Quality Management System at the JPO · and the quality management system at the JPO •Outlines, persons in charge, and documents for reference of “checks before approval,” “approvals,”

Quality Management System at the JPO Focusing on:

(a) Relation to Workflow of Examinations; (b) Persons Responsible for Managing Examination

Quality; and (c) Documents to Be Used for Checking Examination

Quality June 27, 2018 Kazuo Bekki

Director Quality Management Office

Administrative Affairs Division Japan Patent Office (JPO)

1

1.Workflow of Patent Examinations and Quality Management System

2.Persons Responsible for Managing Examination Quality

3.Documents to Be Used for Checking Examination Quality

4.External Evaluation on Quality Management

Table of Contents

2

1. Workflow of Patent Examinations and Quality Management System at the JPO

Exami-nations

Approval Send notices

Check before approval

Quality audits

Analysis on discrepancies in

examination results

Partial audits

Directors

Quality Management

Officers

Members of the Quality

Management Committee

(QMC)

Patent

examination

researchers Approval guidelines

Quality audit guidelines

FI Handbook / Manual for Assigning F-terms

Major points of standardized

notification forms, such as notices of reasons for refusal

Examination Guidelines for Patents and

Utility Models

Handbook for PCT International Search and Preliminary

Examination in the JPO

Examination Handbook for Patents and

Utility Models

Quality Management

Manual

3

1. Workflow of Examinations and Quality Management System

(1) Check before Approval ← improve the examination quality

Persons responsible for checking: Quality Management Officers (Total around 100)

Number of notices and decisions checked: 6,424 (in fiscal year 2017)

Points to be checked: (a) Validity of searches conducted by examiners; (b) validity of judgments made by examiners; and (c) whether drafting notices prepared by examiners are clearly stated for applicants to easily understand the drafting notices

Re-searches: Done for some cases

Ways for checking: Notices and decisions are selected by Directors in each of the Examination Divisions:

Higher priority can be given by the Directors for cases including the following:

• Examinations being conducted by examiners who have been recently transferred

• Applications whose claims are defined by certain parameters

• Decisions to grant patent rights immediately without notifying reasons for refusal

Examin-

ations Approval Send

notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

4


(2) Approval

Persons responsible for checking: Directors* at the Examination Divisions (Total about 90) * Directors, Managing examiners and Assistant Managing Examiners


Points to be checked: (a) Whether or not judgments made by examiners comply with laws, regulations, and examination guidelines; and (b) whether drafting notices prepared by examiners are clearly stated for applicants to easily understand the notices

Re-searches: None

Ways for checking: The results of all examinations conducted by examiners, i.e. all notices prepared by and all decisions made by examiners, are checked by directors.

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

5

Persons responsible for auditing: Quality Management Officers (Total about 100)


Points to be checked:

• (a) Validity of searches conducted by examiners; (b) validity of judgments made by examiners; and (c) whether drafting notices prepared by examiners are clearly stated for applicants to easily understand the notices

• Quality audits are also conducted on International Search Reports (ISRs) and International Preliminary Examination Reports (IPERs) for international patent applications filed under the Patent Cooperation Treaty (PCT).

Re-searches: Done for some cases

• Searches are to be conducted for all of the first notices of the examination results, i.e. the First Actions (FAs), and decisions to grant patent rights

Ways for auditing: Notices and decisions are randomly selected.


(3) Quality Audits ← verify the examination quality

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

6

Persons responsible for partial auditing: Patent examination researchers (as assistants to help managing the examination quality) (Total 16 in 2017)

Number of notices checked: 2,400 (in fiscal year 2017)

Points to be checked: Whether there are any deficiencies in terms of formalities in notices.

Examples:

• Whether there are any writing errors in figures in claims and cited documents;

• Whether notices are written in accordance with standardized styles

Re-searches: None

Ways for auditing: Notices are randomly selected for partial audits to be conducted for around two months once a year.


