United States Patent and Trademark Office OG Notices: 20 September 2005
Reciprocal Access to and
Usage of Documents in
Application Files of Trilateral Offices
SUMMARY
The United States Patent and Trademark Office (USPTO) is
currently considering whether and to what extent documents contained in
the files of published foreign patent applications may be entered
(imported) into and become a part of the Official record in U.S. patent
application files.
BACKGROUND
Applicants often seek world-wide protection for their
inventions, and it is common for applications for the same invention to
be filed in many different countries. These multiple filings often
result in the respective patent offices performing substantially
similar prior art searches on corresponding applications. To help
reduce the amount of duplication of searching and thereby reduce
examining workloads, national patent offices may seek to build upon the
search results from a published corresponding application in another
office.
For a number of years, the USPTO, European Patent Office and
Japan Patent Office (Trilateral Offices) have been considering ways to
maximize the mutual exploitation of search results. Together, the
Trilateral Offices represent nearly 90% of all patent applications
filed in the world, illustrating the dramatic potential for workload
reduction in the USPTO through effective work sharing. As part of this
ongoing cooperation, the Trilateral Offices have established a
Trilateral Document Access (TDA) standard by which any one office may
access electronic files of published applications in the other two
offices. One of the main benefits of TDA over currently available
published application sources (e.g. Public PAIR) is a common interface
standard, by which examiners in each office can view the file contents
of a published application in one of the other two offices in the
examiner's own native viewing format, increasing efficiency and
effectiveness. Thus, while examiners in the Trilateral Offices have
been searching and reviewing the published applications of the other
two offices, the TDA will improve the efficiency and such searches.
PLANNED IMPLEMENTATION
Examiner usage of TDA is limited to viewing and printing
application documents from the published files of the other Trilateral
Offices. This practice is consistent with current usage by examiners of
documents contained in publicly accessible published application and
patent databases maintained by various patent offices around the world.
It is proposed, however, to expand TDA usage to permit examiners to
import certain published documents from the files of a "donor"
office into the application file of the "recipient" office,
becoming part of that file. For example, a USPTO examiner could import
a reference cited as prior art in the file of a published foreign
application into the USPTO file. Unlike viewing and printing of foreign
application documents, such imported documents would become part of the
official prosecution history of the recipient office's file. Likewise,
examiners from the other Trilateral Offices similarly will be able to
import documents from the USPTO file of published applications.
It is proposed that TDA importation be limited to the following
documents:
Application As Filed (Request, Claims, Description, Drawings, etc)
List of cited references
Available reference copies in the file
Search reports (without examiner comments or arguments)
Appropriate translations, when available, would also be importable.
If implemented, administrative instructions will be developed
to direct Trilateral Office personnel to follow these guidelines and
only import documents in accordance with them.
In order to appreciate issues concerned with document
importation via TDA, public comment is requested. Comments regarding
this matter may be directed to Mark Powell, Technology Center Director,
at Mark.Powell@uspto.gov or Jay Lucas, Sr. Legal Advisor-Automation,
at Jay.Lucas@uspto.gov.
JOHN J. DOLL
Commissioner for Patents
United States Patent and Trademark Office