Milena Lonati PD Quality Management DG2, European Patent Office Trilateral Collaborative Metrics Study on International Search Reports PCT MIA Milena Lonati PD Quality Management DG2, European Patent Office Canberra, February 2012

Introduction In the Trilateral meeting of June 2010, the three Offices agreed to undertake a pilot collaborative study on quality metrics of International Search Reports. It was agreed that the EPO would coordinate the study and that a report would be made to the Trilateral in November 2011. The EPO thanks the JPO and USPTO for their essential contributions to study design, data collection and results analysis. 03/12/2018

Previous Individual ISR Studies USPTO JPO EPO JIPA 03/12/2018

Benefits of a collaborative study Common analysis Commonly defined sample Collaboration Commonly agreed approach Data exchange Combined resources Clearer Picture! Commonly defined parameters Use of PATSTAT data Commonly agreed metrics Larger samples 03/12/2018

Study approach Phase 1 Phase 2 Phase 3 Characteristics of 720000 ISRs produced by the Trilateral offices from 2004-2009. Phase 2 Contribution of ISRs to national first actions. Inspection of a sample of 1152 files per ISA. Phase 3 Proposed detailed analysis of underlying causes of divergence based on a subset sample (postponed). Trilateral Conference, Autumn 2011 03/12/2018

Phase 1: ISR Characteristics Studied Average Number of Citations Citation of Non-Patent Literature Trends and Differences Percentage of ISRs with X or Y Citations Citation Languages 03/12/2018

Percentage of ISRs With X or Y Category Citations The trend for each office is statistically significant at a 95% level (* excepted) % of ISRs characterised "Y no X" * 03/12/2018

Patent And Non-Patent Literature Citations Statistically significant increase at a 95% level (*) Difference EPO-JPO is due to non-patent literature (NPL) citations * Increase in average is due to a higher number of patent citations 03/12/2018

Non-official Language Citations Official Languages JPO Japanese EPO English French German USPTO 03/12/2018

Phase 1 Conclusions Differences are observed between the Trilateral Offices in XY rates and their development over time, the level of "Y no X" ISRs, the average number of patent and non-patent literature citations and its trend over time, the level of non-official language citations. In order to obtain a better understanding of these differences and their consequences on ISR reuse, they should be further analysed. Pertinent prior art is often only available in a non-official language. The challenge of finding this art has to be addressed. For example enhancement of machine translation tools can help. 03/12/2018

Phase 2 Description Sample-based study of national phase first actions. Approx. 1150 applications per national office (~3450 in total). Characteristics of analysed applications: International filing date 2006, searched by one of the Trilateral offices as ISA, received a national phase first action at any time thereafter. Each office collected data for applications which had entered its own national phase. 03/12/2018

PCT as a Filter Mechanism Statistically significant difference at a 95% level (*) Claims not amended after a WOISA indicating that none of the claims is regarded as novel or inventive * * Amended Claims after a WOISA indicating that none of the claims is regarded as novel or inventive * 03/12/2018

Documents Cited in the National First Action ISA = National Office 03/12/2018

Reuse & Agreement Study Results Concept Description ISA = National Office ISA ≠ National Office Reuse of ISR citations for patentability objections in national first actions Partial reuse: at least one reused ISR citation EPO 99% 59% JPO 82% USPTO Complete reuse: only reused ISR citations 98% 16% 48% 18% National first action agreement with WOISA opinion on patentable subject matter No patentable subject matter in WOISA 90% 71% 86% WOISA with patentable subject matter 85% 37% 77% 42% 03/12/2018

Phase 2 Conclusions The PCT is valuable for applicants in order to decide on further national phase prosecution and to overcome patentability objections early. Reuse of ISR citations: examiners do reuse ISR citations, however, many new documents are found in the national phase. Hence, enhancement of ISRs would result in more efficient national first actions. Agreement on patentability: agreement is high where the WOISA does not acknowledge patentability ("negative" cases), agreement is low where the WOISA acknowledges patentability ("positive" cases), when ISA ≠ national office. Hence, enhancement of ISRs would also improve consistency between PCT and national phases. 03/12/2018

Achievements And Final Conclusions The study has Provided insight into current working of the PCT & areas for improvement. Enhanced mutual understanding of common and differing practice. Developed a basis for ongoing collaboration. Established metrics benchmarks. A technical environment has been created that can be reused for further monitoring or expanded to other offices (e.g. IP5). Benefits in terms of quality, efficiency and reduction of backlogs can be achieved if the potential of reuse of ISRs is further enhanced. 03/12/2018

Thank you for your attention! 03/12/2018