business at

the earliest timing. It can vary depending on the nationality and language of inventors or

applicants‖. The respondents barely choose the PTO with faster examination.

When comparing Figure 28 and Figure 29, we realize that few companies consider the

possibility to file their patent applications in foreign PTOs, although most of them consider

this a good feature of PPH for their business.

4.2.4 Time to make the first action (OFF x OEE)

Generally speaking, it is necessary to have one or more claims determined as allowable

(or granted) in the OFF (or OEE) before the OSF (or OLE) starts the examination in order

to request the accelerate examination using the PPH framework. Some authors say it is an

issue that prevents applicants from using the PPH, and the solution pointed toward is to

accelerate the examination (Helfgott, 2008). 11% of non-users requested as improvement

―accelerating examinations at JPO‖ in the survey done by JIPA of 2007, and ―shortening

the first action period‖ was requested by users in the survey done by JIPA of 2010.

Nowadays, this feature varies among the PPH agreements, and is changing to two new

concepts. The first involves the recent agreements (e.g. Korea, Denmark, Finland, Austria,

Hungary and Spain) accepting accelerated examination requests even after the

examination has started. The second is the PPH-MOTTAINAI and the PPH 2.0 framework,

wherein the OFF idea was changed to the OEE one. This means that the application does

not need an OFF opinion. The examination made by any PPH-member (including OSF) is

suitable, and allows the applicant to request an examination in any other PPH-member

PTO.

Page: 47


Figure 30: graph of opinion about the importance to accelerate examination in order to fulfill the PPH requirements

Figure 31: graph of behavior on using the accelerated examination in JPO

Figure 30 shows how much the respondents consider it imperative to accelerate the

examination in the JPO (when it is the OFF) in order to it issue the first action before other

PTOs (OSF) begin the examination of related patent applications. As we can see, the

majority of respondents considered the accelerated examination "very important" or

"important" to be able to meet the PPH requirements. This proportion is the same among

users and non-users. This information is important to (a) PTOs that do not have

Very important ImportantIt is the same if you use or not

Not importantNot important

at all


PPH-User Firms 28.13% 68.75% 3.13% 0.00% 0.00%


Non-User Firms 50.00% 40.00% 0.00% 10.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q15: How much is important to accelerate the examination in the JPO to have a positive opinion (or patent granted) before the OLE starts its

examination?

We try/recomend hard to use it.

We try/recomend

to use.Neutral

We try/recomend

to avoid it.

We try/recomend hard to avoid

it.


PPH-User Firms 0.00% 59.38% 28.13% 12.50% 0.00%


Non-User Firms 0.00% 30.00% 30.00% 20.00% 20.00%

0.00%10.00%20.00%30.00%40.00%50.00%60.00%70.00%80.00%90.00%

100.00%

Q2: How often do you try (recomends you client to try) to accelerate the examination at JPO? (not including PPH)

Page: 48


accelerated examination (like Brazil and China), and (b) to users that barely request

expedited examination in the PTO.

Figure 31 shows (a) how often the companies try to accelerate their applications to the

JPO, and (b) how often the patent law firms recommend that customers try to accelerate

applications in JPO. We realize that the accelerated need perceived by users (Figure 30)

is expressed in action. Most PPH users (patent law firms and companies) try (or

recommend trying) to accelerate the applications. Among non-users, the number is

balanced between those who are favorable, neutral or unfavorable toward accelerating

patent applications. (This study is about PPH, not accelerated examination, but we

consider necessary to check why several non-users avoid (or recommend avoiding) trying

the accelerated examination in JPO in future studies this can improve the usability of this

system). A small number of non-users of the patent law firms (two, to be specific) strongly

recommend customers not to accelerate applications in the JPO.

Figure 32: Graph of opinion about the possibility of an OSF be the OEE

As explained before, the PPH-MOTTAINAI and the PPH 2.0 framework changes the idea

from OFF to the OEE. It means it is possible that a foreign PTO (OSF) makes the

examination before the JPO (OFF). Figure 32 shows how much the respondents consider

it relevant to their business. We observed that most respondents do not consider this

feature positive or negative to their business, as long as the examination has quality. The

second option answered "good" possibly because it became possible to accelerate the

Very good

Good Neutral Bad Very Bad

depends on

quality

depends on

broader

scope

others

PPH-User Companies 0.00% 12.07% 1.72% 5.17% 0.00% 65.52% 10.34% 1.72%

PPH-User Firms 3.13% 21.88% 3.13% 12.50% 0.00% 50.00% 9.38% 0.00%

Non-User Companies 2.33% 9.30% 13.95% 9.30% 4.65% 51.16% 4.65% 0.00%

Non-User Firms 0.00% 30.00% 10.00% 30.00% 10.00% 10.00% 10.00% 0.00%

0.00%10.00%20.00%30.00%40.00%50.00%60.00%70.00%80.00%90.00%

100.00%

Q14: How much can be good to your bussiness if a foreign Patent Office (OSF) examines your application before JPO (OFF) under the PPH-

MOTTAINAI Program?

Page: 49


examination in the JPO. 10 (among 40) patent law firm consider it ―bad‖ or ―very bad‖ to

their business.

4.2.5 Period of time to prepare PPH documentation

After a positive opinion about the patentability in the OEE, the applicant needs to prepare

documentation to request the accelerated examination in other PTOs. As described in the

title 3.1 上の, the required documents vary according to the PPH "types ".

Some authors state that the PPH program increases the patent attorney workload before

qualifying (translations, forms, claim corresponding table, amendment claims, etc..), but it

reduces the patent attorneys' workload after the application is accepted as a PPH

application (there are fewer "Reasons reports of Refusal" and ―written opinion reports‖).

Former opinion surveys indicate dissatisfaction of users with regard to the PPH

requirements demanded. 25% of PPH users complained about the ―procedural burden‖ in

the survey done by JIPA in 2007, and "simplifying and easing of procedures" was required

for 79% of users in the same survey. Non-users listed the reason for preventing the use of

PPH as ―the procedural burdens for utilizing the PPH such as drafting PPH request papers

and also different irregular management from the usual processing are required‖ in the

survey done by JIPA of 2010. In the IIP survey of the same year, 53% of PPH users

complained about ―the burden of preparing documents for PPH applications‖ or ―the

burden of making preparations and checking requirements for PPH applications,‖ while

63% of non-users said that the ―heavier procedural burdens‖ or ―the burdens of managing

PPH applications separately from regular applications‖ (23%) may prevent them from

using it.

