Notice to the Public
Regarding the 1999 Concurrent Search Pilot Program
The United States Patent and Trademark Office (USPTO), the European
Patent Office (EPO) and the Japanese Patent Office (JPO) (the Trilateral
Offices) have participated in prior search exchange studies whereby the
examiners of the three Offices performed concurrent searches on a
limited number of selected applications. The results of the prior
studies show that the quality of search improves when examiners of the
three Offices were able to confer with each other regarding search
strategies and fields of search prior to performing the search and then
confer again to discuss and share the search results.
At the Sixteenth Trilateral Conference held in Miami, Florida, on
November of 1998, the Trilateral Offices agreed to participate in a new
concurrent search pilot program. This new program will involve
national/regional applications in all fields of technology, and focus on
first actions on the merits. The Trilateral Offices agreed to exclude
PCT international applications from the pilot program. The emphasis of
the pilot will be to promote: (1) greater mutual understanding and
further technical cooperation among the Trilateral Offices; (2)
increased sharing of information among examiners in the Trilateral
Offices; and (3) enhanced knowledge transfer with respect to both
working methods and search tools. The new pilot program will include
collaboration of examiners of the Trilateral Offices prior to performing
the search and the sharing of search results prior to the preparation of
the Office action/search report.
The Trilateral Offices have agreed to limit the number of applications
for the new pilot program to 200 applications. If the limit is reached
by October 1, 1999, the Trilateral Offices will evaluate the program to
determine whether the program should be expanded to include more
applications.
This pilot program will be initiated upon applicant's request. In order
to be eligible to participate in this pilot program, the following
conditions must be met:
(1) A national/regional application (PCT applications are excluded) must
be first filed in the EPO, or the JPO or the USPTO;
(2) Corresponding applications must be filed in the remaining two
Trilateral Offices;
(3) The claims in the first filed application and the corresponding
applications must be drawn to the same invention. Applicant is required
to submit a set of claims, in the English language, for concurrent
search along with a claims correspondence table to each Trilateral
Office no later than the expiration of three months from the filing date
of the last corresponding application. The claims correspondence table
must indicate how each claim in the set of claims for concurrent search
corresponds to the claims filed in each of the three applications;
(4) No first Office action on the merits/search report has been issued
on the application by any of the Trilateral Offices;
(5) Applicant must file a request/petition for participation in the
concurrent search pilot program in each of the Trilateral Offices where
the national/regional application was filed. The request/petition will
permit an Office to take the application out of turn or defer action
until the application is ready for concurrent search;
(6) For the USPTO, the request/petition will be treated as either a
petition to make an application special under 37 CFR 1.102, requesting
that the application be taken out of turn, or if appropriate, as a
petition to temporarily suspend action under 37 CFR 1.103, requesting
that action be deferred until the application is ready for concurrent
search under this pilot program. The request/petition must be
accompanied by the required petition fee (37 CFR 1.17(i)). The
request/petition must also include an authorization for the USPTO to
communicate with the other two Trilateral Offices concerning any subject
matter of the U.S. application;
(7) The request/petition filed in each Trilateral Office must include
the application numbers and filing dates of the corresponding
applications (if known) filed in the other Trilateral Offices. If the
application numbers and filing dates of the corresponding applications
are not known at the time of filing of a request/petition in a
Trilateral Office, applicant must submit such information to the
Trilateral Office when the information becomes available.
Sample request/petition forms, sample set of claims for concurrent
search and sample claims correspondence table form will be available on
the Trilateral Website (http://www.uspto.gov/web/tws/index.html). The
Trilateral Website can be accessed through the homepage of any one of
the Trilateral Offices.
Upon receipt of the request/petition, each Trilateral Office will notify
the other Trilateral Offices that a request/petition has been filed. If
upon review of the request/petition by the Trilateral Offices it is
determined by the Trilateral Offices that the first filed application
and the corresponding applications are not eligible for participation in
the pilot program, e.g., a first office action on the merits/search
report has been issued by one of the Trilateral Offices or the claims in
the three applications are not drawn to the same invention (if any one
of the Trilateral Offices determines that there is lack of unity of
invention or a requirement for restriction is appropriate), applicant
will be so notified by each of the Trilateral Offices. The refusal to
accept applicant's request/petition will not entitle applicant to a
request for a refund of the petition fee paid to the USPTO (see 37 CFR
1.26). Furthermore, the decision by the Trilateral Offices to refuse
acceptance of applicant's request/petition will not be subject to appeal
or reconsideration.
When the corresponding applications filed in the Trilateral Offices are
ready for search, e.g., application is complete and all formality checks
have been performed, a concurrent search of the application will be
performed. Applicant will be notified by each of the Trilateral Offices
that the request/petition for participation in the concurrent search
pilot program has been accepted. Examiners of the Trilateral Offices
will have a first consultation with each other prior to performing the
search to discuss the search strategies and fields of search as well as
search tools and other electronic data bases to be used. Examiners will
confer by electronic media such as fax, telephone, or Trilateral
Network. Examiners of the three Offices will perform a comprehensive
search based on the normal working methods of each Trilateral Office.
Examiners will have a final consultation with each other after
performing the search to discuss and share the search results prior to
the preparation of the office action/search report.
Each Trilateral Office will prepare an Office action/search report based
on its own national/regional law.
The pilot program will be evaluated by the Trilateral Offices prior to
the June 2000 Trilateral conference to determine whether the pilot
program should be modified or expanded.
Request/petition for participation in the concurrent search pilot
program filed in the USPTO should be addressed to the attention of
Magdalen Greenlief, U.S. Patent and Trademark Office, Office of the
Deputy Assistant Commissioner for Patent Policy and Projects, Crystal
Park 2, Suite 910, Washington, D.C. 20231.
May 5, 1999 Q. TODD DICKINSON
Acting Assistant Secretary of Commerce and
Acting Commissioner of Patents and Trademarks