WORLD INTELLECTUAL PROPERTY ORGANIZATION ORGANISATION MONDIALE DE LA PROPRIÉTÉ INTELLECTUELLE GENEVA/GENÈVE

Transcription

1 . IPC/R 17/01 Rev.6 ORIGINAL: English/français DATE: September 27, 2002/ 27 septembre 2002 WORLD INTELLECTUAL PROPERTY ORGANIZATION ORGANISATION MONDIALE DE LA PROPRIÉTÉ INTELLECTUELLE GENEVA/GENÈVE COMMITTEE OF EXPERTS OF THE IPC UNION COMITÉ D EXPERTS DE L UNION DE L IPC IPC REFORM PROJECT FILE/DOSSIER DE PROJET DE RÉFORME DE LA CIB SUBJECT: REVISION OF THE GUIDE TO THE IPC SUJET : RÉVISION DU GUIDE D UTILISATION DE LA CIB ANNEX/ ANNEXE CONTENT/CONTENU SEE/VOIR R 17/01 ORIGIN/ ORIGINE DATE 1 Excerpt from document IPC/CE/30/11 2 Draft Table of Contents (English version) 3 Draft Table of Contents (French version) 4 Decision by IPC/REF/5 and follow-up 5 Draft version of the Guide to the IPC Extrait du document IPC/CE/30/11 Projet de table des matières (version anglaise) Projet de table des matières (version française) Décision de l IPC/REF/5 et suite Version provisoire du Guide d utilisation de la CIB IB IB Rev.1 IB Rev.2 IB Rev.2 IB Glossary of terms Glossaire des expressions Rev.2 US Comments (re Annex 5) Observations relatives à l annexe 5 8 Comments (re Annex 5) Observations relatives à l annexe 5 9 Comments (re Annex 6) Observations relatives à l annexe 6 10 Comments (re Annex 5) Observations relatives à l annexe 5 11 Comments (re Annex 5) Observations relatives à l annexe 5 12 Comments (re Annex 5) Observations relatives à l annexe 5 Rev.3 RO Rev.3 CA Rev.3 RO Rev.3 EP Rev.3 SE Rev.4 US

2 page 2 ANNEX/ ANNEXE CONTENT/CONTENU SEE/VOIR R 17/01 ORIGIN/ ORIGINE DATE 13 Excerpt from document IPC/REF/6/2 (Glossary of Terms) 14 Excerpt from document IPC/REF/6/2 (Guide to the IPC) 15 Second draft of the Guide to the IPC Extrait du document IPC/REF/6/2 (Glossaire des expressions) Extrait du document IPC/REF/6/2 (Guide d utilisation de la CIB) Deuxième version provisoire du Guide d utilisation de la CIB Rev.4 IB Rev.4 IB Rev.4 IB Revised Glossary of Terms Glossaire des expressions révisé Rev.5 US Excerpt from document IPC/REF/7/3 (Glossary of Terms) Extrait du document IPC/REF/7/3 (Glossaire des expressions) Rev.6 IB Comments (re Annex 16) Observations relatives à l annexe Comments (re Annex 16) Observations relatives à l annexe Comments (re Annex 16) Observations relatives à l annexe Comments (re Annex 16) Observations relatives à l annexe 16 Rev.6 SE Rev.6 RO Rev.6 EP Rev.6 US Third draft of the Guide to the IPC Troixième version provisoire du Guide d utilisation de la CIB Rev.6 IB Comments (re Annex 22) Observations relatives à l annexe Comments (re Annex 22) Observations relatives à l annexe Comments (re Annex 22) Observations relatives à l annexe 22 Rev.6 RO Rev.6 EP Rev.6 JP

3 ANNEX 17/ANNEXE 17 EXCERPT FROM DOCUMENT IPC/REF/7/3 GLOSSARY OF TERMS FOR THE REFORMED IPC 67. The Working Group considered the Glossary of Terms for the reformed IPC approved by the Trilateral Offices (see project file IPC/R 17/01 Rev.5, Annex 16) and noted that several terms of the Glossary had already been approved at the pervious session of the Working Group. In view of lack of time and late submission of the Glossary, the Working Group was not in a position to consider all the terms, but approved some of them. These terms, with the addition of the terms approved earlier, are reproduced in Annex XI to this report. 68. The Working Group invited comments on the remaining terms by September 1, 2002, and requested the United States of America to submit the rapporteur report by October 1, The Working Group agreed that the French version of the Glossary should be established in consultation with industrial property offices having French as a working language, when the Glossary had been finalized. 70. The International Bureau was requested to verify the conformity of the approved and proposed terms to existing terms in the field of industrial property and to terms being under consideration of other WIPO Committees. EXTRAIT DU DOCUMENT IPC/REF/7/3 GLOSSAIRE DES TERMES POUR LA CIB APRÈS SA RÉFORME 67. Le groupe de travail a examiné le glossaire des termes pour la CIB après sa réforme, qui a été approuvé par les offices de la coopération trilatérale (voir l annexe 16 du dossier de projet IPC/R 17/01 Rev.5), et a observé que plusieurs termes de ce glossaire ont déjà été approuvés lors de la session précédente du groupe de travail. Faute de temps et étant donné que ce glossaire a été présenté tardivement, le groupe de travail n a pas été en mesure d examiner tous les termes mais en a approuvé certains. Ces termes, ainsi que les termes approuvés antérieurement, figurent dans l annexe XI du présent rapport. 68. Le groupe de travail a invité ses membres à soumettre des observations sur les termes restants pour le 1 er septembre 2002 et a demandé aux États-Unis d Amérique de présenter le rapport du rapporteur le 1 er octobre 2002 au plus tard.