Figure 33 shows the respondents' opinion about the workload of PPH requests. We

wanted to know the workload difference between the PPH and other applications,

considering the number of countries where the PPH is required. We observed that the

responses were heterogeneous. There is no consensus regarding whether requests for

the PPH add or reduce the workload. Most respondents (in absolute numbers) said "it is

equal." The second option was "it is more burdensome if you file applications in several

countries," (except for patent law firm non-users). When we sum up the results, we realize

that user patent law firms consider it more burdensome than other applications (46.88%)

while user companies are divided between "it is equal" (37.93%) and "it is more

burdensome" (36.21%).

Page: 50


Figure 33: Graph of opinion about the PPH burdens compared to other applications

Figure 34: Graph of opinion about the time to prepare PPH documentation

However, we noticed that the time may be one factor that influences the perception of the

workload. Figure 34 shows the respondents' opinion about the time to prepare the

documentation for PPH. Most respondents considered that the time to prepare the PPH

more burdensome if

you f ile an

application in few (2/3) countries

more burdensome if

you f ile an

application in several

countries

It is equal

less burdensome if

you f ile an


countries

less burdensome if

you f ile an



PPH-User Firms 25.00% 21.88% 31.25% 9.38% 12.50%


Non-User Firms 10.00% 0.00% 50.00% 0.00% 30.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q19: How much burdensome are the PPH procedures compared to other applications?

It is too shortSometimes it is

shortIt is enough

Could be shorter

Could be much more shorter


PPH-User Firms 0.00% 56.25% 40.63% 0.00% 0.00%


Non-User Firms 10.00% 70.00% 10.00% 0.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q16: What do you think about the time to prepare the PPH documentation after a positive opinion (or the patent granted) in the OEE

and before the OLE starts the examination?

Page: 51


documentation after a positive opinion (or the patent granted) in the OEE and before the

OSF starts the examination ―is sometimes short".

4.2.6 Reduction of ―notices of reasons for refusal‖

The OLE examiner is able to read all dossiers from the OEE (including the prior-art search

and the final judgment) and the application is already amended in the OLE. This leads to

several things. First, the patent examiners can learn one from another and the

understanding between then tends to increase. If they start to trust in the other‘s work, it is

possible to have a more homogenous understanding about patentability criteria throughout

the world. Second, the examination burden is expected to be reduced. Third, it is expected

that there will be notices of reasons for refusal. The biggest number of JPO-USPTO PPH

users (38%) said the ―fewer notices of reasons for refusal‖ is the major merit of the

program in the IIP survey of 2010.

Figure 35: Graph of opinions about the homogenous understanding of patentability criteria

A Figure 35 shows how much the respondents consider that a better homogenous

understanding about patentability criteria among examiners is good for their business. We

can see that most consider it a ―good‖ or ―very good‖ PPH feature, mainly among

companies. About 40% of user patent law firms and non-user companies were neutral. A

small absolute number of interviewed answered this is a ―bad‖ or a ―very bad‖ feature.



PPH-User Firms 12.50% 40.63% 37.50% 9.38% 0.00%


Non-User Firms 0.00% 40.00% 20.00% 20.00% 10.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q10: How much do you consider that a better homogenous understanding about the patentability criterias among examier is good

for your business?

Page: 52


4.2.7 Period of time to answer the OLE reports

If the applicant requests accelerated examinations in several OLEs, many OAs that need a

reply may be issued almost at the same time. This can be a problem to the applicant,

because most PTOs have a similar period of time for the attorneys to reply.

Figure 36: Graph of opinion about the time to answer the documentation

Figure 36 shows the "user opinion" about the time to reply to patent examiner reports (e.g.

"Reasons for Refusal"). Like Figure 34 (referring to the Graph of opinion about the time to

prepare PPH ), we believe that time influences the perception of the workload in the use of

PPH. There are a greater number of respondents more concerned with the time to answer

all OLE reports than with the time to prepare the documentation. We can highlight that

40.63% of PPH-user patent firms answered "it is enough" to prepare the documentation

against 15.63% of answers "it is enough" to answer the OLE report. Among companies,

the reduction was from 22.41% to 13.79%. We also can see that most respondents

considered that this period of time "is too short" and "sometimes is short" - and that all

patent law firms that do not use the PPH take this position. This may indicate one reason

why they do not use the system.

4.2.8 Examiner Independency

International agreements guarantee independence to each country in deciding whether to

grant a patent or not. The PPH does not modify this attribute. Once each country is

independent to decide to grant a patent (or not), the claim scope may vary among the

It is too shortSometimes it is

shortIt is enough

Could be shorter

Could be much more shorter


PPH-User Firms 6.25% 75.00% 15.63% 0.00% 0.00%


Non-User Firms 10.00% 80.00% 0.00% 0.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q22: What is your opinion about the period of time to respond the Patent Examiner’s Reports if you accelerate the examination in several OLE?

Page: 53


PTOs. ―It is noted that the OSF [OLE] is not compelled to accept the opinion of the OFF

[OEE] and that the OSF [OLE] is solely responsible for it‘s granting of patent rights. In

other words, the patent [of later examination] usually conducts an additional search and

examination according to its examination guidelines6‖ (Ono & Ueda, 2009).

However, 10% of non-users have criticized the ―differences in examination level and

criteria‖ in the survey done by JIPA in 2007, with 8% of non-users requesting to ―reduce

negative effects of difference examination level and criteria‖ as a PPH improvement. In the

IIP survey in 2010, 19% of the PPH users think that ―the scope of the patent granted in the

U.S. is often the same as or narrower than that of the patent granted in Japan‖ may

prevent other companies from using the program. This is also an issue in Brazil. Several

groups, representing Brazilian entities, said that the PPH agreement will seriously affect

Brazilian examiners‘ independence because they would be pressured not to redo prior-art

search (Simões, 2011).

Figure 37: Graph of opinion about the variation of the granted claim scope

Figure 37 shows how much respondents consider it good or bad for their business. We

observed that the largest ratio of respondents is "neutral" to this feature. However, a large

number of them consider this characteristic "bad" or "very bad" to their business,

especially among companies that use the PPH (62.07%). This information may not prevent

companies and patent law firms from using the PPH, because it is a PPH feature itself.

6 The authors changed the words OFF for OEE; and OSF for OLE.



PPH-User Firms 0.00% 18.75% 50.00% 25.00% 6.25%


Non-User Firms 0.00% 20.00% 50.00% 30.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q23: How much is it good to your business that the granted claims scope may vary among offices?

