Summary of Results of the Eighteenth

Summary of Results of the Eighteenth Trilateral Conference

November 3, 2000
Japanese Patent Office

1.Dates and site

• (1) Dates: October 30 (Monday) - November 3 (Friday), 2000
• (2) Site: Awaji Yumebutai International Conference Center (Tsuna-gun, Hyogo Prefecture)

2.Main participants

• The JPO: Mr. Kouzo Oikawa, Commissioner;
  Mr. Tadashi Ishii, Deputy Commissioner
• The USPTO: Mr. Robert L. Stoll, Administrator for External Affairs 
  ( Per Pro: Mr. Q. Todd Dickinson, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office )
• The EPO: Mr. Ingo Kober, President
• WIPO: Mr. Brad Huther, Special Attaché (as an observer) 

3.What is the Trilateral Conference?

Most of the world’s important patents are examined by the Trilateral Offices of the Japanese Patent Office (JPO), the US Patent and Trademark Office (USPTO), and the European Patent Office (EPO). With the aim of working out solutions for the problems common to the Trilateral Offices, the Trilateral Conference has been held every year since 1983. This year, the eighteenth Trilateral Conference was held.

4.Results

Establishment of a working group on PCT reform

The Trilateral Offices welcomed the decision of the PCT Union Assembly to enter into a PCT reform exercise that could ultimately provide the basis for a global patent system. The Trilateral Offices recognized that, as major PCT ROs and PCT authorities, they will have an important role to play in the reform process.
The Trilateral Offices are concerned about the workload they have to face as a result (for a large part) of the huge success of the PCT system.
The Trilateral Offices stressed the need to design as rapidly as possible contingency measures in order to alleviate the IS and the IPE workload. They consequently decided to establish a Working Group, with a primary mandate to develop ideas and methods to best cope with the most urgent problems.
Further, the Working Group could reflect on possible improvements to the PCT, with the intent to clarify the Trilateral Office's positions and, where possible to present proposals in due time to the WIPO Special Body.

2. Exchange of information on database

The Trilateral Offices have been exchanging information on and adopting databases relating to prior art. The Trilateral Offices, being committed to common documentation resources for their examiners and to database tools necessary for the new technology, confirmed that they will continue to exchange information and, with regard to database not yet introduced, will take necessary measures to introduce it.
The Trilateral Offices will continue to hold experts-level working group meetings and exchange information on databases. At the same time, the Trilateral Offices will make joint efforts to build up a common information infrastructure.

3. Emerging technology

(1)Business method patent applications

During the past year, the JPO and USPTO conducted a comparative study based on hypothetical cases. The EPO contributed a position paper on patentability of business methods in Europe that clearly shows there is agreement on certain aspects of patentability and disagreement on others.
In order to compare the usefulness of the respective search tools in this area, the Trilateral Offices agreed on the details of a concurrent search program comprising up to 20 PCT business method related patent applications. This program will be started in January 2001. 

(2) Biotechnology-related inventions

The Trilateral Offices adopted the report on the comparative study conducted by the three Offices on nucleic acid molecule-related inventions whose functions are inferred based on homology search. JPO will provide copies in electronic form so that each Office can make it available on the Trilateral Web site.
The Trilateral Offices recognized that differences in examination practices for nucleic acid molecule-related inventions revealed by this study stemmed mostly from differences in national/regional patent laws including relevant case laws. The Trilateral Offices noted that G8 Summit Communique encourages further efforts in relevant international fora to achieve broad harmonization of patenting policies of biotechnological inventions. Therefore, the Trilateral Offices agreed to continue further cooperation for promoting clearer understanding of search and examination practices in the three Offices to contribute to the broad harmonization of patenting policies in this field. 

[Last updated 22 February 2001]