Implementation of the Reformed IPC at the UK Patent Office

1. Implementation of the Reformed IPC at the UK Patent Office John Earley Project Manager, UKPO Geneva, July 2006

2. 1. Implementation of the Reformed IPC and ECLA 2. IT aspects of implementation 3. Examiner training and guidance 4. Generating IPC8 terms using Classtool 5. Conclusion Contents

3. Implementation of the Reformed IPC and ECLA

4. 2000-2005: UKPO classify on UKC and IPC7 and search on UKC and ECLA We knew that IPC8 was due for introduction on 1 January 2005 … but it was postponed for one year at the request of the EPO; this was welcomed by many! Extra year eased our preparations Introduction

5. Herwig Pauwels (EPO) asked us in 2001 Reasons: - to widen coverage of EPOQUE to include documents not previously classified to ECLA - in the case of GB documents, to save EPO classification effort UK agreed at a “high level” in 2002 EPO ask UK to “participate in ECLA classification”

6. Feb 2003 – paper on IT aspects of new IPC Senior management comment “I want us to walk so close to the EPO that we could win a 3-legged race” Dec 2003 – decision to classify UK patent applications on ECLA; automatic conversion of ECLA terms to generate AL IPC8 terms Decisions on ECLA/IPC8

7. Many avenues of consultation including: EPO Member States meetings in The Hague Many meetings with the EPO, on a bilateral basis or in fringes of meetings Consultations with Sweden who started the process earlier IPC CE meetings in Geneva and separate meetings for IT experts Preparatory consultations

8. 2. IT aspects of implementation

9. Strategy paper produced outlining: - steps needed - training needed - timetable for each step to be completed (over a period up to November 2005), and - risk assessments Strategy for IPC8 and ECLA classification

10. Only significant risk: IT solutions may not be ready in time for mid-November 2005 Contingency plan: no ECLA classification, no classtool (see later), make IPC8 terms valid on OPTICS (see later), apply IPC7 and new IPC8 terms while system cosmetically reformats the data from old ST.8 to new ST.8 Contingency plan not put into operation! Risk assessment

11. OPTICS (Office of Patents and Trademarks Integrated Computer System) – old system dating back to 1980s but still works well Records classifications, legal information, register information, fees etc.; sends data weekly to EPO Search engine for searching IPC7 and UKC data (but not keywords) Adapting our internal systems

12. PROSE (Patents Reporting of Searches and Examinations) - interface used by examiners to record search/examination reports, classification data etc, sends data to OPTICS Used to record UKC and IPC7 only but can now record ECLA and IPC8; access to new classtool PROSE

13. New classtool linked to PROSE Inspired by EPO’s classtool Examiners now record ECLA and IPC8 on classtool but still record UKC directly on PROSE Brief demonstration later Classtool

14. Old ST.8 has IPC information in 18 characters; new ST.8 has 50 characters “Old” OPTICS could not take that Solution: new database created for ECLA and IPC8 data, bolted on to OPTICS Some existing functionality needed to be removed; searching of IPC8 terms not allowed on OPTICS (better searched on EPOQUE) High level agreement needed for that WIPO Standard ST.8

15. UKC, IPC8 and ECLA – 3 systems Management concerns that 3 systems could increase load on examiners and reduce patent examiner output Solution: automatic conversion of ECLA terms to IPC8 terms, subject to confirmation or change Management accepted that was not 3 systems Automatic conversion not always possible due to ECLA/IPC8 inconsistencies Number of classification systems

16. ECLA based on IPC7 but some subclasses based on earlier editions; some parts of IPC schemes “not used in ECLA internal classification scheme” e.g. parts of B65D; some large areas (e.g. A61P) not present Examiners must know these when classifying Many discussions with EPO staff aimed at eliminating these differences so automatic conversion can work in all cases ECLA/IPC8inconsistencies

17. Done by chopping off the “ECLA” part of a classification symbol Example: C08G 18/08B6E becomes C08G 18/08 Works in about 97% of cases Other 3% of cases need examiner intervention Alternative: ECLA/IPC concordance table produced by EPO, but we did not think this would be updated frequently enough ECLA to IPC8 automatic conversion

18. Long time gap (can be over a year) between dates of classification and of publication GB cases classified before November 2005 now have IPC7 terms reformatted in IPC8 fashion, to look like IPC8 terms Less than 1% of cases need examiner intervention (where conversion produces invalid IPC8) First week – 3 rejects out of 309 cases! IPC7 to IPC8 automatic conversion

