USPTO News: PTO Announces "Triway" Pilot Program

    By Donald Zuhn --

The U.S. Patent and Trademark Office announced today that it was initiating a pilot program to promote worksharing between the USPTO, European Patent Office, and Japan Patent Office.  The pilot program, dubbed "Triway," was first proposed by the USPTO at the 2005 Trilateral Pre-conference; the Trilateral Offices agreed at last year's Trilateral Pre-conference to undertake a limited pilot program.  We first heard of the Triway program at last month's BIO International Convention when Group 1600 Director Dr. George Elliott briefly described three of the Office's worksharing initiatives to conference attendees (see "Docs at BIO: Representatives from JPO, EPO, SIPO, and USPTO Discuss Recent Developments in Japan, Europe, China, and the U.S.").

Under the Triway program, each of the three participating Offices will conduct searches on applications filed in their respective Offices, and the search results will 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 last year's Trilateral Pre-conference that the pilot program would be limited to 100 applications in which the USPTO is the Office of first filing, and where the filings are from diverse technologies (i.e., no more than fifteen applications from any one Technology Center).  The pilot program will begin on July 28, 2008 and end on July 28, 2009, or upon acceptance of 100 applications, whichever occurs first.

To request participation in the pilot program, interested applicants must:

• File (or have recently filed) a nonprovisional application with the USPTO that was complete (pursuant to 37 C.F.R. § 1.51(b)) at the time of filing;
• File corresponding applications in the EPO and JPO, where the corresponding applications claim priority to the U.S. application and are filed within four months of the filing of the U.S. application;
• Limit all three applications to a single invention and ensure that the claims of each application "sufficiently correspond" (i.e., are of the same of similar scope); and
• File a request to participate in the Triway pilot program and a petition to make the U.S. application special and pay a petition fee under 37 C.F.R. § 1.17(h) (the USPTO will make a sample request/petition form, designated as PTO/SB/12, available here on July 28; the request must be faxed to the Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief).

Applicants will be expected to satisfy several procedural requirements during their participation in the Triway pilot program.  Once an application has been accepted into the pilot program, the USPTO will conduct a search and fax a copy of the search report to the applicant within six months of the filing of the U.S. application (to the extent practicable).  The applicant must then promptly file a copy of the search report with the EPO and request participation in the pilot program in the EPO.  The EPO will consider the USPTO search, conduct its own search, and issue an Extended European Search Report (EESR).  The applicant must then promptly file the EESR with the USPTO.  With respect to the JPO, the applicant must file a request for examination, a request for accelerated examination, a statement of participation in the Triway program, and copies of the USPTO and EPO searches with the JPO.  The JPO will consider the USPTO and EPO searches, conduct its own search, and issue an office action.  The applicant must then promptly file copies of the JPO office action with the USPTO and EPO (a translation of the JPO office action and a certification must also be submitted to the USPTO).

Additional details concerning the pilot program can be found here.

Comments

[e6k]

I don't even understand the purpose of this program. I had thought they were trying to make it so that we could just rely on one of the three searches for all the offices. But now ... it doesn't look like it does anything other than make prosecution a PITA for the office.

[Donald Zuhn]

ek6

How is the Office additionally burdened by this pilot program?

Don