Page: 54


Moreover, this information may generate misunderstandings if taken separately. Therefore,

it is necessary to compare it with the results of Figure 38 and Figure 39.

Figure 38: graph of opinion about the foreign examiner independence when JPO is the OEE

Figure 39: graph of opinion about the JPO examiner independence when the foreign PTO is the OEE

Figure 38 shows the opinion of the respondents if the foreign examiners must keep its

independence to grant (or not) the patent when JPO is the OEE. On the other hand, Figure

39 shows the result for the situation in which JPO is the OLE and (a) a company

Strongly agree Agree Neutral Don‘t agree.Strongly disagree.


PPH-User Firms 15.63% 46.88% 18.75% 15.63% 0.00%


Non-User Firms 30.00% 20.00% 30.00% 20.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q25: When JPO is the OEE, do you think OLE examiner must keep its independence to grant (or not) the patent?

Strongly agree Agree Neutral Don‘t agree.Strongly disagree.


PPH-User Firms 15.63% 59.38% 21.88% 3.13% 0.00%


Non-User Firms 30.00% 30.00% 30.00% 10.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q28: When your foreing competitor (partner attorney) uses the PPH and request an accelerated examination at JPO, do you think the patent

examiner must keep its independence to grant or refuse the patent?

Page: 55


competitor is requesting PPH in JPO or (b) a foreign patent agent (partner from of the

Japanese Patent Law Firm) is requesting PPH in the JPO.

We can observe that the largest number of respondents "strongly agree" or "agree" that

the OLE patent examiner must keep its independence. This pattern is more intense

between the patent law firms in most cases. Many respondents, especially companies, are

"neutral". A few respondents (less than 20%) "do not agree" or "strongly disagree" about it

inside each group. This pattern is repeated in both cases (when the JPO is the OEE and

when it is the OLE).

We can conclude that companies and patent law firms do not consider it ―ideal‖ for their

business, but they do believe that patent examiners must keep their independence to

decide to grant (or not) the patent when any PTO is the OLE.

4.2.9 Examination Quality / Patent Quality

In 2007, the Survey done by JIPA showed that 25% of PPH users considered the ―issue of

quality‖ as a PPH disadvantage, while 5% considered the ―enhanced quality‖ as a PPH

advantage. The quality is also a concern for several groups representing Brazilian entities.

They say the examination quality is expected to run down in Brazil because the

patentability criteria are different among countries (Simões, 2011).

Figure 40: Graph of opinion about the examination quality in a foreign PTO when JPO is the OEE

Quality will increase greatly

Quality will increase

No dif ference.Quality will decrease

Quality will decrease greatly.


PPH-User Firms 0.00% 62.50% 28.13% 6.25% 0.00%


Non-User Firms 0.00% 30.00% 60.00% 0.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q24: When JPO is the OEE, how do you think will the quality of the PPH applications change in the OSF?

Page: 56


Figure 40 shows the respondents' opinion about the quality of the examination in a foreign

OLE when the JPO is the OEE. On the other hand, Figure 41 shows the result when a

foreign PTO is OEE and JPO is OLE.

Figure 41: Graph of opinion about the examination quality in JPO when a foreign PTO is the OEE

When compared to the Survey done by JIPA in 2007, we observed that the opinion of

respondents about the quality has changed considerably. The largest number of

respondents believed there will be no difference in the quality of the examination. However,

there are now a greater number of opinions that the "quality will increase" than the "quality

will decrease" when compared to the previous survey. The view that the quality will

improve is more pronounced among users, especially among patent law firms. The

number of respondents who believe that "quality will decrease" is between the range of 4%

and 12%. These opinions are suitable for both cases (when the JPO or a foreign PTO is

the OLE).

Comparing the graphs, we can observe that a greater number of respondents believe the

quality will increase in foreign PTO when the JPO is the OEE than when the JPO is the

OLE. In this second case, most respondents believed the examination quality will have ―no

difference‖.

Quality will increase greatly

Quality will increase

No dif ference.Quality will decrease

Quality will decrease greatly.


PPH-User Firms 0.00% 31.25% 59.38% 9.38% 0.00%


Non-User Firms 0.00% 10.00% 70.00% 20.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q29: What do you think about the examination quality in JPO when it is the OLE?

Page: 57


4.2.10 Period of time to have the patent granted

There are several benefits to accelerating the examination. It (a) mitigates the backlog

problem to business that needs the patent granted to happened, (b) allows the applicant to

build a fast portfolio (Wernli & Bowley, 2011), and (c) enhances the work-sharing because

it (d) allows the OEE to provide the prior art search and examination results faster to the

OLE (JPO, 2011). 35% of PPH users said that have an ―accelerated patent grants‖ is a

PPH advantage in the Survey done by JIPA in 2010, while ―early patent registration in the

U.S‖ was the second more ranked merit of PPH in the users point of view according to the

IIP survey in 2010 (35%) (Nagano, 2010).

Figure 42: Graph of opinion about the time to have a patent granted in several countries

Figure 42 shows the responders‘ opinion about how good it is for their business to be able

to have the patent granted faster and almost at the same time in several countries. The

absolute number of respondents who consider this characteristic of PPH "good" is similar

to those that consider it "neutral." However, the number of companies using the PPH who

consider it "very good" or "good" is superior to the others (75.86%). A low absolute number

of patent law firms see this feature as "bad" for their business.

If we compare the results of Figure 42 and Figure 20 (Graph of opinion about JPO time to

grant a patent) with the results of Figure 31 (graph of behavior on using the accelerated

examination in JPO), we can observe that there is a greater number of PPH users that

often try to accelerate (or are often recommended to accelerate) the applications in the



PPH-User Firms 0.00% 43.75% 50.00% 6.25% 0.00%


Non-User Firms 0.00% 30.00% 60.00% 10.00% 0.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q17: How much is it good to your business to be able to have the patent granted faster and almost at the same time in several countries?

Page: 58


JPO than the number of respondents who declared themselves as "dissatisfied" with the

time of the JPO to grant a patent. This indicates that there may be other reasons to

accelerate the application in JPO except the dissatisfaction with the delay. One reason

may be the need to accelerate the examination in order to fulfill the PPH requirements.

Figure 43: Graph of behavior on using the accelerated examination abroad (except the PPH)

Figure 43 shows (a) how much companies try accelerate their applications in PTOs abroad

and (b) how much the Patent Law Firms recommend it to their customers. We found that

almost 70% of companies – whether users of PPH or not – try to accelerate their

applications. This number is much higher than the patent law firms that recommend it.

