Summary of the Trilateral Conference
Berlin, 12 November 1999
The European Patent Office (EPO), the Japanese Patent Office (JPO) and the United States
Patent and Trademark Office (USPTO), meeting for the seventeenth Trilateral Conference inBerlin, Germany on 12 November 1999,-Pursuing implementation of the Kyoto Action Plan (November 1 997), including thelong-term objective of a worldwide patent granting system, by deepening mutual
understanding in search and examination and fostering the exchange of search results
among the Trilateral Offices through the Trilateral Network and examiner exchange,-Recognising the importance of the role of the Trilateral Offices as major International
Search Authorities and the necessity of ensuring the high reliability of International
Search Reports,-Recognising the increasing importance of new technologies for economic growth andthe need for a co-operative approach on patent searching and examination in thesefields,-Underlining the importance of electronic filing for patent applicants and the Trilateral
Offices’ wish to be able to offer a standardised system to the patent community, in cooperation with WIPO,-Emphasising more generally their efforts to develop their electronic business activities
in order to facilitate the patent grant procedure and dialogue with applicants and topromote dissemination of patent information,

Have agreed as follows (conclusions arranged by project number):
Project A1-A2: Electronic Filing of Applications; Networks and Data Exchange
The Trilateral Offices agreed on common technical standards for the electronic filing anddiscussed the processing, storage and record management of patent applications, including
certification, encryption and electronic signatures as well as the data content of digital
documents. The Offices will implement these standards (starting with interoperability pilots
from the beginning of 2000) and will start accepting electronic filing of patent applications
when their implementing rules have been amended (between 2000 and 2002). WIPO
indicated its willingness to move forward on the proposed standards.
The Trilateral Offices will present these standards to the WIPO Standing Committee on
Information Technology (SCIT) for discussion at its meeting in December 1999 for adoption
as the standards for the electronic filing, processing, storage and record management of
national and regional applications. They also expect them to form part of the future
Administrative Instructions under the PCT and thus become the standards for the electronic
filing of international applications. These standards are attached as Annex F (legal andtechnical principles for PCT filings), Appendices I and II (trilateral technical standard) to thePre-conference report. The proposed calendar is in Annex 1.
The POT Administrative Instructions and the SCIT technical standards will then become
applicable to PCT applications and, under the Patent Law Treaty (P LI), to national andregional filings, once the Treaty comes into force.
As regards the network, the Trilateral Offices anticipate the increased use of the Trilateral
Network (TSVPN) between the Trilateral Offices and WIPO. As regards electronic exchangeof priority documents, EPO agreed to eliminate its backlog of documents to be sent by CD-Rto JPO. The EPO and JPO agreed to complete an online data transfer test on application level
by December 1999 while continuing the CD-R exchange as a back-up. The USPTO agreed tojoin this exchange in the near future. There was also a common understanding to initiate theexchange of data in the field of search and examination. This exchange will be progressivelyextended.
For exchange of other types of documents, the Trilateral Offices agreed to set up anappropriate common infrastructure for online file transfer.
Project A3: Management Information Exchange
The Trilateral Offices have revised the format of the Trilateral Statistical Report and willcontinue to review the presentation format of the data (Project A3a: Trilateral statistics). They
also took note of the exchange of information and forecasting methodology on filingprojections (Project A3b: Factors affecting patent filings) and asked the working group toreport at the 18th Trilateral Conference.
B2: Database Production and Tools
The Trilateral Offices agreed to intensify their co-operation to improve and harmonise theirsearch environments with respect both to documentation coverage and to search tools. Threedifficulties have been identified:-Lack of harmonised search tools
Growth in patent and non-patent documentation
Fast emergence of new technologies

With this in mind, they made the following statement:
Locating the most relevant prior art is critical to the patent examination process. The Trilateral
partners have established a co-operative framework over many years to improve the quality
and quantity of prior art data and search tools available to theii examiners.
The emergence of the Internet and growth in electronic publication from non-traditionalsources of prior art provide new challenges and opportunities for the Trilateral Offices. In thisrespect, the Offices will be joining efforts to:(1)improve the comprehensiveness in coverage and integrity of their electronic
databases; -(2)strengthen access to published literature beyond patent documents, while respecting
copyright requirements;(3)

develop common internal databases, and search tools and techniques in specialized
areas of patentable subject matter; and,(4)

co-operate in supporting IPC reform in WIPO for the new millennium.