4 Annex 17/Annexe 17 page Le groupe de travail a convenu que la version française de ce glossaire devra être établie en consultation avec les offices de propriété industrielle ayant le français comme langue de travail, une fois le glossaire terminé. 70. Le Bureau international a été prié de vérifier que les termes approuvés ou proposés sont les mêmes que ceux qui sont utilisés dans le domaine de la propriété industrielle ou qui sont à l examen au sein d autres comités de l OMPI. [Appendix follows/ L appendice suit]

5 Annex 17/Annexe 17 page 3 APPENDIX/APPENDICE EXCERPT FROM DOCUMENT IPC/REF/7/3, ANNEX XI/ EXTRAIT DE L ANNEXE XI DU DOCUMENT IPC/REF/7/3 GLOSSARY OF TERMS FOR THE REFORMED IPC Addition to the State of the Art the difference between the subject matter in question and the state of the art. Aspect a particular perspective from which technical information, particularly invention information, may be viewed, and according to which the invention information may be classified. The Categories of Subject Matter delineated below represents possible aspects of invention information Apparatus a category of subject matter which is a machine or device, described in terms of its functional capabilities or structural features, that is used to make a product of manufacture or composition of matter, or to carry out a non-manufacturing process. Basic Subject Matter of a Subclass the fundamental subject matter covered by a subclass title and its definition. Borderline (Line) A clearly stated boundary between classification places. Categories of Subject Matter principal divisions of invention information, represented by methods of using product products (articles of manufacture) processes of making product apparatus used to make product, and materials from which product is made. These categories are determined contextually. As examples, (1) a product of a process of manufacture can itself be a material from which a different product is made; (2) a process of making a product can simultaneously be a process of using a material to make the product.

6 Annex 17/Annexe 17 page 4 Appendix/Appendice page 2 General Top-Down Order of Priority a practice in which subject matter is classified in a particular group in a subclass scheme by: determining the topmost appearing main group in the scheme which provides for the subject matter, determining, under the main group, the topmost appearing parallel (coordinate) subgroup in its one-dot subgroups that provides for the subject matter, and repeating the methodology of the previous step through successive levels of subgroups until the topmost appearing appropriate coordinate subgroup in the deepest (greatest number of dots) appropriate subgroup level is determined. See the entry for Inclusive Nature of Groups, which is the classification principle that permits successful application of this concept. Genus a grouping of embodiments within a category of subject matter which share a common limitation. A subgenus (i.e., species) is a subgrouping within a genus. An ultimate species is the most specific embodiment within a genus, i.e., an embodiment with no explicit variables. This expression is primarily used in the chemical arts. Considering inorganic compounds as a genus, inorganic salts or sodium salts would be a subgenus or species, and sodium chloride would be an ultimate species. Group Branch (Array) a segment of a subclass consisting of a particular main group or subgroup, and all the subgroups indented under it. Invention Information (in a patent document) all novel and unobvious subject matter in its total disclosure (for example, description, drawings, claims) that represents an addition to the state of the art in the context of the state of the art (for example, a solution to a stated problem). Invention information should usually be determined using the claims of the patent document for guidance. Parallel (Coordinate) Group one of plural groups in a subclass scheme that (1) depend from the same immediate classification place (i.e., parent subclass, main group, or subgroup) and (2) have the same hierarchical (indentation) level. Note that all main groups in the same subclass are parallel (coordinate) with each other.

7 Annex 17/Annexe 17 page 5 Appendix/Appendice page 3 Species see Genus. Subgenus see Genus. The state of the art the collection of all technical things that have already been placed within public knowledge. Ultimate Species see Genus. [Annex 18 follows/ L annexe 18 suit]

