1. 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

2. 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.
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3. Previous Individual ISR Studies
USPTO
JPO
EPO
JIPA
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4. 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
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5. Study approach Phase 1 Phase 2 Phase 3
Characteristics of ISRs produced by the Trilateral offices from
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
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6. 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
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7. 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" *
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8. 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
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9. Non-official Language Citations
Official Languages
JPO
Japanese
EPO
English
French
German
USPTO
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10. 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.
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11. Phase 2 Description
Sample-based study of national phase first actions.
Approx 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.
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12. 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 *
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13. Documents Cited in the National First Action
ISA = National Office
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14. 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%
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15. 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.
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16. 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.
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17. Thank you for your attention!
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