(4) Partial Audits (Formality checks on notices)

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

7

Persons responsible for analyzing: Patent examination researchers (in charge of quality management) (Total 12)

Number of cases analyzed: 2,870 (Cases in which, among patent applications on which examiners at the JPO conducted examinations in 2010-2015, JPO’s examiners suggested only category A cited documents and later, examiners at other IP offices suggested category X and/or Y documents.)

Points to be checked: Whether X or Y documents suggested by other IP offices can be X or Y documents at the JPO based on Japan’s laws and regulations

Re-searches: None

Ways for analyzing: Following applications are analyzed:

(a) PCT applications to which the EPO suggested X or Y documents after JPO’s examinations

(b) Applications filed under the Patent Prosecution Highway (PPH) program to which the USPTO suggested X or Y documents after JPO’s examinations (Including applications filed under the PCT-PPH program)


（5）Analysis on Discrepancies in Examination Results

Examin-


notices Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

8

1. Workflow of Patent Examinations and Quality

Management System

2.Persons Responsible for Managing Examination Quality

3. Documents to Be Used for Checking

Examination Quality

4. External Evaluation on Quality Management

They need to check office actions objectively with fairness. They have plenty of experience in patent examinations.

9

2. Persons Responsible for Managing Examination Quality

Exami-nations



Quality audits


examination results

Partial audits

Directors

Quality Management

Officers



(QMC)

Patent

examination







Utility Models




Utility Models

Quality

Management

Manual

10

Average years of experience as an examiner: About 23 years (Total number of examined applications: about 5,400)

Major training courses received:

• Two or three years after joining the JPO: Training course for examiners

Objective: To acquire expertise on laws and regulations, international treaties, and examination practices

Program: Lectures, case studies, reports, and tests

• Around 10 years after joining the JPO: Training course for administrative judges (trial examiners)

Objective: To acquire expertise on appeals and trial examinations. Program: Lectures, drafting of trial decisions, and hands on exercises on consultation conducted by a panel of administrative judges


(1) Quality Management Officers

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits

11


In addition, directors have one or more years of experience in conducting trials.


In addition to major training that Quality Management Officers receive, directors receive the following training:

• Training course for managers

Objectives: To gain capabilities and knowledge to solve problems in workplaces, develop human resource, and appropriately manage organizations.

Program: Lectures and hands-on exercises

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits


(2) Directors

12

Patent examination researchers (as assistants to help managing the

examination quality) Partial audits

• To be hired from external sources (Total 24)

• With no experience in conducting examinations and trials

Patent examination researchers (in charge of quality management)

Analysis on discrepancies in examination results

• To be hired from retired administrative judges of the JPO (Total 12)

• Have 30 or more years of experience in conducting examinations and trials

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits


(3) Patent Examination Researchers

13

Members of the Quality Management Committee (QMC)

• To be selected from managers in the examination offices (Total 12)

• Share the feedback (FB) on the results of quality audits; check the details of FB; and adjust divided opinions

• Check the details of FB on analysis of discrepancies in examination results

Reference:

• Members working at the Quality Management Office: To be selected from examiners (Total 5)

• Representatives of the Quality Management Committee: To be selected from QMC

Develop initiatives for quality management at the JPO

Examin-


notices

Check before

approval

Quality

audits

Analysis on

discrepancies in

examination results

Partial

audits


(4) Members of the Quality Management Committee (QMC)

14

1. Workflow of Patent Examinations and Quality

Management System

2. Persons Responsible for Managing

Examination Quality

3.Documents to Be Used for Checking Examination Quality


They are a guide to objective and fair quality management.

Each document has enough contents and volume. Also, they are specific enough to check examination quality.