8 ANNEX 18/ANNEXE 18 Swedish Patent and Registration Office IPC Reform, Task 17 August 7th, 2002 Glossary of Terms for the Reformed IPC COMMENTS (in response to IPC/R 17, Annex 16 and IPC/REF/7/3, Annex XI)) IPC/REF/7 invited comments on the remaining terms of the "Glossary of Terms for the Reformed IPC" approved by the Trilateral Offices. The definitions that have been approved have been so without previous commenting and, we believe, sometimes without a very thorough analysis. We have noticed some errors and inconsistencies in the already approved definitions and therefore we comment on the whole set, including the approved ones. For ease of reference we have reproduced the complete list in the left column, with our comments and counterproposals in the right column. Terms or expressions either adopted by IPC/REF (in italics) or still pending Addition to the State of the Art the difference between the subject matter in question and the state of the art. Aspect a particular perspective from which technical information, particularly invention information, may be viewed, and according to which the invention information may be classified. The Categories of Subject Matter delineated below represents possible aspects of invention information Apparatus - a category of subject matter which is a machine or device, described in terms of its functional capabilities or structural features, that is used to make a product of manufacture or composition of matter, or to carry out a non-manufacturing process. Comments General comment: Let us get rid of capitals in headings! We think the part relating to categories of subject matter is misleading and should be removed. "Things" of different categories are different inventions, not different aspects of an invention. It appears this is a narrower definition than the existing. There is no requirement to carry out a process in the present Guide (paragraph 51), it only talks about "an intended use or purpose". The approved definition is probably better, but if we define terms in a stricter way than in the present guide we should be sure that we do it correctly and that we do not change too much.

9 Annex 18/Annexe 18 page 2 Basic Subject Matter of a Subclass - the fundamental subject matter covered by a subclass title and its definition. This definition is not very useful. We believe the original USPC concept is very similar to the existing concept of "a thing per se" (see paragraph 40 of the Guide). We propose "- the subject matter covered per se by the title of a classification place and its definition, i.e. the subject matter itself as opposed to a combination of which it is a part". We do not see why the expression is limited to subclasses, it is just as relevant to groups. Borderline (Line) - A clearly stated boundary between classification places. Categories of Subject Matter principal divisions of invention information, represented by - methods of using product - products (article of manufacture) - processes of making product - apparatus used to make product, and - materials from which product is made. These categories are determined contextually. As examples, (1) a product of a process of manufacture can itself be a material from which a different product is made; (2) a process of making a product can simultaneously be a process of using a material to make the product. For non-english speakers: Does "represented by" mean that this is an exhaustive list (represent = "to stand as an equivalent of, to correspond to", "to act as a substitute or proxy [for]") or does it mean "exemplified by"? If it is intended to be an exhaustive list we worry about methods, processes and apparatus - it seems that only a small part of the examples used in paragraph 50 of the Guide are covered, unless the term "product" is interpreted in an extremely wide way. For example the definition of "apparatus" above includes those that are used to carry out a non-manufacturing process. It should say "a product" instead of "product" everywhere. Chemical Composition - a composition is an aggregate material formed from two or more discrete chemical materials (e.g., compounds or elements), which materials are not chemically bonded to each other. An alloy is usually a composition, but may in some instances (e.g., intermetallics, etc.) be a compound. Chemical Compound - a chemical compound is a substance formed of atoms of different elements attached to each other via chemical bonds.

10 Annex 18/Annexe 18 page 3 Combination invention information that consists of a set of two or more steps or components that coact to accomplish a result. For example: Example 1 - a three-step manufacturing process is a combination of three steps that together produce a product. Example 2 - a five-component chemical composition is a combination of the five components that may have a property that each component alone will not have. Example 3 - a wheelchair is a combination of a chair and a wheel assembly designed to transport a person in a sitting position. The terms combination and subcombination, however, are relative terms. Thus, the above Example 1 might be a subcombination of larger combination with a fourth step. In Example 3 above, the wheel assembly is itself a combination of a tire, spokes, and rim as well as a subcombination of the wheelchair. This definition is not correct. It includes many things that are probably not seen as combinations in the current IPC, and does not cover other things that are identified as combinations in the existing schemes. A combination does not need to be invention information, it can be any "thing". The word "combination" or similar expressions occurs in almost 1300 places in the IPC. A definition of "combination" would require verifying all these places. The terms "combined" and "combination" do in the current IPC not require any coaction between the subcombinations. In many cases it is rather the opposite, see for example B26D 11/00 or B43K 29/00. The general meaning of "combination" in the current IPC schemes is a combination of two or more functions, not just a thing consisting of two or more parts. This means that the word "combination" in the current IPC can be used in a rather unspecific way, for example "- - - combined with other devices" or just "Combinations", that would not work well with the proposed definition, see for example B21D 13/08, B22D 17/18 or B25F 1/00. We propose not to define the term "combination" at this stage, but rather define only the term "subcombination", which to us seems to be a much more important concept. If an opposite of "subcombination" is needed we prefer to talk of "a 'thing' as a whole", not a "combination". We understand that the USPC concept of "combination" is of use for defining

