Summary of the Trilateral ConferenceTokyo, 7 November 2003

The European Patent Office (EPO), the Japan Patent Office (JPO), and the UnitedStates Patent and Trademark Office (USPTO) met at the 21st Trilateral
Conference in Tokyo, Japan on November 7, 2003,•

Recognizing industrial property as a basic system supporting the progressof industry, technology, and economic growth, and the need for close
cooperation in the administration of their Offices, and their national
industrial property protection systems,•Reconfirming the importance and the benefit to harmonize their industrial
property systems and to develop common infrastructure for improving
further efficiency,•Renewing the awareness of the important role of the Trilateral Offices tocontribute to international economy,

have reached the understandings on co-operation between the Offices as follows:
Project WM1-3:

Effective access and use of work results, Mutual
understanding in search and examination, Examiners’
exchange

The Trilateral Offices’ evaluation of the bilateral search exchange projects has
shown potential benefit for reduction of workload by exploiting the search resultsfrom another office.
The Trilateral Offices intend to continue to pursue further work in this area throughfeedback and analysis of the results by the office of second filing to the office offirst filing. They will provide feedback information including any further officeactions with search histories for additional searches, claims and qualitative
commentary.
The Trilateral Offices will establish a common infrastructure (on-line dossier
access system) that enables constant and effective access to the electronic
dossier.
The Trilateral Offices endeavour to study ways and means how applicants may
benefit from the use of search and examination results in the office of secondfiling. The Trilateral Offices will continue to explore appropriate policies and other

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procedural considerations including existing Information Disclosure Statement(IDS) obligations to promote the exploitation of search and examination results.
The Trilateral Offices will promote the exchange of examiners in early 2004 todiscuss search tools, search methodology/requirements, and search strategy.
The Trilateral Offices intend to study at the Biotechnology Working Group thestandardization of search strategy in the chemical and biotechnological fields,
especially in chemical compounds and the use of publicly known compounds for
medicine with recognition that the effective exploitation of search will be achieved
where the search tool is common among the Trilateral Offices.
Project EB1-3: Electronic Filing and Electronic Processing
The Trilateral Offices will further explore solutions that promote efficient application
processing with the aim to contribute to more efficiently mastering the workload
stemming from the growth of the number of applications from national, regionaland PCT systems as well as the growth in “global” Industrial Property applications.
Building on the success of their existing automated administrative systems and asa logical extension of the activity of the Trilateral Working group on WorkloadReduction, the Offices have mutually decided to address the usefulness of acommon technical infrastructure for the IP Offices around the world, with the goalof workload reduction for all offices and users involved. This will be achieved byharmonizing interoperability of e-filing and e-processing/dossier-access systems
leading to a more efficient processing of applications.
The Trilateral Offices will join forces in the lead of this project and set up aTrilateral Steering Committee which will identify the project strategy and guiding
principles for going forward with this project. This project will focus on:•Defining a common set of technical interface standards that will ensureinteroperability between the Trilateral Offices and the non-Trilateral Officesof IP e-business systems. These standards will include Dossier Access withtranslation into English when technically available, Priority Document
Exchange and Integration of e-filing.

•Defining and further developing a common user-friendly e-filing server
solution as documented in the Memorandum of Understanding signed at
the Vienna Trilateral meeting in November 2002.

•Defining and further developing both a single configuration of hardware andsoftware application processing system (“toolbox” based approach) and analternative approach based on building a single standard English language

