Summary of the Trilateral Conference
San Francisco, 9 November 2001
The European Patent Office (EPO), the Japan Patent Office (JPO), and the UnitedStates Patent and Trademark Office (USPTO) met at the Nineteenth Trilateral
Conference in San Francisco, California on November 8-9, 2001.
The Offices met to reconfirm their commitments to Trilateral cooperation based oncommon recognition of the importance of industrial property as a basic system
supporting the progress of industry, technology, and economic growth.
The Offices agree that the main issue they currently face is the increasing workload
stemming from the growth of the number of applications both from national orregional origin or through the PCT. The Offices have implemented several
strategies for addressing the situation: hiring a large number of examiners,
improving the productivity of their work, and investing in automation anddocumentation tools. While these efforts are important, the Offices agree a greatercommon and coordinated effort needs to be undertaken to address the workload
situation.
The Trilateral Offices agree to carry out a reflection on strategic issues related tothe evolution of the patent system, including the PCT. This will include a better
understanding of the users’ needs according to the different industrial sectors,
more flexibility in the implementation of the patent granting procedures, better useof exchanged search results based on a better understanding of search andexamination carried out in the partner Offices.
In order to address these issues the Trilateral Offices agree to the creation of twowork groups: one group to focus on medium/long-term strategic issues related toreduction of Office workloads and another group to explore technical solutions tothe workload problems such as automation, networking, electronic filing, etc. The
second group will also deal with the PCT expanded International Search Reports
and changes to PCT Minimum Documentation necessitated by electronicsearching. WIPO is invited to contribute to these working groups according to its
expertise.
With this in mind, the Trilateral Offices agree as follows (conclusions arranged byproject number):
Project Al Electronic Filing of Applications
In order to guarantee continued harmonization of online filing software systems,
the Trilateral Offices agree on a Change Management Procedure for Annex F ofthe PCT Administrative Instructions and its associated components that will be
submitted by the International Bureau to the PCT Member States for comment andadoption. The Trilateral Offices propose that all changes be packaged together into1

annual releases, except for emergency situations, that will come into force onJanuary 1St of each year.
Project A2 Networks and Data Exchange
To support the efforts of the Trilateral Offices to address expanding workloads andprovide harmonization of data to facilitate communication with applicants, theTrilateral Offices agree to develop standards to encompass all office-applicantcommunications. This would support JPO’s move to XML based systems and theUSPTO’s TEAM project scheduled in 2004 as well as the EPO’s ongoingdevelopments in epoline A rationalized working group structure has been put intoplace as a result.
Because the exchange of priority documents represents a significant volume ofdocuments, the Trilateral Offices reconfirmed the importance of reducing costs forthe applicants and workloads in the Offices through the electronic exchange ofpriority documents.
The Trilateral Offices agree on the Trilateral Network (TriNet) Security Policy andthe operational procedure for the TriNet Security Authority. The Trilateral Officesalso agree on additional specific requirements of the Draft Protocol for Adding New
Members to the TriNet.
Project A3 Management Information Exchange
The Trilateral Offices will present by 31 December 2001, a revised format of theTrilateral Statistical Report. The 2001 Report will expand statistical informationsuch as the number of PCT applications in the national phase for each Trilateralregion and the number of applications filed from one Trilateral region to anotherindependently from the number of designations. This data should promote trilateral
cooperation and will enhance public understanding of the global patent process.
The Trilateral Offices confirm that the data used for forecasting patent filings ineach region will be further expanded in the coming year as a further step toward
cooperative forecasting, and that the offices will continue to cooperate in preparing
a joint applicant survey, which is tentatively planned to be launched in 2003.
Project B2b Gene Sequence Database
The Trilateral Offices agree to investigate the creation, in the long term, a wrapped
application document on a CD with a human readable certification for exchanging
priority documents for biological sequences and for processing biosequence
applications. The Trilateral Offices also agree to explore the possibility of creating aunified database approach related to storage and methods for disseminating
sequence data.
The Trilateral Offices agree to recommend a review of a revision, of ST.25 toexamine the question of Inventor’s name field. The database providers NCBI, EBI,and DDBJ will be consulted on the revision. The Trilateral Offices agree to2

