TRAINING AND EDUCATION FOR PATENT EXAMINERS · TRAINING AND EDUCATION FOR PATENT EXAMINERS Tatiana...

TRAINING AND EDUCATION

FOR PATENT EXAMINERS

Tatiana Carestiato da Silva Patent Examiner – INPI-Brazil

Advisor

Professor Hiroshi Kato – Nihon University

Tokyo - 22nd March, 2013

Long-Term Researchers from October, 2012 through March, 2013

Asia-Pacific Industrial Property Center (APIC)

Japan Patent Office (JPO)

1

• Overview

• Objectives

• Methodology

Introduction

2

Overview

Patent backlog + ever-increasing number of applications in

INPI;

Goals in the future:

First action 1 year after the request for examination

Final decision 2.5 years after the request for

examination

INPI-Brazil Paperless system, Organizational reform,

guidelines;

Hiring approximately 500 new patent examiners in the near

future;

3

Overview

Training and Education Program for Patent Examiners

Training and education for the “new” patent examiners

Training and education for (ALL) current patent

examiners

Japan Patent Office (JPO) Long experience in training

of Patent Examiners Agreements on cooperation with JPO

focusing on training activities with INPI-Brazil.

How can INPI-Brazil train and educate, efficiently, SO MANY

people who come from different technological fields?

4

Objectives

General Objectives

1. Discussing the programs for training and education for the

patent examiners important aspects and improvements

2. Understanding the social demands and the work-related

demands for the patent examiners

3. Understanding the most urgent issues in the patent

examination, especially in Brazil

4. Suggesting ideas to overcome challenges through the

training and education for patent examiners

5. Drafting a possible model of program for training and

education to increase efficiency of the patent examinations

(This model can be useful also for other patent offices.)

5

Methodology

The information was surveyed by the following means: Existing literature (books, professional articles, web sites);

Documents about training courses from JPO, INPIT and INPI-Brazil;

Interviews with Managers of JPO and INPIT, Professors from Universities and Patent Attorneys in Japan (total of 6 interviews);

Questionnaires about the training courses, submitted for managers of INPI-Brazil, Professors and Patent Attorneys in Brazil (total of 5 answers);

Documents related to 10 cases of patents granted in Japan, in the Pharmaceutical field, and the family documents filed in EPO and USPTO;

Data related to the number of applications, examinations and granted patents in INPI-Brazil;

Questionnaires regarding to the motivation, submitted for patent examiners in INPI-Brazil (total of 35 answers).

6

Methodology

Information from the interviews and questionnaires transcribed into

written notes from the recordings, translated into English, organized and

studied;

Information about training and education courses in Japan (provided

by JPO and INPIT) and in Brazil (provided by INPI-Brazil)

translated, organized and studied;

Quality of examination

10 cases of patents granted in Japan, in the Pharmaceutical field, were

deeply studied including technical report.

The final claims of these granted patents in JPO compared to the final

decisions and final claims in the EPO and USPTO.

“Fictional examination” of these 10 cases based in the INPI-Brazil

criteria.

7

Methodology

Speed of examination

Number of patent examinations in INPI-Brazil and JPO;

Level of motivation of the patent examiners at the INPI-Brazil

Assessment on what types of courses and activities could

increase their motivation in the future answered questionnaires

were analyzed;

The structure of the training and education courses in JPO and

INPI-Brazil studied, compared, analyzed and discussed;

Drafting a model of training and education program for patent

examiners

JPO experience in training programs

INPI-Brazil current situation.

8

• Importance of the patents

• Understanding the demands for the examination

• Quality

• Speed

• High technological knowledge & Updating

• Motivation

Background

9

Importance of the patents

Incentivizing innovation;

Incentivizing development and commercialization of

inventions;

Inducing disclosure of an invention; and

Enabling orderly development from broad prospects.

Patent

Innovation

Utilization

Information

Development

10

Understanding the demands…

Training Quality

Speed High level

knowledge &

Updating

Motivation

11

Quality

Importance of the quality

1. Lack of reliance of the granted patents diminish

the possibilities of patent utilization decrease new

technology and technology transfer;

2. Preventing unnecessary competition;

3. Maintaining a reliable patent system;

4. Clear guidelines with definition of the criteria for

novelty, inventive step and utility to put a priority on

patent examinations.

