TRAINING AND EDUCATION FOR PATENT EXAMINERS · TRAINING AND EDUCATION FOR PATENT EXAMINERS Tatiana...
Transcript of 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
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
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
Current training and education courses for patent
examiners in Japan Patent Office (JPO)
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
Current training and education courses for patent
examiners in Japan Patent Office (JPO)
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
Current training and education courses for patent
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
Current training and education courses for patent
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
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
Training and Education Program for
Patent Examiners (Draft)
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
Training and Education Program for
Patent Examiners (Draft)
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;
Training and Education Program for
Patent Examiners (Draft)
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
Industrial Applicability
Case studies.
Training and Education Program for
Patent Examiners (Draft)
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
Industrial Applicability
Training and Education Program for
Patent Examiners (Draft)
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.
Training and Education Program for
Patent Examiners (Draft)
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.
Training and Education Program for
Patent Examiners (Draft)
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.
Training and Education Program for
Patent Examiners (Draft)
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.
Training and Education Program for
Patent Examiners (Draft)
44
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