propose a discussion of this issue at the next Standards Working Group of theStanding Committee of Information Technologies.
Project B2c F-Term/Classification Issue
The three Offices agree to work towards a common classification as a means
towards coping with increased workloads.
To accomplish this goal, the Trilateral Offices will redirect their classification
resources towards a common system through cooperation in reclassification
projects concentrating in the most active technologies.
The Trilateral Offices recommend that this harmonized system will form the basis
for the advanced level of the International Patent Classification.
Project B2g Non-Patent Literature
The Trilateral Offices will collaborate on a list of desired capabilities for theelectronic presentation and searching of defensive publications. Recognizing theincreasing importance of non-patent literature, the Trilateral Offices also agree tobegin an effort to share data related to their non-patent literature databases.
Project B2j Data Exchange/Data Quality
The Trilateral Offices agree to establish a working group related to the exchange ofsearch results preferably in an electronic format. The working group will review
both the exchange of national search results and search results for PCT cases.
Project B3a Exchange of Search Results
Paris-Route Pilot Program
The Trilateral Offices adopted the final report on the 1999 Paris-route pilot
concurrent search program and agree to publish the report on the Trilateral Website.
Use of PCT cases with Focus on Business Method Applications
The Trilateral Offices conducted a concurrent search program using 20 PCT
business method related inventions. The three Offices adopted the final report andagree to publish the final report on the Trilateral Web site. The three Offices agree
to further exchange of information in this field for search tools and practices under
the Trilateral cooperation for Patent and Non-Patent Literature.
Investigation of use of ISR
The JPO and EPO reported the results of the investigation of the use of TSR, inparticular, with respect to an analysis of additional documents used during theregional phase. The study confirms that citations in the international search report3are beneficial for reducing the workload during the further processing of theapplication by other offices. The study also shows that the degree of convergenceof search results varies significantly with the technical field.
The JPO and EPO will proceed with a more detailed evaluation and report theresults during the next Trilateral meeting.
Project B3b Mutual Understanding in Search and ExaminationThe Trilateral Offices adopt the report on the comparative study conducted by thethree Offices on “reach-through claims” (claims to future inventions based on
currently disclosed inventions) and agree to publish the final report on the Trilateral
Web Site since it would provide useful information to the user community on thepatentability of such claims.
The requirements for industrial applicability, utility, enablement, support, clarity andwritten description requirements of hypothetical claims were discussed in thereport, and the Trilateral Offices were found to have similar opinions concerningthese requirements.
The Trilateral Offices also agree to continue the project of information exchange
concerning utility requirement of nucleic acid related inventions whose functions
are inferred based on homology search.
The EPO and JPO agree to continue exchange visits for examiners and to expand
the scope to include the entire granting procedure for both search and examination.
They also agree to expand the visits to managers to gain a better understanding ofmanagement practices at the respective offices.
Project C Patent Information Dissemination
The Trilateral Offices express interest in developing standards for patentdocumentation on Intellectual Property Digital Libraries. The USPTO will draft aquestionnaire for determining the scope of the Intellectual Property Digital Libraryeffort.
The Trilateral Offices finalize their Information Policy covering exchange data (SeeAnnex 1). These guidelines will be made available to WTPO for its own
dissemination policy and be a reference for other countries.