12

Speed

Backlog

1. Causes of backlog

The patent applications are explosively increasing from a total of 20,422 in 2004 to 31,765 in 2011;

The complexity of technology.

2. Problems of backlog

Negatively affect on patent quality through straining patent office resources;

Reduce the value of patents;

Reduce incentives for innovation;

Non-grantable applications may remain unexamined provisional protection for a longer period.

13

Speed

• First action: 25.9 months (2011)

• Backlog: 448,123 app

JPO

• First action: 72 months (2011)

• Backlog: 173,000 app

INPI - Brazil

888,198 868,025

716,812

573,279

448,123

27

29 29 29

26

20

22

24

26

28

30

32

34

36

38

40

0

100,000

200,000

300,000

400,000

500,000

600,000

700,000

800,000

900,000

1,000,000

2007 2008 2009 2010 2011

Number of applications awaiting the first action

First action pendency (months)

110,854

123,226

140,926

154,501 163,000

173,000

0

20,000

40,000

60,000

80,000

100,000

120,000

140,000

160,000

180,000

200,000

2005 2006 2007 2008 2009 2010 2011

Nu

mb

er

of

ap

plica

tio

ns

aw

aitin

g th

e f

irst

act

ion

14

Speed

• 19% : 2004 - 2011

• 2011: 84% domestic and16% are

from foreigners

• 55% : 2004 - 2011

• 13% : 2010-2011

• 2011: 24% domestic and 76% are

from foreigners INPI - Brazil

JPO

287,580

55,030

423,081

342,610

0

50,000

100,000

150,000

200,000

250,000

300,000

350,000

400,000

450,000

2004 2005 2006 2007 2008 2009 2010 2011

Pate

nt A

pp

lica

tio

ns

in J

PO

Domestic Foreigners Total

7,286 7,764

20,855

24,001

20,422

26,841 28,141

31,765

0

5,000

10,000

15,000

20,000

25,000

30,000

35,000

2004 2005 2006 2007 2008 2009 2010 2011

Pat

ent

Ap

plic

atio

ns

in IN

PI-

Bra

zil

Domestic Foreigners 15

Strategies applied to increase the operational

efficiency - Efforts to speed up patent examination

JPO

Outsourcing of prior

documents searches;

Paperless system;

Ensuring the necessity number

of examiners;

Accelerated examination

system and super accelerated

examination system.

178 187

197 213

225 233

246 242

0

50

100

150

200

250

300

2004 2005 2006 2007 2008 2009 2010 2011 Num

ber

of

searc

h o

uts

ourc

ing (

thousa

nd)

Dialogue-type outsourcing Delivery-type outsourcing Total of searches outsourced

0

200

400

600

800

1000

1200

1400

1600

1800

2000

Fixed-term examiners

Regular examiners

16

Strategies applied to increase the operational

efficiency - Efforts to speed up patent examination

INPI

Paperless system -

virtualization;

Ensuring the necessity

number of examiners;

Accelerated system

Green Patents

Preliminary Opinion

112

223

273 240

310

700

0

100

200

300

400

500

600

700

800

2005 2009 2010 2012 2013 2015-2018

Num

ber

of

Pa

tent Exam

iners

Number of Patent Examiners

in INPI-Brazil 17

Strategies applied to increase the operational efficiency

- Efforts to ensuring the quality and obtain stable rights

JPO

Interview with applicants and

attorneys;

Estimated period for initiating

patent examination;

Submission of information by

third part;

Examination accordance with

intellectual property strategies

of applicants;

Updating the examinations

guidelines.

INPI

Harmonization of

procedures, internal rules

and guidelines;

Structural reform.

18

High technological knowledge

& Updating

Patents are exclusive rights aimed at protecting inventions, and they should teach how to solve problems by technical means.

Patent examiners job

Deep knowledge about the Patent Law

Deep knowledge about examination practices

Deep understanding of the technology involved in their technological field

Technology progress study and updating.