15

3. Documents to Be Used for Checking the Examination Quality

Exami-nations


Quality audits


examination results

Partial audits

Directors

Quality Management

Officers



(QMC)

Patent

examination







Utility Models




Utility Models

Quality Management

Manual

A B

C

D

E

F G H

I


16


Quality Management Manual for Patent Examinations (Quality

Management Manual)

Who uses in quality management (QM): All persons responsible

for QM

The Manual serves as “Quality Manual” stipulated in Chapter 21,

Part VII of the PCT Guidelines. The contents include:

• Relation between “Quality Policy on Patent Examinations”

and the quality management system at the JPO

• Outlines, persons in charge, and documents for reference of

“checks before approval,” “approvals,” and “quality audits”

The volume of the Manual: 58 pages (English version)

(1) Systems to Ensure Quality Management of Examinations at the JPO (By whom, when, and what)

A

17


Quality Management Manual for Patent Examinations (Quality

Management Manual) (cont.)

Example of specific descriptions of quality checks:

(i) Quality Audits

“…Quality Management Officers, based on the guidelines for

quality audits, conduct quality audits to check whether these

randomly selected documents comply with laws and examination

guidelines. The Officers provide feedback on the results to

directors of the examiners who prepared the documents. Based

on this feedback, directors give advice to the examiners when

necessary…”

(1) Systems to Ensure Quality Management of Examinations at the JPO (By whom, when, and what)

A

Two-stage FB

➡ enhance the objectivity of the quality audits. ➡ make the feedback soft. ➡ useful information about what directors should pay attention in approval

18


Approval guidelines for patent examinations

Who uses in QM: Directors as approvers

Contents included: Procedures for conducting quality checks

and points to be checked (by sentence, by document type, and

document formats)

The volume of the guidelines: 16 pages

(2) Specific Operations for Managing the Examination Quality

B

19


Approval guidelines for patent examinations (cont.)

Example of specific descriptions of quality checks:

“2. Novelty, inventive step, etc. (Art. 29 (1) (iii), Art. 29 (2), Art. 29bis, Art. 39)…

• Check whether to sufficiently describe items in the cited documents to be specifically referred to;

• Check whether to sufficiently identify commonalities and differences;

Whether insufficiency of descriptions in draft documents make the documents difficult for applicants to understand examiners’ decisions and intentions

• Check whether descriptions for reasoning are appropriate

Whether there are any improper logics

Whether examiners’ decisions or intentions are not sufficiently explained…


B

➡ useful to conduct a lot of approval appropriately and efficiently

20




Who uses in QM: Quality Management Officers

Contents included: Items to be audited, procedures for

auditing, such as providing feedback (FB) to examiners and

their directors, and types of FB

The volume of the guidelines: 50 pages

C

21



Quality audit guidelines (cont.)

Example of specific descriptions of quality audits:

“…FB is divided into the following three types…

Suggestive FB: Feedback giving suggestions that decisions or notices

should definitely be revised because Officers find that: (1) decisions or

notices include obvious errors according to current laws and examination

guidelines; (2) decisions or notices include errors or insufficient explanations

that make the documents difficult for applicants to understand examiners’

intentions; and (3) there are deficiencies in the search results, which might

impact judgments on patentability.

Advisory FB: Feedback does not fall under “Suggestive FB,” but from the

perspective of improving the overall quality of examinations, feedback

includes (1) advice that decisions or notices would be better if they are

revised; or (2) advice for points to be improved or noted when making

decisions or writing notices;

Positive FB: Feedback giving positive points that Officers found in

examinations…”

C

22

3. Documents to Be Used for Checking the Examination Quality (3) Checking the Validity of Searches

FI Handbook

Who uses in QM: All persons responsible for QM

Contents included: Supplemental information on FI and explanations on

fields related to FI

* FI (File Index): JPO’s unique classifications, which is formulated and subdivided based on the International Patent Classification (IPC), in order to assign more precise classifications.