These efforts will not only benefit the proficiencies of the Offices, but also strengthen thepatent system for the user community.
B2a: First Page Database
The Trilateral Offices reaffirmed their commitment to produce the First Page database (EPOand USPTO part; PAJ), considering their internal needs and the interest within the scientificcommunity.
B2b: Gene Sequence Database
The Trilateral Offices took note of the report from the working group on biological sequences
and approved the following actions:-Regarding completeness of the databases, they have decided to carry out ~ jointly funded
quality study to compare the contents of the publicly available databases with the patentdocuments contained in the inventory files of the Trilateral Offices,-

regarding filing tools and methods, the Offices agreed to begin investigations into a new
sequence authoring tool,-

regarding search tools and methods, the Offices agreed to monitor biological sequencefiling statistics and trends and collate these semi-annually in a common report starting
mid-2000. Furthermore, it was also agreed to jointly investigate the use of external expert
support for the development and management of a future common biological sequence
search system,-regarding the processing of sequence filings on paper, the Offices recognised a significant
problem in that area and agreed to review the rules and procedures related to filing,priority document exchange and the publication of biological sequences with the aim ofeliminating the paper sequence listing.

B2c: F-Term Translation and Classification Issues
The Trilateral Offices agreed on the need for a common approach to classification, inparticular the reform of the IFC. They requested the working group on classification to prepare
a common position before the end of April 2000, if possible.
The EPO and JPO took note of the status of Fl translation as well as the plan for harmonising
Fl and ECLA.
B2g: Non patent literature
The three Offices noted the comparative study on the use of Non Patent Literature (NPL)
resources and instructed the working group to propose measures to improve access to NPL.
In particular, the working group should propose:
(1)
(2)
(3)
(4)

common framework for the citation of documents in search reportscriteria to evaluate the efficiency of the use of NPL resources
optimal search techniques and/or training guidelines for retrieving NPL articles
recommendations for effective management of the copyright aspects

B2i:

Quality of Exchange Data

The Trilateral Offices agreed on the importance of data quality for their own work and for thescientific community. They took note of the measures proposed by the working group on data
quality to improve the quality of the data to be loaded in their databases. As a first step, anerror feedback reporting mechanism will be set up between the three offices.
B3a: Exchange of Search Results
The ongoing concurrent search pilot project will be continued and evaluated in June 2000.
The JPO’s proposal for a new project (monitoring of search results) was supported by theUSPTO and EPO. It will be worked out in detail at expert level, for adoption at the next
Technical Meeting.
B3b: Mutual Understanding in Search and Examination
The JPO and EPO agreed to expand significantly the exchange of examiners in order topromote mutual understanding of search methods and tools, as well as to explore
possibilities for improving the search environment.
The three Offices have shown their interest for a comparative study on business method
related inventions. JPO and USPTO agreed to start such a study.
C:Dissemination of Patent Information

GLOBALPATThe production of the GlobalPat CD collection for dissemination of the First Page Database
was discussed. The USPTO confirmed its decision to end its participation in the project uponcompletion of production of the 1 998 data or in May 2000, whichever occurs first.
WIPO indicated that, subject to a SCIT decision in December, it was in favour of joining theproject as it was a most important documentation tool for small and medium-sized patentoffices.
MIMOSAThe EPO indicated that Mimosa version 3.6 (authoring software) was recently made available.
JPO has great interest in Mimosa version 4.0, and will participate in the cost of maintenance.
The USPTO will conclude its participation in Mimosa as of the end of 1999. WIPO will study
the possibilities of participating in the cost-sharing for Mimosa for the next two years.
WEBSITESThe Trilateral Offices agreed to study and make proposals on common criteria to measure theactivity of the different websites. The same group will also study the compared functionalitiesof the websites, including WIPO.

Annex 1Action Plan for
PCT On-line Filing
Background
This document, prepared by the Trilateral Offices, presents the actions required to progressfrom the current technical standard through pilots to an operational POT On-line Filingenvironment.
Decision Requested
Annex F and Appendices I and II are presented for consideration by the SC IT. This Action
Plan is presented for adoption by SCIT.
Action PlanWhenDec 1999
Dec 1999
Jan 2000
Jan — Jun 2000Jan — Mar 2000
Mar 2000.

Apr 2000
May 2000
June 2000
June 2000
July — Dec 2000

July 2000 — Mar 2001
Jan — Mar 2001

Mar 2001

WhatWhoAdoption by SCIT of this Action Plan.
SCITDiscussion of Annex F and Appendix I.
Issue draft Administrative Instructions forlBreview
Finalization of the PCT DTD
EPO, USPTO,
JPO and lB
Build lB Server to accept On-line FilingslB
Comments on draft Administrative
All PCI Offices
Instructions
Approval of Ticket Mechanism andPCT Assembly
definitions of its legal usage as well as ofelectronic signature mechanisms.
Instructs WIPO DG to adopt Als on e-filing
Administrative Instruction, Annex F andWIPO DG (afterAppendices adoptedconsultation)
PLT adopts Annex F and Appendices I/Il PLT Conference
for National and Regional filings
Adoption by SCIT of Appendices I/Il as
SCIT
WIPO STxx.
Publication of Administrative InstructionslB
POT On-line Filing Pilots
lB with EPO,USPTO and JPO
Preparation of DIDs for other POT
documents
Provide standard application test suites
to encourage third-party softwaredevelopments
PCI On-line Filing operationallB with EPOTUSPTO and JPO
lB with EPO,USPTO and JPO
lB