19

Motivation

People actions based on

their motivation, desire or

ambition.

Patent examiners have to be

motivated to take challenge to

minimize the time and raise the

quality of examination.

Daily work is extremely

repetitive can decrease

their motivation reduce their

productivity.

Reading the patent

application

Understanding the invention

Checking Unity

Searching for prior art

documents

Comparison between

inventions

Checking novelty and

inventive step

Checking Description and Clarity

Taking a decision

Drafting notification

20

Training and educational programs for patent

examiners

• Current training and education courses for patent examiners

in Japan Patent Office (JPO)

• Current training and education courses for patent examiners

in INPI-Brazil

21

Current training and education courses for patent

examiners in Japan Patent Office (JPO)

Source: Japan Patent Office 22



NEW

REC

RU

ITS

Assistant examiner course

training

ASSIS

TAN

T EX

AM

INER

Training for the collegiate

examination

Special course

First-period training of examiner course

Later-period training of examiner course

EXA

MIN

ER

Training of applicable skills for

examination 1

Training of applicable skills for

examination 2

Appeal examiner course

SEN

IOR /

APPEA

LS

Training on inter-parties trial

Training on litigation and practical

application

Legal training of appeal examiner

Training of managers

Guidance on practical skills given to one assistant examiner by each senior

examiner

Legal Training: Attend lectures by legal experts, Attend college lectures as a

student, etc.

Language training: English, French, German, Chinese, Korean, etc.

Public administration training

Training on technology

23



30th-year Officials - Training for litigation and advanced practices; training for inter-partes trial

20th-year Officials - Training of directors

10th-year Officials - Training course for trial examiners

7th to 8th-year Officials - Practical ability for examination: Phase 2

5th to 6th-year Officials - Practical abitlity for examinations: Phase 1

3rd to 4th-year Officials - Second half of examiner training course

2nd-year Officials - First half of examiner training course

New Recruits - Assistant examiner course training

24


examiners in INPI-Brazil

Collecting ideas and needs

Patent Examination

Divisions/

Patent Directorate

(DIRPA)

Patent Examiners

Training Group

Decide the contents,

topics, draft a program

Discussion & Coordination

Implementing training

Corporate Education

Center (CETEC) /

Human Resources

Coordination (CGRH)

Planning the training

programs

Implementing training:

organization, execution

and assessment

Instructors

Outside instructor

Inside Instructor

DICOD, International

Corporate & Academy

25


examiners in INPI-Brazil V

ERY N

EW P

ATE

NT

EXA

MIN

ERS

PROAMB

Initial training and education course

N

EW P

ATE

NT

EXA

MIN

ERS

Training in controversial matters

Specific guidelines

Response to the manifestation of the

applicant

EXA

MIN

ER

Program for development of teams;

Program for development of

managers

Guidance on practical skills given to an assistant examiner by a senior examiner

Exchange experiences in patent examination with patent examiners

from overseas

Lectures about current issues

License (4 or 8 hours) for study in a Ph.D. program of an University

Participation in national congresses 26

Analyses and Discussions

• Quality

• Speed

• High technological knowledge,

Constant updating& Motivation

27

Quality

Case JPO EPO USPTO INPI (Fictional)

1 G, A, R, D NG, D NG NG (Articles 10 VIII

and 32)

2 G, NA IP (G), A, R, C G, A, R, C G, A, R, C

3 G, A, R, C, D G, A, C, D G, A, C NG, A, R, C, D

4 G, A, R, C, D IP (G), A, R, C, D NG ISD, A, R, C, D

5 G, A, D - - G, A, R, D

6 G, A, R, C, P-

Appeal

G, A, C G, R, divided ISD, R, C, D

7 G, A, R, C, D G, A G, A, R, C G, A, R, C, D

8 G, A - G, A G, A

9 G, R, D IP, R G, R G, A, R, D

10 G, A, R, C, D, Test,

Appeal

G, A, R, C, D, Test G, Therapeutic

Method

G, A, R, C, D, Test

Comparison of the final claims and discussions during the examination

in the principal Patent Offices (JPO, EPO and USPTO) and INPI-Brazil

(fictional examination), in the pharmaceutical field

Differences related to

the final decisions

JPO - EPO: 12.5%

JPO - USPTO: 22%

EPO - USPTO: 12.5%

INPI – JPO: 20%

INPI: 20% of the decisions

would be conditioned to a

greater discussion about

inventive step.