11 Annex 18/Annexe 18 page 4 inclusiveness. However, we think that the definition of inclusiveness would work without using the term "combination" - see below. We can see one bit of definition that could be of use: to point out that a thing having a property is not a combination of the thing and the property. Embodiment a specific disclosed example of invention information. See Genus. We propose "a specific example of how a (broadly defined) inventive concept can be put to practice". General Top-Down Order of Priority - a practice in which subject matter is classified in a particular group in a subclass scheme by: determining the topmost appearing main group in the scheme which provides for the subject matter, determining, under the main group, the topmost appearing parallel (coordinate) subgroup in its one-dot subgroups that provides for the subject matter, and repeating the methodology of the previous step through successive levels of subgroups until the topmost appearing appropriate coordinate subgroup in the deepest (greatest number of dots) appropriate subgroup level is determined. See the entry for Inclusive Nature of Groups, which is the classification principle that permits successful application of this concept. The language could be simplified and clarified. The definition lacks logic: the second step can not be repeated, since it relates to the main group and its onedot groups. The last sentence does not belong in this definition, and we anyway do not believe that inclusiveness is the only possible principle. On the opposite we think a general rule of precedence is the only principle that permits inclusiveness We propose: "determining the topmost main group that provides for the subject matter, determining, under that main group, the topmost one-dot group that provides for the subject matter, determining, in the next level of parallel (coordinate) subgroups to the one determined in the previous step, the topmost group that provides for the subject matter, and repeating the previous step until no further subgroups exist or until none of the subgroups at the next level provides for the subject matter."

12 Annex 18/Annexe 18 page 5 Genus - a grouping of embodiments within a category of subject matter which share a common limitation. A subgenus (i.e., species) is a subgrouping within a genus. An ultimate species is the most specific embodiment within a genus, i.e., an embodiment with no explicit variables. This expression is primarily used in the chemical arts. Considering inorganic compounds as a genus, inorganic salts or sodium salts would be a subgenus or species, and sodium chloride would be an ultimate species. Group Branch (Array) - a segment of a subclass consisting of a particular main group or subgroup, and all the subgroups indented under it. Inclusive Nature of Groups a principle by which a group, within a subclass scheme, provides for: a. its defined subject matter, and b. combinations of its defined subject matter with other subject matter, provided the combinations - belong to a category of subject matter (process of making, product, etc.) within the scope of the group definition, - are otherwise covered by the subclass (i.e., not provided for expressly by another subclass), and - are not classified elsewhere in the scheme in a group having precedence/priority. An inventive embodiment as a whole (e.g., a claimed combination in an issued patent) must be classified into a scheme on the basis of the inclusiveness principle. Any part or piece of the embodiment, however, which itself constitutes invention information is also to be considered to be an obligatory classification. For example, under this principle when Top-Down Priority practice is used, the first appearing coordinate group in a subclass scheme that provides for given subject matter is normally exhaustive (subject to the We do not think the first indent under "b" is necessary. Can a combination really belong to a different category of invention than its subcombinations? Does the word "expressly" in the second indent under "b" serve any purpose, and in that case which? We think it adds more confusion than clarity. The last two paragraphs are not part of a definition of inclusive nature of groups, and do therefore not belong here. The second last paragraph is a what-to-classify question. The last paragraph describes an effect of topdown priority, not of inclusiveness. We propose: " a principle by which a group provides for: a. its defined subject matter, and b. 'things' consisting of the defined subject matter together with other

13 Annex 18/Annexe 18 page 6 qualification in the following paragraph) of this subject matter. Thus, no lower coordinate group or group branch of the scheme should provide for either the subject matter, or for combinations including the subject matter. subject matter, provided those 'things' - are not provided for in another subclass, and - are not covered elsewhere in a group having precedence or priority." Indentation / Indent a system of notation used to visually indicate the hierarchical relationships of groups within classification schemes. Indentation indicates subdivision of part of the invention information contained in a main group or subgroup by a subordinate subgroup(s). The dependent relationship of a subordinate subgroup to its parent subgroup or main group is shown in a classification scheme by positioning the subordinate subgroup title below, to the right of, and with one more dot preceding its title than the group title that it is directly subordinate to. An example is: We propose "- a graphic presentation of the hierarchical relationships of groups within classification schemes " "- - - a title such as 'Movable eyes as details or accessories of dolls'" A63H 3/00 Dolls A63H 3/36 Details; Accessories A63H 3/38 Eyes A63H 3/40 movable. In this example, the subgroup A63H 3/40 is successively dependent on main group A63H 3/00 and subgroups A63H 3/36 and A63H 3/38 under which it is indented. Without the use of hierarchy and indentation, subgroup A63H 3/40 would have to have a title such as Movable dolls' eyes or dolls with movable eyes. Invention Information (in a patent document) all novel and unobvious subject matter in its total disclosure (for example, description, drawings, claims) that represents an addition to the state of the art in the context of the state of the art (for example, a solution to a stated problem). Invention information should usually be determined using the claims of the patent document for guidance.