Patent law firm users of the PPH tend to be more "neutral" in regard to accelerating

applications abroad. They probably consider the PPH a better option or they allow their

customers to make that choice. Among the patent law firm non-users of the PPH, the

answers were distributed. A further study could be done to discover why some "users of

the PPH" seek to avoid expedite the examination in PTOs abroad.

We can make another statement when we combine the data from companies trying to

accelerate applications abroad (Figure 43) and companies that use the PPH (Figure 16).

We observed that 13.73% of companies and 2.94% of the firms try to patent (or

recommend) to accelerate their applications abroad, but not via the PPH. The reasons

given by these companies were: ―unnecessary‖ (2x), ―no chance or the application doesn‘t

meet the PPH requirements in many cases‖ (2x), ―we don't apply overseas‖ and ―we are

We try/recomend hard to use it.

We try/recomend

to use.Neutral

We try/recomend

to avoid it.

We try/recomend hard to avoid

it.


PPH-User Firms 0.00% 37.50% 53.13% 9.38% 0.00%


Non-User Firms 10.00% 20.00% 30.00% 30.00% 10.00%

0.00%10.00%20.00%30.00%40.00%50.00%60.00%70.00%80.00%90.00%

100.00%

Q3: How often do you try (recoments your client to try) to accelerate the applications abroad? (any except PPH)

Page: 59


considering the use of the PPH‖. The reasons given by these patent law firms were: ―the

PPH only accelerates the office actions, but it doesn‘t mean early right obtainment‖, ―the

effectiveness is low‖ and ―at the point of recommending the PPH, written opinions have not

been submitted yet‖.

When comparing Figure 43 with Figure 42, we can see that there is a similar ratio between

companies that consider a faster patent registration good to their business and the ratio of

companies that try to accelerate applications abroad. (They are almost the same). We also

can see that many patent law firms consider a faster grant good for their business, but

they probably leave this decision to their customers.

4.2.11 General opinion about costs

The opinion about the "cost of PPH" is not clear in the background, mainly when we

compare it with other applications. In the survey done by JICA in 2007, 20% of companies

using the PPH said "reduced expenses" is an advantage of PPH. In the same survey,

another 35% of users said that the ―burden expenses‖ is a disadvantage of using the PPH,

and 22% of non-users requested a ―simplifying of procedures and increasing cost-

effectiveness‖. In the survey done by IIP in 2010, the ratio of users that complained about

the ―higher application costs‖ was 17%.

Figure 44: Graph of opinion about the PPH costs compared to other applications

more expensive if you f ile an


more expensive if you f ile an


countries

It is equal

cheaper you f ile an

application in

several countries

cheaper if you f ile an

applications in

few (2/3) countries


PPH-User Firms 25.00% 21.88% 21.88% 18.75% 12.50%


Non-User Firms 20.00% 10.00% 20.00% 0.00% 40.00%

0.00%

10.00%

20.00%

30.00%

40.00%

50.00%

60.00%

70.00%

80.00%

90.00%

100.00%

Q20: How much does it cost the PPH procedures compared to other applications?

Page: 60


Figure 45: Graph of opinion about the PPH costs

Figure 44 shows the respondents' opinions on the cost difference of "PPH patent

applications" compared with others, related to the number of countries in which the

applicant requests the use of the PPH. We observed that the responses were quite

heterogeneous and that there is still no consensus whether the PPH applications add or

reduce costs. Most respondents (in absolute numbers) said "it is equal." However, the

difference for the second response ("it is more expensive if you file an application in

several countries") is very small.

When we compare the sum of the respondents 'answers which consider the PPH requests

PPH more expensive than others with the sum of the respondents' answers which

consider it cheaper, we found that most companies and patent law firms and that use the

PPH believe that these applications are more expensive than the others (39.65% of

companies and 46.88% of patent law firms). On the other hand, most PPH non-users

believe PPH applications are cheaper than others.

Figure 45 shows the opinion of the respondents about the PPH requirement costs for

accelerating its application in the OLE. The procedures cited as the most expensive are

"translation of documents" and "preparing a corresponding claim table." These two

requirements are also the most cited in third place. Most of respondents asserted that

"amending all claims in the OLE" are the second most expensive requisite among others.

0

20

40

60

80

100

1 2 3 4 5

Q21 (Companies): What increases most the procedural costs?

Amending all claims for the OLE

Translation of documents

Preparing corresponding claim tables

Filling out forms

Other

0

10

20

30

40

1 2 3 4 5

Q21 (Patent Firms): What increases most the procedural

costs?

Amending all claims for the OLE

Translation of documents

Preparing corresponding claim tables

Filling out forms

Other

Page: 61


On the other hand, we see in the title 3.1 上の that several Patent Office signatory of PPH

agreement do not required the ―copy of claims and its translations‖, nor ―the copy of the

OFF actions and its translation‖ if one (or both) documents are provided by Dossier Access

System. Moreover, the applicant will have to amend the claims in the OLE to answer its

OA with or without the use of PPH. It means, the only requirement different of ―other

applications‖ is the ―preparation of the corresponding claim table‖ in most PPH agreements.

There were a considerable number of responses as "others." The companies cited:

―sometimes the cost doesn't increase‖, ―nothing‖, ―cost of agent‖, ―cost to send documents

overseas‖, and ―there is no big difference when compared to the case of not using PPH‖.

The patent firm said ―expense charge for attorney‖, ―porting fee‖, ―paperwork‖, ―cost for

consulting with applicants about the usage of PPH ‖, and ― documentary search‖.

4.3 Statistical analysis

4.3.1 Pearson's Correlation between answers from two different questions

We have identified similar behavior between the answers to some questions (person

correlation) through statistical study with the aid of a computer. In the follow-up study, we

present the results and seek some possible explanations for the relation (StatSoft, 2011).

We have selected questions whose results have a correlation greater than 0.4 to

companies and patent law firms. The correlation result for companies is shown in Table 4

and for patent law firms in Table 5. We show the question‘s core in the Table 3.

Question Main idea of the question

QEN02 accelerate application at JPO (except PPH)

QEN03 accelerate the examination abroad (except for PPH)

QEN08 satisfaction with the quantity of PPH information

QEN10 more homogenous patentability criteria

QEN14 foreign PTO (OSF) examines before the JPO

QEN17 choose the timing to have the patent world-wide

QEN26 predictability of acquiring a patent becomes higher

QEN29 patent quality in JPO when it is the OLE

Table 3: core of questions

Most answers do not present a significant correlation with the responses to other

questions. In others, the correlation is significant only for one group of respondents

(companies or patent law firms). However, some responses to questions show a significant

correlation with response to another question in both groups.