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interface to an existing end-to-end application processing system(“interface” based approach) within an IP Office.
Each implementation is subject to the availability of resources and contingent uponsuccessful implementation and testing of all software components.
The Trilateral Offices will elaborate the strategy of cooperation towards interested
non-Trilateral Offices under the proviso that any such office is free to choose
between the “toolbox”- and “interface”-based approaches. During calendar year
2004, discussions will be held to identify at least two Intellectual Property offices
with whom such a strategy could be initially piloted. Each implementation would
have one lead Trilateral Office with the other two offices offering support asneeded.
The Steering Committee will be composed of at least two members per Office.
Proposals for these members are expected to be exchanged by mid-December
2003 in order to allow a first meeting of the Steering Committee in mid-January
2004 with representatives of the pilot Offices.
Project WT1: Linguistic tools
The Trilateral Offices recognized the importance of machine translations
introduced by the JPO and their intention to co-operate in the Machine Translation
System project as set forth in Annex 1 of the Trilateral Technical Meeting Report(“Agreement on Co-operation in Machine Translation System") prepared at theTrilateral Technical Meeting held in Tokyo in June, 2003. The JPO will develop
and maintain the “Trilateral JA-EN Machine Translation System” at its expense
while the EPO and the USPTO will give the JPO feedback on the correctness ofthe translation to improve the dictionary. The JPO will make every effort tocomplete Phase 1 by March, 2004 and Phase 2 including dossier access byOctober, 2004, respectively. The EPO will seek to provide the JPO and theUSPTO their translation services in the future (e.g., French to English).
Project MAN: Management Information Tools
The Trilateral Offices took note of the publication of the Trilateral Statistical Report
2002.
The Trilateral Offices will start the project to exchange business information data.
The Trilateral Offices mutually decided that WIPO should participate in theTrilateral Statistical Working Group beginning in 2003 onwards as observer on theprojects related to Statistics and Forecast, and that WIPO will have access to theshared file on annualised patent filing data and forecasts under the condition that it

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was for internal use only. The shared file would continue to be administered by theTrilateral Offices and updated by the end of April every year.
Project PI1: Patent Information
The Trilateral Offices concluded that their IP information dissemination policies arevery similar.
The Trilateral Offices reaffirmed the importance of sharing their views and opinions
on these issues to appropriately deal with new issues and to continue to seek
coordination on these issues. The Trilateral Offices will continue to exchange
information regarding the IP information dissemination policies.
The JPO and the EPO mutually decided to further develop their cooperation topresent to the public Japanese patent information in Europe and European Patent
Information in Japan.
Project LEG: Legal issues<Harmonization of the patent law>With a common view that patent law harmonization would contribute to easing
work load problems of patent offices as well as the burden on applicants, sharing
views that patent law harmonization is important and achievable, the Trilateral
Offices recognize the following guiding principles to progress discussions onpatent law harmonization;
To take a pragmatic approach aimed at early and realistic results rather than topursue lengthy theoretical debates,
To aim towards a package without adherence to a rigid framework,
To pursue best practice taking into account current practices,
To address users' interests as much as possible, andTo promote the discussion at the WIPO/SCP.
The Trilateral Offices have identified two categories of items for consideration in
the context of patent law harmonization and have tasked them out to the working
group already established by the Trilateral Offices.
(1) First package items likely to produce agreement in near future, such as next
meeting of SCP in May 2004

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Prior art**
Hilmer Doctrine
Anti-self-collision
Prior art effect of PCT Applications in the International phase
Prior art effect of Earlier applications for Inventive step
Grace period***
Novelty**Inventive step/Non-obviousness**
Sufficiency of disclosure*
Claim drafting****Restriction / Unity of invention
Amendments/ Correction*Under this item, the working group will discuss at least the items regarding bestmode, deposit practice, enablement and support requirement, and any further
items that the working group may decide to discuss.
**Discussion on double patenting will be included.
***Since it is accepted that the item of grace period and first-to-file/first-to-invent
are linked, grace period, although included for discussion in the “first package”, issubject to movement on first-to-invent.
****Under this issue, the working group will discuss claim interpretation during thecourse of patent granting process, but not during litigation.
In the working group, priority will initially be given to the items relating to prior art,
grace period, novelty and inventive step/non-obviousness.

(2)Items to be addressed at a later stage
First-to-file/First-to-invent

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Patentable subject-matter /technical character
Utility/Industrial Applicability<Claims fee>
The Trilateral Offices supported the concept of claims fee under the PCT inprinciple and continuation of discussion.

Project IT3: TRINet
The Trilateral Offices supported the proposal to interconnect TRINet, WIPONET,and PatNET, based on secure Internet technology.

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