4

ANNEX 1
TRILATERAL OFFICE POLICY ON THE USE OF EXCHANGEDELECTRONIC INDUSTRIAL PROPERTY INFORMATION DATAINTRODUCTION
The Trilateral Offices exchange industrial property information data (e.g.,document images, text data, bibliographic information, etc.) for the mutual benefitof each Office and the public. This data may be provided on various electronic datacarriers, e.g., optical discs, magnetic tapes, the Internet, FTP, etc. These are freeexchanges and result from agreements made between the Offices involved in theexchange. The policy on the use of this data is set forth below to provide uniform
minimum guidelines for using the data being exchanged. The Trilateral Offices may,of course, agree to more liberal use of their data.
DEFIMTIONS
1. “Bulk transfer” of data is considered to occur when the amount of data
downloaded or copied in electronic form equals or exceeds an amount that would
conflict with a normal commercial sale of the data by, or otherwise unreasonably
prejudice the legitimate interests of, the Office providing the data. The term “bulktransfer” is used in reference to unauthorized activities.
2. “Libraries” shall be understood to cover institutions governed directly by Offices
or operated as non-commercial institutions authorized to disseminate industrial
property information, and established or controlled by public or semi-public bodies(for example, depository libraries controlled by public or private universities orfoundations in accordance with requirements of a Trilateral Office) for thedissemination of information to the public.
3. A “Member State” is an individual Industrial Property Office belonging to anorganization of Industrial Property Offices, e.g., the European Patent Office (EPO).
A “third party” is any Industrial Property Office, organization, individual orenterprise which is neither the data providing Office nor the data receiving Office(or its Libraries or Member States).
4. “Internal use” of data consists of “official use” and “library use” as provided for
below:(a) “Official use” is the use of data by officials of a receiving Office or, whereapplicable, by an official of a library (as defined above):(i)in the course of official procedures for the grant of industrial property titles,
including search, examination, maintenance and appeal procedures;(ii)

for the purpose of statistical and technical analyses as well as searches of5the state of the art, necessary to carry out the official business, of the Office;(iii)

to provide an inquiry service for the public to meet specific requirements ofindividual and corporate users based on their own needs, e.g., providing
copies of patent documents or bibliographic data upon the request of a user;(iv)

for the purpose of providing systematic training activities, provided that theuse of the data is compatible with fair practice and does not exceed theextent justified by the purpose; or(v)for the purpose of providing copies of the data for the use of the receiving
Office or library.

(b)“Library use” is the use of data by members of the public in search roomsof Industrial Property Offices or in libraries (as defined above).
POLICY

1. Industrial property information data provided as part of a free exchange by aTrilateral Office to another Trilateral Office is provided only for the internal use ofthe receiving Office.
2. A Member State of the EPO is authorized to use the data provided to theorganization to which they belong only if they agree to follow the guidelines
regarding the use of the data as provided herein.
The EPO will provide the data of its Member States to other Trilateral Offices aspart of an exchange of data and in accordance with these guidelines.
3. The receiving Office, unless authorized in writing by the Office providing thedata and subject to conditions established for such distribution at the time ofauthorization, must agree that:(a)the bulk transfer of the data by a receiving Office to a third party isprohibited;(b)

the data shall not be passed on in machine-readable form to a third party insuch manner that it enables the third party commercial use of the data as
such;

(c)

the data will be provided to the public at no more than the cost ofdissemination.

SPECIAL CASES
1. Authorization to Disseminate as a Public Service — A receiving Office,having incorporated exchange data into search databases for internal use, may
decide to provide public access to all or part of these databases as part of a public
service, for example, using the Internet.

6

The receiving Office is authorized to:a) provide public access to exchange data where the data are incorporated aspart of a not for-fee public service; andb) provide pages of documents using normal browser capability.
2. Electronic data purchased from an Office — The above policy applies onlyto electronic data obtained by a receiving Office as part of a free exchange of datawith the Office providing the data. Electronic data purchased from another Office
are not necessarily subject to this policy and may be subject to any limitations
agreed to by the Offices involved.
OTHER EXCHANGE-RELATED CONCERNS
1. Exchange of backfile data
In order to provide a receiving Trilateral Office with a complete copy of a given typeof data, the exchange of data shall encompass all available backfile data, e.g. data
produced as a result of backfile conversion, etc.
2. Copying and shipping costs
The costs of copying and for shipping exchanged data shall be borne by theTrilateral Office providing the data.

7