U.S., Japan and Europe Jointly Launch Three-Way Patent Search Sharing Pilot, beginning July 28, 2008

On July 28, 2008, the Trilateral Patent Offices of the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), and the Japanese Patent Office (JPO) launched a joint work-sharing project entitled the “Triway”. The program will test the effectiveness of a search and examination-sharing framework aimed at eliminating timing issues and improving the quality of the patents, with expectations of fewer invalidations in the future. For now, the Triway is geared towards applicants who have filed under the USPTO as the Office of First Filing (OFF.) and is limited to 100 participants from diverse technologies. The program will run until July 28, 2009 or until the first 100 applications are received, or, whichever comes first. Specifically, the conditions and procedures for participation are as follows:

1. Conditions

A) The applicant must file applications at the USPTO as the Office of First Filing (OFF.) Corresponding applications claiming priority to the U.S. application must be filed at the EPO as the Office of Second Filing (OSF) and the JPO as the Office of Third Filing (OTF.)

B) The applications filed at the Trilateral Patent Offices must be limited to a single invention, and the claims must be similar in scope, allowance being made for differences arising from translations and claim format requirements

C) The pilot is limited to 100 applications in diverse technologies and in order to ensure that applications are received from a wide range of fields, the USPTO will accept 15 participation requests from each of the Technology Centers.

D) The program will end on July 28, 2009 or upon the receipt of 100 requests submitted to the USPTO.

E) Applications subject to a secrecy order (i.e., applications with technical data detrimental to the national security if disclosed), provisional applications, plant and design applications, reissue applications, and reexamination proceedings, are excluded from participation.

2. Procedures

A) A utility application must be filed with the USPTO as the OFF.

B) Corresponding applications claiming priority to the U .S. application must be filed in the EPO and the JPO within four months from the filing of the USPTO application.

C) Applicants must file a request for participation in the Triway program and a petition to make the U.S. application special under the Triway program. (Requirements and procedures regarding petitions for a special application may be found in MPEP708.02[a]). A sample request/petition form is made available on the USPTO web site at http://www.uspto.gov, form number PTO/SB/12. Petitions for special application are subject to an additional fee. The request for participation in the Triway must be faxed to The Office of the Commissioner for Patents at FAX. NO. (571)273-0125.

D) Once the request for participation and the special status have been granted, the USPTO will notify the EPO and JPO of the corresponding applications by application number and filing date in each of the other Offices.

E) The USPTO will perform a search of the U.S. application. The search result will be sent to the applicant within six months of filing the U.S. application.

F) Upon receipt of the USPTO search report, the applicant must file a copy of the report to the EPO with its corresponding EP application. The applicant must also request participation in the Triway in the EPO. (For participation in the Triway with the EPO, go to http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080716.html)

G) The EPO will conduct its Extended European Search Report (EESR.) Upon receipt of the EESR, the applicant must file a copy in the corresponding U.S. application listing the prior art cited and the IDS by faxing them to The Office of the Commissioner for Patents at FAX. NO. (571)273-0125

H) The applicant must then request for accelerated examination, submit a request for participation in the Triway in the JPO, as well as provide copies of the search results of the USPTO and the EPO.

I) Upon grant of the request, the JPO will conduct a search and examination of the corresponding application by considering the search results of the USPTO and the EPO. For the USPTO application, an English translation of the JPO office action and a statement certifying the accuracy of the English translation must also be submitted. In addition, the applicant must list the prior art cited in the JPO office action on an IDS complying with 37 CFR 1.98. Fax the above mentioned form to the Office of the Commissioner for Patents at FAX. NO. (571)273-0125.

J) The USPTO will take up the U.S. application for examination as special since special status has been granted. The examiner will consider the search results of all three Offices in the examination.

K) Applicants are encouraged to amend the claims in the U.S. application in view of the art cited by all three Offices.

Further Information of the Triway program in the JPO can be found at http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/triway_e.htm.

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