The European Patent Office (EPO), the Japan Patent Office (JPO), and theUnited States Patent and Trademark Office (USPTO) met at the 28th Trilateral
Conference in Alexandria, Virginia, on November 19, 2010:
Reconfirming their commitments to Trilateral cooperation based oncommon recognition of the role of industrial property as a basic system
supporting the progress of industry, technology, and international
economic growth,Identifying timely processing of increased workloads of patentapplications and high quality examination processes as common
objectives of the Trilateral Offices and its user communities,

Acknowledging the benefits of promoting reduction of processing times
and reducing or eliminating redundant work through a coordinatedTrilateral approach,

Reaffirming the significance of the IP5 Co-operation and its foundation
projects,

Noting the importance of enhancement of the cooperation between theTrilateral Offices and its user communities,

Understanding the benefits of harmonizing patent law and procedures,

Recognising the benefits of developing common infrastructure andcompatible data for electronic business systems and search tools,

Reaffirming the value of patent information as means for raising thequality of applications filed,Highlight the following as major achievements of the common efforts of thethree Offices this year:
Agreed on the extension of the scope of the PPH pilot utilizing PCT
work products by inviting KIPO and SIPO also with a view toexpanding the potential of work sharing cooperation and to promoting
the PCT

Implemented pilots or programs within the Trilateral framework tobalance and prioritize workloads to maximize re-use of search andexamination resultsImplemented a pilot for use of a Trilateral common citation documentwith a view toward facilitating the efficient access and reuse of searchand disclosure efforts for related applications

Compiled a Catalog of Differing Examination Practices to facilitate
work sharing by providing examiners with an enhanced1

understanding of the similarities and differences in each Office’s laws
and practices


EPO and USPTO commenced a limited PCT collaborative search andexamination pilot to allow for the production of a single search report
to increase understanding and trust among examiners and provide ameans for studying reusability of work resultsCompleted migration of Trinet to the new IPSec devices

Furthermore, understand as follows:
1. Work Sharing (Project WM1)
The Trilateral Offices reaffirmed their commitment to further development of thevarious work sharing initiatives in order to maximize reuse of each offices’ work
product to increase the efficiency and effectiveness of their own search andexamination. The Trilateral Offices will continue to explore methodologies
thereof.
(a) Patent Prosecution Highway
The Trilateral Offices agreed to continue work on the Patent Prosecution
Highway as an important element of Trilateral worksharing activities and forstrengthening the PCT. The Offices will continue the PCT-PPH pilot and willevaluate the pilot with an interest toward expanding the pilot to the IP5 Offices.
The EPO and the USPTO have extended the period for the bilateral pilot
program until January 28, 2012. The EPO and the JPO commenced a two year
bilateral pilot program in 2010. The JPO and the USPTO have implemented thePPH on a permanent basis since January, 2008.
The JPO and the USPTO will promote usage of the PPH through cooperationon outreach and education and will work toward expanding the PPH program toother intellectual property offices.
(b) SHARE
Whereas prioritization of first filings is standard practice for the EPO, the JPO
has realized the concept of SHARE in the JP-FIRST initiative. The USPTO hascommenced a pilot project known as FLASH to test the feasibility of balancing
and prioritizing workloads to maximize re-use of search and examination results
according to the SHARE concept.
The Trilateral Offices agreed to adopt and utilize where feasible work sharing
surveys having common content for use by examiners. This survey will assist inmeasuring the benefits of the programs and will provide the offices withfeedback to improve procedures.

