Improving linkage between international and national phase

In the examination of overseas-related applications including national phase of PCT applications, in order to reduce the examination workload and to improve the quality of the examination, the JPO considers it is important to effectively use prior art search results and examination results provided by foreign patent offices.

Therefore, the JPO provides “Guidelines for the Use of Prior Art Search Results and Examination Results Provided by Foreign Patent Offices” and examiners follow prescribed procedures.

According to the guidelines, the examiner shall carry out a prior art search through the following procedure (in case without search results by a registered search agency).

- The examiner is not required to carry out an additional prior art search, if the examiner considers it possible to conduct an examination precisely and efficiently by using the results provided by a foreign patent offices.

- The examiner shall carry out an additional prior art search, if the examiner considers it impossible to conduct an examination precisely and efficiently by using only the results.

- The examiner may carry out an additional prior art search before referring to the results, if the examiner considers it possible to find relevant prior art documents more efficiently by carrying out a prior art search rather than referring the results.

Please refer to the “Procedure of Examination” in the JPO guidelines.

It includes “Search Strategy” (Section2: 2.2, page 2) and “Guidelines for the Use of Prior Art Search Results and Examination Results Provided by Foreign Patent Offices” (Attachment, Page 23 – 25).

Dear all,

in the Austrian Patent Office (APO) we have a similar approach to the one at JPO.

For all national phase applications we publish a "complementary search report".

In the case the PCT publication has not been in german language, we in any way publish the german translation the applicant has to furnish, together with the complementary search report as "A1", or as "A2" with a later "A5".

In the case the PCT publication already has been done in german language, we only publish the complementary search report as "A5".

Concerning the preparation of this complementary search report, we have similar provisions as JPO described. The complementary search report may be identical with the International Search Report, add citations to it, or consist entirely of new or different citations.

Dear colleagues,

The JPO deals with the practice of “Taking into account Results of Earlier Search” (Rule 41.1) and “Partial Refund” (Rule 16.3) as follows.

When an applicant wishes that a part of the search fee be refunded, he/she must make reference to an earlier application of his/her own, at the time of filing the international application. The earlier application must be one that the JPO either has already done or will do in the future. In principle, even if the search on the earlier application in reference has not yet been done at the time that the applicant files the international application, as is often the case when the earlier application is the national application in Japan, the search on the earlier examination will be done first, before the international search report is established. That applies as long as the conditions for starting examination on the earlier application are fulfilled, such as request for examination has already been made. After that, the international search report will be established, taking into account the results of the search done on the earlier application. 

Under the above mentioned system, searches for both the national phase and the international phase can be done simultaneously, making the examination procedure more efficient and reducing duplication of work at the office. From the applicant’s view point, he/she has the possibility of having a part of the search fee for the PCT application refunded.

The practice of “Taking into account the Results of Earlier Searches” can also be applied in the cases in which the international application claims priority based on the earlier international application.

Please click here to see typical cases

Please find attached IP Australia's comments in regard to the use of Foreign Examination Reports (FERs) and search results in the national phase.

Use of Foreign Examination Reports and search results at IP Australia.pdf

Dear all,

The Intellectual Property Office of the Philippines (IPOPHL) uses the International Search Report, written opinion of the International Searching Authority (WO/ISA) and the International Preliminary Report on Patentability (Chapter II) (IPRP) as references during substantive examination of national phase entry applications, and the search and examination works of the Offices of First Filing (OFF) for an accelerated examination under the Patent Prosecution Highway program.

The IPOPHL examiner determines whether the available search results are enough to proceed with substantive examination.  If not, he/she may conduct a further search.  He/She may also use the WO/ISA and IPRP as foundation of his/her examination strategy.

Under the PPH program, the examiner uses the claims correspondence table to affirm or oppose that the claims determined to be patentable or allowable in the OFF are the same as the claims submitted in IPOPHL or not for him to proceed with the allowance or refusal of the claims.

Another usual practice in the IPOPHL is to suggest to the applicant whose earlier application filed in another country has already been granted a patent, particularly by the USPTO, EPO & JPO, to conform the claims of the Philippine application to the allowed claims to obtain a direct allowance in the IPOPHL.

Dear Colleagues,

We use a similar approach as one described by  the Japanese colleagues for reducing the search  examination load and improving the quality of the examination  at the national phase, namely  by utilizing to the maximum extent  the information products obtained at the international phase of  PCT.

