Summary of the 20th Trilateral Conference
Vienna, Austria
4 - 8 November 2002

The United States Patent and Trademark Office (USPTO), the Japan PatentOffice (JPO) and the European Patent Office (EPO) met at the Twentieth
Trilateral Conference in Vienna, Austria, from 4 to 8 November 2002.
The Offices met to reconfirm their commitments to Trilateral cooperation basedon common 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 fromnational or regional origin or through the PCT. The Offices have implemented
several strategies for addressing the situation: hiring a large number ofexaminers, improving the productivity of their work, and investing in automationand documentation tools. While these efforts are important, the Offices agree agreater common and coordinated effort needs to be undertaken to address theworkload 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, betteruse of 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 byelectronic searching. 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 A1 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 besubmitted by the International Bureau to the PCT Member States for commentand adoption. The Trilateral Offices propose that all changes be packaged
together into annual releases, except for emergency situations, that will comeinto force on 1 January of each year.
Project A2 Networks and Data Exchange
To support the efforts of the Trilateral Offices to address expanding workloads
and provide harmonization of data to facilitate communication with applicants, theTrilateral Offices agree to develop standards to encompass all office-applicant
communications. This would support JPO’s move to XML based systems andthe USPTO’s TEAM project scheduled in 2004 as well as the EPO’s ongoingdevelopments in epoline. A rationalized working group structure has been put
into place as a result.
Because the exchange of priority documents represents a significant volume ofdocuments, the Trilateral Offices reconfirmed the importance of reducing costs
for the applicants and workloads in the Offices through the electronic exchangeof priority documents.
The Trilateral Offices agree on the Trilateral Network (TriNet) Security Policy andthe operational procedure for the TriNet Security Authority. The Trilateral Offices
also 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 promotetrilateral 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 inpreparing a joint applicant survey, which is tentatively planned to be launched in
2003.

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Project B2b Gene Sequence Database
The Trilateral Offices agree to investigate the creation, in the long term, awrapped 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 thepossibility of creating a unified database approach related to storage andmethods 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 topropose 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 exchangeof search results preferably in an electronic format. The working group will
review both the exchange of national search results and search results for PCTcases.

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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.

4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 reportand agree 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 andpractices 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 ISR, inparticular, with respect to an analysis of additional documents used during theregional phase. The study confirms that citations in the international search
report are beneficial for reducing the workload during the further processing of
the application by other offices. The study also shows that the degree ofconvergence of 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 Examination
The 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 theTrilateral Web Site since it would provide useful information to the user
community on the patentability of such claims.
The requirements for industrial applicability, utility, enablement, support, clarity
and written 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 toexpand the scope to include the entire granting procedure for both search andexamination. They also agree to expand the visits to managers to gain a better
understanding of management practices at the respective offices.

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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(See Annex 1). These guidelines will be made available to WIPO for its own
dissemination policy and be a reference for other countries.

ANNEX 1TRILATERAL 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
data carriers, e.g., optical discs, magnetic tapes, the Internet, FTP, etc. These
are free exchanges and result from agreements made between the Offices
involved in the exchange. The policy on the use of this data is set forth below toprovide uniform minimum guidelines for using the data being exchanged. The
Trilateral Offices may, of course, agree to more liberal use of their data.
DEFINITIONS
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 thatwould conflict with a normal commercial sale of the data by, or otherwise
unreasonably prejudice the legitimate interests of, the Office providing thedata. The term “bulk transfer” 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 orsemi-public bodies (for example, depository libraries controlled by public or
private universities or foundations in accordance with requirements of a6Trilateral Office) for the dissemination 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 of 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 specificrequirements of individual 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 thatthe use of the data is compatible with fair practice and does not exceed
the extent justified by the purpose; or(v) for the purpose of providing copies of the data for the use of thereceiving 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 useof the 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

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regarding the use of the data as provided herein.
The EPO will provide the data of its Member States to other Trilateral Officesas part 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
in such 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 CASES1. 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 apublic service, for example, using the Internet.
The receiving Office is authorized to:a) provide public access to exchange data where the data are incorporated
as part 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 ofdata with the Office providing the data. Electronic data purchased fromanother Office are not necessarily subject to this policy and may be subject toany 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 agiven type of data, the exchange of data shall encompass all available
backfile data, e.g. data produced as a result of backfile conversion, etc.

82. Copying and shipping costsThe costs of copying and for shipping exchanged data shall be borne by theTrilateral Office providing the data.

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