● Manual for Assigning F-terms

Who uses in QM: All persons responsible for QM Contents included: Explanations on F-terms by technical field (theme)

Explanations on the outline of technologies and on FI codes which are covered by each of the F-term technical fields (themes)

* F-terms (File Forming Terms)：JPO’s unique classifications that subdivide technical fields (themes), from various points of view, to cover the scope of certain FI codes

Example: When a F-term theme is the “function of mobile phones,” Points of view include: objectives/effects, types of terminals, user interface,

communication processing, address management, security, the timing of executing functions…

D

E

in addition to the classification lists of the IPC and the CPC

23


(4) Checking Notices Prepared by Examiners (Formality Checks)

Booklet named “Major points of standardized notices,

including notices of reasons for refusal”


Contents included: Major points of standardized forms for

drafting notices, in order for applicants to more easily

understand the notices

The volume of the Booklet: 14 pages

F

Examiners have to draft notices in accordance with the standardized styles shown in this booklet.

Applicants can more easily understand the notices.

24


(4) Checking Notices Prepared by Examiners (Formality Checks)

Booklet named “Major points of standardized notices,

including notices of reasons for refusal” (cont.)

Example of specific details for notices of reasons for refusal:

“(1) When sending notices of reasons for refusal due to lack of novelty or/and

inventive step based on citing documents, examiners must clearly describe: (i)

the reasons for refusal and claims to be refused; and (ii) the cited documents

supporting reasons for refusal of the claimed inventions.”

“(2) When sending notices of reasons for refusal due to lack of novelty or/and

inventive step based on citing documents, examiners must clearly describe

items in the cited documents to be specifically referred to...”

“(10) When examiners send their second or subsequent notices of reasons for

refusal, and if the notices include documents that examiners cited for the first

time, the examiners need to add a list of cited documents to the notices, in order

for applicants to distinguish these cited documents from other documents.”

F

Directors and so on check whether drafting notices are in accordance with these styles.

25


Examination Guidelines for Patents and Utility Models


Contents: Interpretation of and operating practices based on the Patent Act

and the Utility Model Act

The volume of the Guidelines: 483 pages (English version)

Examples: 56 pages for novelty/inventive step, 73 pages for description

requirements, 43 pages for amendments,…

Example of specific details:

“3.1 Factors that deny the existence of inventive step

3.1.1 Motivation for applying secondary prior arts to primary prior

When applying secondary prior art (B) to primary prior art (A), and if a person skilled

in the art would have easily been able to make the claimed invention (A+B),…if

there is a motivation for applying the secondary prior art to the primary prior art, this

constitutes factors that deny the existence of inventive step.”

(5) Checking Notices Prepared by Examiners (Substantive Checks)

G

➡ ensure the consistency in the JPO’s examinations.

26


Examination Guidelines for Patents and Utility Models (cont.)

Examples of specific details (cont.):

“Examiners determine whether or not there is any motivation for applying

secondary prior arts to primary prior arts by taking into consideration all of the

following points of views (1) to (4). Nonetheless, examiners should note that

they cannot always determine whether there is such motivation by paying

attention to only one of them:

(1) Relation of technical fields; (2) Similarity of problems to be solved; (3)

Similarity of operations or functions; and (4) Suggestions shown in the details

of primary prior arts…”

“3.2.2 Obstructive factors for reasoning

…Examples of obstructive factors are the following:

(i) Cases in which applying secondary prior arts to primary prior arts becomes

contrary to the original purpose of the primary prior arts. (Example 1)

(ii) Cases in which applying secondary prior arts to primary prior arts cannot

adequately function. (Example 2)…”


G

Specific details about best possible examinations like this contribute to objective and fair quality checks.

27


Examination Handbook for Patents and Utility Models


Contents included: More detailed rules and some related information; e.g. Procedural requirements, points to be noted for examiners, examples of examinations, examples of trial/appeal decisions and judgments, and examples of how the Examination Guidelines are applied to inventions in specific fields, such as computer software inventions, biological inventions, and medical inventions

The volume of the Handbook: 2,499 pages (English version)

Example: 174 pages for Computer software inventions


H

28


Examination Handbook for Patents and Utility Models (cont.)

