WIPO

IPC/CE/35/9 ORIGINAL: English DATE: October 29, 2004

WORLD INTELLECTUAL PROPERTY ORGANIZATION
GENEVA

SPECIAL UNION FOR THE INTERNATIONAL PATENT CLASSIFICATION
(IPC UNION)

COMMITTEE OF EXPERTS

Thirty-Fifth Session
Geneva, October 25 to 29, 2004

INTRODUCTION

1. The Committee of Experts of the IPC Union (hereinafter referred to as "the Committee") held its thirty-fifth session in Geneva from October 25 to 29, 2004. The following members of the Committee were represented at the session: Australia, Brazil, Bulgaria, Canada, China, Denmark, Egypt, Finland, Germany, Ireland, Japan, Mexico, Netherlands, Norway, Portugal, Republic of Moldova, Republic of Korea, Romania, Russian Federation, Slovenia, Spain, Sweden, Switzerland, Turkey, United Kingdom, United States of America (26). India and the Ukraine were represented by observers. The European Patent Office (EPO) and the Patent Documentation Group (PDG) were also represented. The list of participants appears as Annex I to this report.

2. The session was opened by Mr. S. de Vries (Netherlands), Chair of the Committee.

OFFICERS

3. Mr. M. Makarov (WIPO) acted as Secretary of the session.

ADOPTION OF THE AGENDA

4. The Committee unanimously adopted the agenda, which appears as Annex II to this report.

DISCUSSIONS, CONCLUSIONS AND DECISIONS

5. As decided by the Governing Bodies of WIPO at their tenth series of meetings held from September 24 to October 2, 1979 (see document AB/X/32, paragraphs 51 and 52), the report of this session reflects only the conclusions of the Committee (decisions, recommendations, opinions, etc.) and does not, in particular, reflect the statements made by any participant, except where a reservation in relation to any specific conclusion of the Committee was expressed or repeated after the conclusion was reached.

report on the twenty-second session of the assembly of the ipc union

6. The Committee noted an oral report by the Secretariat on the twenty-second session of the Assembly of the IPC Union (see documents IPC/A/22/1, IPC/A/22/2 and IPC/A/22/3), held from September 27 to October 5, 2004. The Committee was informed that the Assembly had considered, at that session, two items – the IPC reform status report and the availability of the IPC electronic data.

7. With regard to the IPC reform status report, prepared by the International Bureau, Delegations at the Assembly had welcomed the introduction of the reformed IPC, expressed the hope that the reformed IPC would enter into force on January 1, 2006, and invited the Members of the IPC Union to closely cooperate with the International Bureau for achieving this goal. The Assembly had taken note of the IPC reform status report.

8. With regard to the availability of the IPC electronic data, the International Bureau had proposed to introduce marginal prices for providing the IPC data to commercial vendors of patent information, while retaining the policy of providing this data to industrial property offices free of charge. Some Delegations at the Assembly had expressed their concern as to whether it would be advisable to reverse WIPO’s policy of making the IPC data freely available to all users of patent information. The Assembly decided to request the Committee of Experts to consider the question of prices for the provision of the IPC data to other categories of users than industrial property offices.

9. The Secretariat informed the Committee that the question of prices for the IPC electronic data will be submitted for consideration at the next, thirty-sixth, session of the Committee of Experts. The Delegation of Japan requested that the Committee of Experts take into consideration three issues when considering the question of prices. Firstly, as the IPC is a key component for the dissemination of patent information, the IPC electronic data should be provided free of charge or at a marginal price. Secondly, the IPC data should be available free of charge through the WIPO website. Thirdly, respective industrial property offices should be allowed to establish the price at their will when they provide any edited, processed or translated IPC data. For example, the Japan Patent Office provides the users with the IPC data free of charge. Finally, the International Bureau should present clear reasons for establishing prices of the IPC data. The Delegation of the EPO supported the statement of the Delegation of Japan and requested that necessary consultations for considering the question of the IPC data are carried out as soon as possible.

report on the eleventh meeting of the trilateral working group on classification

10. The Delegation of the EPO reported on the eleventh meeting of the Trilateral Working Group on Classification, held in Vienna at the European Patent Office, from October 4 to 8, 2004 (see document IPC/CE/35/2). The Delegation explained that the main purposes of the meeting were to discuss progress in Harmony projects, organization of the examiner exchange in the Trilateral Offices and preparations for the examiners’ visits, technical implementation of IPC reform in the Trilateral Offices and at WIPO, including such issues as the reclassification of the worldwide retrospective patent collection according to the next edition of the IPC and specification of the IPC valid symbols file.