2(c) Common Citation Document
The Trilateral Offices agreed to implement a pilot program to evaluate the useand format of the Common Citation Document for sixty (60) patented files. The
EPO will host the data for the Common Citation Documents. The Trilateral
Offices agreed to look closely at their internal processes for the production oftimely and enhanced citation data. Agreement was reached that following aperiod of capturing feedback from the Offices and Trilateral Industry, Version 1of the product, which will include available citation data from each of theTrilateral Offices, would be deployed to the public at the Trilateral Conference in2011.
2. Examiner Exchange (Project WM3)
The Trilateral Offices agreed that examiner exchange programs have been aneffective means to build confidence among the Offices. Accordingly, the Offices
agreed to continue this work through IP5 cooperation to advance this objective
and to make more efficient use of resources.
3. E-learning (Project WM3)
The Trilateral Offices agreed to fully integrate this project into IP5 cooperation
within the purview of WG3.
4. Using the PCTThe Trilateral Offices recognized the importance of continuing efforts on using
the PCT system to its full potential and agreed to continue to explore, andimplement, where feasible, various proposals to advance the PCT Roadmap.
The three Offices agreed to strive toward improving the PCT process in order tooptimize reuse of PCT work within the national stage in the Trilateral Offices.
The EPO and the USPTO have implemented a limited PCT collaborativeinternational search and preliminary examination pilot as one component of theRoadmap.
5. Examination Practices and Quality Issues (Project LEG)
The Trilateral Offices compiled the first draft of a Catalogue of Differing
Examination Practices. The Trilateral Offices recognized that the Catalogue
could be beneficial for examiners utilizing the work results in other Offices,
provide a basis for improving quality, as well as, serve as a valuable tool for
applicants. Having shared the draft catalogue with the Trilateral users, theOffices agreed to integrate the Catalogue into the IP5 Foundation Project 9 andextend it to KIPO and SIPO with a view to having it be made publicly available
after evaluation with a restricted group of examiners of the five Offices. TheOffices further agreed to discuss in parallel, additional topics that could beadded to the Catalogue.
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The Trilateral Offices agreed to enhance quality management and investigate
measures for improving quality. The three Offices agreed to undertake a studyof the quality of International Search Reports, and propose improvements, withan expected completion date of November 2011. As part of this effort, theOffices agreed to participate in a pilot collaborative study on quality metrics.
This study will be moved to the IP5 upon conclusion of the study.
Recognizing the importance of patent quality to the global intellectual property
community, the Trilateral Offices agreed to explore development of composite
metrics including statistical data and stakeholder perception information.
6. Enhancement of IT Collaboration
The Trilateral Offices agreed to continue developing and supporting the IP5Foundation projects to support work sharing.
The Offices agree to continue existing work under the Trilateral Technical Data
Standards Area Working Group with the aim of completing the work of thisgroup by the end of 2011.
(a) Priority Document Exchange (Project DTR3)
The Trilateral Offices reaffirmed the importance of conducting on-going
discussions on security of the Priority Document Exchange (PDX) System.
The Trilateral Offices agreed to take a new measure to improve the security ofthe current TDA-PDX scheme as early as this year. The Trilateral Offices willcontinue to cooperate in working with WIPO to improve the usability andsecurity of the WIPO Digital Access Service (DAS).
(b) Electronic Filing, Data Standards (Project EB1, STD1)
Aiming toward realization of the use of XML in all three Offices, the Trilateral
Offices will continuously exchange information on the status of enhancing XML
based e-filing and processing in each of the Offices.
The Trilateral Offices will promote the use of the Common Application Format
with its users.
Recognizing the efficiencies that may be gained from developing common
standards, the Trilateral offices agreed to work toward standardizing XML
format for PCT forms, define business requirements for data exchange
standards, and work toward fulfilling those requirements.
The Trilateral Offices agreed to work with WIPO towards developing a revised
standard for the presentation of sequence listings with the aim of having therevision ready for the adoption process at WIPO by the end of 2011(c) Paper Zero Emission
4

The Trilateral Offices will continue to consider legal and technical issues topositively support the IB’s goals of digitization. The Trilateral Offices willcontinue to develop the “Paper Zero Emission” project which handles PCT
documents in electronic form.
(d) TRINet (Project IT3)
The Trilateral Offices adopted a revised Security Policy for Trinet in order toimplement standards for Trinet security controls.
The Trilateral Offices have agreed that it is important to assess what types ofdocuments and information are exchanged, and how secure the exchange ofdifferent types of information needs to be, in order to determine the best methodof exchanging information in each case. Accordingly the Trilateral Offices will
carry out a study with the aim of using the most suitable networking for eachtype of application with the intention of having secure exchange open to all
IPOs in the future
7. Classification (Project WT2)The Trilateral Offices will continue their work on the outstanding Harmony
projects and will finalize the existing Harmony projects in 2011. The three
Offices will work towards a smooth transition of the Harmony projects into theIP5 cooperation framework.
8. Information Dissemination/Public Awareness (Project PI)
The Trilateral Offices agreed on a revised “TRILATERAL POLICY ON THE USE
OF EXCHANGED ELECTRONIC INDUSTRIAL PROPERTY INFORMATIONDATA”. The policy is contained in Annex 1 of this MOU. The intention of thisrevised policy is to enhance and expand access of exchanged data in order toimprove dissemination of information to the patent information user community.
The Trilateral Offices agreed to consult and provide advanced notice ofchanges in format and media for exchanging data in order to minimize
processing disruptions to the Trilateral Offices and external customers.
The Trilateral Offices agreed to continue discussions with industry and to raiseawareness of activities ofTrilateral cooperation.
9. Statistics (Project MAN)The Trilateral Offices agreed to change the name of the “Trilateral Statistical
Working Group” to the “Four Office Statistics Working Group” to reflect thestatus of the Korean Intellectual Property Office as a full member of thisWorking Group. The Trilateral Offices will work towards transitioning the Four
Office Statistics Working Group into the IP5 framework.

5Annex 1

TRILATERAL POLICY ON THE USE OF EXCHANGEDELECTRONIC INDUSTRIAL PROPERTY INFORMATION DATA(TRILATERAL INFORMATION DISSEMINATION POLICY 2010)
1.

PREAMBLE

The Trilateral Offices exchange industrial property information data (e.g.,document images, text data, bibliographic information, etc.) for the mutual
benefit of the Offices and the public. This data may be provided on various
electronic data carriers, e.g. optical discs, magnetic tapes, the Internet, FTP, etc.
These are free exchanges and result from agreements between the Offices
involved in the exchange. The policy on the use of this data is set forth in thisdocument to provide uniform minimum guidelines for using the data exchanged
under this agreement.
This agreement supersedes the previous Trilateral Office Policy on the Use ofExchanged Electronic Industrial Property Information as agreed among theTrilateral offices in Annex 1 to the Memorandum of Understanding, dated
November 9, 2001. The intention of this agreement is to implement a liberalview and rules on exchanged data in order to improve support of the patent
information user community.

