Summary of the Trilateral Conference
Awajishima Island, Japan on November 2 and 3, 2000
The European Patent Office (EPO), the Japanese Patent Office (JPO), andthe United States Patent and Trademark Office (USPTO), meeting for theeighteenth Trilateral Conference in Awajishima Island, Japan on November
2 and 3, 2000,-Reconfirming the need for a global system of patent protection forthe 21st Century, which was agreed in the Kyoto Action Plan ofNovember 1997, in light of rising cost considerations, the increasing
workload and redundancy of work being performed by the Offices,and greater expectations of the user community,-Welcoming discussions held at WIPO and other international
conferences on further harmonization of the substantive patent law
and streamlining of the PCT system as an effort to establish a global
system of patent protection,-Recognizing the importance of the role of the Trilateral Offices as
major International Authorities for search (ISAs) and examination(IPEAs) to make positive efforts to alleviate their workload situation,
simplify the PCT system and produce highly reliable International
Reports,-Recognizing the benefit to the Trilateral Offices for mutual
understanding of examination practices and exchange of information,
taking into particular consideration the expected great influence ofadvanced technologies on the development of the world s scienceand technology,
Understanding the importance of concerted efforts by the Trilateral
Offices to disseminate information and to establish an international
network, which includes electronic filing system for patent applicants,

Have agreed as follows (conclusions and future prospects arranged byproject number):Project Al: Electronic Filing of Applications/Project D: Legal Issues

The Trilateral Offices agreed to continuously exchange information on thestatus of implementation of e-filing as well as on PCT AdministrativeInstructions Part 7 and Annex F. The Trilateral Offices noted the efforts ofthe WIPO TB for the earlier promulgation of PCT Administrative Instructions
Part 7 and Annex F, and the implementation of the IMPACT project in order
to allow Receiving Offices to receive electronic filings of PCT applications
by December 2001.
The Trilateral Offices affirmed their commitment to ensure their electronic
records meet the four requirements for data security: confidentiality, dataintegrity, authentication and non-repudiation.
The EPO and USPTO recognized that the JPO s non-PKI solution, i.e.,
existing ISDN solution, was a proven electronic filing system based on its
ten years experience. The JPO agreed that it would work toward a PKI
based electronic filing system. Until such a system would be realized at JPO,
the Trilateral Offices agreed that the JPO s existing system should beincorporated in PCT Administrative Instructions and Annex F. The JPO also
agreed to implement the Annex F standard for exchange of PCT
applications, including PKI, between the JPO as RO/DO/ISA/IPEA and thelB.
The Trilateral Offices agreed to request the TB to implement PKI based
e-filing software that would comply with a common Annex F TechnicalStandard. The Trilateral Offices agreed that offices, lB and authorities would
use the Annex F Standard for data exchange between them using high-level
PKI based certificates. The Trilateral Offices agreed to request the lB toredraft PCT Administrative Instruction section 704.

Project A2a: Networks and Network Standards
Project A2b: Exchange Standards

The Trilateral Offices agreed, in principle, to expand the TriNet to includeother JP Offices. The Trilateral Offices also agreed that they would target toestablish an open-style network, using the Internet in the future, and thatuntil then would expand the existing TriNet, using the technical solution ofFrame Relay services with a hub-style architecture. The Trilateral Offices
agreed to ongoing discussions regarding the details of the criteria for TriNet
expansion.
The JPO and the EPO agreed on an upgrade of the TriNet Frame Relay
circuit between JPO and EPO and agreed on continued active use of theTriNet.

