Summary of the 23rd Trilateral Conference
Munich,18 November 2005
The European Patent Office (EPO), the Japan Patent Office (JPO), and theUnited States Patent and Trademark Office (USPTO) met at the 23rd Trilateral
Conference in Munich, Germany on 18 November 2005.
The Trilateral Offices-reconfirming their commitments to Trilateral co-operation based oncommon recognition of the role of industrial property as a basic system
supporting the progress of industry, technology, and international socialand economic growth,-

identifying timely processing of increased workloads of patent applications
and high-quality examination processes as common concerns of the
Trilateral Offices and its user communities,-

recognising the benefits of promoting reduction of processing times andavoiding duplication of work through a co-ordinated Trilateral approach,including exploitation of search and examination results,-

understanding the benefits of harmonising substantive patent law andstandardisation of formal patent applications,-recognising the benefits of developing common infrastructure andcompatible data for electronic business systems and search tools in orderto facilitate co-operative activities,

understand as follows:

Strategic Issues
The Trilateral Offices recognise that exploitation of search and examination
results is an important element in reducing workload and duplication of work
among the Offices and note the need to identify new areas of strategic
co-operation.
They accept the first recommendation of the Trilateral Strategic Working Group,
namely to improve communication with users. In particular, taking into accountthe suggestions of Trilateral Industry, they have created a working group for the
standardisation of formal aspects of patent applications.

Re-use of Work Results(a)Pilot Project on Exchange of Search History

Progress has been made on the pilot project for the sharing of search history
data. The first phase will be finalised next year. The Trilateral Offices will makefurther efforts towards improving exploitation of work results and enhancing
mutual understanding through examiner exchange and technical projects suchas harmonisation of classification, and look for ways to move forward on using
each Office's search results, including search histories.
(b)

Patent Prosecution Highway

The Patent Prosecution Highway (PPH) is a JPO proposal aiming to utilise
accelerated examination in each Office to ensure the timely obtaining of searchand examination results so as to improve quality and promote the mutual
exploitation of work results between patent offices.
The Trilateral Offices take a positive view of "The Outline of the Patent
Prosecution Highway" proposal, noting that the PPH could enable participating
offices to take advantage of work results provided by the Office of First Filing, if
appropriate.
The USPTO and the JPO confirm that they plan to implement the PPH on a trial
basis, provided all remaining issues and details are resolved. The EPO will
present the PPH to its users and member states in a positive manner andexplore the possibility of participating in a pilot project.

(c)

Tri-Way Proposal

The USPTO introduced a proposal for a "Patent Prosecution Tri-Way" based on
the PPH for addressing outstanding issues of timing and correspondence of
applications. The Trilateral Offices confirm that the Tri-Way proposal will beconsidered in parallel with the PPH, and the JPO and the EPO will provide the
USPTO with written comments on the new Tri-Way proposal.

(d)Import Guidelines

The Trilateral Offices confirm that the proposed Import Guidelines as annexedto the Memorandum of Understanding are ready to be adopted. The Trilateral
Offices will continue to discuss the possibility that importation be expanded. The
JPO indicated that approaches aiming to facilitate the satisfaction of IDS
obligations should be considered. The EPO and the USPTO note thissuggestion.

Trilateral Patent Examiner Exchange
The Trilateral Offices will pursue the Trilateral patent examiner exchange
programme. Four specific technical areas have been identified for the firstexchange in 2006. Based on the experiences of the past year, the Trilateral
Offices will agree on a methodology to prepare candidates. This methodology
will take harmonisation of classification into account.
Electronic Access to Patent Application File Contents
The Trilateral Offices are developing a system (Trilateral Document Access,"TDA") to enable electronic access to, and viewing of, patent application filecontents in the Trilateral Offices as well as electronic exchange of priority
documents. The Trilateral Offices will develop guidelines for providing thetechnical specifications for this system to non-Trilateral Offices and confirm thatdevelopment of specifications will remain within the control of the Trilateral
Offices.

Exchange of Priority Documents
The EPO and the USPTO have signed an agreement on priority document
exchange which is expected to take effect from April 2006. This agreement,
which will result in considerable cost savings for patent applicants, covers thetransfer, in electronic form using TDA, of certified copies of priority documents
contained in the electronic files of the EPO and the USPTO. This exchange will
not include priority documents claimed under the PCT. The JPO and USPTO
are planning to sign a Memorandum of Agreement on priority document
exchange in Autumn 2006. The EPO and JPO have been exchanging priority
documents using other electronic media since 1999.

Biotechnology
The report on "Application Filing Trends related to Biotechnology Applications"
was presented, and it indicates that filing figures are now stable. The number ofapplications for 3D sequences remains at a low level. The Trilateral Offices
confirm that they will continue to monitor the technical trends in the field.
Work is progressing on a Trilateral Search Guidebook in Biotechnology
recording the resources and methods used by the three Offices. It is confirmedthat the first version will be completed by May 2006.
The development of a new standard for submission of sequences in XML format
is underway.
The Trilateral Offices agree to continue efforts to complete the sequencedatabases and to avoid duplication.