14 Annex 18/Annexe 18 page 7 Material - A category of subject matter that embraces any stock material, intermediate products of completed articles, or composition of matter which is acted upon to make a product. Method of Using - A category of subject matter that is a step, or series of steps, for utilizing a product of manufacture or composition of matter for a disclosed purpose. Multi-Aspect Classification (MAC) the practice of classifying invention information according to the different perspectives from which the invention information may be viewed. One example of the types of aspects that should be considered with the objective of complete classification of invention information includes the Categories of Subject Matter. The following illustrates one method of using this practice: In the case of a patent documents involving a chemical compound, classifiers should consider three different aspects that could be candidates for classification: the compound per se, a method of making the compound, and a method of use of the compound. An example of other types of aspects that could be considered for multiple classification are those similar to the relationship of C10G 1/00 and C12S 1/00. A patent document having invention information that covers the concept of producing hydrocarbon mixtures from oilsand using enzymes would be classifiable in both of these classification places. Multi-Part Classification (MPC) the practice of separately classifying individual components, elements or steps of a combination (e.g., individual steps of a multi-step process, components of a chemical composition, parts of a multi-component apparatus, etc.) This is not a definition but a list of examples. The expression "embraces" means "comprises or includes as an integral part". Does "material" really need a definition? Does this need a definition, and does the proposed definition say anything non-obvious? We propose "- the practice of classifying inventions according to different perspectives from which they can be viewed. One example of different aspects is when inventions are characterised both by their functional features and by their special adaptation for a particular purpose. An example of this is situation is an air conditioning system that has particular functional features that is classified in F24F 3/00, and which is also specially adapted for use in submarines and therefore classified in B63G 8/36. In some fields the classification rules require the classification of different aspects in different places. An example of this is medicinal preparations, which are classified both for their chemical properties, and for their effect against certain diseases. A penicillin preparation is classified according to its chemical properties in A61K 31/43 and its effect against infective bacteria in A61P 31/04." We think the difference between MPC and normal classification of subcombinations is not made clear. We propose: " the practice of identifying inventions by separate classification of their components, elements or steps (e.g. of individual steps of a

15 Annex 18/Annexe 18 page 8 Obligatory Classification(s) the mandatory classification(s) necessary to adequately represent the invention information of a patent document according to the rules of classification applicable in the area in question. Parallel (Coordinate) Group - one of plural groups in a subclass scheme that (1) depend from the same immediate classification place (i.e., parent subclass, main group, or subgroup) and (2) have the same hierarchical (indentation) level. Note that all main groups in the same subclass are parallel (coordinate) with each other. multi-step process, individual components of a chemical composition or individual parts of a multi-component apparatus)" Process of Making A category of subject matter that is a step, or a series of steps, for producing an article or composition of matter. Is this really necessary? Product A category of subject matter that is an article or composition of matter defined in terms of its structural features or its physical or chemical properties. This definition is different from the one used in paragraphs 50 and 51 of the Guide. A definition which is more in line with the present one would be something like: " A category of subject matter that is an article or composition of matter that results of a process, regardless of the subsequent function of the product, e.g., the end-product of a chemical or manufacturing process. An apparatus can be regarded as a product, since it is produced by a process. However, the term 'apparatus' is associated with an intended use or purpose, e.g., apparatus for generating gases, apparatus for cutting". The definition of "product" must fit with the definition of "apparatus". It appears that the proposed definition of "apparatus" is slightly narrower than the existing one and that the proposed definition of "product" is slightly wider. Perhaps it doesn't matter in practice

16 Annex 18/Annexe 18 page 9 Product-by-Apparatus - a product defined at least partially in terms of an apparatus used to prepare it. Product-by-Process - a product defined at least partially in terms of a process for its production. Residual Main Group - A main group created in a subclass scheme to provide for basic subject matter of the subclass not provided for by any other main group (e.g. a Miscellaneous / characteristics not otherwise provided for in subclass Main Group). Scheme (schedule) Hierarchy the practice of linking related groups within a scheme, using their relative position and indentation, to state the complete title for any group (i.e., the entire phrase describing its coverage) of the scheme. See Indentation / Indent for an example of how hierarchy within schemes/schedules works. Is this definition necessary? We do not think the expression is used in the Guide or in the IPC itself? Doesn't it contradict the definition of "product"? Is this definition necessary? We do not think the expression is used in the Guide or in the IPC itself? Doesn't it contradict the definition of "product"? There are different types of residual main groups. Some are for example residual only for a part of the subclass, or for certain types of matter (see for example F04C). The proposed definition is useful for one type, but we think the more general definition in the current Guide is adequate. We propose: " the practice of linking related groups within a scheme, using their relative position and indentation, in order to avoid stating the entire phrases describing the coverage of all groups. See Indentation / Indent for an example of how hierarchy within schemes works." Species see Genus. Standard Subject Matter Sequence The preferred arrangement of subject matter in a subclass generally proceeds in top-down sequence from more complex to less complex, i.e., from combinations of the basic subject matter of the subclass to the basic subject matter to elements (e.g., subcombinations) of the basic subject matter. Highly specialized subject matter is placed at the top of the subclass scheme. Subclass Scheme - The ordered arrangement of groups within a subclass.

