Summary of the Trilateral Conference
Miami, 12 November 1998
The European Patent Office (EPO), the Japanese Patent Office (JPO), and theUnited States Patent and Trademark Office (USPTO) met at the Sixteenth Trilateral
Conference in Miami, Florida on November 12-13, 1998.
The Offices met to reconfirm their commitments to Trilateral cooperation based oncommon recognition of the importance of industrial property as a basic system
supporting the progress of industry, technology, and economic growth.
I. Follow-up of the Kyoto Action Plan
In order to adapt to the globalization of industry and trade and to improve theinternational patent system the Trilateral Offices adopted a common action plan in
Kyoto, in November 1997. Significant progress has been achieved in theimplementation of this plan dealing namely with deployment of the Trilateral Patent
Networld, the Trilateral Concurrent Search and Examination Project, and the
Trilateral Website.
II. Progress and Future Program of Trilateral Cooperation
The three Offices agreed on the following strategies and conclusions for each of thefollowing projects:
Project Al Electronic Filing of Applications and Project A2 Networks and Data
Exchange
Considering the growing geographic coverage of patent protection sought byapplicants, the three offices have recognized the need for a harmonized approachfor electronic handling of all interactive transactions among patent offices and with
their users.
As a first step, the three Offices agreed on the infrastructure and standards neededfor electronic communications and discussed them with WIPO. The standards,
which relate to establishing a secure electronic environment including authentication,
digital signatures, electronic wrappers and basic encryption, form the basis of all
future electronic exchanges.
In addition, a Trilateral Network has been implemented and is currently being tested.
This network will be extended to the International Bureau of WIPO in 1999,
Agreement has also been reached on the mechanism for electronic data exchange.
For this, the “PUSH” mechanism will be the first to be implemented with the “PULL”
mechanism to follow by the end of 1999.
The exchange of priority documents by CD-R will start in January 1999 between the
JPO and the EPO. The USPTO will follow shortly afterwards. For PCT applications,
the EPO will be involved in this exchange. It was also agreed to progressively
implement the exchange of PCT, EP, JP and US publicly available search andexamination data, including related cited documents, beginning in 1999.
1

The Offices agreed to build further applications based on these security, exchange
and wrapping standards and to work in particular on further harmonization ofInternet based filing. The three Offices also agreed to pursue the JPO’s proposal todevelop common standards for Internet based PCT filing systems. It is expected thaton-line filing through the Internet will become the generally accepted way of filingover the next 24 months.
It was agreed that the Trilateral Offices and WIPO would support the general
concept of an International Standard Application Format at the November 1998 PCT
and PLT meetings.
Project A3 Management Information Exchange
The Trilateral Offices agreed to review the USPTO’s proposal for a new joint
research effort to build a global forecasting model. The EPO indicated its greatinterest for such a model. The Trilateral Offices agreed to conduct further
discussions regarding this proposal in a meeting of experts prior to the Spring
Technical Meeting.
The Trilateral Offices agreed to continue with annual meetings of the Trilateral
Statistical Working Group and accepted recommendations made in the report for
improving the Trilateral Statistical Report and forecasting methods.
Project B2a First Page Database Preparation
The Trilateral Offices affirmed the continued production of the First Page Database.
Project B2b Gene Sequence Database
The USPTO agreed to provide both the JPO and the EPO with the newest version of
the Patentin software (both source and object code) as soon as it is available, torespond to the EPO’s wish for improved Patentin training materials, and to provide
help desk feedback.
It was further agreed to meet as soon as possible with the database providers.
(DDBJ, EMBL, and NCBI/GenBank) to discuss 1) the need for a separate patentsequence repository, and 2) collaboration in future web based versions of Patentin.
Project B2c F-Term
The USPTO agreed to distribute all translated themes to the EPO and the JPO by
January 31, 1999.
The Trilateral Offices agreed to conduct a thorough review of the work product byApril 1, 1999 and that discussions concerning dissemination of the translated
F-Term themes be discussed at the Spring Technical meeting.
The JPO agreed to provide translated updates when changes in the F-Term themes
occurred.
2