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There are two sets of questions wherein the answers have a strong correlation to each

other in both groups. One set is formed by questions 2, 3 and 11 and the other question by

questions 25 and 28.

QEN02 QEN03 QEN07 QEN08 QEN10 QEN14 QEN25

QEN03 .731**

QEN11 .445** .500**

.451**

QEN14

QEN15

QEN17

QEN27

.403**

QEN28

.613**

Table 4: correlation between companies’ questions

QAT02 QAT03 QAT07 QAT08 QAT10 QAT14 QAT25

QAT03 .797**

QAT11 .499** .436**

QAT14

.463**

QAT15

-.459**

QAT17

-.408**

.550**

QAT27

QAT28

.614**

Table 5: correlation between Patent Law Firms’ questions

Question 2 is related to how often companies try to use (or patent law firms recommend

their clients to try to use) the accelerated system in JPO, except the PPH. Question 3 is

related to how often they try (or recommend to try) to accelerate the examination abroad,

except for the PPH. And question 11 is related to how much they are positive toward filing

an application in Brazil, if the country signs the PPH agreement. We can conclude that the

companies and patent law firms that tend to accelerate their applications to the JPO and

abroad (except the PPH) are the same who want Brazil to sign the PPH agreement. We

can suppose that these companies will try to accelerate applications (or client applications)

in Brazil as well.

Questions 25 and 28 are related with the opinion that the OLE patent examiner must keep

its independence to grant or refuse the patent. In the first case, if the applicant requests

the PPH abroad and JPO is the OEE, and in the second case if a foreign competitor

company requests the PPH and JPO is the OLE. We can conclude that these respondents

have the same criteria in both cases.

Page: 63


There are responses related to other questions‘ responses found only in the companies‘

answers. The correlation between the answers to questions 10 and 11, 10 and 27 (but not

between 11 and 27) was high among the companies. These correlations are positive.

Question 10 is related to how much the respondent (a company, in this case) considers

good to its business more homogenous patentability criteria in the world. Question 11 is

related to Brazil, as described above. And question 27 is related to the reduction of costs

in foreign prosecution. Companies that consider a better understanding about patentability

criteria are the one that are positive toward Brazil signing the PPH agreement. One reason

may be because they believe Brazil will also have a better standard. They also consider

that they will reduce their costs with prosecution abroad, probably for the same reason of

standard, but in any foreign PTO.

There are responses related to other questions‘ responses found only among patent law

firms‘ answers. The correlation between the answers to questions 10 and 14, 14 and 17,

17 and 8 (but not between 10 and 17, 10 and 8, 14 and 8) and between 7 and 15 was high

among the patent law firms. The correlation between the answers to questions 8 and 17, 7

and 15 are negative.

Question 8 concerns related to the level of satisfaction with the PPH information, question

10 is about the homogeneous understanding regarding patentability criteria (as described

above), question 14 is related to how much the respondent considers good to its business

if a foreign PTO makes the examination first to JPO under the PPH-MOTTAINAI

framework, and question 17 asks respondents‘ opinion how good it is for business to have

patents granted world-wide almost at the same time (not instantaneous).

We can conclude that patent law firms that consider a better understanding about

patentability criteria are almost the same that consider it good for business when a foreign

PTO makes the examination before JPO under the PPH-MOTTAINAI framework. One

reason may be because they believe the quality will be the same and will improve with

PPH.

This second group of respondents, which considers it good if the OSF makes the

examination, are also the same that believe it is good for business to have their client‘s

patent granted worldwide almost at the same time (not instantaneously). One reason may

be because the PPH-MOTTAINAI is a multilateral (not bilateral) agreement with eight

Page: 64


countries (at the survey time), which allows accelerated granting of applications after any

PTO makes an examination (not only the OFF).

On the other hand, the members of this last group (which considers it good if a patent is

granted faster and worldwide) correspond to the Patent Law Firms who are unsatisfied

with the PPH information. One reason may be because some of their clients do not use

the PPH due to the lack of information, and they need more information to support their

clients‘ decision.

Question 7 is related to the number of PPH signatory countries, while question 15 is

related to how much is necessary to accelerate the examination in order to be able to fulfill

the PPH requirements. The respondents who consider accelerated applications important

are the ones who are unsatisfied with the number of PPH PTOs. One reason may be

because the JPO has an efficiently accelerated system and they can include more

countries to use the PPH.

4.3.2 Factor analysis

We decided to use the factor analysis method to parse the several variables from the

respondents‘ opinions. The quest is to find the underlying constructs or factors that explain

the changes among several variables. The main application of the factor analysis

technique in this study is to detect a structure in the relationship between variables, that is,

to classify the variables. We chose the number of factors based in the ―major factor

method‖ using the ―scree test‖ (StatSoft, 2011).

factor total variance (%)

cumulative (%)

total Variance (%)

Cumulative (%)

1 3.745 18.724 18.724 2.282 11.408 11.408

2 1.977 9.886 28.610 1.782 8.910 20.318

3 1.807 9.036 37.646 1.407 7.037 27.355

4 1.706 8.530 46.175 1.158 5.789 33.144

5 1.313 6.566 52.742 1.096 5.480 38.624

6 1.140 5.699 58.440 0.948 4.739 43.363

Table 6: Factor extraction from companies’ opinions (major factor method)

For the companies group, we decided to use six factors demonstrated in Table 6 with its

variance. According to the main idea of each question, we can try to grasp and rank the

companies‘ major needs and concerns related to PPH. The results are shown in Table 7.

As we can see, the influence of factor 1 is the largest; of factors 2, 3 and 4 is similar; and

of factors 5 and 6 is also similar, but small.

Page: 65


Among the companies, the need to acquire application results as soon as possible and in

many countries is very high. The respondents that try to accelerate application

examination (in the JPO and abroad) are the same that are positive toward Brazil signing

the PPH agreement, and they are unsatisfied with the number of PPH members. They are

also positive about the possibility of a foreign PTO (OSF) making the examination before

the JPO under the PPH-MOTTAINAI—likely because they will be able to accelerate

applications in the JPO.

