Summary of Results of 19th Annual Trilateral Pre-Conference

Summary of Results of 19^th Annual Trilateral Pre-Conference
and Conference

November 5-9,2001
San Francisco, CA

Primary Participants of Pre-Conference

• EPO: Mr. Jacques Michel, Vice President DG 1
  
• JPO: Mr. Yoichi Omori, Deputy Commissioner
  
• USPTO: Mr. Robert Stoll, Administrator for External Affairs
  
• WIPO: Mr. Brad Huther, Special Attache (observer)

Primary Participants of Conference

• EPO: Mr. Ingo Kober, President
  
• JPO: Mr. Kouzo Oikawa, Commissioner
  
• USPTO: Mr. Nicholas P. Godici, Acting Under Secretary for Intellectual Property and Acting Director

Trilateral Cooperation

Since 1983, the Trilateral Offices, the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japan Patent Office (JPO) along with the World Intellectual Property Office (WIPO) have met to discuss areas of cooperation in sharing search tools, in seeking ways to benefit in the advances in information technology, in establishing international standards, and in comparing patent search/examination practices.

Each Fall efforts of the Trilateral Offices culminate in discussion and mutual understanding by the Heads of the three Offices at the Annual Conference.The Conference is preceded by a technical conference of a Meeting of Experts from the Trilateral Offices and WIPO. The year 2001 marks the 19^th year the Conference has convened.

Results

The focus of the Pre-Conference was to address workload issues that have resulted from the growth of national or regional origin applications and through the PCT.

The Offices have agreed to create two working groups to address these issues. One group would have a strategic focus and would review medium and long-term efforts to reduce Office workloads. The Trilateral Offices emphasized that during this review, an increased understanding of users' needs according to industry sector needs to be examined.

A second work group will be established to explore technical solutions to the workload issues such as automation. This group will also review PCT Reform issues such as the PCT expanded International Search Reports and changes to PCT Minimum Documentation necessitated by electronic searching.

Additionally, significant areas of accomplishment were achieved in the area of electronic filing, issues related to the Trilateral Network, Classification, gene sequence database, non-patent literature, and within the area of examining an information policy to cover exchange data. Again, the focus was to review existing Trilateral projects with a goal toward achieving maximum benefit toward workload reduction.

Electronic Filing-

The three offices agreed on drafts of Trilateral proposition for WIPO that concern a Change Management Procedure for Annex F of the PCT Administrative Instructions in order to guarantee the continued harmonization of online filing software systems and to recommend standards to cover all office-applicant communications.

Trilateral Network-

The Security Policy for the Trilateral network has been agreed among the Trilateral Offices and the Offices agreed on specific requirements of the Draft Protocol for Adding New Members to the network.

Classification-

The Offices have also agreed to work on a common classification as a means toward coping with increased workloads. The three Offices will work toward a common system through cooperation in reclassification projects especially concentrating in the most active technology areas.

Data Exchange/Data Standards-

Several working groups were established during the meeting. A working group related to the exchange of search results will be formed to review both the exchange of national search results as well as for PCT cases. The PCT e-filing/XML workgroup has been restructured into 4 areas and will meet simultaneously.

Biotechnology-

In the area of biotechnology, the Offices agreed to investigate a mechanism for exchanging priority documents for biological sequences with a human readable certification and to explore the possibility of creating a unified database approach for storage of sequence data. The three offices will also review methods of disseminating this information.

Non-Patent Literature-

Regarding non-patent literature, the Offices agreed to collaborate on a list of desired capabilities for presentation and searching defensive publications in electronic form and to begin an effort to share data included in non-patent literature databases.

Search and Examination-

The three offices concluded several concurrent search studies as well as a comparative study on "reach through claims".

The Trilateral Offices were found to have similar opinions regarding the requirements for industrial applicability, utility, enablement, support, clarity and written description requirements of hypothetical claims.

The comparative study report, as well as, the concurrent search studies will be published on the Trilateral web site.

Information Dissemination-

The Trilateral Offices agreed to an information policy covering exchange data. The new policy provides uniform minimum guidelines for using data exchanged among our Offices. The guidelines will be made available to WIPO for its own dissemination policy.

[Last updated 4 January 2002]

 

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