The three Offices agreed to translate the Fl into English. The JPO will present a
project plan for the translation of the entire FT classification including a timeframe forthe completion of the project.
Project B2f Data Capture
The USPTO agreed to provide the OCR back file capture tapes to its Trilateral
partners in the September-November 1999 timeframe in “rich text file” format. The
EPO agreed to provide test files of the EPO OCR captured patent data to the
USPTO.
Project B2g Non-Patent Literature
The EPO agreed that, upon completion of their ongoing non-patent literature projectand consultation with the copyright owners, it would share the results with the
Trilateral partners.
Project B2h Linguistic and Search Tools
The Trilateral Offices agreed to an EPO proposal whereby each Office would
prepare for the next Trilateral meeting a set of classification tools inventories which
would assist in defining a specific course of action.
Project B3a Exchange of Search Results
The first results of the project initiated in Kyoto indicated improved quality of search
reports as well as better mutual understanding of search methods and tools.
The three Offices agreed that the final report will include data regarding additional
examiner time needed for concurrent searches in order to assess costeffectiveness.
The three Offices also agreed to implement a new Trilateral Concurrent study/pilot in1999 in accordance with the attached document in Annex 1.
The points of contact from the three Offices will confer prior to February 1999, tofurther elaborate the procedures for this study/pilot including those involving searchguidelines.
Project B3b Mutual Understanding in Search and Examination
The EPO and the JPO agreed to exchange examiners in the field of multimedia. The
USPTO agreed to host two examiners from each of the EPO and the JPO for aperiod of 2-3 weeks in January 1999.
The Trilateral Offices agreed to continue the comparative study in biotechnology.
The study would focus on selected areas covered in the previous comparative study,
including DNA fragments, in order to update and improve the value of the3comparative study in an efficient manner in a shorter period of time. The JPO will
prepare a proposal with a draft questionnaire to submit to the EPO and the USPTO
on this issue.
Project C Patent Information Dissemination
The Trilateral Offices agreed to the revised information dissemination policy
covering exchange data. (See Annex 2). The new policy allows each Office to makeavailable to the public on an Internet service the data received from the two other
Offices.
The Trilateral Offices decided to determine the steps necessary to conclude theproduction of GLOBALPat.
Project D Legal Issues
The Trilateral Offices agreed to cooperate with WIIPO on the resolution of legal
issues associated with electronic filing and records management for PCT
applications.
PCT Automation Plan
The Trilateral Offices agreed to a joint concept for PCT Automation to be delivered
to WIPO. The Trilateral Offices noted that determining the technical implementationand timing of the plan were the responsibility of WIPO.

4

ANNEX 1
Trilateral Project B3a
Trilateral Concurrent Search
1999 pilot program

Introduction: Trilateral Project B3A
The results of prior search exchange studies show that when examiners were able
to confer with each other regarding search strategies and fields of search in advanceof performing searches, and then confer again to discuss and share the search
results, the quality of search improves. This has proven beneficial for mutual
understanding of search methods and tools. However, prior search exchange
studies were limited to small numbers of fields of technology and in some instances,
limited to PCT International applications. Furthermore, the prior search exchange
studies were not cost effective for the Trilateral Offices since the Trilateral Offices
were not able to recover the cost of examiner confers-al time and the costassociated with handling of international applications not filed in their respective
Offices. At the Fifteenth Trilateral Conference held in Kyoto on November of 1997,
the Trilateral Offices agreed to consider a USPTO proposal to possibly extend thestudy to include first actions on the merits, more types of applications and more
fields of technology.
A USPTO proposal on a new study for 1999 was presented to the EPO and JPO at
the June 1998 Trilateral Technical Meeting. Comments from the EPO and IPO
regarding the USPTO proposal were received in July of 1998 and have been
incorporated in the revised 1999 pilot program discussed below.
1999 Concurrent Search Study
Based upon a proposal from USPTO, the Trilateral Offices have agreed to initiate a
new study/pilot program, concurrent search’, to be undertaken in the second
trimester of 1999. The emphasis of the project is to promote greater mutual
understanding and further technical cooperation among the Trilateral Offices. An
important aspect of this study/pilot program is to promote increased sharing of
information among examiners in the three Offices and enhanced knowledge transfer
with respect to both working methods and search tools. The new study will include
all fields of technology. As a first stage, the three Offices have agreed to handle up
to 150-200 applications up to the next Trilateral conference. If by October 1st the
total applications reach this threshold, the Trilateral Offices will confer. The study will
be first evaluated prior to the June Trilateral preconference to determine if the study
should be modified or expanded.
In order to be eligible to participate in this pilot program, the following conditions
must be met:
Search includes planning the field of search, performing the search, and providing
the relevant attribution of the reference document(s).