17 Annex 18/Annexe 18 page 10 Subcombination - a subset of the steps or components of a combination. A subcombination may include one or more components or steps. Examples of subcombinations are: Two consecutive steps of the three-step process described in Example 1 under combination. A composition consisting of four of the components described in Example 2 under combination. The wheels of the wheelchair described in Example 3 under combination. As stated above, we prefer defining "subcombination" without defining or using "combination". We think this could be done by simply replacing "combination" with "thing" and doing some consequential changes. We propose (better examples could perhaps be found): " - a subset of the steps or components of a 'thing', i.e. something less than the 'thing' as a whole. A subcombination may include one or more components or steps. Examples of subcombinations are: Two consecutive steps of a three-step process. A composition consisting of only some of the components of a disclosed multi-component composition. The wheels of a wheelchair." Subgenus see Genus. The state of the art the collection of all technical things that have already been placed within public knowledge. Ultimate Species see Genus. Anders Bruun [Annex 19 follows/ L annexe 19 suit]

18 ANNEX 19/ANNEXE 19 IPC Reform Task 17 STATE OFFICE FOR INVENTIONS AND TRADEMARKS Date : August 30th, 2002 RO COMMENTS In response to the invited comments by I.B. (IPC/REF/7/3 par.68) on the remaining terms of the Glossary of terms for the reformed IPC, we have the following observations : 1) We propose to change the wording of the approved term for the Glossary : Basic subject matter of a subclass in Basic subject matter of a classification place. The definition is applicable as well for groups. 2) We believe that a definition for Residual subject matter would be useful. It is one of the terms present in the Guide (see Expressions used to indicate residual subject matter and as such it should be helpful. 3) We don t favour aggregate material from the proposed definition of the Chemical composition. We propose to change it as follows: Chemical composition - a chemical composition is a product of mixing or combining various elements or ingredients, which materials are not chemically bonded to each other..... Attention should be given to composition synonyms like mixture or compound which appear in the classification text. 4) Regarding the definition for Combination, we suggest to eliminate invention information and to reword it as follows : Combination - a set of two or more steps, components or functions that coact to accomplish a result. 5) The Example 2, under Combination definition, would be more illustrative as follows : Example 2 - a two or more component chemical combination is a combination of the components that may have a property (e.g. a synergistic property) that each component alone will not have. 6) We wonder about the need to explain terms as : Material, Method of using, Process of making or Product by process. We suggest to renounce to these terms. 7) We propose to modify the Example of subcombination for composition given under the definition by replacing two with one for harmonization with the proposed modification of Example 2 under Combination.

19 Annex 19/Annexe 19 page 2 8) In Par. 63 of the Guide draft it is said that the Glossary contains terms and expressions which are selected from those used in the Classification. Once again we point out that certain of the proposed defined terms are introduced for the first time in the IPC language. Mariela Hãulicã [Annex 20 follows/ L annexe 20 suit]

20 ANNEX 20/ANNEXE 20 Europäisches Patentamt European Patent Office Office européen des brevets GD1 DG1 DG1 Principal Directorate Documentation 22 August 2002 Comments on the "Glossary of Terms for the Reformed IPC" Ref.: IPC/REF/7/3 par.68 Comments were invited on the remaining glossary terms in IPC/R17/01 annex 16. Although EP was involved in the creation of this glossary, we have a few comments reflecting our thoughts when reading it again now after some time. We will also, where appropriate, take into account the SE comments dated August 7, Aspect We agree with SE that the way in which "categories of subject matter" are mentioned here could be misleading. Nevertheless we believe that these two expressions are related and that the 'categories' should be mentioned here. Maybe it would be sufficient to say "See also 'categories of subject matter'." Apparatus The glossary definition is better. It should also be used in the Guide. Basic subject matter of a subclass 'of a subclass' is not necessary. The SE wording should be considered. Categories of subject matter When the first indent is called "methods of using a product or of performing an operation", it would be more complete. "Apparatus" can stand alone, since it is defined earlier in the glossary.

21 Annex 20/Annexe 20 page 2 Combination Unlike SE, we think that an attempt should be made to define "Combination". The term "co-acting" should be interpreted in a broad sense. The examples cited by SE do not contradict our understanding of the term. For example, in a combination of two hand tools (B25F1/00), the tools are maybe not used together, but they co-act in making the whole thing more compact than two separate tools. Such an example could be added to the definition. However we agree with SE that the term "invention information" should not be used in the definition. Embodiment We don't have a problem with the definition, but the alternative given by SE is maybe slightly more precise. General Top-Down Order of Priority The approved definition seems OK to us. Since it say "the methodology through successive levels ", it is clear that not literally the same procedure should be repeated. If the SE alternative is preferred, its second paragraph could be deleted. Inclusive Nature of Groups The original version seems to be more precise than the SE alternative. Indentation / Indent We agree with SE. Material We agree with the originally proposed definition. Even if it only cites examples, it can be helpful for some users. Method of Using This may not need a definition. Multi-Aspect Classification The "C10G" example of the original proposal is not very clear and could be replaced by one of the examples proposed by SE. Residual Main Group We are not sure if this term can be defined before we have agreed on a practice to systematically introduce residual places. This exercise will show which type of residual place we need. For example, the "according to more than one of the preceding groups" type of place (Guide par. 35) is in our view not really a residual place (something to discuss for the Guide). In a scheme with inclusiveness and top-down priority, such groups would have to appear high up in the scheme and would be everything but residual.