Project A3: Management Information Exchange
The Trilateral Offices have revised the format of the Trilateral Statistical
Report in order to add further relevant information. They also confirmed thatthey would strive to expand statistical information such as the number of
PCT applications in the national phase and the number of applications apartfrom the number of designations. This data will contribute to the recognitionof Offices workload and promotion of trilateral cooperation. (Project A3 (a)Trilateral Statistics)
The Trilateral Offices confirmed that a data file for forecasting patent filings
will be established as a further step toward cooperative forecasting, and thatthe offices will also cooperate in preparing a joint applicant survey, which
will be launched in 2003. They asked the working group to consider theoperation of the survey and report on this matter at the 19th Trilateral
Conference. (Project A3 (b) Factors Influencing the Filing Rate of Patents)
Project 112: Documentation Resources and Search Tools

The Trilateral Offices, being committed to common documentation
resources for their examiners and to database tools necessary for the newtechnologies involving for example biological sequences, computer
software and business methods, considered the following areas:
Project B2a: First Page Database
The future orientation of this database will be studied by the Working Group“Data Exchange and Data Quality” before June 2001. In particular, therelevance of every component of the database for the work of the examiners
will be examined, as well as the importance of the database for derivativeproducts.
Project B2b: Biotechnology

The rapid growth of the number and size of applications containing DNA
and Protein sequences was noted and the following was agreed:-Development of the sequences database:
The coverage of the database will be extended. Sequence listings inPOT applications should be extracted by the Trilateral Office acting
as the ISA for the application.

-Cooperation with the databases public providers (EBI, NCBI, DDBJ) will
be extended in order to optimize the exchange of data and the access foreveryone to the sequences presented in patent documents.

-The project of a central Repository for biological sequences and its
capabilities will be studied.

-The priority documents containing large volume of sequences will beexchanged. in electronic form.

Project B2c: Classification issues
The use of classification systems remains a major element in performing
quality searches with electronic tools.
-The Trilateral Offices, with the objective of sharing their resources
needed to classify the growing number of documents, decided to start toharmonize the three powerful classification systems that they presently
use: the US classification-(USPTO), the FJJF-term system (JPO), the ECLA classification (EPO).

-To This effect, a feasibility pilot project will be conducted on a selected
number of technical fields in 2001.

-The Offices agreed to support the International Patent Classification
Reform undertaken by WIPO: a core level will be easier to use in aharmonized way by all offices and will offer the stability needed to build
up the advanced level. The advanced level could be prepared by theTrilateral Offices and made broadly available. Other IP offices could
propose advanced level reclassification projects to the TOs.

-Japanese Fl / F-terms:-A new delivery mechanism was agreed assuring monthly updates ofthe data for the USPTO and the EPO.

-The costs of translation in English of the Fl manual will be shared
among the three offices.

-The reference table between Fl and F-term themes will be distributedby the end of November.

