Summary of the 24th Trilateral ConferenceTokyo, 17 November 2006
The European Patent Office (EPO), the Japan Patent Office (JPO), and theUnited States Patent and Trademark Office (USPTO) met at the 24th Trilateral
Conference in Tokyo, Japan on 17 November 2006. The Trilateral Offices-reconfirming their commitment 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 patentapplications and high-quality examination processes as common
objectives of the Trilateral Offices and its user communities,-

recognising the benefits of further promoting mutual exploitation of
search and examination results, continuously making efforts to increase
mutual reliability, promoting the reduction of processing time/cost, andavoiding duplication of work through a co-ordinated Trilateral approach,-understanding the benefits of harmonising substantive patent law, patent
procedures, and standardisation of patent application format,-

recognising the benefits of developing a common infrastructure andcompatible data for electronic business systems and search tools andpromoting character-coded electronic document format in order tofacilitate co-operative activities,

understand as follows:
Enhanced Work-Sharing
The Trilateral Offices recognize the need to take enhanced and concretemeasures to avoid duplication of work among the Offices and to reduce
workload of the Offices and procedural / financial burden of users.
To address these concerns, it was decided to expand the mandate of WM1(Effective access and use of work results) and entitle it as ”Working Group on
Enhanced Work-Sharing,” which will undertake actions to further develop themutual exploitation of search and examination results performed by other
Offices, to the maximum extent practicable
The Strategic working group will oversee the activities of the Working Group.
The Strategic working group will provide the Working Group a mandate
consistent with the scope of activities agreed above at its Spring 2007 meeting.
Re-use of Work Results(a) Patent Prosecution Highway
The Trilateral Offices confirmed that the Patent Prosecution Highway (PPH)may enable users to expeditiously obtain a foreign patent at an early stage andcontribute to reducing the examination workload of an Office.
The JPO and the USPTO have been operating a pilot program since July 2006.
The EPO will positively consider participation in the pilot program based on the
results of the USPTO-JPO pilot program.
The Trilateral Offices will continue to evaluate the current status of the pilot
program and consider opinions from users and modification of the PPH
framework for improvement.
In addition, the Trilateral Offices will consider implementing the Patent
Prosecution Highway in cooperation with patent offices outside the Trilateralframework.
(b) Tri-Way
The USPTO proposed a Trilateral search sharing project in which the Trilateral
Offices would conduct on the applicant’s request, sequential but closely timed,
complementary searches focusing on their respective documentation. The
Trilateral Offices confirmed that the USPTO’s proposal was a useful option for
those applicants who wished to obtain high quality search results.
With a view to launching a pilot project, the Trilateral Offices will continue todiscuss the Triway particularly from the viewpoint of workload reduction as wellas the users’ needs.
(c) Maximized work-sharing
The USPTO introduced a new work-sharing proposal for consideration anddiscussion in which Offices would focus on first-filed applications and take up
second-filed applications only when search/examination information isavailable from the office of first filing.
The EPO and the JPO will contribute actively to the study of this possibility.
(d) Common Search Templates
The Trilateral Offices are considering the evaluation of the usefulness of
exchanging the search approach and the database information being used byexaminers. The Trilateral Offices will choose the specific technical fields onwhich the basis of cooperation among the Trilateral Offices was establishedand consider starting a pilot project with the objective to create common searchtemplates.
(e) Utilization of Document Access Tools by the Examiners
In order to promote the mutual exploitation of search and examination results,
the Trilateral Offices are developing the Trilateral Document Access (TDA)system, which enables the examiners of one Office to electronically accessand view the contents of patent application wrappers filed in other Offices.
The Trilateral Offices reported on the usability of tools which enabledexaminers to access and view patent file wrappers via the TDA and the Web
and confirmed that the tools were very useful in terms of exploiting the searchand examination results of other Offices. The Trilateral Offices confirmed that it
was important to improve the utility of the system and promote the usage of thetools.
The Trilateral Offices confirmed that the usage of Document Access Tools andfeedback from examiners could be an important index for analyzing the current
status of and problems with the exploitation of search and examination resultsof the other offices as well. The Trilateral Offices will continue to share
information on usage of the tools by examiners and improve the tools.
(f) Import Guidelines
The Trilateral Offices have been discussing the importation of a document
acquired from one Office through electronic access tools into a file wrapper ofanother Office. The Trilateral Offices adopted the guidelines at the Conferencein 2005 which allowed the importation from published application of thefollowing: (1) Application as filed (Request, Claims, Description, Drawing, etc.)(2) A List of cited references, (3) References cited by examiner, and (4) Search
reports of those applications.
The Trilateral Offices confirmed that discussion would continue on the Import
Guidelines, aiming at the expansion of the scope of documents which could
mutually be imported, taking into consideration benefit of users and the mutual
exploitation of search and examination results.
In this regard, the JPO and the USPTO will continue to discuss various
measures to facilitate compliance by applicants with the Information DisclosureStatement (IDS) duty in the U.S.
Trilateral Patent Examiner Exchange
Based on reports on the examiner exchanges conducted at the USPTO in May
and at the EPO in October of 2006, the Trilateral Offices confirmed that
Trilateral examiner exchanges were significantly useful for examiners tounderstand the patent systems and examination practices of the other Offices
and for fostering mutual trust among examiners in the Offices.
The Trilateral Offices also confirmed that the understanding of the patent
systems and examination practices of each Office and the mutual trust sharedby the Offices would be the basis for promoting the mutual exploitation of
search and examination results. Furthermore, the Trilateral Offices recognized
Trilateral examiner exchanges to be very meaningful opportunities forengaging in and verifying the success of pilot projects, such as common
search templates and the Harmony projects on classification.
Taking into account the results obtained from the previous exchanges, theTrilateral Offices will start preparations for the next exchange which will be heldat the JPO in the spring of 2007.
The Trilateral Offices will continue to conduct Trilateral examiner exchanges