The quality of examinations

in INPI-Brazil reaches the

high quality of the best

patent offices worldwide. 28

Speed

Number of the substantive examination, granted patents,

rejections and final decisions in INPI-Brazil from 2006 to 2010

Increase of:

• 87% in the number

of examinations;

• 30% in the number

of granted patent;

• 82% final decisions (including only granted patents

and rejections)

8,827

11,462

13,879

17,362 16,532

3,851 2,679

5,553 5,652

7,014

0

2,000

4,000

6,000

8,000

10,000

12,000

14,000

16,000

18,000

20,000

2006 2007 2008 2009 2010

Substantial examinations Granted Patents

Rejected Final decisions

29

Speed

220 231

239

62

78

61

82 84 80

48 51 51 58 61 67

0

50

100

150

200

250

300

2008 2009 2010

JPO INPI-Brazil USPTO EPO SIPO

Total number of examinations per patent examiner in JPO, INPI-Brazil,

USPTO, EPO and SIPO per year 30

Speed

Total number of first actions

in INPI-Brazil

Total number of first actions

in JPO

307,665

342,654 361,439

377,089 363,876

0

50,000

100,000

150,000

200,000

250,000

300,000

350,000

400,000

2007 2008 2009 2010 2011

Num

ber

of

Fir

st A

ctio

n in J

PO

7593

5449

4507

28

23

19

0

5

10

15

20

25

30

35

40

45

50

0

1000

2000

3000

4000

5000

6000

7000

8000

9000

2010 2011 2012

First Actions First Actions per Number of Examiners 31

0

2

4

6

8

10

12

14

16

Strongly motivated

Motivated Low motivated ou indifferent

Non-motivated Strongly non-motivated

Num

ber

of

Pa

tent

Exa

min

ers

High technological knowledge,

Updating& Motivation

35% motivated or

strongly motivated;

44% low motivated or

indifferent;

26% non-motivated or

strongly non-motivated.

Level of Motivation of the Patent Examiners

in INPI-Brazil on March 2013

32

High technological knowledge,

Constant updating& Motivation

19

17

16 13

12

8

7

4 4 4

Visiting enterprises

Practical courses in examination and debates with IP people

Courses abroad with short duration

Technological courses with high level Professors

Participating in national congresses

Legal training

Language training outside INPI

Language training inside INPI

Participating in congresses abroad

Courses abroad with long duration

INPI High

technological level

knowledge of the

patent examiners

minimum Master

Degree 60% PhD

Training and education courses by preference

of patent examiners from INPI-Brazil

33

Drafting of Course for Patent Examiners

34

FIRST STAGE – (“PROAMB”) – General issues

Presentation of Patent Office

Behavior as a Patent Examiner/Government employee

Proper Attitudes at work

Professional attitudes at work

Ethics as Government Employees

Law of Federal Government Employees (Law 8112/1990, Law 9962/2000)

Business manners

Communication at the office

Details of the job (payment, health insurance, etc.)

Drafting Administrative Documents

Training and Education Program for

Patent Examiners (Draft)

35

FIRST STAGE – (“PROAMB”) – Law course

Outline of Intellectual Property

Outline of National Patent Law and Utility Model Law

Outline of Design Law

Outline of Trademark Law

Outline of Paris Convention and TRIPS Agreement

Outline of Patent Cooperation Treaty (PCT)

Flowchart of Procedures from Filing Patent Application

to Grant of Patent



36

FIRST STAGE – (PROAMB) – Examination Course Outline of Patent Examination

Novelty

Inventive Step

Industrial Applicability

Specification

Clarity

Unity

Prior Search

International Patent Classification (IPC)

Search Tools

Case studies

Drafting a notification – Specific cases



37

SECOND STAGE (1 year after recruitment)

Details of National Patent Law 1

From filing of patent to the end of examination

Details of Paris Convention and TRIPS agreements;

Details of Patent Cooperation Treaty (PCT);

Drafting the notification after arguments from the

applicant;



38

SECOND STAGE

Practice of Patent Examination 1 Debating and

practical courses with IP staff from companies and

Patent Attorneys

Patentability

Specification

Novelty

Inventive Step


Case studies.



