Trilateral Patent Offices Step Closer on Patent Harmonization

By Gene Quinn
November 13, 2011

In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. In an effort to continue to move forward in the absence of true global cooperation, the Trilateral Offices at their 29th Trilateral Conference considered proposals to reduce the burden for patent applicants by increasing cooperation on procedures and improving the exchange of procedural information.

Meeting for their Annual Trilateral Conference near Paris, France, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.

Specifically, the three offices agreed to launch a new tool that will make it easier to access results from patent searches carried out by multiple offices for the same invention, the so-called Common Citation Document (CCD). The Trilateral Offices also agreed to extend the duration of the current Trilateral PCT Patent Prosecution Highway (PCT-PPH) pilot program, which involves the reuse of PCT International phase work, for another two years.

[International]

About the CCD

“To make this project possible, our three Offices have developed a brand new way of exchanging citation data,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “While the tool includes data from the Trilateral Offices, it has also been extended to include other Patent Offices, making all this information digitally available worldwide.”

Indeed, the CCD tool will offer a single point of access to citation data from all three Offices. The CCD uses the EPO’s global patent database family system and is hosted by the EPO. It can be accessed on the Trilateral website. It will allow patent examiners at each of the three Offices, as well as innovators and search firms, to search for and view the prior art cited by the Patent Offices for the family members of a patent application in a single screen. While designed to boost the efficiency of the Offices, the CCD is also expected to save considerable time and effort for anyone using patents, such as inventors, patent attorneys, patent search firms and patent analysts.

“The launch of the Common Citation Document is a milestone in our co-operation, and another significant step forward in improving the efficiency of the global patent system,” said EPO President Benoît Battistelli. “Based on a proposal made by industry, the new tool will provide details about patent applications for the same invention filed at several different offices in parallel. Companies and inventors in particular stand to benefit from the improved access to information,” he added.

Commissioner Yoshiyuki Iwai of the JPO added: “It is an example of our putting in place the right infrastructure to facilitate work-sharing among IP offices. We expect the CCD to be elaborated and updated further to improve its usefulness.”

[International-2]

About the PCT-PPH

The PCT-PPH pilot project of the Trilateral Offices facilitates fast-track examination by the EPO, JPO and USPTO for patent applications filed under the PCT as it allows the offices involved to exploit from each other results already available. Additionally, the EPO and the USPTO, as well as the EPO and the JPO, agreed to extend their bilateral PPH pilot programmes. All three pilot schemes will be revised with a view to enhancing their user-friendliness and efficiency.

The Trilateral Cooperation was introduced in 1983 to facilitate harmonisation of the patent systems in Europe, Japan and the US. It functions on the basis of annual work plans for technical projects that are agreed at the Annual Trilateral Conferences. The 30th Annual Trilateral Conference will be hosted by the Japan Patent Office in November 2012.

USPTO eDelivery to EPO

The USPTO also recently announced that last month it began to electronically deliver search results for all publicly available U.S. patent applications to the European Patent Office (EPO). This electronic delivery of search results was implemented to assist U.S. applicants who later file in the EPO to comply with a recent amendment to Rule 141(1) (Information on Prior Art) of the EPO’s implementing regulations to the European Patent Convention (EPC).

Amended Rule 141(1) EPC requires applicants to file a copy of search results for a priority patent application, which is claimed in a European patent application filed on or after January 1, 2011. USPTO’s electronic delivery of prior art citation data from Form PTO-892 (Notice of References Cited) to the EPO relieves applicants of the time, effort, and costs associated with independently transmitting the search results from a U.S. priority patent application to the EPO.  There is no fee for the electronic delivery of the pre-grant U.S. search results to the EPO.

Electronically deliver the search results for an unpublished U.S. patent application will be made where there is consent from an authorized party on file with the USPTO and the U.S. patent application has cleared national security review. According to the announcement issued by the USPTO, the form to use is PTO/SB/69 entitled “Certification and Authorization to Permit Access to Search Results by the European Patent Office (EPO).”  As of this morning there is no PTO/SB/69 form available on the PTO Forms page; neither is there a form that matches the aforementioned titled.

It is important for applicants to know that the USPTO will not notify applicants regarding the electronic transmittal of the search results for a U.S. priority patent application to the EPO. Applicants can confirm delivery of the search results for a U.S. priority patent application by viewing the electronic file wrapper at the EPO.

“This exchange of search results is consistent with the USPTO’s strategic goal to improve patent pendency and quality by increasing international cooperation and work sharing,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The EPO has also been working with the USPTO to develop a system for delivering search results from their unpublished applications to the USPTO.

For more information about the International Patent Process please see:

If you are interested in filing an international patent application in the United States, or entering the national stage in the United States based on a previously filed international patent application, please feel free to contact me.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 4 Comments comments.

  1. anonmyous Agent November 13, 2011 12:19 pm

    I am sure the high-quality EPO examiners are waiting with baited breath for delivery of the crappy US search results and Examination.

  2. American Cowboy November 15, 2011 9:30 am

    So does this mean we don’t need to do a supplemental IDS in the US to tell the US examiner what the EPO or JPO examiner has cited?

  3. patent enforcement November 29, 2011 12:08 am

    The CCD sounds like a welcome, and necessary, step forward. And any extension of the PPH is, of course, good news; the PPH process makes international patent filings somewhat less expensive for applicants, and also streamlines the process. I’m glad the U.S. continues to expand this program.
    http://www.generalpatent.com/blog/