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 search- ing expertise of each of the Trilateral Offices (European Patent Office (EPO), Japan Patent Office (JPO) and USPTO) for the benefit 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 Programme.

Under the Triway proposal, each Office would conduct searches on corres- ponding 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 programme.

II. Triway Pilot Programme

The Trilateral Offices agreed that the Triway Pilot Programme 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 Programme for US applica- tions assigned to each Technology Center.

A. Trial period for the Triway Pilot Programme

The Triway Pilot Programme will commence on July 28, 2008 and 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 programme early if the volume of partici- pation is minimal, or for any other reason. Notice will be published if the Triway Pilot Programme is terminated early.

B. Requirements for requesting participation in the Triway Pilot Programme in the EPO

In order to be eligible to participate in the Triway Pilot Programme, the follow- ing conditions must be met:

(1) An application must have recently been filed with the USPTO as the OFF. Corresponding applications claiming priority to the US application must have also been filed with the EPO and the JPO as the Offices of second filing (OSF) under the Paris Convention within four (4) months from the filing of the application with the USPTO. A request for participation in the Triway Programme and special status to the US application must have been granted. Information regarding the Triway Pilot Programme in the USPTO is available at http://www.uspto.gov.

(2) For an application filed with the EPO as the OSF to be treated under the Triway Pilot Programme, it must be complete for the search to be performed. That means in particular providing the Office at that time with the claims, the description, any translations required and, where applicable, the drawings and a sequence listing conforming to the rules for the standardised representation of nucleotide or amino acid sequences. In particular, prosecution under Triway will not be possible if use is made of the possibility of referring to an earlier appli- cation (see Rule 40(1)(c) in conjunction with (2) EPC) or of subsequently filing parts of the description, or drawings under Rule 56 EPC, as well as where the claims are filed subsequently.

(3) The US, 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 require- ments, the claims are of the same or similar scope. The EPO will determine whether the claims in the corresponding application sufficiently correspond to the claims in the US priority application when deciding whether to accept the request to participate in the Triway Pilot Programme.

(4) Applicants must file a request for participation in the Triway Pilot Programme before the EPO and a copy of the USPTO search report as well as a table of correspondence of claims. This shall indicate how the individual claims in the EP application correspond to the claims in the US priority application. The request must identify the corresponding US application by application number and filing date.

The request form will be available from the EPO website at http://www.epo.org as from July 28, 2008.

(5) The request for participation in the Triway Pilot Programme before the EPO must be filed once the request for parti- cipation filed with the USPTO and special status have been granted to the US application.

(6) Upon receipt of the USPTO search report by the applicant, the applicant must promptly file a copy of the USPTO search report in the corresponding EP application together with the table of correspondence of claims.

C. Special procedures

(1) Once the request for participation in the Triway Pilot Programme has been granted by the EPO, the EP application shall be treated in an accelerated manner.

(2) 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.

(3) Upon receipt of the EESR the applicant must promptly file a copy of the EESR in the corresponding US and JP applications.

(4) Applicants must file a request for examination, a request for accelerated examination, and a request for participa- tion in the Triway Pilot Programme in the JPO for the corresponding JP application. Information regarding the Triway Pilot Programme in the JPO is available at http://www.jpo.go.jp/torikumi_e/ t_torikumi_e/triway_e.htm.

(5) 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.

(6) Upon receipt of the JP office action, applicants must promptly file a copy of the JP office action in the corresponding EP and US applications. For the EP application, an English translation of the JP office action must also be submitted.

A copy of the JP office action and an English translation thereof must be submitted to the EPO including an indication of the relevant EP file number.

(7) At this point, each of the corres- ponding applications will contain the search results from all three Offices (plus an examination result in the JPO). The EPO examiner will consider the search results of all three Offices in the examination of the EP application. Applicants are encouraged to amend the claims in the EP application in view of the art cited by all three Offices.

Any inquiries concerning this notice may be directed to Eugen Stohr, Director, International Legal Affairs at estohr@epo.org

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