| Patent Prosecution Highway, New Route, "Triway" |
Referenced Items (151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 162, 163, 164, 165, 166, 167, 168, 169, 170) |
(170) "Triway" Pilot Program among the
United States Patent and Trademark Office, the
European Patent Office, and the Japan Patent Office
I. Background
At the November 2005 Trilateral Pre-conference, the United States Patent
and Trademark Office (USPTO) presented a search sharing proposal ("Triway")
that would leverage the searching expertise of each of the Trilateral
Offices (European Patent Office (EPO), Japan Patent Office (JPO), and USPTO)
to the benefits of both applicants and the Offices.
The basic concept behind the Triway proposal is to promote worksharing
by eliminating certain timing issues, while at the same time providing
applicants and the Offices with the benefit of search results of the
Trilateral Offices being available within a certain short time period in
order to give applicants and Trilateral Offices an opportunity to share and
consider all of the Trilateral search results. This would help improve the
resulting quality of any patents issued on the corresponding applications by
each of the Trilateral Offices. The Triway proposal would complement other
worksharing efforts such as the Patent Prosecution Highway Program.
Under the Triway proposal, each Office would 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.
The Trilateral Offices agreed at the November 2007 Trilateral
Pre-conference to undertake a limited pilot program.
II. Triway Pilot Program
The Trilateral Offices agreed that the Triway pilot program be limited to
100 applications of diverse technologies, where the USPTO is the Office of
first filing (OFF). In order to ensure that the 100 applications are from
diverse technologies, the USPTO will accept 15 requests for participation in
the Triway pilot program for U.S. applications assigned to each Technology
Center.
A. Trial Period for the Triway Pilot Program
The Triway pilot program will commence on July 28, 2008. The pilot
program will end on July 28, 2009, or upon the acceptance of 100 requests
submitted to the USPTO as the OFF, whichever occurs first. The Trilateral
Offices may terminate the pilot program early if the volume of participation
in the pilot program is de minimis, or for any other reason. Notice will be
published if the Triway pilot program will be terminated early.
B. Requirements for Requesting Participation in the Triway Pilot Program
in the USPTO
In order to be eligible to participate in the Triway pilot program, the
following conditions must be met:
(1) An application must be filed or have recently been filed in the USPTO
as the OFF. The U.S. application must be complete (37 CFR 1.51(b)) at the
time of filing. Provisional applications, plant and design applications,
reissue applications, reexamination proceedings, and applications subject to
a secrecy order are excluded and not subject to participation in the Triway
pilot program.
(2) A 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
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application in the USPTO. The applications filed in the EPO and JPO as the
OSF should be complete at the time of filing under the law and rules of the
respective Offices.
(3) The U.S., EP and JP applications must be limited to a single
invention and the claims of 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. The requirements and procedures for petitions to make
special set forth in MPEP § 708.02(a) DO NOT apply to the petition to make
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. The request/petition form must
identify the corresponding EP and JP applications by application number and
filing date. Applicants are encouraged to use the USPTO request/petition
form. 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: The Office of the Commissioner for Patents at 571-273-0125,
directed to the attention of Magdalen Greenlief.
C. Special Procedures
(1) 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.
(2) 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.
(3) 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.
(4) 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.
(5) 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.
(6) 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
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Magdalen Greenlief.
(7) 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.
(8) 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.
(9) 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.
(10) 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. Applicants are
encouraged to amend the claims in the U.S. application in view of the art
cited by all three Offices.
The Triway pilot program does not absolve applicants of all their duties
under 37 CFR 1.56 and 37 CFR 10.18. By complying with items C.(6) and C.(9)
identified above, applicants would be considered to have complied with their
duties to bring to the attention of the USPTO any material prior art cited
in the corresponding foreign applications (see MPEP § 2001.06(a)).
Applicants still have a duty of candor and good faith, including providing
to the USPTO other information known to them to be material to
patentability.
Any inquiries concerning this 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.
July 15, 2008 JON DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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