after the present round.
The Trilateral Offices confirmed that the next round of the Trilateral exchanges
will start at the USPTO in autumn of 2007.
Comparative Study on New Technologies
The Trilateral Offices confirmed that they should continue to discuss the
proposal of the USPTO for a comparative study concerning examination
practices and exchange of information about the definition and theclassification in the field of nanotechnology.
Electronic Access to Patent Application File Contents(a) Trilateral Document Access (TDA)The Trilateral Offices agreed on the TDA-File Wrapper Access Service Level
Agreement. Regarding the TDA change management process, a pilot
procedure will be undertaken by the Trilateral Offices based on the draft
proposal from the USPTO. The next version of the TDA specifications,concerning the USPTO-JPO PDX project and the handling and viewing of cited
documents will be implemented using this pilot procedure.
(b) TRINet
The Trilateral Offices agreed that a Technical Working Group meeting will beheld in January at the EPO to consider the introduction and discussion of bothongoing and future TRINet projects and issues.
(c) Compatibility of IT Systems
The Trilateral Offices confirmed the necessity of changing the contents of
ANNEX F corresponding to technical developments, and the importance of
keeping the principle of interoperability, confidentiality, integrity and authenticity.
Moreover, it was confirmed that all changes of ANNEX F must be treatedthrough the Proposal For Change process.
The Trilateral Offices also agreed to continue discussion on setting up agovernance structure to reinforce interoperability.
(d) PCT paragraph replacement issue
The Trilateral Offices and the WIPO confirmed to keep discussing this issue atfuture trilateral meetings and the WIPO will lead this discussion.
Exchange of Priority Documents
The Trilateral Offices confirmed their support for this concept and their intention
to make a major technical contribution in this respect.
The EPO and USPTO will start their exchange of priority documents in Jan
2007.

The JPO and the USPTO agreed commencement of the priority document
exchange between both offices from July 2007. Moreover the Trilateral Offices
will start discussions to use TDA-PDX priority document exchange mechanism
between the Trilateral Offices and the WIPO.
WIPO Digital Libraries Concept
The Trilateral Offices agreed on a common approach. A detailed proposal will
be worked out for the February meeting of the WIPO working group.
Biotechnology
Aiming toward realization of the common Trilateral databases and search tools,
the Trilateral Offices will investigate the costs of their respective search
environments so as to assess possible benefits of common platforms in the
future. They will specify the databases and tools which are useful for Offices byrevising the Trilateral search guidebook.
Concerning the Trilateral Search Guidebook completed in May 2006, theTrilateral Offices confirmed that they would publicize the information related tocommon search tools and databases of the Trilateral Offices in spring 2007.
The Trilateral Offices reiterated that cooperation in this field was significantly
successful and equally important for applicants and examiners and willcontinue to cooperate by exchanging search-related information, etc.
Non-Patent Literature (NPL)The Trilateral Offices reactivated the Non-Patent Literature Working Group in2006 with a view to promoting the utilization of non-patent literature so as tofacilitate the exploitation of search and examination results.
The Trilateral Offices will consider licensing-based approaches and exploring
the use of Digital Object Identifiers (DOI), so that they can easily exchange
non-patent literature cited by the examiners among the Trilateral Offices while
respecting copyrights. The Trilateral Offices confirmed the recommendation of
the working group for a basic approach to studying these issues.
Data exchange and quality
The Trilateral Offices unanimously approved the idea proposed by the USPTO
for “Media-less data exchange” which will enable the Trilateral Offices toexchange data without media such as DVD.
In view of “data exchange” between the Offices and the conditions to forward
such data to third parties the Trilateral Offices confirmed to begin discussing
possible modifications to the trilateral data exchange policy.
Linguistic Tools
The Trilateral Offices came to an agreement to continue to cooperate ontranslation feedback for the JPO system. The Trilateral Offices affirm theimportance of exchanging information about research regarding a searchsystem for a database containing various language documents with machinetranslation.
Harmonisation of Classification
The Trilateral Offices recognised the usefulness of harmonising classification
by introducing the Trilateral harmonised schemes to the IPC advanced level
scheme so that users could access all documents worldwide using one searchkey. They confirmed that Harmony Visits were significantly useful for
accelerating the Trilateral classification harmonisation and that they should becontinued. The Trilateral Offices decided that acceleration of classification
harmonisation is needed and instructed the working group to act accordingly.
Trilateral Statistical Report
The Trilateral Offices continue to make efforts to improve the Trilateral
Statistical Report. In particular, they are considering exchanging data,
concerned with granted patents, that has been divided by technical field andthen subdivided by country of origin. The trilateral Offices are also considering
displaying the statistics generated from the aforementioned data in the
Trilateral Statistical Report.
Information Dissemination Policies(a) Public Awareness
The Trilateral Offices confirmed that opportunities of joint participation weresignificant providing the TO's with venues where the results of the trilateral
cooperation activities could be quickly and broadly disseminated to users. In
addition, the Trilateral Common Brochure prepared by the Trilateral Offices
outlining the trilateral cooperation was completed to support these events.In
2007, the Trilateral Offices will continue to support these events and fairs in thethree regions.
(b) Information Dissemination Policies
The Trilateral Offices underlined the strategic importance of information
dissemination policies. In particular, the Trilateral Offices agreed that
Information Dissemination has increased relevance for applicants and the
public.
The Trilateral Offices reaffirm the importance of the Trilateral policy of free flowof information data at marginal cost and their willingness to apply it to any othercountry provided the reciprocity principle is respected.
Legal Issues(a) Standard Format
The Trilateral Offices have come to a common understanding with respect tothe draft Standard Format of patent applications in response to the request