Example of specific descriptions of Computer software

inventions:

“When examiners,…based on the Examination

Guidelines…cannot determine whether computer software

inventions claimed in patent applications fall under ‘creations of

technical ideas based on utilizing the laws of nature’…the

examiners determine their patentability based on the following

fundamental concepts: …(i) when computer software inventions

include software, and if the software is used for information

processing by using hardware resources,’ the examiners

determine that the software is a creation of technical ideas based

on utilizing the laws of nature.’”


H

29


Handbook for PCT* International Search and Preliminary Examination in the JPO (PCT Handbook) * Patent Cooperation Treaty


Contents included: Explanations on the JPO’s operating procedures for and judgment standards on international applications filed under the PCT as an International Searching Authority and Preliminary Examining Authority (ISA/IPEA) / Outline of the domestic Examination Guidelines, which can be used for reference

The volume of the Handbook: 459 pages (English version)

(6) Checking Notices Prepared by Examiners (Substantive and Formality Checks for ISRs)

I

30



Examination in the JPO (PCT Handbook) (cont.)

Example of specific descriptions:

• “- …‘inventions that are publicly worked’…are not considered to be prior arts in

the PCT international phase, which deny the inventive step of inventions

claimed in PCT applications. Therefore, in the international phase, the inventive

step of the claimed inventions are not denied based on such inventions.

• Documents that were disclosed on the same day of the critical date are not

considered to be prior arts in the PCT international phase, which deny the

inventive step of inventions claimed in PCT applications. Therefore, in the

international phase, the inventive step of the claimed inventions are not denied

based on such documents.”

(6) Checking Notices Prepared by Examiners (Substantive and Formality Checks for ISRs)

I

It includes detailed information related to the examinations of the domestic applications.

31

1. Workflow of Patent Examinations and Quality Management System


3. Documents to Be Used for Checking Examination Quality

4.External Evaluation on Quality Management some initiatives to receive it

32


User Satisfaction Surveys

• On the examination quality at the JPO (conducted by the JPO once a year)

• Number of targeted users: 600 Japanese companies, 59 foreign companies, 66 patent attorneys (in fiscal year 2017)

• Questions dealing with: Levels of user satisfactions on overall quality of examinations, communications with examiners, etc. Specific items on prior art searches, examiners’ decisions, etc.

• The results are published on the JPO website.

33

4. External Evaluation on Quality Management (cont.)

Invitation for users’ Opinions for Examination Quality

Improvement

• Through the Opinion submission form on the JPO website (both in

English and Japanese)

Others

• Semi-annual, regular meetings to exchange opinions with the

Japan Intellectual Property Association (JIPA) and the Japan

Patent Attorneys Association (JPAA), respectively

• Evaluations and recommendations for the JPO’s initiatives on

improving quality management, which were submitted by external

experts, i.e. the Subcommittee on Examination Quality

Management under the Intellectual Property Policy Committee of

the Industrial Structure Council (Once a year)

34

Summary

For the best possible quality management system, the JPO:

Established its quality management system appropriately in each stage of the examination workflow, in order to improve and verify its examination quality;

Selects qualified persons having sufficient knowledge and plenty of valuable experiences in conducting examinations, in order for them to appropriately manage the examination quality;

Created appropriate guidelines and manuals, which include specific descriptions on items to be checked in examinations, in order to conduct uniformed operations in terms of managing the examination quality; and

Has been working on various initiatives to gather external opinions on its examination quality.

The JPO would be very pleased if you could use the JPO’s systems to ensure the quality management of examinations as reference, when your esteemed country establishes its own the best initiatives on the quality management in future.

35

Thank You

E-mail: [email protected]

36

References

37

Commissioner Deputy

Commissioner

Policy Planning & Coordination Dept.

Trademark & Customer Relations Dept.

Exam. Dept. 1 Exam. Dept. 2 Exam Dept. 3 Exam Dept. 4 Trial & Appeal Dept.

