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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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