Main factor Quest. Main idea of the question

1 - Needs to get results as soon as possible in many countries

QEN03 0.841 accelerate the examination abroad (except for PPH)

QEN02 0.790 accelerate application at JPO (except PPH)

QEN11 0.530 behavior if brazil sign the PPH agreement

QEN07 -0.459 satisfied with the number of PPH members

QEN14 0.261 foreign PTO (OSF) examines before the JPO

2 - workload and expenses

QEN10 0.599 more homogenous patentability criteria

QEN26 0.592 predictability of acquiring a patent becomes higher

QEN27 0.586 PPH reduce costs in foreign prosecution

QEN18 -0.387 some kinds of applications are not accepted in PPH

QEN23 -0.384 the granted claims scope may vary among offices

QEN17 0.370 choose the timing to have the patent world-wide

QEN15 0.230 need of accelerate examination in the OEE

3 - Examiner’s independence

QEN28 0.823 JPO‘S examiner independence in when it is the OLE

QEN25 0.701 foreign OLE examiner independence

4 - Needs of quality

QEN29 0.863 patent quality in JPO when it is the OLE

QEN24 0.432 patent quality in foreign PTO when it is the OLE

5 - Flexibility and option of choice

QEN13 0.814 PPH possibility to choose the OFF

QEN30 0.306 foreign competitors accelerates the examination in JPO

6 - Information QEN08 0.541 satisfaction with the quantity of PPH information

QEN01 0.353 Satisfaction with JPO time to grant a patent

Rotation method: Kaiser (VARIMAX method with Kaiser's normalization) Rotation converged after 8 times iteration

Table 7: Companies’ main factor matrix results after rotating

The second is related to workload and expenses. Companies want more homogenous

patentability criteria worldwide, because the predictability of acquiring a patent will become

higher and they will reduce its costs with foreign prosecution. This is also the reason they

are unsatisfied that the granted claims scope may vary among offices. The companies

know they need to accelerate examination in the JPO (OEE) in order to be able to choose

the timing to have the patent granted worldwide.

On the other hand, the companies consider that patent examiners must be independent

with regard whether or not to grant a patent when using the PPH abroad, and when a

Page: 66


foreign competitor uses the PPH in the JPO. Companies also believe the patent quality

may increase when using the PPH.

Factors 5 and 6 are miscellaneous. The fifth is related to flexibility to choose the OFF

(OEE), but concerns about the possibility of a foreign competitor also take advantage of

PPH in the JPO. The sixth is related to the level of satisfaction with PPH information, and

with the JPO time to grant a patent.

To the patent firm group, we decided to use the seven factors demonstrated in the Table 8

with its variance. Just like before, we can try to grasp and rank the main patent firm needs

and concerns related to PPH while observing the main idea of each question. The results

are shown in Table 9. As we can see, the influence of factor 1 is the largest, but not so

much so than factor 2; of factors 3 and 4 is similar; of factors 5 and 6 is also similar, but

small and not so much larger than factor 7.

factor total variance

(%) cumulative

(%) total

Variance (%)

Cumulative (%)

1 3.225 16.972 16.972 2.106 11.083 11.083

2 2.704 14.234 31.206 1.924 10.125 21.208

3 2.077 10.934 42.140 1.861 9.794 31.002

4 1.933 10.173 52.313 1.581 8.320 39.322

5 1.637 8.614 60.927 1.552 8.168 47.489

6 1.345 7.078 68.005 1.281 6.743 54.233

7 1.049 5.522 73.526 1.108 5.831 60.064

Table 8: Factor extraction from Patent Law Firms’ opinions (major factor method)

Among patent law firms, the need to acquire results for the application as soon as possible

is the highest (the same as the companies). The respondents that try to accelerate their

application examinations (in the JPO and abroad) are the same that are positive toward

Brazil signing the PPH agreement.

The second group is different when compare to the Companies‘ one. The questions are

related to the PPH options. The same respondents that consider the possibility to choose

the OFF good for their business also consider it positive when a foreign office makes the

examination before the JPO (although this is dependent on quality, as we see in the title of

4.2.3 上の). Moreover, they consider the good to business the ability to choose the ―timing‖

to have the patent granted worldwide and that higher predictability of allowance. This likely

shows that patent law firms believe the PPH program provides several alternatives that

Page: 67


they can offer to their clients. This allows patent law firms to create a more personal

strategy for companies and offer a better service.

Main factor Quest. Main idea of the question

1 - Needs to get results as soon as possible

QAT03 0.820 accelerate the examination abroad (except for PPH)

QAT02 0.704 accelerate application at JPO (except PPH)

QAT11 0.663 behavior if brazil sign the PPH agreement

2 - Flexibility and multiple possibilities

QAT14 0.922 foreign PTO (OSF) examines before the JPO

QAT17 0.629 choose the timing to have the patent world-wide

QAT13 0.492 PPH possibility to choose the OFF

QAT26 0.285 predictability of acquiring a patent becomes higher

3 - Examiner’s independence

QAT28 0.848 JPO‘S examiner independence in when it is the OLE

QAT25 0.680 foreign OLE examiner independence

QAT01 -0.492 JPO time to grant a patent

4 - Options and support to clients

QAT08 0.910 satisfaction with the quantity of PPH information

QAT07 0.391 satisfied with the number of PPH members

5 - Homogeneous patentability criteria

QAT23 0.856 the granted claims scope may vary among offices

QAT18 0.483 some kinds of applications are not accepted in PPH

QAT10 -0.482 more homogenous patentability criteria

6 - Profits and burdensome

QAT27 0.672 PPH reduce costs in foreign prosecution

QAT15 -0.524 need of accelerate examination in the OEE

7 - Patent Quality QAT24 0.614 patent quality in foreign PTO when it is the OLE

QAT29 0.556 patent quality in JPO when it is the OLE

Rotation method: Kaiser (VARIMAX method with Kaiser's normalization) Rotation converged after 10 times iteration

Table 9: Patent Law Firms’ main factor matrix results after rotating

Patent examiners‘ independence has the same rank among patent law firms and

companies, and both groups agree that the examiners must be independent regarding

whether or not to grant a patent when using the PPH abroad, and when a foreign

competitor uses the PPH in the JPO. On the other hand, patent law firms likely know that

examiner independence may affect the time JPO takes to grant a patent. Patent law firms

also believe that patent quality may increase when using the PPH, but it is rank 7 (and not

4 as among the companies).

The fourth group is also related to the possibility to offer better service to clients. We can

see that the companies that are satisfied with the quantity of PPH information are also

satisfied with the number of PPH members (actually, most patent firms are neutral about

this, as we saw in the title 4.2.2 (Awareness about the PPH Program).

