"Triway" USPTO, EPO, JPO Patent Worksharing Pilot Starts July 28

On July 28, 2008 the Trilateral Patent Offices of Europe, Japan, and the U.S. will undertake a limited "Triway" worksharing pilot program that will be limited to 100 applications of diverse technologies, where the USPTO is the Office of first filing (OFF). The USPTO will accept 15 requests for participation in the Triway pilot program for U.S. applications assigned to each Technology Center.

Under the new program, each Office will conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results from each of the Offices would then be shared among the Offices in order to reduce the search and examination workload in each of the Offices.

In order to be eligible to participate in the Triway pilot program, the following conditions must be met:

1. A complete utility application (not subject to a secrecy order) must be filed or have recently been filed in the USPTO as the OFF.
2. A complete corresponding application claiming priority to the U.S. application must be filed in the EPO and JPO as the Offices of second filing (OSF) under the Paris Convention within four (4) months from the filing of the application in the USPTO.
3. The U.S., EP and JP applications must be limited to a single invention and the claims of each the 3 applications must sufficiently correspond. Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope. EPO and JPO may determine whether the claims in the corresponding application filed in its respective office sufficiently correspond to the claims in the U.S. priority application when deciding whether to accept the request to participate in the Triway pilot program filed in its respective office.
4. Applicant must file a request for participation in the Triway pilot program and a petition to make the U.S. application special under the Triway pilot program. A sample request/petition form (PTO/SB/12) will be available from the USPTO’s Internet Web site at http://www.uspto.gov/ on July 28, 2008. A petition fee under 37 CFR 1.17(h) for the petition to make special under 37 CFR 1.102(d) is required and must be submitted.
5. The request for participation in the Triway pilot program must be faxed to:T he Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

Once the request for participation in the Triway pilot program and special status have been granted to the U.S. application, the USPTO will notify the EPO and JPO of the corresponding applications (by application number and filing date) filed in each of their Offices.

The USPTO will perform a search of the U.S. application and will issue a search report including search history recordation. The report will be in the form of a PCT/ISA/210 form (e.g., including X, Y, A designations) or equivalent thereof. To the extent practicable, the USPTO will fax a copy of the search report to the applicant within six (6) months after the filing of the U.S. application.

Upon receipt of the USPTO search report by the applicant, applicant must promptly file a copy of the USPTO search report in the corresponding EP application and the Applicant must request participation in the Triway pilot program in the EPO. Information regarding the Triway pilot program in the EPO is available on the EPO’s Internet Web site at http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080716.html.

The EPO will conduct its Extended European Search Report (EESR) process and consider the art cited in the USPTO search report. The EPO will issue an EESR. Upon receipt of the EESR by the applicant, applicant must promptly file a copy of the EESR in the corresponding U.S. application. For the U.S. application, applicant must list the art cited in the EESR on an information disclosure statement (IDS) complying with 37 CFR 1.98. A copy of the EESR and the IDS must be faxed to the Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

Applicant must file a request for examination, a request for accelerated examination, including the statement of participation in the Triway pilot program in the JPO, as well as providing copies of the USPTO search report and the EESR. Information regarding the Triway pilot program in the JPO is available on the JPO’s Internet Web site at http://www.jpo.go.jp/torikumi_e/t_torikumi_e/triway_e.htm.

Upon granting the request for accelerated examination for the JP corresponding application, the JPO will conduct search and examination of the JP corresponding application. The JPO will consider the art cited in the USPTO search report and the EESR. The JPO will issue an office action for the JP corresponding application.

Upon receipt of the JP office action, applicant must promptly file a copy of the JP office action in the corresponding EP and U.S. applications. For the U.S. application, an English translation of the JP office action along with a statement that the English translation is accurate must also be submitted. In addition, applicant must list the art cited in the JP office action on an IDS complying with 37 CFR 1.98. A copy of the JP office action, an English translation thereof, an accuracy statement, and the IDS must be faxed to the Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

At this point, each of the corresponding applications will contain the search results from all three Offices (plus an examination result in the JPO). Since special status has been granted to the U.S. application, the U.S. application will be taken up for examination as special by the U.S. examiner. The U.S. examiner will consider the search results of all three Offices in the examination of the U.S. application.

Any inquiries concerning the program notice may be directed to Magdalen Greenlief, Office of the Deputy Commissioner for Patent Examination Policy at 571-272-8800 or at magdalen.greenlief@uspto.gov.