**2.5 Substantive patent examination: main steps and related variables**

#### *2.5.1 Step 1: initial technical analysis*

When the examiner receives a new patent application for examination, it is clear that the first step, which may takes a longer time, is reading the application. In principle, as the examiner needs to carefully read the entire application and see the figures, further confirming if the claims are based in the description and if the matter is sufficiently described so that a third person skilled in the art can execute it, the relevant variable to be considered in this step is the application's total number of pages.

#### *2.5.2 Step 2: prior art search*

Upon the Initial Technical Analysis, the examiner should carry a prior art search aiming at determining the state-of-the-art closer to the matter claimed. For the searches, the examiner should basically consider the patent claim scope, more specifically its independent claims. Additionally, if the claims include several specifications and are quite extensive, an even greater effort shall be employed. Finally, the greater the number of classifications in the application, the greater the tendency to address more than one technological area or borderline regions, which can also cause the search to be even more complex. Thus, the number of independent claims, the number of pages of the patent claims, and the number of subclasses of the application may also be variables to be considered in this step.

#### *2.5.3 Step 3: specific technical analysis*

Upon searches and determination of the useful prior art for examination, the third major step is the comparison between the matter claimed and the knowledge *A Methodology for Evaluation and Distribution of Patent Applications to INPI-BR Patent… DOI: http://dx.doi.org/10.5772/intechopen.98400*

presented in the state-of-the-art, i.e., analysis of the patentability. This third step is hereinafter referred to as Specific Technical Analysis. Upon analysis of patentability, a detailed examination of the independent claims in the application is mandatory. Thus, the first relevant variable in this step will be the number of independent claims. As in the searches, if the claims are quite extensive and have several technical specifications, the effort applied will be greater. So the number of claim pages is also a relevant variable in this step. As in some cases, dependent claims are also analyzed in details, the possibility of using the number of dependent claims is considered, and, in this case, the total number of claims could be used as a variable of interest.

#### **2.6 Selected variables and initial hypotheses**

Twelve possible variables were initially identified to be used in this paper: number of pages of description (Variable 1); number of claim pages (Variable 2); number of pages of figures (Variable 3); number of third parties observation pages (Variable 4); number of independent claims (Variable 5); number of dependent claims (Variable 6); number of IPC subclasses (Variable 7); year of filing (Variable 8); number of inventors (Variable 9); number of priorities (Variable 10); number of references to the state-of-the-art in the patent document under examination (Variable 11); number of references to the patent document under examination in other patent documents (Variable 12).

Upon identification of the possible variables of interest, the following additional criteria were established for selecting study variables:


It should be noted that most of patent applications filed in INPI only include references to the state-of-the-art after a first examination, i.e., after the application has already been distributed, and references to other documents would still require access to more than one database. In this context, these variables are not deemed to fully meet the criteria of "moment of availability" and "reliability and efficiency". Thus, at first, the variables related to references will be disregarded, hence ten variables will be used to obtain data samples, which are: number of pages of description (Variable 1); number of claim pages (Variable 2); number of pages of figures (Variable 3); number of third parties observation pages (Variable 4); number of independent claims (Variable 5); number of dependent claims (Variable 6); number of IPC subclasses (Variable 7); year of filing (Variable 8); number of inventors (Variable 9); and number of priorities (Variable 10).

Based on the studies carried out with EPO data on voluminosity (volume of data) of a patent application, it appears that the volume of data that the examiner needs to deal with during the examination of a patent application is one of the main constraints on examination effort/time. Additionally, such studies indicate that voluminosity is a problem related to two patent application variables: total number of pages and total number of claims. Thus, a first assumption will consider that the

volume of data of a patent application can be represented by the variables with the greatest positive correlation with the total number of pages of the application and/ or with the total number of claims. Initial hypothesis 1 is that there are five variables directly bound to the volume of data: number of pages of description, claim pages, and pages of figures, in addition to the number of dependent and independent claims.

On the other hand, although most of the examination effort is bound to the direct volume of data that the examiner deals with, it is possible to note that there is still the hypothesis of existence of complementary variables, bound to an indirect and more subjective complexity, specifically related to the patent application itself, the applicants'strategy, or even particularities of the examination process. In this context, there are some variables suggested in the studies carried out; however, there is no consensus by the authors or in the studies carried out revealing the exact influence of each of them, if any. Initial hypothesis 2 is that there is, even if reduced, indirect influence of the other abovementioned variables.