General Coordination

Div.

Trademark Div. Design Div.

Quality Management Officers

Exam. Div. Exam. Div. Exam. Div. Exam. Div.

Quality Management Committee (QMC)

Japan Patent Office

Subcommittee on Examination Quality Management

Intellectual Property Committee of the Industrial Structure Council, METI

Quality Management Office (QMO)

Administrative Affairs Div.

④

③

②

①

Reference: Organization of Quality Management (1)

The JPO obtains - objective feedback about its systems - its current state of quality management on

patent examination from external experts

Around 100 Quality Management Officers for quality audits

38

Commissioner Deputy

Commissioner

Policy Planning & Coordination Dept.

Trademark & Customer Relations Dept.

Exam. Dept. 1 Exam. Dept. 2 Exam Dept. 3 Exam Dept. 4 Trial & Appeal Dept.

General Coordination

Div.

Trademark Div. Design Div.

Quality Management Officers

Exam. Div. Exam. Div. Exam. Div. Exam. Div.

Quality Management Committee (QMC)

Japan Patent Office

Subcommittee on Examination Quality Management

Intellectual Property Committee of the Industrial Structure Council, METI

Quality Management Office (QMO)

Administrative Affairs Div.

④

③

②

①

Reference: Organization of Quality Management (2)

5 Examiners & 24 Researchers - supporting initiatives - obtaining facts on examination

processes - planning necessary initiatives

1 Chairperson & 12 Directors - analyzing & evaluating data - reporting results - feedback to examiners

39

Reference: Results of User Satisfaction Surveys (Excerpts)

Figure 1 : Level of User Satisfaction on Overall Quality of Patent Examinations for Domestic Applications

FY2012

FY2013

FY2014

FY2015

FY2016

FY2017

5: Satisfied 4: Somewhat

Satisfied 3: Neutral

2: Somewhat Dissatisfied 1: Dissatisfied

40


Figure 2: Level of User Satisfaction on Communications with Examiners in Interview Examinations and Phone Calls

FY2012

FY2013

FY2014

FY2015

FY2016

FY2017

5: Satisfied 4: Relatively Satisfied

3: Neutral 2: Relatively Dissatisfied 1: Dissatisfied

4: Somewhat Satisfied

2: Somewhat Dissatisfied

41

Figure 3: Level of User Satisfaction on Operation of Articles - Article 29 (2) (Inventive Step)

FY2012

FY2013

FY2014

FY2015

FY2016

FY2017

5: Satisfied 4: Relatively Satisfied

3: Neutral 2: Relatively Dissatisfied 1: Dissatisfied




42

Figure 4: Level of User Satisfaction on Overall Quality of Patent Examinations for PCT Applications

FY2012

FY2013

FY2014

FY2015

FY2016

FY2017

5: Satisfied 4: Relatively

Satisfied 3: Neutral 2: Relatively Dissatisfied 1: Dissatisfied




43

Reference: Quality Policy on Patent Examination

All officials involved with patent examinations conduct examinations in compliance with the six fundamental principles stated below. They conduct examinations under the leadership and participation of directors, working with a sense of great responsibility and a strong will.

We grant strong, wide-scoped, and valuable patent

rights.

Fundamental Principles of

Quality Management

We meet wide-

ranging needs

and expectations.

We all dedicate

ourselves to improving

quality, cooperating

with concerned

persons and parties.

We contribute to improving the

quality of patent examination

globally.

We continually improve operations.

We raise the knowledge and

capabilities of our staff.

44

Reference: Administrators for Technical Information

Points to be checked:

• Patent classifications written in decisions to grant patent rights

• Formality checks on ISRs and Written Opinions of the ISA



• Two or three years after joining the JPO: Training course for assistant examiners

Objective: To acquire expertise on laws and regulations, international treaties, and examination practices

Program: Lectures, case studies, reports, and tests

Examin-ations



Quality audits


examination results Partial audits