The fifth group is related to the harmonization of the patent system. We can imagine that

patent law firms which consider more homogenous patentability criteria good to their

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business, also consider it bad if the granted claims scope variation among PTOs. The sixth

is related to profits and workload. Patent law firms believe that the PPH reduces costs

associated with foreign prosecution, and consider burdensome the need to accelerate

examination in the OEE.

4.3.3 Multiple Regression Analysis

The purpose for multiple regression in this study is to learn more about the relationship

between several independent (or predictor) variables and a dependent (or criterion)

variable (StatSoft, 2011). We define as the dependent variable the first question posed to

both groups (companies and patent law firms). Question 1 measures the level of

satisfaction with the JPO‘s time to grant a patent (in other words, non-satisfaction with the

JPO backlog).

The independent variables considered more relevant to the companies study are

described in Table 10, and to the patent law firms in Table 11. We can see that among

patent law firms, the regression coefficients (B) are larger to companies. This means that

the patent firms‘ results have more significance.

Question number

Main idea of the question B Dependent

variable

QEN03 accelerate the examination abroad (except PPH) -0.281

QEN01 – satisfaction whit

JPO time to grant a patent

t-sig. 0.113

QEN10 more homogenous patentability criteria 0.246

t-sig. 0.137

QEN14 foreign PTO (OSF) examines before the JPO 0.260

t-sig. 0.098

QEN26 predictability of acquiring a patent becomes higher

0.358

t-sig. 0.041

QEN29 patent quality in JPO when it is the OLE -0.289

t-sig. 0.087

Table 10: Variables related to companies’ opinions about the JPO backlog

The Multiple Regression Analysis results companies were not very conclusive. According

to it, companies unsatisfied7 with the JPO time to grant a patent are the same that try

more often to accelerate the examination abroad (any except PPH). They judge that a

more homogeneous patentability criteria, the increase in the predictability of acquiring a

patent, and the possibility that a foreign PTO examines its patent before, as being bad for

business. They also believe the patent quality in JPO will improve when it is the OLE.

7 We wrote the entire sentence in the negative form in order to make understanding easier.

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The best predictor of how much companies are satisfied with the JPO time to grant a

patent is the level of importance that a higher predictability of acquiring a patent has to its

business. This variable is emphasized by the bigger homogenous patentability criteria

(also listed). The second predictor is the companies‘ belief in the poor quality of a JPO

patent when it is the OLE.

number Main idea of the question B Dependent

variable

QAT02 accelerate application at JPO (except PPH) -0.74

QEN01 – satisfaction whit

JPO time to grant a patent

t-sig. 0.057

QAT03 accelerate the examination abroad (except for PPH)

0.944 t-sig. 0.048

QAT08 satisfaction with the quantity of PPH information 0.689

t-sig. 0.021

QAT10 more homogenous patentability criteria 0.648 t-sig. 0.019

QAT14 foreign PTO (OSF) examines before the JPO -0.839 t-sig. 0.015

QAT17 choose the timing to have the patent world-wide 0.925 t-sig. 0.023

Table 11: Variables related to patent law firms’ opinions about the JPO backlog

The results of the Multiple Regression Analysis to patent law firms were not very

conclusive too. According to the results, Patent Law Firms unsatisfied8 with JPO time to

grant a patent try more to accelerate examination in the JPO, but not abroad (any except

PPH). They judge that more homogeneous patentability criteria and the possibility to

choose the ―timing‖ to have the patent granted worldwide are not good for business.

However, the possibility that a foreign PTO makes the examination before JPO is

considered good. Patent law firms that are unsatisfied with the PPH information are also

unsatisfied with the JPO backlog.

The best predictor of how much patent law firms are satisfied with the JPO time to grant a

patent is the level of recommendation to its clients to accelerate the examination abroad

(except the PPH). The second predictor is how much patent law firms consider good for

business the possibility to choose the timing to have the patent granted worldwide almost

at the same time.

8 We wrote the entire sentence in the negative form in order to make understanding easier.

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5. CONCLUSIONS

This research has succeeded to achieve its main objective. The questions varied slightly

between companies and patent law firms. On the other hand, the core of the questions

was the same, and the added explanations helped the interpretation of the respondents—

thereby allowing us to compare the results. The comparison made with the background

showed that the users‘ and non-users‘ opinions about the PPH is changing together with

the PPH program itself.

The questionnaire survey allowed us (a) to grasp applicants‘ and attorneys‘ opinions

attorneys opinion about the delay in office actions, and how to tackle the problem; (b) to

check the knowledge and usability of PPH on the part of companies and patent law firms;

(c) to understand how the stakeholders use the ―PPH types‖; (d) to understand the level of

relevance of some PPH features to stakeholders‘ business; (e) to check the possibility that

some PPH ―steps‖ could prevent the stakeholder to use it; and (f) to understand

stakeholders‘ opinions about certain features when a foreign company or firm requests the

PPH in the JPO.

We also grasped the stakeholders‘ ―behavior‖ when comparing the SPSS® results. We

related the respondents‘ answers from two different questions, and also identified the

possible reason. We could parsimony several variables and underlying constructs or

factors in order to better explain each variation, and we believe this ranks the main need

for each stakeholder. However, the results of the Multiple Regression Analysis were not

conclusive.

We believe that we now have a better understanding of users‘ point of view about the PPH

opportunities and issues, and that future studies can improve its usability. We wrote above

a summary and an overview of the main conclusions.

Many companies and patent law firms consider it good for business to have a patent

granted quickly, and most of them are unsatisfied with the delay of JPO in granting patents.

Both PPH-user stakeholders have similar point of view about the solutions to solve the

backlog problem. Most of the answers were related to "work-sharing" between PTOs (e.g.

"sign international agreements" and "share the prior art and examination information");

while independent PTO solutions ranked among the worst solutions (e.g. "hire more patent

examiners").

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Large companies with high number of applications use the PPH Program more, and the

larger patent law firms with more employees recommend it more to their clients than

others. However, this study could not relate companies that use more (or less) the PPH

within a specific technical field.

The level of PPH awareness was high among the respondents, particularly patent law

firms. The better-known PPH ―types‖ are the "Paris-route-PPH" and "PCT-PPH". Most

respondents are ―neutral‖ about the quality and quantity of PPH information and the main

source of information are PTOs websites. Most companies and patent law firms also

obtain information with the patent agent (or foreign attorney), revealing the importance

thereof in terms of disseminating and popularizing the program.

