Procedure of the Trilateral Offices

The European Patent Office (EPO), Japan Patent Office (JPO), and the United States Patent and Trademark Office (USPTO) make up a group referred to as the Trilateral Patent Offices. Fig. 4.9 from the Trilateral Statistical Report 2006 Edition shows the varying ways in which these offices process the majority of the world’s patent claims:

Examination: search and substantive examination

Each of the Trilateral Offices will examine a filed patent application based upon novelty, inventive step, and industrial applicability. At the EPO, this examination is done in two phases. Firstly, a search is done in order to establish the state of the art with respect to the invention. The applicant receives a search report accompanied by an initial opinion on patentability. In a second phase, the inventive step and industrial applicability are examined in the substantive examination. In the national procedures before the JPO or the USPTO, the search and substantive examination are undertaken in one phase. The international searches and international preliminary examinations carried out by the three Offices are not included in the flow chart, since for PCT applications, the granting procedure starts at the moment they enter the national or regional phase.

Filing of a European application with the EPO is taken to imply a request for search, but not yet a request for substantive examination. For the latter, a separate request has to be filed no later than six months after publication of the search report. Filing of a national application with the JPO does not imply a request for examination; this may be filed up to three years after the date of filing. Filing of a national application with the USPTO is taken to imply a request for examination.

Publication

In the Trilateral Offices, the application is to be published, at the latest, 18 months after the date of filing or priority date. The application can be published before 18 months at an applicant’s request. In the USPTO, an application that has not and will not be the subject of an application filed in foreign countries does not need to be published if an applicant so requests.

Grant, refusal / rejection, withdrawal

When an examiner intends to grant a patent, this information is communicated to the applicant (EPO: Announcement of grant; JPO: Decision to grant; USPTO: Notice of allowance). If a patent cannot be granted in the form as filed before the Office, the intention to reject the application is communicated to the applicant (EPO: Examination Report; JPO: Notification of reason for refusal; USPTO: Office action of rejection). The applicant may then make amendments to the application, generally in the claims, after which examination is resumed. This procedural step is iterated as long as the applicant continues to make appropriate amendments. Then, either the patent is granted (see above) or the application is finally rejected (EPO: Intention to refuse; JPO: Decision of rejection; USPTO: Final rejection) or withdrawn by the applicant (EPO: Withdrawal; JPO: Withdrawal or Abandonment; USPTO: Abandonment).

In addition, if no request for examination for an application is filed to the EPO or the JPO within the prescribed period (EPO: six months after publication of the search; JPO: three years from the date of filing), the application will be deemed to have been withdrawn. In all three procedures, an applicant may withdraw or abandon the application at any time before the application is granted or finally refused. After the decision to grant the patent, the patent specifications are published if certain administrative conditions are fulfilled (EPO: Publication of patent; JPO: Publication of patent; USPTO: Patent issuance).

Opposition

There is no longer an opposition system at JPO. At the EPO, the period for filing opposition(s) begins after granting of the patent rights and lasts nine months. If successful, the opposition can lead to a revocation of the patent or to its maintenance in amended form.

In the procedure before the USPTO, there are two features that may lead to the cancellation of a granted patent: interference proceedings and re-examination. These features are not comparable to the opposition procedure at the EPO. In the USPTO, the first feature is a priority contest between applicants/patentees seeking to protect the same invention and the second feature may be requested by third parties or by the patentee during the lifetime of a granted patent.

Appeal

An appeal can be filed by any of the parties concerned against a decision taken by the Trilateral Offices. In practice, applicants can appeal decisions to reject an application or revoke a patent, while opponents can appeal decisions to maintain a patent. The procedure is in principle similar for the three Offices. The examining department first studies the argument brought forward by the appellant and decides whether the decision should be revised. If not, the case is forwarded to a Board of Appeal, which may take the final decision or refer the case back to the examining department.

In the JPO, generally appeal examiners examine the supplementary reasons brought forward by the appellant and decide whether the decision can be overturned. However, in the case that amendments of the description of the claims or the drawings have been made within 30 days from the filing date of an appeal against a decision to refuse the application, the examiner first re-examines the amendment brought forward by the appellant in order to decide whether the decision can be overturned. If not, the case will be forwarded to the appeal examiners for the final decision.