Non-Patent Literature
The Trilateral Offices are continuing to co-operate to improve the use of
non-patent literature in prior art searching and exploitation of search results.
The possibility of extending current agreements with publishers in a way which
would allow exchange of non-patent literature between Trilateral Offices in thecontext of a common Trilateral Office subscription will be explored.
The Trilateral Offices will explore the use of Digital Object Identifier (DOI)
technology to access NPL documents.

Linguistic Tools
The development of linguistic tools, particularly automated translation tools, is of
key importance to further facilitate widespread access to the technical content ofpatent documents.
The Trilateral Offices acknowledge the efficiency of the Advanced Industrial
Property Network (AIPN), which includes a translation system developed by the
JPO. The EPO and JPO reported a growing usage of the system by their
examiners. The Trilateral Offices are co-operating to further develop the system.
The rapid progress being made on the European Machine Translation
Programme (EMTP) is noted. By the end of 2005, the first versions of thetranslation system (German/English and Spanish/English) will be available.
Work on new language pairs will start in 2006.

Harmonisation of Classification
The Trilateral Offices notes that harmonisation of the three Offices’ classification
systems will help to increase the efficiency and quality of examiners’ work andexploitation of search results.
The Trilateral Offices are harmonising their classification systems step by step
and will recommend that the amendments are introduced into the advanced
level of the International Patent Classification (IPC).
The Trilateral Offices note that the exchange of examiners has contributed
significantly to the harmonisation process.
As the new IPC (version 8) will enter into force 2006, the Trilateral Offices
intend to co-operate in organising events to present the benefits of the IPC 8 tothe public.

Information Dissemination Policies
The Trilateral Offices will participate jointly at fairs or events organised in thethree regions. The focus will be on presenting the results of Trilateral
co-operation.
The launch of the Japanese interface of esp@cenet® is noted; it will provide
easier access for Japanese-speaking users.
In response to the letter of the Trilateral Alliance of Intellectual Property
Information Services Companies, the Trilateral Offices appreciate the efforts ofprivate sector organisations that share and support their objective to achieve
maximum dissemination of patent information. The Offices look forward tocontinuing their discussions and sharing ideas that will assist in improving
intellectual property systems around the world.

PCT Minimum Documentation
PCT minimum documentation is the documentation that International Search
Authorities (ISA) under the PCT must consult when performing a prior art
search. The Trilateral Offices will review the documentation and intend toharmonise their proposals in this respect for the next relevant WIPO meeting in
December 2005.

Time of Publication
Aiming at the resolution of difficulties arising from publication of documents
constituting prior art in different time zones around the world, the Trilateral
Offices confirm their intention to explore various concepts for the developmentof a harmonised approach in this area.

Legal Issues(a)

New Route Proposal

The Trilateral Offices confirm that they will pursue discussions on the JPO
proposal for a New Route, which is intended to complement the currently
available filing routes for the benefit of applicants worldwide. The Trilateral
Offices will consult their users and consider the proposal further in the light ofthese consultations.
(b)Standardisation of Formal Aspects of Patent Applications/
Patent Law Treaty

Building on the impetus provided by the Industry Trilateral and in response to
the needs of users, the Trilateral Offices confirm that they will proceed with aproject on common patent application format and establish a working group forthis purpose. In this regard, the Trilateral Offices recognise the importance of
the Patent Law Treaty.

Exchange of Information regarding International Co-operation
with Developing Countries
The Trilateral Offices stress the importance of a continuous exchange of
information regarding technical co-operation.
Co-ordination of activities will be initiated on a case-by-case basis, taking into
consideration the various policies under which each Office operates.
One possible area of co-operation identified by the USPTO and the EPO is theadministration and examination of patents in the SIPO.

New Trilateral Website
The Trilateral Offices
www.trilateral.net.

have establishedanew TrilateralwebsiteatAnnex
Guidelines for viewing, printing and importing
the file wrapper documents and information ofother offices through the Dossier Access System

Guidelines for viewing, printing and importing the file wrapper documents andinformation of other offices through the Dossier Access System(Applicable to Post-Publication Dossiers)..
I. Introduction
These guidelines define the rules that Trilateral Offices must observe when theyview, print or import file wrapper documents or information1 from other offices using
the Dossier Access System for the purpose of performing tasks including search andexamination.
These guidelines define the rules for importing documents from applications
that have been opened to the public. For the applications that have not been opened tothe public, the rules will be defined in a future document. Although a dossier has been
made public due to publication or other reasons, certain documents contained in thedossier may remain closed to public view. Each office reserves the right to maintaindocuments as private2. An office may choose not to share private documents, or may
choose to share them with limitations on their use, as described below.
These guidelines define general policies. When there are specific agreements
between two offices, they precede the guidelines. It should be understood that thesepolicies are a maximum of what may be imported, and that recipient TOs may impose
on their employees additional restrictions concerning which documents from thoseavailable may be imported, and under what conditions.
II. Definition of terms(1) Viewing‘‘Viewing’’ means to view Donor office’s file wrapper documents or otherinformation relevant to an application retrieved through the Dossier Access Systemon a computer at the Recipient office.
(2) Printing‘‘Printing’’ means to print Donor office’s file wrapper documents or otherinformation relevant to an application retrieved through the Dossier Access Systemon a printer at the Recipient office.
(3) Importing‘‘Importing’’ means to include documents or other information acquired from a
Donor office through the Dossier Access System into an electronic or paper file1