11. The Delegation informed of the Trilateral Offices’ intention to accelerate elaboration of Harmony projects and outlined the measures that would contribute to achieving this goal. The Delegation also explained that the meeting had confirmed the importance of IPC reform for the Trilateral Offices and their commitment to implement the reform on time for the entering into force of the next edition of the IPC.

amendments to the ipc

12. Discussions were based on document IPC/CE/35/3, containing the amended text of the Notes following the title of subclass C40B as approved by the IPC Revision Working Group at its eleventh session.

coordination of work between the special subcommittee for the supervision of the advanced level and the ipc revision working group

14. Discussions were based on the Supplement to document IPC/CE/35/4, containing the latest proposals, submitted by the Trilateral Offices, concerning procedures for the Special Subcommittee and coordination of its work with the IPC Revision Working Group (see Annexes I and II to the above document, respectively).

17. The Committee agreed that any significant changes to the principles, rules or the basic structure of the IPC that could emanate from the core level or the advanced level revision projects should be brought to the attention of the Committee for the possible introduction of amendments to the Guide to the IPC. However, this issue should be reflected in the document "Philosophy of the Revision of the IPC" which was under elaboration by the IPC Revision Working Group.

18. Having noted considerable progress in defining the procedures for the Special Subcommittee for the supervision of the advanced level, the Committee felt that a similar document defining procedures for the IPC Revision Working Group and coordination of its work with the Special Subcommittee should be elaborated, and accepted, with gratitude, an offer by the Delegation of the United States of America to prepare a draft of that document.

20. The Committee agreed that both, the procedure for the Special Subcommittee and the procedure for the Working Group, would be useful supplements to the document "Revision Policy and the Revision Procedure for the Reformed IPC" adopted by the Committee at its thirty-third session (see Annex IV to document IPC/CE/33/12).

21. Finally, the Committee noted the possible need to change the name of the IPC Revision Working Group because of its new mandate in the reformed IPC, and requested the members of the Working Group to consider this matter.

implementation in the ipc of the reform results

22. Discussions were based on document IPC/CE/35/5 relating to the implementation in the IPC of the following two tasks: "Introduction of residual main groups in IPC subclasses" and "Consideration of references in the advanced level of the IPC" and describing the work conducted by the IPC Revision Working Group on those tasks.

IPC reform implementation plan

25. The Committee noted that, in the framework of the outstanding Task 8(b) ("Creation of the Master Classification Database"), the issues relating to the exchange of the classification data between industrial property offices and the MCD would be specified in time for the next session of the Committee.

CLASSIFICATION TOOLS RELATING TO TRADITIONAL KNOWLEDGE AND BIODIVERSITY

26. Discussions were based on document IPC/CE/35/7.

27. In introducing the document, the Secretariat outlined the work, which had been done by the WIPO Task Force on Classification of Traditional Knowledge after the thirty-fourth session of the Committee of Experts. The work program of the Task Force for 2004 was attached as Annex I to the above document for reference.

28. The Secretariat informed the Committee of an initial proposal on a concordance list between the IPC and the Traditional Knowledge Resources Classification (IPC-TKRC), which had been prepared by India on the basis of the new main group A61K 36/00 adopted by the Committee at its thirty-fourth session.

30. The Secretariat informed the Committee of the ongoing activities of the Meeting of International Authorities Under the PCT (PCT/MIA), which had approved eleven Traditional Knowledge (TK)-related periodicals for their integration into the non-patent literature (NPL) list of the PCT minimum documentation.

31. The Committee noted that the PCT/MIA would review the possible further extension of the NPL list of the PCT minimum documentation in the TK-related fields and prepare an agreed list of recommended TK-related databases for use in the search process. The Committee was also informed that a PCT Minimum Documentation website had been established by the International Bureau for that purpose.

