Summary of Results of the Trilateral Technical Meeting 2001

June, 2001
Japan Patent Office

1. Dates and site

• (1) Dates: May 15 (Tuesday) - 17 (Thursday), 2001
• (2) Site: Crystal City Hilton(Arlington, Virginia USA)

2. Main participants

• The JPO: Mr. Yoichi Omori, Deputy Commissioner;
• The USPTO: Mr. Dieter Hoinkes, Deputy Administrator for External Affairs
• The EPO: Mr. Jacques Michel, Vice President DG1
• WIPO: Mr. Brad Huther, Special Attache (as an observer)

3. What is the Trilateral Conference?

Most of the world's patent applications are now examined by the Japan Patent Office (JPO), the US Patent and Trademark Office (USPTO), and the European Patent Office (EPO), together comprising the Trilateral Patent Offices. With the aim of working out solutions to issues common to the Trilateral Offices, the Trilateral Conference has been held every year since 1983. With the Experts Meeting held in the spring, and the Commissioners Meeting held in the autumn, the year 2001 marks the 19th year that the Conference has convened.

4. Result

A. Business method-related inventions

The Trilateral Offices confirmed that the concurrent search project using the PCT business method-related applications would be finalized and the results reported at the next Trilateral Conference.

B. Gene-based invention

• (1) Follow-up of the comparative study on "Nucleic acid molecule-related inventions whose functions are inferred based on homology search"
  The Trilateral Offices agreed to participate in a follow-up of the comparative study on "Nucleic acid molecule-related inventions whose functions are inferred based on homology search" adopted at the Awaji Trilateral Conference in accordance with JPO's proposal to exchange information and related opinions of Courts and Boards pertaining to "utility" based on inferred functions.
• (2) Comparative study on 'reach-through' claims
  The Trilateral Offices agreed in principle to JPO's proposal to commence the comparative study on chemical compounds identified by a screening method. The USPTO proposed to conduct more comprehensive study by targeting "reach-through" claims^(note) , and the Trilateral Offices agreed. The JPO will prepare a draft report of the comparative study by the next Trilateral Conference.
  (Note) "Reach-through" claims are claims directed to all the candidate compounds which might be obtained by using basic research tools.

C. Expansion of the TriNet

As regards expansion of the TriNet, the Korean Intellectual Property Office (KIPO) and the Canadian Intellectual Property Office (CIPO) are to be provided with connections to the TriNet on a pilot bases. The Trilateral Offices are to review the TriNet expansion criteria and implementation protocol for expansion based on the results of the pilot project.
It was also confirmed that connections to the TriNet would be allowed to the KIPO and the CIPO setting the JPO and the USPTO as a hub respectively. The JPO and the USPTO will respectively carry out activities regarding the pilot project for the KIPO and the CIPO, and will promote the projects towards the Trilateral Commissioners Meeting in November.

D. Information Dissemination

Common recognition was reached to the effect that, as data exchange with non-Trilateral Offices has come to take place, it would be appropriate to consider Trilateral data dissemination policy expansion outside of the Trilateral area within the WIPO framework.

E. Harmonization of Electronic Filing

As regards technical items for electronic applications, the Trialteral Offices agreed that harmonization should be carried out among the Trilateral Offices to the greatest extent possible, and as a result agreed-upon standards should be proposed to WIPO to be incorporated into technical standards for PCT electronic applications (Annex F of PCT Administrative Instructions).
Harmonization of electronic filing systems among the Trilateral Offices will again be discussed at the Working Group meeting scheduled for the EPO (Hague) from July 16 to 20.

[Last updated 22 June 2001]