2.

DEFINITIONS

2.1.

INSTITUTIONAL DEFINITIONS

2.1.1.

Libraries

2.1.2.
“Libraries” shall be understood to cover institutions governed directly by
Offices or operated as non-commercial institutions authorized todisseminate industrial property information, and established or controlled
by public or semi-public bodies (for example, depository libraries) for the
dissemination of information to the public.
Member offices
A “member office” is an individual industrial property office belonging toan organization of industrial property offices, e.g., the European Patent
Office (EPO).

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2.1.3.


Third parties
A “third party” is any industrial property office, organization, academic
institution, individual or enterprise, which is neither the data providing
Office nor the data receiving Office (or its Libraries or Member States).

2.2.

USE OF DATA

2.2.1.

External use“External use” of data means the use, the processing, and the provision of theexchanged data to third parties (which are not patent offices) for personal use,for company use and for commercial use.
2.2.2.

Internal use“Internal use” of data consists of “official use”, “library use” and "dataexchange use" by the receiving office as provided for below:
2.2.2.1.

Official use“Official use” is the use of data by officials of a receiving Office or, whereapplicable, by an official of a library:
1. in the course of official procedures for the grant of industrial
property titles, including search, examination, maintenance andappeal procedures;
2. for the purpose of statistical and technical analyses in theframework of the official business of the Office;3. to provide an inquiry service for the public to meet specificrequirements of individual and corporate users based on theirown needs;
4. for the purpose of providing systematic training activities,
provided that the use of the data is compatible with fair practiceand does not exceed the extent justified by the purpose; or
5. for the purpose of providing copies of the data for the use of thereceiving Office or library.
6. for the use in any existing or future public services of thereceiving office such as IPDL, esp@cenet etc.
7. for the purpose to provide tools in order to support the users
community in using industrial property information more efficiently

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2.2.2.2.

Library use“Library use” is the use of data by members of the public in search rooms ofIndustrial Property Offices or in libraries.
2.2.2.3.

Data exchange use"Data exchange use" is the use of exchanged data for provision to third party
patent offices (under the condition of mutual acceptance of the reciprocity
principle).
2.3.

DATA TYPESThe policy laid down in this document applies to all types of exchanged data,
i.e. bibliographic data, coded data, image data, abstracts data, translated data,classification data, statistical data etc. as set or subset of data of the receiving
or providing office, further also as subset or as database containing data fromseveral offices.

3.

BASIC PRINCIPLESThe Trilateral Offices share the common understanding that industrial property
information shall be provided to the public and to any third party based on theexisting principle of marginal cost or free of charge. In order to support a barrier
free flow of information among patent offices, data exchanged by the trilateral
offices may be provided to third party patent offices in accordance with theseguidelines and under the condition that the reciprocity principle is accepted by
the third party patent office.

4.

POLICY

Industrial property information data provided as part of a free exchange by theTrilateral Offices is provided by the originating Office for the internal andexternal use of the receiving Offices.
This means in detail:
4.1.

AUTHORISATION FOR INTERNAL USE
1. Receiving offices are allowed to use exchanged data internallywithout any restrictions for 'official use' and 'library use'.
2. Receiving offices are allowed to provide exchanged data to third
party patent offices under the provision that in accordance withthese guidelines the reciprocity principle is respected by the thirdparty patent office.

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4.2.

AUTHORISATION FOR EXTERNAL USE
1. Receiving offices are allowed to provide exchanged data in anyform (including bulk form) to third parties (which are not patentoffices) for external and commercial use.

4.3.

AUTHORISATION TO DISSEMINATE AS A PUBLIC SERVICE
1. Offices, having received exchanged data may provide publicaccess to all or parts of these data as part of a public service, forexample, using the Internet.
2. The provision of such data underlies no restrictions, neither involume nor in functionality.

The Trilateral Offices share the view that exemptions to any of these principles
laid down above shall be restricted to the absolutely necessary minimum andshall be communicated to the receiving Offices in written form.

5.

COPYING AND SHIPPING COSTS

The costs of copying, shipping or any other technical way of data provision forexchanged data shall be borne by the Office providing the data.

6.

WARRANTY AND DATA QUALITY

The originating Office will be the authoritative source for data provided directly
to receiving Offices.
Third party recipients of Trilateral exchanged data shall hold free the originaloriginating Office of any liabilities for any reason, including defects of theprovided data (.e .g. re. the completeness , accuracy and correctness of thedata made available or supplied to a third party). Third party recipients waive allrights to claims against the originating Office.
Claims from third parties are to be dealt exclusively with the Office directly
providing the data for internal or external use. In any case the Office providing
the original data is not responsible for data provided by the receiving Office toany third party.
Any questions, issues, or support, and costs associated therewith, arising fromthe data provided to the third party shall be handled by the Office directly
providing the data and not the originating Office.

Alexandria, November 20109