5(1) A national/regional application must be first filed in the EPO, or the JPO, or the
USPTO;(2) Corresponding applications must be filed in the remaining two Trilateral Offices;(3) The claims in the first filed application and the corresponding applications must
be drawn to the same invention. Applicants will be required to provide a claims
correspondence table which indicates how each claim relates to the corresponding
claim in the other applications;(4) No first office action on the merits/search report has been issued on theapplication by any of the Trilateral Offices;(5) A request must he filed by the applicant in each of the Trilateral Offices for a
specialized concurrent handling procedure. Each Trilateral Office will decide
whether a fee is required with the request for specialized concurrent handlingprocedure. The request/petition will permit an Office to take the application out ofturn (e.g., EPO’s PACE program, USPTO’s petition to make special procedure) or
defer action until the application is ready for concurrent search; and(6) The request/petition filed in each Trilateral Office must include the application
numbers and filing dates of the corresponding applications (if known) filed in theother Trilateral Offices.
Upon receipt of the request/petition, each Trilateral Office will notify the other
Trilateral Offices that a request/petition has been filed. A copy of the claims in eachapplication should be exchanged among the three Offices to make sure that theclaims of the corresponding applications are drawn to the same invention. If theclaims of the corresponding applications are not drawn to the same invention,
applicant will be notified that the application is not eligible for participation in the pilot
program.
Each Trilateral Office will notify the other Trilateral Offices when the corresponding
application filed in its Office is ready for search, e.g., the application is complete andall formality checks have been performed, and will also notify the other Trilateral
Offices the name of the examiner who will perform the search of the application in its
Office. When the corresponding applications filed in the Trilateral Offices are readyfor search, a concurrent search of the application will be performed. The Office withthe first filed application will be the lead Office. The examiner of the lead Office will
be responsible for initiating discussions/consultations among the examiners of the
Trilateral Offices and for notifying the examiners of the other two Offices of thedeadlines for exchanging data sheets, start of the search, and exchange of search
results.
When the corresponding applications filed in the Trilateral Offices are ready forsearch, the following procedures will be conducted:(1) The examiner of the lead Office will notify the examiners of the other two Offices
the due date for exchange of data sheets. Items 1 to 5 (and 6, if applicable) on thedata sheet must be completed by each Office. Data sheets used in the current 1998
study (or a revised data sheet) may be used to record information and data to beexchanged.
6

(2) Within a set time period after the exchange of data sheets, the examiners of the
Trilateral Offices will have a first consultation with each other prior to performing thesearch to discuss the search strategies and fields of search as well as the searchtools and other electronic data bases to be used. Examiners will confer by electronic
media such as fax, telephone, or the Trilateral Network.
(3) Examiners of the three Offices will perform a comprehensive search based on
the normal working methods for each Office;(4) Within a set time period, the examiners of the three Offices will each complete asearch report. Search reports will be exchanged among the three Offices and cited
documents will be exchanged only upon request;(5) Within a set time period after the exchange of search reports, the examiners of
the three Offices will have a final consultation with each other to discuss and sharethe search results prior to the preparation of the next action
Quality of search should improve based on collaboration by examiners of the
Trilateral Offices. The cost of examiner conferral time could be recovered by each
Trilateral Office from applicants based on a fee that could be collected, if required bysuch Office, with the request for specialized concurrent handling procedure.
The 1999 study/pilot program is to be limited to collaboration of examiners of the
Trilateral Offices prior to performing the search and thereafter to share the search
results prior to the preparation of the office action/search report. The study will befirst evaluated prior to the June 2000 Trilateral conference and a determination
made as to whether the study should be modified or expanded.

7

ANNEX 2

Information Dissemination Policy
The goal of the three Offices (EPO, JPO, USPTO) is to achieve, to the extent
technically feasible and economically viable, effective and widespreaddissemination of patent information to all segments of the public. This goal applies
both to patent data in electronic form produced by each Office and to patent data inelectronic form obtained as a result of mutual exchange within the framework oftrilateral cooperation (exchange data).
With respect to patent data in electronic form produced by each Office, the three
Offices agree that the data will be provided to the public at no more than themarginal cost or cost of dissemination.
With respect to exchange data, the three Offices agree that, unless authorized inwriting by the originating office and subject to conditions established for such
distribution at the time of authorization,
1. exchange data will be for official use only by the receiving offices; and2. exchange data will not be copied, in whole or in part, for distribution or sale toother entities.
The three Offices further agree that:
3. official use of exchange data shall be unrestricted and free of charge;
4. exchange data shall encompass, when availab’e, all data produced as a result of
backfile conversion;
5. costs for copying and shipping exchange data shall be borne by the providing
office;6. the EPO shall be entitled to provide exchange data to patent offices of its
Member States to be used for the purposes and under the conditions for which the
EPO receives it; and7. the EPO shall forward to the JPO and the USPTO, to the extent required, allpatent data in electronic form created by patent offices of its Member States whichcorrespond to data exchanged among the three Offices, to be used for the purposes
and under the conditions for which the JPO and USPTO receive exchange data.
Definition of Official Use
Official use means use by the receiving office:•••for official procedures, including search, examination and appeal procedures;for statistical and technical analyses, including searches on the state of the art;
for purposes necessary to carry out the functions of the office.

Authorization to Disseminate through Patent Libraries
8

The three Offices authorize each other to provide public access to exchange data
through patent library services.
Patent libraries within the meaning of the present understanding are:• reading rooms or local search facilities administered by the three Offices and bypatent offices of EFO Member States;• non-commercial institutions which the three Offices authorize to disseminate
patent information, and which are established and controlled by federal, state or
local authorities, by universities or by non-commercial public or semi-public
institutions.
Authorization to Disseminate as a Public Service
Each office, having incorporated exchange data into search databases for official
use, may decide to provide public access to all or part of these databases as part ofa public service, for example, using the Internet.
The three Offices authorize each other to:
1. provide public access to exchange data where the data are incorporated as partof a notfor-fee public service;
2. provide pages of documents using normal browser capability; and3. provide a document delivery service for a fee, following the principle of marginal
cost or cost of dissemination.

9