32. The Committee expressed its appreciation of the work carried out by the Task Force and agreed with its recommendation that details with respect to the elaboration of certain standards for classification and retrieval of NPL would have to be further specified by the Task Force.

34. The Delegation of China informed the Committee of the preparation of a revision proposal in the field of botanical pesticides developed by the State Intellectual Property Office of China (SIPO), in response to the task, indicated in the Task Force work program, of consideration of the need for further development of the IPC in the fields which cover the relevant subject matter relating to biodiversity.

35. The Delegation explained that China had a long history of using insecticidal plants to control pests. There were about 800 Chinese patent documents and 1,000 PCT minimum documents classified in this field, most of them were classified in the main group A01N 65/00 of the current IPC. The Delegation indicated that further subdivision of such main group would be necessary according to the statistics and their examination and search practice.

36. The Committee noted, with appreciation, that the final version of the said revision proposal was under preparation and would be sent to the International Bureau upon completion by SIPO, and would then be forwarded to the IPC Revision Working Group for its inclusion into the revision program. The Committee noted that, in view of the short period of time available before entering into force of the next edition of the IPC, the proposal would be considered in the next revision period.

37. The Delegation of India made a presentation of the progress of the governmental project for establishing a TKDL relating to traditional Indian medicine. The Delegation outlined the updates of the project and achievements relating to TKDL.

38. The Delegation explained that the IPC-TKRC concordance list, which included 5,000 subgroups in Ayurveda, had been prepared for providing efficient access to the Indian traditional medicine data in this area. The Delegation informed that TKRC relating to the component biodiversity was under development. The Delegation also informed that 36,000 medicinal formulations relating to Ayurveda were available in several languages for facilitating access to TKDL on the international basis. The Delegation indicated that further extension of the collected medicine formulations, relating to Ayurveda and other areas, was expected in the near future.

39. The Delegation indicated that access to TKDL by patent examiners of industrial property offices, for search and examination purposes, would be provided free of charge with agreement of non-disclosure to any third party, and TKDL would be made available to industries on the basis of benefit sharing principle. The Delegation also expressed its desire to share, with other countries, their experience and expertise in the development of TK information.

40. The Delegation thanked the International Bureau and the United States Patent and Trademark Office (USPTO) for their full support in the development of TKRC and TKDL.

41. The Committee expressed its appreciation of the creation and further development of TKDL in India as providing new search resources in the area of Traditional Knowledge which would significantly increase the efficiency of the search carried out by industrial property offices.

IMPLEMENTATION OF IPC REFORM AT INDUSTRIAL PROPERTY OFFICES

42. At its thirty-fourth session, the Committee had invited its members and observer organizations to include, in their Delegations to the thirty-fifth session both IPC experts and IT specialists in order to ensure the most efficient discussion of implementation of IPC reform. During this session, the Secretariat organized a separate meeting of the IT specialists where particular questions and problems were collected and discussed. A collection of these questions, together with short summaries of the outcome of the discussions related to each question, is given as Supplement to document IPC/CE/35/8.

43. As an introduction to the plenary discussion of the implementation of the IPC reform, two presentations of the Delegation of the EPO were made. The first presentation related to "Generation of back file data" and described steps in the creation of the worldwide collection of patent documents included in DOCDB and to be classified according to the eighth edition of the IPC; the second related to "Technical implementation of the IPC reform at the EPO" and described the status of the development of the MCD and the impact of IPC reform on EPO systems. The Secretariat informed the Committee that it planned to offer as an additional web service to external users the validation of IPC symbols and the indication of a core level predecessor of an advanced level symbol. The Delegation of the EPO indicated that the EPO planned to cooperate with the International Bureau in the development of this service.

44. Discussions of the Committee were based on document IPC/CE/35/8 containing a summary of replies to the questionnaire included in WIPO Circular No. IPC 123 for collecting information about the current stage of implementation of IPC reform, respective plans of industrial property offices and problems encountered in the implementation of the reform, and on the Supplement to this document relating to the separate meeting of IT specialists mentioned in paragraph 42, above.

45. The Committee noted that 38 offices had replied to the questionnaire and that, with respect to question 1 of the questionnaire, the majority of the offices did not foresee any problems with the application of Standard ST.10/C.

