Development of Benchmarks of the Quality of Prior Art Search in International Patent Prosecution Processes
- Tetsuo WADA
Professor, Faculty of Economics, Gakushuin University
Patent applications through the Patent Cooperation Treaty (PCT) are increasingly important for applicants who seek patent protection internationally for valuable inventions. Applicants benefit from using the PCT system by obtaining International Search Reports (ISRs), which are created and published by International Search Authorities (ISAs) on the WIPO standard. Since major patent offices such as the Japan Patent Office serve also as ISAs, ISRs can be a basis for evaluating the quality of prior art search. We thus plan to conduct detailed analyses on international patent prosecution data to establish a method of benchmarking the quality of patent examinations, particularly the quality of prior art search associated with international patent applications.
Patent systems in the world are primarily designed domestically, where applications, examinations, and grants follow national rules. Patent examination quality differs among national patent offices as well. Since incomplete patent examination leads to invalid patent grants, which put innovations at risk through unnecessary litigation, it is desirable to establish a method of measuring the quality of patent examination across patent offices.
- Development of benchmarks of the quality of prior art search in patent examination
- (1) International Search Reports (ISRs) are created and published for international patent applications through the Patent Cooperation Treaty (PCT). ISRs are referred by national offices during the national phase of PCT applications. We will develop a method of benchmarking the quality of prior art search based on the completeness of ISRs relative to search results at national offices.
- (2) We will analyze exogenous factors to determine the quality of prior art search in order to refine our method of quality benchmarks.
- (3) We will examine the conditions of large-scale databases to evaluate the possibility of extending the scope of benchmarking methodologies.
- Research on the determinants of examination quality on the applicant’s side
We will analyze the attributes of applicants as contributing factors to the quality of patent examination in order to improve benchmarking methodologies.