Unity of Invention

Priority

Grace Period

Amendments

Divisional Application

39

THIRD STAGE (2 years after recruitment)

Details of National Patent Law 2

Appeal and Litigation

Practice of Patent Examination 2 Debating and

practical courses with IP staff from companies and

Patent Attorneys

Patentability

Specification

Novelty

Inventive Step




Unity of Invention

Priority

Grace Period

Amendments

Divisional Application 40

THIRD STAGE

International Search Report and International

Preliminary Opinion Report (PCT)

Refreshing search tools and strategies

PCT rules

Drafting search and opinion reports

Controversial Themes in Patents;

Case studies.



41

FORTH STAGE (5 years after recruitment)

Practice in legal

inter-parties-trial training;

training and education on litigation and practical

application; and

legal training and education for appeal examiners.

Visiting the High Court and discuss with the Judges and

IP experts.



42

FIFTH STAGE (6 to 10 years after recruitment)

IP Practice

Visiting enterprises and discuss about their patent

strategies;

Patent Licensing;

Patent Utilization;

Litigation and enforcement.



43

OTHER COURSES

Visiting the enterprises to learn details of the production,

innovative products and their IP strategies;

Training courses on high technology with high level

Professors in the INPI-Brazil;

Participation in national conferences on IP and technology;

Training courses abroad;

Language training English, Spanish, French, German,

Japanese and Chinese;

Participating in training and education programs in industrial

property outside INPI-Brazil.



44

Conclusions

45

Conclusions

1. It is unanimity among the experts in IP interviewed in this

study that the training and education courses are strongly

important for the development of the patent examiners.

2. The main social demands and the main work-related

demands for the patent examiners chosen in this work,

seems adequate to the analyses planned:

Quality

Speed

Updating

Motivation

46

Conclusions

3. There are some important differences between the training

and education for the patent examiners in JPO and INPI-

Brazil.

INPIT

General issues training in the first step

More patent steps for patent examiners

Training for appeal examiners

4. VERY GOOD points in INPI-Brazil

High quality of the examinations in line with the best

practices among Patent Offices

High level of technological knowledge of the patent

examiners

47

Conclusions

5. Some urgent demands in the patent examination,

especially in Brazil

Increase Speed of the examination

Increase Motivation of the patent examiners

6. It provides some ideas to overcome challenges through

the training and education for patent examiners.

7. It is possible to draft a possible model of program for

training and education adequate for patent offices

worldwide

increase efficiency of the patent examinations.

48

Acknowledgments

Professor Dr. Hiroshi Kato

Japan Patent Office (JPO)

Instituto Nacional da Propriedade Industrial (INPI-Brazil)

Asia-Pacific Industrial Property Center (APIC)

Interviewed (Japan): Dr. Mitsuaki Sato, Professor Dr. Yoshitoshi Tanaka, Mr. Yuji Okuma, Dr. Sumito Tanaka, Dr. Chiaki Komatsu, Dr. Yukitoshi Morikawa, Dr. Takashi Fujita, Dr. Teruhisa Shimomichi

Interviewed (Brazil): Dr. Sérgio Bernardo, Professor Dr. Denis Barbosa, Dr. Evandro Julião, Dr. Liane Caldeira Lage, Dr. Flávia Elias Trigueiro

TMI Associates; Mr. Yoshiyuki Inaba, Mr. Kazuhiko Naito

JPO: Mr. Isao Honzawa, Ms. Eriko Oikama, Ms. Ayano Ono

Ms. Satoko Miyasaki, Ms. Yukiko Koyanagi

Ms. Zhang Wei, Ms. Mariko Takahashi, Ms. Yoko Okazaki, Mr. Roberto Carapeto

Friends from INPI-Brazil and APIC 49

Thank you!!!

50

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