Although we do not have special Guidelines for the Use of Foreign  Examination Reports and search results, some clear recommendations in this respect are contained in the  Guidelines for carrying out information search. Thus, the  said Guidelines provide that where the results of the international search carried out by another ISA are available an information search for the purposes of  the substantive examination at the national stage concerning some or all claims  may be limited  to the documentation of the Russian Federation, the former USSR, the Euro-Asian Patent Office and the Russian–language documentation of CIS countries. In case of availability of X and/or Y citations  in the foreign report   a search may not be  carried out provided that the assessment of the relevance of those citations is confirmed during the substantive examination.

Moreover, the  Provisions on the patent fees approved by the Government Decree  No 941 datedDecember 10 2008provide for the reduction of fees or a partial refund if the results of the previous prior art searches are available and used.

Thus, paragraph 19 of the  Instructions provides for 20% reduction of the examination fee in cases where the application  contains the international search report or preliminary examination results prepared  by a  International Authority in accordance with the international agreements of theRussian Federation. While examining the application which entered the national phase the examiner takes into account the information products of the international phase and determines to what extent an additional search should be carried out.

A partial refund (see paragraph 22of the Instructions)  is provided for where at the time of filing the international  application the applicant wishing that a part of the search fee is refunded makes a reference to the earlier application in respect of which an international search or   a search of international type was carried out. The size of refund  may vary  from 25%  to 75 %   depending on the need and extent of an additional search.  

 Referring to a problem of improving linkage between international and national phase in general we consider it important to develop a feedback system between  the designated and elected Offices on the one hand and ISA and IPEA on the other hand. First of all it is important to arrange the exchange of search reports prepared by the designated and elected Offices which contain X and/or  Y citations while the corresponding  international report contained only A citations. Such an exchange will allow the ISA to make an analysis of discrepancies in search results and take appropriate measures.

Dear all,

The Portuguese Institute of Industrial Property (INPI) also have a similar procedure as JPO regarding the use of search products provided by other offices. We always take into account the work done by other Patent Offices, both in search and examination, in order to complement our own work. The Portuguese Office has the possibility to consult search reports, written opinions and other documents available in Epoline Register Plus and PatentScope, as well as in other national offices’ websites. As an example, the Portuguese Office uses, when available, the international reports and written opinions produced by ISA authorities in the international phase of a PCT application, for helping the production of its own examination in the national phase of that PCT application. This documentation makes the process of search easier for the national examiner since it provides a correct classification and the most relevant state of the art considered by the other office. We believe that document sharing among offices, as well as sharing best practices, allows an improvement of the quality of patents.

The International Bureau would like to thank Offices for the comments received (from AT, JP, AU, PH, RU and PT).  The IB thinks that it would be useful to seek further and more detailed comments, particularly from any Offices which are able to share specific procedures and guidelines which have been documented to assist their examiners in assessing when an earlier search or examination may or may not be useful, as well as for effective utilization of the results.  In effect, this means ensuring that (at least on average) the time spent reading a report and following up cited documents and comments should result in either a higher quality examination according to the relevant national laws, or else a shorter time taken to achieve a result of at least the same quality (and preferably both).

The IB wishes to encourage Offices to share any concrete procedures which they have found useful and which could be provided to other Offices wishing to develop their own policies and examiner guidelines to maximize national examination quality while minimizing costs.

Having reviewed the comments received so far, the IB wishes to expand the questions further, as follows.

Clearly the largest interest for the PCT is where the earlier search is the international search.  However, the questions are framed more generally and comments relating to effective use of earlier national searches by ISA and searches by other designated Offices in equivalent national phases, or by different Offices on equivalent applications by the Paris rather than PCT route would also be of interest.

Designated Office Issues: 

(1)  Are there any particular features of a search or examination report by a different Office which help an examiner to quickly determine the extent to which it seems appropriate to rely on it?  Different degrees of reliance might include:

-- ignoring it entirely; 

-- checking the citations but nevertheless conducting a complete new search; 

-- conducting a more limited search than would otherwise have been the case, for example focussing only on specific technical features or else documentation in particular languages or from particular databases; 

-- conducting only a “top-up” search to find documents which might not have been available to the ISA at the time of the international search, especially “secret prior art” (patent applications filed before the priority or international filing date, but only published later);  or 

-- relying fully on the earlier search and conducting no further national search at all.

(2)  Are there any practical suggestions for ways of using the earlier search to get the best information out of it with the minimum effort?