Users‘ opinions about the number of PPH-signatory countries are distributed

homogeneously between "satisfied", "neutral" and "dissatisfied", while non-users are

largely "neutral". The level of users‘ dissatisfaction with the signatory countries remained

unchanged since 2010 (compared with the IIP survey). Most respondents are ―neutral‖

about Brazil signing the PPH agreement. Most PPH-user patent law firms are positive

toward increasing the recommendation to their clients to file patent applications in Brazil if

it does indeed sign the agreement. On the other hand, some non-users are ―negative‖

about it.

Most respondents are "neutral" about the possibility of expanding the use of PPH to other

types of applications. However, some respondents considered it "bad" or "very bad" for

their business. This shows that countries with other types of application can (may) take

advantage of this flexibility in the PPH agreement and include than. This feature may be

more relevant in countries with a larger number of domestic applications that are not

patents of inventions.

The ratio of complaints about PPH procedures was lower as compared to former surveys.

However, there is no clear opinion regarding whether PPH applications are more or less

expensive, or whether they are more or less burdensome. (Actually, a slightly bigger

number of users believe that PPH applications are more burdensome and more expensive

than others). But, we see that the most expensive procedures pointed (―amend the claims

in the OLE‖ and ―translating documents‖) are the same for other applications or are been

easily in the earlier agreements. We also perceive that the time may influence the

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perception of the workload to prepare the documentation, and to reply to the ―reasons for

refusal reports‖.

This unclear opinion about the prosecution costs and burdens and the lack of need for

accelerated examinations (among others pointed out by the respondents) explains why

43% of companies do not use the PPH and 24% of patent law firms also do not

recommend its use. On the other hand, we realize that the ―reduced reasons for refusal‖

and ―accelerated examination in the OLE‖ are the most important features for companies

and patent law firms. It means that these two benefits balance the unclear aspects related

to burdens and expenses for the PPH users.

Many respondents consider the possibility to choose the OFF ―good‖ or ―very good‖ for

their business (manly among companies). However, we see that companies hardly

consider filing patent application first in foreign PTOs. On the other hand, patent law firms

seem more aware of this potential and recommend it to their clients. The opinion about

what would be the best strategy varies among patent law firms: PPH users consider PTOs

with the "best prior art search" the better option, while non-users believe it is better to file

first in PTOs that tend to grant "the broadest scope" of protection. Strangely, the

respondents barely choose the PTO with faster examination.

Another topic related to the OFF and OEE is that of the PPH-MOTTAINAI and the PPH 2.0.

This new framework allows the OSF to make the examination before the OFF. We

observed that most respondents do not consider this feature ―good‖ or ―bad‖ for their

business, as long as the OEE examination has quality.

The accelerated examination was considered ―very important‖ or ―important‖ to be able to

meet the PPH requirements. This is strongly related with a point made by some authors

(Helfgott, 2008) (JIPA, 2008) and (Maeda, 2011). Most PPH users (patent law firms and

companies) try (or recommend trying to accelerate applications in the JPO. This

information is important to PTOs that do not have accelerated examination, or where it is

hard to use it (e.g. Brazil and China). It is also important information to ―new-PPH users‖.

The PPH does not modify the examiner independence to grant the patent (or not).

However, in a former survey, several respondents criticized the differences in examination

level and criteria, and requested a reduction of its negative effects as a PPH improvement.

Moreover, a large number of companies and patent law firms considered the claim scope

variation among PTOs "bad" or "very bad" for their business. On the other hand, several

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Brazilian groups are concerned about examiners‘ independence. As we saw, the greatest

number of respondents does agree that patent examiners must keep their independence

to decide to grant the patent (or not), regardless of which office is the OLE.

The opinion about quality changed strongly. In 2007, the survey done by JIPA showed that

25% of PPH users considered the ―issue of quality‖ as a PPH disadvantage. This study

shows that nowadays there are a greater number of opinions that "quality will increase"

than "quality will decrease", mainly among users.

From the Computer Aid Statistic Analysis, we concluded that the main need of companies

and patent law firms with regard to the PPH agreement is to accelerate applications.

Companies are also worried about workload and expenses, while patent law firms with

increasing the number of options and the flexibility to offer as service and information to

support their clients‘ decisions. Both of them do not renounce from patent quality and the

examiner‘s independence.

Companies and patent firms that try (or recommend to try) to accelerate their applications

on the JPO and abroad (except the PPH) are the same who are positive toward Brazil

signing the PPH agreement, probably because they want to accelerate applications in

Brazil as well.

Among companies (only), the ones that consider a better understanding about patentability

criteria ―good‖ for business are also positive toward Brazil signing the PPH agreement, and

believe they will reduce their costs with prosecution abroad. They likely believe that Brazil

and other countries will improve their standards.

Patent law firms may believe that quality will be the same and will improve with PPH-

MOTTAINAI. They may also believe that this PPH agreement will grant patents faster

worldwide. On the other hand, this group of patent law firms may be unsatisfied with the

PPH information to support their client decisions.

As we could see the PPH program is changing fast, as well as it acceptability. Most of the

old problems have already been solved and the critics overcome. Other issues are been

carried out and are on the way to be solved (we hope) soon. As researchers, we try to see

the agreement as neutral as possible and identify others problems that can prevent

Companies and Patent Firms to use it. The issues pointed here have aim at improve the

even more the usability of the program. When it happened we will face a more user-

friendly agreement.

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The PPH is young among other international agreements and it is not possible to foreseen

where it will lead us, nor the future of the program itself. But it has already given us its

greatest contribution: it is the first time that so many PTOs can enjoy such high level of

work-sharing without lost of examiner independence. Moreover, we could see in this work

that Companies and Patent Firms are also aware about work-sharing and consider it the

best solution to tackle the backlog problem.

Although some features are still not clear to the stakeholder and Patent Offices, the

increase number of users and signatory countries, as well as the number of pilot programs

that are becoming permanent, are a good clue to say that the PPH can be a good option to

both and have a huge potential, if the they learn a good way to use it and adapt their

behavior.

JPO have a high level of prior art search and examination standard and quality. Its

patentable criteria are clearly defined and are world-wide accepted. Moreover, it has a

large expertise in accelerate the examination. It is easy to understand why the Japanese

Patent Office is increasing fast its number of PPH agreements and why it is one of the

PTOs that is spearheading the PPH harmonization meetings.

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