from users, after having intensive discussions at three Working Group
meetings in 2006. The Trilateral Offices confirmed that they would implement
the related pilot project in 2007 in co-operation with users. The Trilateral
Offices expect to confirm that they will invite the user groups to nominate
participants to the Working Group which it is hoped will be held in February or
March 2007.
The Standard Format approach will make patent filing at all three Trilateral
Offices easier and improve efficiency for both patent applicants and for the
Trilateral Offices.
(b) New Route Proposal
Bearing in mind the EPO’s reservations, the Trilateral Offices will continue todiscuss the JPO proposal for a New Route while recognizing the importance ofconstructively exploring other options for users.
The Trilateral Offices discussed a proposed Analogous New Route Pilot Project
designed to evaluate the merits of the New Route framework. The JPO willfurther refine the proposal in view of the comments from the USPTO for the
Offices to study further.
(c) Developing the PCTTaking into account the current situation in which the PCT is vastly used bytrilateral users, the Trilateral Offices confirmed that they should make a major
contribution to further enhancing the PCT.
The Trilateral Offices will launch a project of improving the PCT administration
processes and the JPO will lead the project. As a next step, the Trilateral
Offices will study the flow of the documents in all PCT procedures, taking due
account of the electronic environment, such as, for instance, the flow ofcharacter coded documents. After analyzing of the current procedure, theTrilateral Offices will discuss the result of the study at the next trilateral meeting.
The Trilateral Offices confirmed this challenge will be the first step ofmodernization of PCT.
The Trilateral Offices decided to establish a WG to deal comprehensively with
the issues related to the PCT. They confirmed that its detailed mandate will be
discussed at the next Strategic Working Group in March.
(d) Comparative Study of the examination practices
In order for applicants to prepare high quality patent applications, which lead toenhance the examination quality, the Trilateral Offices acknowledged thesignificance of a comparative study on the description requirement as a firststep and the inventive step as a second step. The Offices will consider the
dissemination of the results to applicants and attorneys.
The Trilateral Offices will immediately collect real or hypothetical examples andreview their controlling law and practices to draft a mandate for a comparative
study for the next strategic working group in March 2007.

Technical Cooperation with Developing Countries
The Trilateral Offices confirmed the importance of each Office to continue
exchanging information concerning technical cooperation with developing
countries. The Trilateral Offices also confirmed that they would consider
Trilateral cooperative program for 2007 based on the needs of each Office andthe users. In particular, the Trilateral Offices confirmed that they should
consider effective cooperation on the basis of the experience of theco-sponsored seminar held in 2006.
ACCESS TO CHINESE DOCUMENTATIONThe Trilateral Offices recognize the strategic importance of access to theChinese documents for the examiners and the public.
The EPO will send a questionnaire on Chinese databases including (1) the
present/planned search environment for each Office, (2) the information
provided by the SIPO to the JPO and the USPTO. The EPO will consolidate
the replies before the next SWG.
E-Learning
The Trilateral Offices are co-operatively preparing e-learning materials todeepen the mutual understanding of the legislation, practice, search tools, andso on of each Office. Each Office is preparing training materials for two
different topics on a trial basis in 2006.
It is intended that the e-learning contents be utilized as pre-training materials
for Trilateral examiner exchanges. At the same time, the Trilateral Offices areaiming at publicizing those materials.
The Trilateral Offices confirmed that they would proceed with the e-Learning
project in 2007 and thereafter, and the Offices would collaborate in selecting
topics and in sharing existing materials. The Trilateral Offices also confirmed to
explore the possibility of establishing a substantially harmonized e-learning
system.
Patent Related Economic Analyses
The Trilateral Offices recognise the increasing importance of the economics ofpatents. The Trilateral Offices agreed to proceed with work on a study
concerning the role of fees as drivers of workload.