Summary of the 22nd Trilateral Conference
Alexandria, Virginia
November 19, 2004
The European Patent Office (EPO), the Japan Patent Office (JPO), and the United States
Patent and Trademark Office (USPTO) met at the 22nd Trilateral Conference inAlexandria, Virginia on November 19, 2004,-Reconfirming their commitments to Trilateral cooperation based on common
recognition of the role of industrial property as a basic system supporting theprogress of industry, technology, and international economic growth,-Identifying timely processing of increased workloads of patent applications andhigh quality examination processes as common concerns of the Trilateral
Offices and its user communities,-Recognizing the benefits of promoting reduction of processing times andavoiding duplication of work through a coordinated Trilateral approach,-

Understanding the benefits of harmonizing substantive patent law,-

Recognizing the benefits of developing common infrastructure and compatible
data for electronic business systems and search tools,

understand as follows:
Project WM1/Strategic: Effective Access and Use of Work Results/Strategic Issues
The Trilateral Offices reaffirm their expectations that the exploitation of the search
results of other Trilateral offices would have the potential to reduce the workload andcontribute to the improvement of the quality of the examination.
The Trilateral Offices deepen the recognition that it is desirable that thesearch/examination result of the Trilateral Offices of first filing be provided in a timely
manner to be used by the other Trilateral Offices of second filing in order that the other
Trilateral Offices of second filing achieve high quality examination and work reduction.
The EPO and the USPTO point out the challenge of searching Japanese language patentdocuments particularly those that do not have English family members. Both offices
confirm that enhanced patent quality may result from exploiting the search results of theJPO of Japanese language patent documents. They express interest in receiving thesearch results of the JPO in a timely manner.
The EPO and the USPTO acknowledge the efforts made by the JPO and the Japanese
private industry to promote utilization of the PCT route and accelerated examination.
The Trilateral Offices’ evaluation of the bilateral search exchange projects has shown
potential benefit for reduction of workload, avoiding duplication of effort, andimproving quality by exploiting the search results from another office. The TrilateralOffices recognize that the timely availability of the search results from the Office ofFirst Filing is critical.
Efforts should be made to provide timely access of the search data of the Office of First
Filing to the Office of Second Filing.
The Offices recognize there are currently gaps between each Office’s search results.
To narrow the gaps, the Trilateral Offices will promote programs such as examiner
exchanges, patent law harmonization, automated system development, classification
harmonization, and the exchange of search strategy information;
Furthermore, the Trilateral Offices recognize there is a need for effective translation
tools;The Trilateral Offices identify the following next steps for accelerating work sharing
progress in the short term:
1. Introduce where necessary possible modifications to the legal system, thetechnical infrastructure and/or measures influencing applicant behavior to allow
timely access to the OFF search information;
2. Provide technical solutions to make the OFF search history available to OSF in
readily accessible form;
3. Improve the acceptance of the OFF search results to OSF examiners by
utilizing an examiner exchange program and identifying additional efficient
ways to accomplish this acceptance;
4. Continue to improve current machine translations and work towards acomprehensive machine translation infrastructure.
The Trilateral Offices will consider the “Patent Prosecution Highway Project” preparedby the JPO. The USPTO will study the proposal to determine what impact this will
have on the USPTO and send comments on the proposals to the other Trilateral Offices.

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For the long term, the Trilateral Offices will work on procedures and law changes toachieve benefits from work exchange. The Offices will address timing of work so thatwork sharing provides benefits to the office of second filing to the greatest extent
possible.
The USPTO and the JPO will postpone reviewing fee policy changes that would
provide applicants with a benefit for the use of search and examination results fromanother Trilateral Office.
The Trilateral Offices will cooperate to define the requirements for the JPO Dossier
Access System for the satisfaction of the IDS (Information Disclosure Statement)
requirement in order to reduce the procedural burden of applicants when applicantsreceive office actions from the JPO. The USPTO will identify the requirements neededfor system developments with cooperation by the other Trilateral Offices at the next
Strategic Working Group meeting.
The Trilateral Offices will continue to review the legal and technical issues related toimport guidelines. The Trilateral Offices will review import requirements and provide
preliminary comments, if possible, by the middle of December 2004 with the goal ofestablishing guidelines by Spring 2005. The guidelines are to address types ofdocuments and conditions for importing.
The Trilateral Offices believe that in order to maximize work sharing it is important toaccess complete information on search history, strategy and results. The Offices willcontinue discussions in this regard.
In order to continue making progress on the Trilateral projects identified within thisdocument, a strategic working group meeting will be held in late February or early
March 2005. The USPTO will draft a proposed agenda and circulate for comments.
Project WM3: Examiner Exchange
Using the Examiner Exchange program as a tool for enhancing understanding andeffectiveness of the exchange of work results, the Trilateral Offices will continue toutilize the current examiner exchange program to improve acceptance and reduce any
gaps identified within the search exchange project.
The current Trilateral Examiner Exchange program includes a final Spring 2005 visit atthe JPO. The Trilateral Offices will to develop a detailed evaluation of the current
program after this visit before deciding to renew the program. The JPO will identify
the technical fields for inclusion in the Spring examiner exchange program by early
December 2004.

