Worldwide: Summary Of Research On Users Evaluations Of International Search Reports (ISRs) And Their Standards For Selecting An International Search Authority (ISA) Under The Patent Cooperation Treaty (PCT)"

Survey Results for All the Countries Subject to the Survey

The outline of the results of an overseas questionnaire survey targeting 52 offices, etc. in all of the 10 countries subject to the survey (Singapore, Thailand, the Philippines, Malaysia, Indonesia, Vietnam, the United States, India, Brazil, and South Africa) is as follows.

Incidentally, "%" indicates the percentage of the offices, etc. that selected the relevant answer out of the offices, etc. that answered the question, unless there is a special explanation.

1. Selection of an ISA Regarding ISAs selected by the offices, etc. in all of the countries subject to the survey which answered the questionnaire in around the last three years, the European Patent Office (EPO) was selected most in terms of the number of the offices, etc., followed by the Korean Intellectual Property Office (KIPO), the United States Patent and Trademark Office (USPTO), IP Australia, and the Japan Patent Office (JPO) in this order. The EPO can be selected as an ISA in all of the countries subject to the survey, and 79% of all the offices, etc. selected the EPO as the ISA. 36 offices, etc. in the six ASEAN countries and the United States can select the JPO as the ISA, and 36% thereof selected the JPO as the ISA.

2. Evaluation of ISRs and Written Opinions Positive evaluation was frequent in relation to the determination of novelty/involvement of an inventive step in ISRs, the completeness of prior art, the appropriateness and clarity of statements concerning novelty, and the appropriateness of the period for the preparation (and the period until the provision) of ISRs and Written Opinions.

3. Matters to be considered when selecting an ISA Costs paid in the international phase, the appropriateness of prior documents cited in ISRs, and the influence of cited documents stated in ISRs and Written Opinions, etc. on examination in the country where the application enters into the national phase were cited as the matters that are highly considered and given high priority.

In terms of costs, search fees paid when filing a PCT international application accounted for the highest percentage, and 75% of the offices, etc. chose it as their answer.

4. JPOasanISA

(1) Reasons for selecting the JPO as an ISA

The largest number of the offices, etc. answered that "The content of ISRs is high-quality" and "The technical scope covered by ISRs is appropriate," followed by "Costs for procedures at the JPO when filing a PCT international application are low" and "We have a plan to conduct business in Japan."

(2) Reasons for not selecting the JPO as an ISA

The largest number of the offices, etc. answered that "We do not conduct business in Japan," followed by "We have no problem with the ISA we have selected in the past" and "It is impossible to understand the content of cited document because many cited documents are available only in Japanese."

(3) Requirements for selecting the JPO as an ISA The largest number of the offices, etc. answered "English translations of cited documents that are available only in Japanese," followed by "Low costs for procedures at the JPO when filing a PCT international application."

Survey Results for the ASEAN Region

We conducted an overseas questionnaire survey targeting 29 offices, etc. in six ASEAN countries out of the countries subject to the survey, and also conducted an overseas local interview survey targeting 19 of those offices, etc. The outline of the survey results is as follows.

1. Selection of an ISA

The largest number of the offices, etc. in all of the countries subject to the survey which answered the questionnaire selected the EPO as an ISA in about the last three years, and 72% of the offices, etc. subject to the survey selected the EPO as an ISA, followed by the Korean Intellectual Property Office accounting for 52%, the JPO accounting for 45%, and IP Australia accounting for 34%.

2. Language used when filing an application English was used for all the PCT international applications filed in about the last three years.

3. Matters to be considered when selecting an ISA Costs paid in the international phase were cited as a matter that is highly considered and given high priority. Other matters that are highly considered and given high priority include the influence of cited documents stated in ISRs and Written Opinions, etc. on examination in the country where the application enters into the national phase, the appropriateness of prior documents cited in ISRs, the appropriateness of statements concerning patentability in Written Opinions, and languages used in prior documents that are cited in ISRs.

In terms of costs, the largest percentage of the offices, etc. answered that they consider search fees paid when filing a PCT international application, followed by reduction measures in each country's national phase and at the time of entering into the national phase of each country.

