The Trilateral Co-operation – which comprises the USPTO, the JPO and the EPO – collectively examines well over half of all of the patent applications in the world and began efforts to collaborate on harmonization in 1983.
But patent offices in countries such as Korea and China are now beginning to take on a growing proportion of worldwide applications as well, and are likely to join cooperation efforts in the coming years, according to panellists at Thursday’s conference.
The day-long conference included three separate panels, the first consisting of industry representatives, the second of the trilateral office leaders and the third of IP owners and advocates. Each set of panellists gave their perspectives on the importance of streamlining the patent application process in an increasingly global economy.
“The total number of patent applications filed by non-residents [worldwide] is 38%,” said Brad Smith, senior vice president, general counsel and secretary of Microsoft. “In 25 years it will exceed 75%. It’s inevitable – we need a single filing system. If the patent offices of the world are going to keep their heads above water, clearly everyone’s going to have to adapt.”
Last week also marked the 25th annual meeting of the trilateral offices, which concluded on Friday with the signing of a Memorandum of Understanding (MoU) in which the Offices pledged to “coordinate work sharing; develop a means to improve quality of applications; coordinate electronic business developments; harmonize or standardize search strategies, tools and procedures; and promote dissemination of patent information,” according to a USPTO press release. Previous annual meetings of the trilateral have resulted in achievements such as paperless search capability among the three offices, the adoption of international standards for electronic filing and the development of common patent information dissemination policies.
“We’re moving toward a single search and examination,” said Gerald Mossinghoff, senior counsel at Oblon Spivak McLelland, Maier & Neustadt and former assistant secretary of commerce and commissioner of patents and trademarks with the USPTO during Thursday’s conference. “That should be the goal of the trilateral, it’s inevitable,” he said.
EPO president Alison Brimelow decried the amount of duplicate applications examined among the Offices and said that the Trilateral Co-operation needs to take more definitive action on its commitment to collaboration.
“We can’t justify the economics of excessive duplication; duplication is nonsense,” said Brimelow. There were 242,000 duplicated applications processed among the trilateral offices in 2006.
USPTO director Jon Dudas emphasized the need for work sharing among the offices and urged his counterparts at the EPO And JPO to “use each other’s results to the maximum extent that’s practical”.
One significant agreement reached on Friday was the decision by the USPTO and the JPO to permanently implement the Patent Prosecution Highway (PPH) – which allows patent applicants who have received an examination report from either the JPO or the USPTO to request accelerated examination of a corresponding patent application filed in the other country – as of January 2008.
The two offices have been piloting the PPH since July of 2006.
Nicholas Godici, executive adviser at Birch Stewart Kolasch & Birch and former commissioner for patents and acting under secretary of commerce for intellectual property and director at the USPTO, was somewhat sceptical about the results of last week’s conference and annual meeting.
“It’s been slow progress”, said Godici. “An MoU is signed every year, but it’s not an indication that any significant change is going to take place.” He said that the Offices need to rely more heavily on one another’s examination results and encourage direct communication between examiners in different offices.