22 Annex 20/Annexe 20 page 3 Standard Subject Matter Sequence The definition should say: "The preferred arrangement of main groups and sub groups in a subclass " Subcombination The definition should either cite complete examples (and not refer to the definition of "combination") or the definition of "subcombination" should be a part of the "combination" definition. H.Wongel [Annex 21 follows/ L annexe 21 suit]

23 ANNEX 21/ANNEXE 21 WIPO REFORM WORKING GROUP Topic: Task 17, Glossary USPTO COMMENTS Date: August 30, 2002 Comments on Glossary of Terms for Reformed IPC These comments are submitted in response to the Reform Working Group s request for comments (IPC/REF/7/3, paragraph 68) on the remaining unapproved terms in the Glossary of Terms for the Reformed IPC (IPC/R 17/01 Rev.5). In general, US supports the approval of the remaining terms without any significant modification. However, we believe that there still is no general consensus on definitions for the terms multi-aspect classification and multi-part classification. It is now our opinion that these ambiguous terms do not need to be specifically defined in view of the passage of the What to Classify Guidelines at our last meeting. The Guidelines encompass all of the various types of multiple classifications in the Reformed IPC and attempting to subdivide out and specifically define any particular variation will only confuse users. We believe the term multiple classification is the proper generic term to use in the future in our discussions. This is the term the IB used in paragraph 31 of the last report with regard to multiple classification notes and it caused no confusion. US recommends deletion of the terms multi-aspect classification and multi-part classification from the Glossary. US recommends that the terms chemical composition, chemical compound, embodiment, inclusive nature of groups, material, method of using, obligatory classification(s), process of making, product, product-by-process, product-by-apparatus, scheme (schedule) hierarchy, standard subject matter sequence, subclass scheme, and subcombination be approved as currently worded. In view of comments from RO and SE, US believes that the remaining unapproved terms and a few of the approved terms should be altered slightly for clarity. The approved term basic subject matter of a subclass could be changed to make it more encompassing as follows: Basic Subject Matter of a Subclass Classification Place the fundamental subject matter explicitly stated as covered by a subclass the title and its definition of a classification place.

24 Annex 21/Annexe 21 page 2 The unapproved term combination could be changed to make it clearer as follows: Combination invention information a technical thing as a whole that consists of a set of two or more steps or components that coact to accomplish a result put together for a purpose. For example: Example 1 - a three-step manufacturing process is a combination of three steps that together produce a product. Example 2 - a five-component chemical composition is a combination of the five components that may have a property that each component alone will not have. Example 3 - a wheelchair is a combination of a chair and a wheel assembly designed to transport a person in a sitting position. The terms combination and subcombination, however, are relative terms. Thus, the above Example 1 might be a subcombination of larger combination with a fourth step. In Example 3 above, the wheel assembly is itself a combination of a tire, spokes, and rim as well as a subcombination of the wheelchair. The approved term general top-down order of priority could be clarified by the following addition: General Top-Down Order of Priority a practice in which subject matter is classified in a particular group in a subclass scheme by: determining the topmost appearing main group in the scheme which provides for the subject matter, determining, under the main group, the topmost appearing parallel (coordinate) subgroup in its one-dot indentation level of subgroups that provides for the subject matter, and repeating the methodology of the previous step through successive indentation levels of subgroups until the topmost appearing appropriate coordinate subgroup in the deepest (greatest number of dots) appropriate subgroup level is determined (i.e., until the last level of indentation is reached or until none of the subgroups at the next indentation level provide for the subject matter). See the entry for Inclusive Nature of Groups, which is the classification principle that permits successful application of this concept.

25 Annex 21/Annexe 21 page 3 The unapproved term indentation / indent could be clarified by the following addition: Indentation / Indent a system of presentation method using notations to graphically represent used to visually indicate the hierarchical relationships of groups within classification schemes. Indentation indicates subdivision of part of the invention information contained in a main group or subgroup by a subordinate subgroup(s). The dependent relationship of a subordinate subgroup to its parent subgroup or main group is shown in a classification scheme by positioning the subordinate subgroup title below, to the right of, and with one more dot preceding its title than the group title that it is directly subordinate to. An example is: A63H 3/00 Dolls A63H 3/36 Details; Accessories A63H 3/38 Eyes A63H 3/40 movable. In this example, the subgroup A63H 3/40 is successively dependent on main group A63H 3/00 and subgroups A63H 3/36 and A63H 3/38 under which it is indented. Without the use of hierarchy and indentation, subgroup A63H 3/40 would have to have a title such as Movable dolls' eyes or dolls with movable eyes or an even more awkwardly stated title such as Movable eyes as details or accessories of dolls. The unapproved term residual main group could be changed to make it clearer as follows: Residual Main Group - A main group created in a subclass scheme to provide for the residue of the basic subject matter of the subclass not provided for by any other main group (e.g. a Miscellaneous / characteristics not otherwise provided for in subclass Main Group). [Annex 22 follows/ L annexe 22 suit]