(3)  A number of practices are used by Offices to utilize earlier work, or to encourage applicants to take steps to eliminate defects identified in the earlier search or examination.  Examples are:

-- fee reductions for applications where an international search has been conducted (either generally or where the search was done by particular Offices); 

-- Patent Prosecution Highway (accelerated processing if the earlier report indicates that the claims used appear novel and inventive); 

-- requiring a response to defects noted in the earlier report before national examination begins; and 

-- the proposal to consider making Chapter II examination mandatory in some cases (Annex II of PCT/WG/6/23).

Are there any other similar arrangements in use or under consideration by Offices to recognize contributions from or provide an incentive for effective use of reports by other Offices?

(4)  Most of the above practices are essentially applicant driven.  What measures might be desirable to make more national search and examination reports easily available to Offices in a way which would allow them to use reports automatically without the need for applicant intervention?

ISA Issues:

(5)  It should be remembered that PCT Rule 41 permits the possibility of taking into account earlier searches.  At present the International Search and Preliminary Examination Guidelines indicate how to record the use of an earlier search (paragraph 16.56) but leave it entirely to the individual ISAs to determine how best to use the earlier searches.  Information from ISAs equivalent to questions (1) and (2) on how earlier searches are assessed and used to assist an international search would be useful.

(6)  Various projects are under way aimed at improving the quality of international search reports, including supplementary international search, collaborative search and examination and general quality improvement measures being taken individually by ISAs and collectively by the PCT/MIA Quality Subgroup.  Having regard to the answers to questions (1) and (2), are there additional actions which should be considered by International Searching Authorities to ensure that international search reports are as effective as possible for use by designated Offices?

Further comments on these issues and relevant extracts from Office guidelines are invited by 30 September 2013.

Please see the linked response from EPO to the above questions.

Please find attached IP Australia's response to the above questions.

IP Australia's response to questionnaire on linking international and national phases

Dear colleagues,

Please see the linked file shown below.

JPO's response to the above questions

Sorry for the unclearness it may cause due to the poor English.

Please find attached CIPO's response to the above questions.

CIPO Intl and Natl linkage comments.doc

Thank you!

ILPO comments.doc

The UK IPO would like to thank the JPO for their useful summary of the comments posted on the e-forum and received at the 2014 MIA. We would like to take this opportunity to contribute the UK IPO's comments in response to the questions posed by the IB - please see below. We hope these will be helpful to assist discussions at next week's MIA.

Linkage between international phase and national phase_UK response.pdf

Dear colleagues,

At the 22nd PCT/MIA held in February 2015, one more Authorities expressed their support to the following measures, among the measures listed in the attached file (also set forth in the Annex of document PCT/MIA/22/20):

• (a-1), (a-2), (a-5), (b-3), (b-4), (c-2), (c-3), (c-6), (d-1), (d-3) and (g-1).

On the other hand, several Authorities expressed their concerns that measures related to national phase procedures should be dealt with under national laws, not under the PCT.

In the attached file, comments on each measure provided at that meeting were also summarized. Mark-ups are made based on the Annex of document PCT/MIA/22/20.

In response to the invitation by the meeting (see paragraph 28 of document PCT/MIA/22/22), the JPO would like to prepare a paper for the upcoming meeting with consideration of comments posted on this e-forum, if any.

Further comments or any new proposals are invited by December 11, 2015.

Best reagrds,
 Yoichi KANEKI (JPO)

Attached file: (JPO)Linkage_20151125.pdf

Dear Colleagues,

The Canadian Intellectual Property Office (CIPO) would like to thank the JPO for summarizing the comments brought forward at last year’s MIA.

The measures identified by the JPO as having some level of support are those that have a higher likelihood of gaining widespread support and being included in the Regulations or International Search and Preliminary Examination Guidelines.

CIPO feels that the discussion and effort at this year’s MIA, with respect to promoting linkage between the international phase and the national phase, should focus on these measures. We would be particularly interested in working with our counterparts to see movement on measures relating to sharing of examination related documentation including but not limited to search strategies, search results, claims and opinions on patentability. Measures (a-1), (a-2), (a-3), (a-5), (b-3), (b-6), (e-1), (f-1), (f-2) and (g-1) are a subset of topics that relate to the sharing of examination related documentation.

Regarding measure (c-6) CIPO supports the development of incentives to encourage applicants to maximize their use of the international phase. The PCT-PPH program has been very successful at CIPO and has resulted in numerous benefits for both applicants and the Office. We fully support efforts towards integration of the PPH into the PCT.

CIPO looks forward to discussing these and other measures of interest to other Authorities.

Kind regards,

Elaine