The information includes the bibliographic data, for example.

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for example because they contain financial information or are pre-decisional drafts
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wrapper of the Recipient office.
(4) Donor office‘‘Donor office’’ indicates an office, which holds the file wrapper or otherinformation that is viewed, printed and/or imported by a Recipient office.
(5) Recipient office‘‘Recipient office’’ indicates an office, which views, prints or imports file wrapper
documents or other information from other offices.
III. Matters to be concerned with regard to ‘‘Viewing’’ and ‘‘Printing’’
Employees of Trilateral Offices agreeing with these Guidelines may view all the
documents and information from Donor offices that can be accessed through the Dossier
Access System. The viewable documents and information may be printed at the
Recipient office. However, it must be cautioned that the viewable documents andinformation may include matter that has not been made open to the public and is limited
to internal office use. As any viewed document is physically capable of being imported
into a Recipient office’s file wrapper, the Recipient office must strictly enforce thispolicy in order to prevent documents and information that are limited to internal use
from being wrongly made open to the public.

IV. Rules for Importing(A) Documents and information which may be imported and must not be importedwith respect to the applications that were made open to the public
For documents and information that may be imported, the decision whether or
not to import them is left to each Recipient office.
The imported documents and information, except those limited to internal use,
may be made open to the public inspection after the application of the Recipient office
is made open to the public3.
1. Documents and information that may be imported from applications that havebeen made open to public(1) Documents and information that may be imported
Recipient offices may import the documents and information listed below inthe original language (without translation) into the file wrapper of theRecipient office as long as the Donor office has not declared different
treatment.4
These documents have already been made open to the public at the Donor offices
For example, NPL or other copyrighted works may be restricted by policies of the
Donor office from distribution.
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Ø Application As Filed (Request, Claims, Description, Drawings, etc)
Ø List of cited referencesØ References cited by an examinerØ Search reports5(2) Translations that may be imported
Translations of documents that may be imported as described in (1) above may be
imported if the following requirements are satisfied.
(a) Translations must be imported simultaneously with the original documents.
(b) The type of translation (machine translation or manual translation) must be
indicated.
(c) If it is a machine translation, detailed information, such as the date on which themachine translation was made, version of the translation software and translation
software settings must be provided.
(d) If it is a manual translation, the information relevant to its translator (the name of
the translation company or translator) must be provided.

2.
Documents and information that must not be imported
Documents and information other than those described above in Section 1. (1)and (2) must not be imported.6(B) Other rules with regard to importing
When a document or information is imported, the origin of the imported
document or other information must be documented in the files at the Recipient office7.
Search reports are defined as documents similar to search reports used in the PCT,
where the references are cited, and applied to specific claims. Arguments such asappear in USPTO office actions or EPO Reasons for Refusal are not included in thisdefinition. For documents from the USPTO, the lists of cited documents (e.g. form 892
or SB-8) would suffice without the office action that contains such arguments.
6 The Trilateral Offices will continue to discuss the possibility of allowing theimportation of office actions (including Japanese Kyozetsu Riyu Tsuchi) and the issue
of prosecution history estoppel.
7 Imported documents become part of the application file of the Recipient office, as
they are relied upon in that office as relevant to the prosecution. They are subject tobeing made public or being shared with other offices in accordance with the policy of
the Recipient office. Currently importing is limited to only references, lists ofreferences, search reports and the application as filed (see § IV (A) 1. (1)). In the
53Applicants may request that a Recipient office of a country which requires
applicants to disclose information relevant to patentability import specific documents ofthe types listed in Section 1 (1) and (2) above from a dossier in a donor Patent Office. In
this case, the Office concerned may import the documents. These documents would betreated as if they were supplied by the applicant. Offices will undertake not to import
documents of types other than those listed in Section 1 (1) and (2) above.
In the course of prosecution of the application in the Recipient office, when
documents other than the types listed in Section 1 (1) and (2) above are required of theapplicant, the applicant may provide copies of those documents to the Recipient officedirectly.

future, should any other document types be added to the list of documents that may be
imported, the rules for importing documents from a Recipient office to a subsequent
Recipient office (i.e. re-importing) must be reconsidered.

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