26 ANNEX 22/ANNEXE 22 INTERNATIONAL PATENT CLASSIFICATION Eighth Edition (2005) GUIDE I. FOREWORD Objectives of the IPC, History of the IPC, Reform of the IPC, Assistance in the use of the Classification 1. The Strasbourg Agreement concerning the International Patent Classification (of 1971), which entered into force on October 7, 1975, provides for a common classification for patents for invention including published patent applications, inventors certificates, utility models and utility certificates (hereinafter referred to as patent documents ). Under Article 1 of the Agreement, the Special (IPC) Union was established. The International Patent Classification is hereinafter referred to as the Classification or the IPC. 2. The Classification is established in the English and French languages, both texts being equally authentic. 3. Pursuant to Article 3(2) of the Strasbourg Agreement, official texts of the Classification may be established in other languages. Complete texts of the seventh edition of the Classification were established in the Chinese, Croatian, Czech, Dutch, German, Hungarian, Japanese, Korean, Polish, Russian, Serbian and Spanish languages. 4. In accordance with Article 4(5) of the Agreement, it has been determined that the abbreviation Int.Cl. of the words International Patent Classification may precede the classification symbols instead of those words in published patent documents classified according to the Classification. OBJECTIVES OF THE IPC 5. The Classification, being a means for obtaining an internationally uniform classification of patent documents, has as its primary purpose the establishment of an effective search tool for the retrieval of patent documents by intellectual property offices and other users, in order to establish the novelty and evaluate the inventive step or unobviousness (including the assessment of technical advance and useful results or utility) of patent applications. 6. The Classification, furthermore, has the important purposes of serving as: (a) an instrument for the orderly arrangement of patent documents in order to facilitate access to the technological and legal information contained therein; (b) a basis for selective dissemination of information to all users of patent information; (c) a basis for investigating the state of the art in given fields of technology; (d) a basis for the preparation of industrial property statistics which in turn permit the assessment of technological development in various areas. HISTORY OF THE IPC 7. The text of the first edition of the Classification was established pursuant to the provisions of the European Convention on the International Classification of Patents for Invention of Following the signing of the Strasbourg Agreement, the International (European) Classification of Patents for Invention, which had been published on September 1, 1968, was as of March 24, 1971, considered and referred to as the first edition of the Classification.

27 Annex 22/Annexe 22 page 2 8. The Classification was periodically revised in order to improve the system and to take account of technical development. 9. The first edition of the Classification was in force from September 1, 1968 to June 30, 1974, the second from July 1, 1974 to December 31, 1979, the third from January 1, 1980 to December 31, 1984, the fourth from January 1, 1985 to December 31, 1989, the fifth from January 1, 1990 to December 31, 1994, and the sixth from January 1, 1995 to December 31, The seventh edition was in force from January 1, 2000 to December 31, This eighth edition (IPC-2005) entered into force on January 1, REFORM OF THE IPC 10. The Classification was designed, and developed for many years, mainly as a paper-based information tool. Necessary changes to the structure of the Classification and to methods of its revision and application were needed in order to ensure its efficient and effective use in the electronic environment. 11. For this reason, Member States of the IPC Union decided, in 1999, to launch reform of the Classification and to introduce a transitional revision period during which, in parallel with revision of the Classification, the changes necessitated by reform had to be elaborated. The transitional revision period started in 1999 and, in 2004, a basic period of reform was completed. 12. The following major changes were introduced in the Classification as a result of its reform: (a) the Classification was divided into the core and the advanced level, in order to better satisfy the needs of different categories of users; (b) different revision methods were introduced, respectively, for the core and the advanced level, namely three-year revision cycles for the core level and continuous revision for the advanced level were approved; (c) various electronic data illustrating classification entries or explaining them in more detail, such as classification definitions, illustrative chemical formulae, informative references, were introduced in the electronic layer of the Classification; (d) general principles of the classification and classifying rules were reconsidered and revised when appropriate. 13. The eighth edition of the Classification represents its first publication after the basic period of reform. In the course of the future development of the Classification, its new elements resulting from the reform will be further enhanced and completed. ASSISTANCE IN THE USE OF THE CLASSIFICATION 14. The Guide attempts to describe in simple terms and by means of examples how the Classification should be used for the purpose of classifying or retrieving patent documents. Further assistance in the use of the Classification is provided by: (a) the Catchword Index to the IPC, which has been established in English and French as well as in other languages. (b) an Introductory Manual to the Classification which has been elaborated in order to assist classifiers and searchers in the use of the Classification, and is available on the WIPO IPC Web site. (c) a special publication (named Revision Concordance List ) which gives information on how subject matter has been transferred between different places in the Classification as a result of its revision; a first list (published in 1980) relates to the revision of the second edition, a second list (published in 1984) relates to the revision of the third edition, a third list (published in 1989) relates to the revision of the fourth edition, a fourth list (published in 1994) relates to the revision of the fifth edition, a fifth list (published in 1999) relates to the revision of the sixth edition and, finally, a sixth list (published in 2004) relates to the revision of the seventh edition. These publications may serve as an aid to the users using the second, third, fourth, fifth, sixth, seventh and eighth editions of the Classification.