4. JPOasanISA

(1) Selection of the JPO as an ISA

55% of the offices, etc. answered that they had "never selected" the JPO as an ISA.

(2) Evaluation of ISRs and Witten Opinions issued by the JPO

The item for which the largest number of the offices, etc. made a positive evaluation was the "appropriateness of the period for the preparation of ISRs and Written Opinions," followed by the "determination of novelty in ISRs" and the "completeness of prior art in ISRs."

(3) Reasons for selecting the JPO as an ISA

The largest number of the offices, etc. answered that "Costs for procedures at the JPO when filing a PCT international application is low," followed by "We have a plan to conduct business in Japan" and "There is a parent company of the applicant or a joint applicant in Japan."

(4) Reasons for not selecting the JPO as an ISA

The largest number of the offices, etc. answered "We do not conduct business in Japan," followed by "It is impossible to understand the content of cited document because many cited documents are available only in Japanese." (

5) Requirements for selecting the JPO as an ISA

Many of the offices, etc. answered "English translations of cited documents that are available only in Japanese," and about 40% of the offices, etc. cited it as a reason, followed by "Implementation of document search in many languages," "Easy procedures," "Increase in the number of selectable languages," "Increase in the opportunities for conducting business in Japan," and "Low costs for procedures at the JPO when filing a PCT international application."

(6) Improvements of and requests for the JPO

There were many opinions in relation to language. Specifically, the offices, etc. pointed out the increase in document searches in English, the necessity of English translations of Japanese cited documents, including old patent/utility model documents that cannot be mechanically translated, and the improvement of accessibility to the JPO, including telephone information service in English.

Survey Results for Each Country Subject to the Survey

Regarding an overseas questionnaire survey targeting 52 offices, etc. in the 10 countries subject to the survey, the outline of the survey results concerning the frequency of and the standards for selecting an ISA in each country is as follows.

1. Singapore

(1) Many of the offices, etc. most frequently select IP Australia as an ISA.

(2) Many of the offices, etc. cited "Appropriateness of cited documents," "Languages used in cited documents," "Appropriateness of statements concerning patentability," and "Refusal rate when using the PPH" as matters to which they give priority when selecting an ISA.

2. Thailand

(1) Many offices, etc. most frequently select the JPO or the EPO as an ISA.

(2) Many offices, etc. cited "Clarity of statements concerning patentability" and "Period for the preparation of ISRs, etc." as matters to which they give priority when selecting an ISA.

3. The Philippines

(1) Many offices, etc. most frequently select the EPO as an ISA.

(2) Many offices, etc. cited "Costs in the international phase" as a matter to which they give priority when selecting an ISA.

4. Malaysia

(1) Many offices, etc. most frequently select IP Australia or the EPO as an ISA.

(2) Many offices, etc. cited "Languages used in cited documents" and "Costs in the international phase" as matters to which they give priority when selecting an ISA.

5. Indonesia

(1) Many offices, etc. most frequently select the EPO as an ISA.

(2) Many offices, etc. cited "Languages used in cited documents" and "Costs in the national phase" as matters to which they give priority when selecting an ISA.

6. Vietnam

(1) Many offices, etc. most frequently select the EPO or Rospatent as an ISA.

(2) Many offices, etc. cited "Influence in the country where the application enters into the national phase," "Costs in the international phase," and "Costs in the national phase" as matters to which they give priority when selecting an ISA.

7. United States

(1) Many offices, etc. most frequently select the USPTO as an ISA.

(2) Many offices, etc. cited "Costs in the international phase" as a matter to which they give priority when selecting an ISA.

8. India

(1) Many offices, etc. most frequently select the EPO as an ISA.

(2) Many offices, etc. cited "Costs in the international phase" as a matter to which they give priority when selecting an ISA.

9. Brazil

(1) Many offices, etc. most frequently select the Brazilian National Institute of Industrial Property as an ISA.

(2) Many offices, etc. cited "Costs in the international phase" as a matter to which they give priority when selecting an ISA.

10. South Africa

(1) Many offices, etc. most frequently select the EPO as an ISA.

(2) Many offices, etc. cited "Appropriateness of cited documents in ISRs" as a matter to which they give priority when selecting an ISA.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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