19. Reliability of official data – see later Number of characters – preferred limit of 17 characters after the slash for cost/complexity reasons This prevents ECLA combination codes being recorded; we decided to leave them out We later found out that they are falling out of favour at EPO Classtool problems

20. EPO’s ECLA XML files problematical, even now Errors: typos, bits missing (e.g. whole of G11), bits duplicated, ICO classes hard to access by normal hierarchical progression; ECLA Key not updated for months at a time Complaints raised to high level at EPO, who admit there are problems WIPO files had differences between ipcr-scheme and ipcr-validity XML files, reported by RO in Dec Reliability of official data

21. On 2005 GB front page, Field of Search data looks like this: “(58) Field of Search: UK CL C3P INT CL7 C08F ONLINE …” Cases published in 2006 may have been searched on IPC7 or IPC8; underlined part above may be wrong Field of search (FOS)

22. FOS solution • Alternatives: The “7” could be replaced by “8”, by a blank or varied depending on edition actually searched • Does WIPO Standard ST.9 prescribe a certain form for data item 58? No. • Decision: simple variation depending what edition was searched: “7” retained in cases searched under IPC7, and blank in cases searched under IPC8

23. New format for IPC data from Standard ST.8 Tabular format, not string format Redesign front page and change printing contract Weekly journal (PDJ) also needed format changes Front pages of GB documents

24. 3. Examiner training and guidance

25. UK examiners are very experienced in use of IPC Management judged IPC8 sufficiently similar to IPC7 that no training was needed (!) They were persuaded to allow a one-hour in-house presentation; given by 2 of our IPC experts to all UK examiners Other countries interested in our training material; sent to 15 mainly European countries after we were allowed to let them have it Training in the Reformed IPC

26. ECLA is EPO’s own system, huge amount of work went into creating it EPO have off-the-shelf one-day ECLA course for National Offices (NOs) Only fair that EPO should ask NOs to take their course before classifying to ECLA UKPO paid half the course cost Training in ECLA

27. EPO trainer (Bernard Chaumeron) came from Munich to Newport in May 2005 Course given to 30 selected examiners (“ECLA Superusers”), about 10% of examiner complement Superusers subsequently “cascaded” their training to the rest of their examining group Superusers also trained in use of classtool ECLA training in Newport

28. IPC8 link to WIPO website on office intranet site We produced 2-page document with the following information: Summary of main changes in the IPC (core-advanced, version indicators, definitions, training examples etc.) and List of subclasses where major changes had taken place, e.g. new subclasses C40B, G06Q, major revisions in A61K, B01D etc. Internal guidance material

29. Explanatory material on inconsistencies between ECLA and IPC8, and on incomplete ECLA groups (unfinished reclassifications) posted on our intranet site IPC Catchword Index (PDF version, 293 pages) posted too IPC8 Guide (PDF version, 46 pages) sent by email to all examiners More guidance material

30. 4. Generating IPC8 terms using classtool

31. Search Bar ECLA Classification Selected ECLA IPC8 Classification Selected IPC The Classtool: Layout

32. Using the Search bar • Type in the mark you are seeking and the classification window will jump to the correct page and display the mark.

33. Selecting Classifications • Classification marks are displayed at the left of the classification key windows. • They can be selected by a left mouse-click on the chosen mark.

34. Auto-selection of IPC • For convenience, as most ECLA and IPC marks will be equivalent you can set the Classtool to select IPC marks automatically upon ECLA mark selection. • This is available by selecting the Options button on the main toolbar.

35. Selected Marks • When all marks have been chosen the Selected ECLA and IPC windows should look something like this.

36. Once all relevant marks have been selected, you can export these to PROSE (and thence to OPTICS) by selecting the Export button. Exporting marks

37. 5. Conclusion

38. IT solutions were a typically British compromise We used and adapted our own (elderly) systems by bolting on new components inspired by other people’s practice Didn’t cost much and it works! Training programme well received Implementation has gone very smoothly Overall implementationprocess

39. John Earley The Patent Office Concept House, Cardiff Road Newport, South Wales NP10 8QQ, UK Tel +44 1633 814350 John.Earley@patent.gov.uk Thanks for your attention!