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As to the bilateral examiner exchange, the JPO expressed its intention to dispatch its
examiners at the same magnitude as that of recent years and willing to receive
examiners at the same magnitude as that of recent years.
The Trilateral Offices will better identify and define the mandates/objectives prior to
any future examiner exchanges. The three Offices recognize that there is need forclarity and a determination of scope on the technical areas selected, a need to identify
the mandate, stipulate the nature of the results to be gained, and a need for broadening
the dissemination of the results and information gained by the examiners.
Project WM4: Comparative Studies in New Technologies
Based on the ongoing activities on Nanotechnology, the Trilateral Offices will form aTrilateral Emerging Technologies Working Group. The Working Group will identify
trends in emerging technologies and exchange information between the Trilateral
Offices in regard to these emerging technologies. This exchange will include sharing
trends in new technologies, sharing information on definitions and initial classification
efforts and sharing ideas on best practices for effective and efficient examination ofemerging technologies.
Project EB1: Electronic Business Systems
The Trilateral Offices support the concept of interoperable tools for all IP Offices.
Therefore, the Trilateral Offices recognize the value of the EPTOS project and note theprogress made in the Netherlands, Denmark, and Sweden.
To achieve the goal of author-once-file-anywhere in an operational electronic filingenvironment, the Trilateral Offices will develop an interoperability issue paper for
e-filing data compatibility which prioritizes the issues and proposes initial targets forbest practices by Spring 2005. Each office will produce a resource and implementation
schedule in order to achieve the goal of interoperability.
Project EB3: Dossier AccessIn order to achieve the goal of effective access to each Office’s dossier, the Trilateral
Offices commit to the Trilateral dossier access standard for dossier access.
The EPO-USPTO will begin a limited production pilot of Trilateral Data Access for
published dossier and dossier document access at the end of November 2004. TheUSPTO and the EPO will continue working with the JPO to provide dossier accessusing the Trilateral dossier access standard.
The Trilateral Offices will prepare an inventory of all data and document exchanges
between the Offices for consideration of using Trilateral Data Access as a progressive
replacement for other exchange mechanisms. The Trilateral Offices also will extend
3the Trilateral Document Access (TDA) to support the machine translation possibilities
coming from Project WT1.
Project IT3: TRINet
The Trilateral Offices support the revised Protocol for adding new members to TRINet.
The three Offices will move forward with completing the next steps for adding IP
Australia to the TRINet. The Trilateral Offices note that the contract to allow theinterconnection of TRINet, PATNet, and WIPONet has now been signed by theTrilateral Offices.
Project DTR3: Priority Documents
The USPTO and the EPO will pilot a limited exchange of electronic priority documentin December 2004, using the asynchronous method for delivery, with the intention ofmoving to production mode in 2005. The EPO and the USPTO will work with the JPO
to adopt the Trilateral Data Access services for electronic exchange of Priority
Documents.
The Trilateral Offices will further work on a technical standard (i.e., TDA Interface
Specification-Trilateral dossier access standard) for Trilateral Office exchange ofPriority Documents. The standard will be finalized during the coming EPO/USPTO
pilot project and presented for adoption at the May Trilateral Meeting in 2005 in orderto achieve benefits from electronic exchange.
The Trilateral Offices believe that the format of the priority document should bespecified in bilateral or multilateral agreements between the participating offices.
Project DR2: Biotechnology
The Trilateral Offices will continue to work within the Biotechnology Working Groupto develop tracking mechanisms to follow trends pertaining to SNP applications and to
study the impact of any new XML standard as a replacement for WIPO standard ST.25
on each Office’s procedures and thereafter decide whether it is possible to implement
such a standard. The Offices will also make efforts to improve database completenessby inviting WIPO to establish a mechanism for delivering sequences to public databaseproviders and by encouraging other ISAs to do the same.
The JPO will select the technical field where chemical compound structure search isfrequently done as one of the fields of the examiner exchange program to be held inTokyo in April considering its finds of Chemical Compound Structure Search Study.