46. With respect to the question raised by one office concerning the application of Standard ST.10/C in other instances than front pages of patent documents, the Secretariat pointed out that it could be necessary for International Searching Authorities to apply this Standard in their International Search Reports if they are submitted in the printed form, because the classification symbols given in these reports would still have to be transferred manually to the files of the corresponding International Applications. This practice could, however, be abandoned in the future, once the data exchange of WIPO with the Searching Authorities has become fully electronic.

47. It was further agreed that in other instances than front pages of patent documents and International Search Reports, offices could freely decide where else they would apply this Standard.

48. Following the Committee’s assumption that the reformed IPC could also require certain adjustments of PCT operations, the Secretariat informed the Committee that such review of PCT operations and determination of the necessary changes were currently in progress.

49. With respect to problems indicated by one office regarding the manual recording of IPC symbols in different fonts, the Committee noted that additional recording of respective indicators foreseen in Standard ST.8 could solve the problem.

50. With respect to the request of several offices to receive a detailed specification of the IPC valid symbols file, the Secretariat informed the Committee that a preliminary specification of this file had been distributed and considered during the separate meeting of the IT experts. This specification was also currently being reviewed by the Trilateral Offices and their feedback was expected by early November so that a final version would probably be published by mid-November.

51. The Secretariat pointed out that the validity file would contain not only a list of all symbols valid for a respective version of the IPC, but also a history of symbols, i.e., a complete list of all symbols which had ever existed in the IPC together with indications of their validity period.

52. With respect to concerns mentioned by some offices regarding documents which would be published after the entering into force of amendments but would have been classified at a time when these amendments were not yet known to the classifier, it was noted that the validity file and the concordance list would be available at least three months before the entering into force of the amendments and therefore sufficient time for checking the validity of symbols and reclassification of invalid symbols would be available. The Committee emphasized that offices should be committed to supplying only valid symbols to the MCD.

54. With respect to details of such notifications and the making available of other data produced by operations of the MCD and to be provided to offices, the Delegation of the EPO reported that procedures were yet to be specified. It expressed a clear preference for a "pull" mechanism, i.e. that the offices would be obliged to retrieve such data, rather than a "push" mechanism.

55. The Committee took notice of the summary of replies given in the table of Annex II to document IPC/CE/35/8.

56. The Delegation of the EPO requested that all offices which would not use Standard ST.36 should contact the EPO for possible bilateral agreements on the data exchange.

57. It was noted that the majority of offices would make use of Standard ST.8.

58. With respect to the request of several offices for support for the introduction of the reformed IPC, the Secretariat informed of its plans to organize a series of seminars in 2005 in Geneva for interested offices, companies, and other users of the IPC where different aspects of the reformed IPC would be explained and discussed. In addition, the training examples currently developed by the Special Task Force in the form of Internet-based interactive tutorials would serve as an additional tool for training examination staff in the use of the reformed IPC. The Secretariat indicated that training courses could also be provided on-site if offices with special needs requested so, subject to budgetary possibilities.

59. The Secretariat also informed the Committee that a revised version of the Frequently Asked Questions (FAQ) would be published shortly on the WIPO IPC website. This version would address particular problems related to the reformed IPC and give clarification for some aspects of the reform, described in official documents, where ambiguous interpretation could be possible. In this context, the Committee was also informed that the EPO had submitted a proposal for amending the examples given in Standards ST.8 and ST.10/C to the Standing Committee on Information Technologies (SCIT) which would avoid misinterpretations of these examples.

60. Following the request of several offices expressed in the replies to the questionnaire and during the separate meeting of IT specialists for detailed specifications of reformed IPC data files to be provided by WIPO, the Secretariat further informed the Committee that preliminary XML files of the reformed IPC, both for the English and French language versions, had been recently posted on the IBIS website (https://www.wipo.int/ibis/DraftIPC8/). Detailed descriptions of the format of these files, including DTDs, would be made available as soon as possible. The Secretariat also explained that, in addition to the specification of the validity file (see paragraph 50, above), the specification for the concordance list was currently being drafted and would also be made available as soon as possible.