Project B2j: Data Exchange and Data Quality
On the basis of the comprehensive inventory of the resources available in
the three offices, new data will be exchanged, particularly the “citationdatabase”, the “NPL database”, and the US patents full text and facsimile
images (1790-1975).
The coverage of the documentation in images and full text should beextended to countries like Canada, Australia, Russia, whose documentation
belong to the PCT.
Minimum Documentation
The three offices will study how to establish a common trilateralbibliographic database on the basis of DOCDB.
The working group will prepare a common view on the impact of XML on theoffices activities, and identify projects where a common approach will beefficient.
An update of the present exchange standards will be studied.
The quality of the data included in the different databases is to be monitored
and correction mechanisms were agreed. A new system will be developed
to reduce the number of erroneous data.
The completeness of the databases will be checked on the basis of the“Authority list” of published documents provided by the three offices. And
the missing data will be exchanged.
The working group will meet iii Washington, DC early 2001.
Project B2g: Non Patent Literature
To expand their coverage of Non Patent Literature, The Three Offices
approved the measures proposed by the Working Group, in particular:- to promote development of shared NPL resources,- to use the EPO NPL database: either by loading it (JPO) or accessing it(USPTO),- to take into account the value of Defensive Publications, and- to capture of relevant NPL sources in text searchable form will bepursued;- specific projects may be developed on a cost sharing bases.
The use and efficiency of the NPL resources will be monitored.
Project B3: Cooperation in Search and Examination
The Trilateral Offices agreed to reinforce their cooperation in
search/examination in order to:- increase efficiency by improving the use of search results alreadyavailable;- achieve better understanding and promote harmonization of working
practices and tools in the respective offices..
Project B3a: Exchange of Search Results
Paris-route pilot program
After completion of the remaining cases, the JPO will draft the formal reportof the concurrent search pilot program using the Paris-route. Thereafter theproject will be concluded.
Business method related patent applications
In order to compare the usefulness of the respective search tools in thisarea, the Trilateral Offices agreed on the details of a concurrent search
program comprising up to 20 PCT business method related patentapplications. This program will be started in January 2001.
Investigation of use of ISR
Based on the pilot experiments for “Investigation of the use of the TSR for
entry into the national/regional phase” conducted during the past months,
the JPO and EPO will perform yearly statistical analysis in order to monitor
the usability of search results and to identify specific areas requiring moredetailed evaluation, giving due consideration to the required workload. TheUSPTO will provide file history record for such analysis as needed.
Project B3b: Mutual Understanding in Search and Examination
Examiner Exchange
The EPO and JPO concluded that this year s program involving 15 EPO and33 JPO examiners has been very successful by improving the mutual
understanding of the. working methods and by promoting use of the searchtools and methods available in the respective offices. These exchanges
also allow improved cooperation in the design and development of thesearch tools, e.g. FI/ECLA concordance. They also contribute to aharmonization of the working practice and results produced in the twooffices.

In view of the above, the EPO and JPO agreed to continue and extend theprogram and share their experience with the USPTO.
Comparative Study on Biotechnology
The Trilateral Offices adopted the report on the comparative study
conducted by the three Offices on nucleic acid molecule-related inventions
whose functions are inferred based on homology search. JPO will provide
copies in electronic form so that each Office can make it available on theTrilateral Web site.
The Trilateral Offices recognized that differences in examination practices
for nucleic acid molecule-related inventions revealed by this study stemmed
mostly from differences in national/regional patent laws including relevantcase laws. The Trilateral Offices noted that the G8 Summit Communiqueencourages further efforts in relevant international fora to achieve broad
harmonization of patenting policies of bioteclinological inventions.
Therefore, the Trilateral Offices agreed to continue further cooperation for
promoting clearer understanding of search and examination practices in thethree Offices to contribute to the broad harmonization of patenting policies
in this field.
Computer software related inventions
During the year the JPO and USPTO conducted a comparative study basedon hypothetical cases. The EPO contributed a position paper onpatentability of business methods in Europe that clearly shows there isagreement on certain aspects of patentability and disagreement on others.
Project C: Dissemination of Patent Information
The use of the three offices web sites has been very successful. The offices
agree to continue a dialog with commercial information providers and toexchange information on the future impact of their information
dissemination policy.
MIMOSAThe EPO reported that it had provided a copy to the JPO of the latest
release ofMIMOSA application software Version 4.1. The JPO explained it had been
testing the software in JPO.
GlobalPat
The EPO reported that discussions had taken place with WIPO in order toobtain a cofmancing of a continued GlobalPat production, and requested
the continuation of the First Page Database product for the GlobalPatproduction.
PCT reform
The Trilateral Offices welcomed the decision of the PCT Union Assembly toenter into a PCT reform exercise that could ultimately provide the basis for aglobal patent system. The TOs recognized that, as major POT ROs andPCT authorities, they will have an important role to play in the reform
process.
The TOs are concerned about the workload they have to face as a result (fora large part) of the huge success of the PCT system.
The TOs stressed the need to design as rapidly as possible contingency
measures in order to alleviate the IS and the IPE workload. They
consequently decided to establish a Working Group, with a primarymandate to develop ideas and methods to best cope with the most urgent
problems.
Further, the Working Group could reflect on possible improvements to thePCT, with the intent to clarify the TO s positions and, where possible topresent proposals in due time to the WJPO Special Body.