4Project DR4: Non-Patent Literature
The Trilateral Offices will exchange information on the use of Digital Object Identifiers(DOIs) as a means for providing access to the full text of NPL. Each Office willcontinue to study the issue of NPL exchange and report to the Trilateral Offices theresults of such studies. The JPO will participate in the current pilot program between
the USPTO and EPO to eliminate the exchange of copies of cited documents in the ISR
exchange program.
Project WT1: Linguistic Tools
The Trilateral Offices welcomed the JPO release of the Advanced Industrial Property
Network on October 12 as Phase 2 of the English-Japanese Machine Translation
System.
In order to advance progress in the use of search and examination results, the Trilateral
Offices will work toward improving machine translation of dossier contents in English.
To this end, the Trilateral Offices will establish a Trilateral Machine Translation
Working Group.
Project WT2: Harmonization of Classification
The Trilateral Offices reaffirm the importance to development and implementation ofIPC Reform as a necessary tool to achieve harmonization of the classification systemsof the three Offices. The Trilateral Offices will continue development in this area for aJanuary 2006 implementation date.
The Trilateral Offices recognize the importance of harmonizing classification as thebasic infrastructure to facilitate harmonization in search and enhanced usability of otheroffices search results, reduction of redundancies and increased mutual exploitation ofsearch results.
The EPO proposed to accelerate the Harmony project and the JPO is requested toenhance its contribution in the harmonizing classification by dispatching its examiners
to engage in the harmonizing classification project.
The JPO will provide a whole data file of its Alloys database to the EPO on a regularbasis.
Project WT3: F-I/F-Terms
The JPO will start producing the English translation of F-term manuals and provide
them to the EPO and the USPTO.

5The Trilateral Offices recognize that the English translation of F-term manuals willassist the EPO and the USPTO in the use of the F-term system. The JPO will
investigate the possibility of sharing information regarding discrepancies found between
the use of their machine translation tools and human translation.
Project PI1: Information Dissemination Policies
The Trilateral Offices reinforce its commitment to use the Internet as the key
dissemination tool for patent information in the future. Each office will use the internet
in ways that are appropriate in light of individual legal, technological, and datarequirements. One of the projects in this respect is the Japanese interface foresp@cenet which is being developed by the EPO in cooperation with the JPO and will
be launched in 2005. Further projects can be a Japanese interface to epoline and theimplementation of linguistic tools in these applications.
The Trilateral Offices appreciate the contribution of the private sector in theirinformation dissemination efforts and will each encourage a continuing dialog withthese organizations.
Project LEG: Legal Issues
The Trilateral Offices recognize the importance of patent law harmonization and notethat harmonization of prior art issues will likely improve quality and contribute toreduction of workloads in the three Offices and reduce costs for applicants. With thisin mind and in order to advance discussions on patent law harmonization, the Trilateral
Offices will base further harmonization work on a limited package of issues and work
toward harmonizing on that basis.
The USPTO is planning to convene a meeting, outside of the context of the Trilateral, toexplore next steps in patent law harmonization. The USPTO and the JPO encourage
the EPO’s participation in such a meeting and the EPO will address the issue at theDecember 2004 meeting of the EPO Administrative Council.
The Trilateral Offices will conduct a comparative study on their respective novelty
practices with a view to further developing the enlarged novelty concept. Such study
will employ example fact patterns from each office. The USPTO will take the lead indrafting examples. The USPTO will continue its current study on enlarged novelty
involving the review of file histories of applications and will provide the results to theTrilateral Patent Harmonization Working Group.
The Trilateral Offices will continue discussions on the adoption of a 30-month priority
period as an additional system to the international filing systems under the PCT and theParis Convention. The JPO will also propose a system that may include a transitional
period of 30-months before filing a national application in an office of second filing.
The USPTO will continue to refine its discussion paper taking into consideration the6concerns (for example the Hilmer doctrine and 35USC 102(e)) raised by the EPO andthe JPO and request that any further comments be submitted in writing within the next
couple of months.
Other Issues
The Trilateral Offices will continue, with respect to the PCT, the discussions on
streamlining PCT operations, including usefulness of capturing applications inelectronic form at the Receiving Office in order to enhance processing of applications atWIPO.
The Trilateral Offices also will continue consulting with one another on patent law
issues concerning genetic resources and traditional knowledge, particularly with respect
to proposed new disclosure requirements in patent applications.
The USPTO and the JPO support the concept of not duplicating work in the creation ofa Worldwide Patent Statistical Database. The EPO will meet with WIPO to startcooperation for the creation of such a database.
The Trilateral Offices recognize that quality standards are an important priority toconsider when establishing new International Search and Examination Authorities underthe PCT. The JPO and the EPO suggest that the number of the domestic/international
applications might be further criteria to be considered. In this regard, the USPTO will
elaborate appropriate proposals and will circulate the proposals to the other Trilateral
Offices for comment.

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