61. The Committee also discussed several items emanating from the separate meeting of IT specialists which were brought to its attention and required consideration by the Committee.

62. With respect to requests from some offices for portable copies of new versions of the advanced level of the IPC, the Secretariat explained that, besides the planned downloading from the Internet, additional ways for making such data available could be investigated if need exists.

63. In order to maintain their national patent registers and patent databases, several Delegations requested the EPO to provide files to national offices containing information on national documents which are part of the PCT minimum documentation families and were affected by reclassification made by the Trilateral Offices. The Delegation of the EPO acknowledged that this new requirement which was not reflected in CONOPS would be of great importance to national offices and agreed to make such information available.

64. In view of the objective of the MCD to provide only valid IPC symbols for all documents contained in the MCD, and in order to carry out the necessary reclassification of their national documents which are not part of any PCT minimum documentation family, several Delegations also requested to be provided with a working list of such documents similar to the working lists which would be created for offices participating in the reclassification of the PCT minimum documentation. The Delegation of the EPO again acknowledged the importance of this new requirement and agreed to make such information available.

65. The Committee recalled that a new version of the advanced level would only enter into force after the reclassification of all PCT minimum documents affected would have been carried out. However, it was noted that certain amendments of procedures could be needed if experience to be gained would show that complete reclassification could not be carried out within certain time limits.

67. With respect to the request of several Delegations to provide for updating and correcting the data of their national documents stored in the MCD, the Delegation of the EPO explained that different procedures therefor were currently under consideration in the course of the development of the MCD and that it would provide more information to the other offices as soon as possible. In this context, it was also pointed out that for offices that wished to correct the IPC data of such national documents which are part of a PCT minimum documentation family and had been reclassified via family propagation, the only way of changing this IPC data would be to contact an office responsible for their reclassification.

68. It was also discussed whether special procedures would be required for documents stored in the MCD and not being part of the PCT minimum documentation nor of a PCT minimum documentation family, in order to assure their reclassification in view of the goal that the MCD should serve as a searching tool which allows for patent searches without having to consult outdated IPC versions. The Delegation of the EPO explained that the procedures for the maintenance of the MCD foresee reiterative processes for detecting invalid symbols but that at present no deletion of such symbols is foreseen. Due to time restrictions for reaching conclusions, the EPO was invited to further study this issue and include a potential procedure therefor in the amended version of CONOPS including, for example, the provision of respective working lists for the reclassification of non PCT minimum documents (see paragraph 64, above).

69. With respect to further revisions of ECLA, it was explained that revision of ECLA would in principle be carried out independently of IPC revision. The Delegation of the EPO indicated, however, that it intended to keep ECLA compatible with the reformed IPC as close as possible.

claims project

72. The Secretariat made a presentation of the current status of the CLAIMS project and explained the developments that had taken place in the project since the last session of the Committee, in February 2004. The Secretariat indicated the completion of the development part of the project and provided explanations, responding to questions of delegates.

73. A live demonstration of the stand-alone version of the IPC categorizer was made. It included the possibility to perform categorization of documents in batch requested during the last joined presentation of the project to the Committee and the SCIT. Copies of the IPC categorizer on CD-ROM were provided to Delegates. The Secretariat indicated that the natural language search facility in the IPC had also been completed and was available for use.

74. The Secretariat informed that the IPC reform and revision IT support system (RIPCIS) was under testing and provided information about output files generated by this system.

76. In connection with the discussion of the CLAIMS project, the Delegation of Spain made the following statement:

77. The Committee expressed understanding and support of this initiative of the Spanish Patent and Trademark Office.

78. Detailed information on the current status of the CLAIMS project, presented by the Secretariat, is given in the electronic version of the presentation available on the WIPO IPC website (www.wipo.int/classifications/ipc/en/ipc_ce).

next session of the committee

79. The Committee noted the tentative dates of its next session:

Geneva, February 14 to 18, 2005.

80. The Committee also noted the possible need for the extension of its next session to nine days, depending on results which would be achieved at the forthcoming twelfth session of the IPC Revision Working Group and which should be adopted by the Committee for the inclusion in the eighth edition of the IPC. The Committee requested the International Bureau to consider that need when convening its next session.