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Patent translation – An important aspect of patent protection

By Prashant Phillips & Manish Singh       

Incredible growth of businesses and advancement in technology in recent times has expanded the horizons of the patent landscape, which now cuts across international boundaries. This growth has transformed a seemingly small focus area related to patents – patent translation - into an area which is now considered as very important by both patent authorities as well as patent practitioners, everywhere.     

Translation as an activity is most important at the time of preparation of a patent for filing, in jurisdictions which have strict filing language requirements. A patent document is akin to a legal instrument and is therefore required to be drafted with great precision and accuracy (see end note 1). Consequently, translation of patent related documents also plays an essential role in litigation, especially in cases where a patent is being invalidated based on prior art references in languages different from the patent under consideration.    

Patent translations during patent preparation    

The importance of patent translation may arise as a result of statutory requirements. The basis of such requirements stems from the fact that priority from a first filing can be claimed at the time of subsequent filings, as per the Paris Convention. However, to ensure that the subject matter claimed in subsequent filings is within the scope of the priority application, the priority document may have to be relied on. In cases where the priority document is in a language other than the local language where the subsequent filing is sought, a translated version of the priority document would also be required.      

Various patent authorities mandate that a patent specification should be filed in their local language. Even in cases where the patent authorities allow filing patent specifications in English, if the priority application is in a foreign language, such patent offices require that a verified translation also be submitted.    

Statutory basis for submitting translations    

India    

Rule 20 of the Patent Rules requires that in cases where the international application is not in English, an application for a patent in India has to be accompanied with an English language translation. A similar requirement (see end note 2) also exists in relation to priority documents in a non-English language, which mandates that the English language translation be submitted within the prescribed time limits. The implications of non-compliance are severe as the Patent Office can disregard the priority claim of the applicant.    

Europe    

The present system under the European Patent Convention requires a European patent granted by the European Patent Office (EPO), to be validated by each of the contracting states in which the applicant seeks patent protection (see end note 3). This particularly requires the applicant to submit the local language translation of the complete specification. Independent of this requirement, the translation of the claims in the official languages other than the language in which the claim was originally filed also has to be submitted with the EPO (see end note 4).      

United States    

Similar to the requirements as prevailing in India, the USPTO also requires an English language translation of international application (see end note 5). Failure to comply with this requirement (amongst others) within the prescribed time period will result in the national phase application being regarded as abandoned. However, it is to be noted that in case the applicant fails to submit the translation, he can request the Director of USPTO to condone such failure provided the applicant is able to establish that such failure was unavoidable (see end note 6).    

Importance of translation    

Any patent related right imposes an obligation on an applicant to disclose the manner in which the claimed subject matter can be worked. More importantly, almost all jurisdictions also require that the claims clearly identify the true scope of the subject matter being claimed. In the event a translation of the patent specification is required, the translation should be done as precisely as possible so as not to deviate from the scope of the subject matter claimed in earlier filing(s). Inaccurate or poor translations of the patent specification can render the patent unenforceable, thereby seriously prejudicing the rights of the applicants.    

Making accurate and true translations, which aim to do justice to the claimed subject matter, is a time intensive task. In cases where accurate translations are required, the applicant should factor the same into their timelines, especially if they are planning to enter different jurisdictions through the convention route. The time taken for translation will also depend on the complexity of the technology. The more complex the technology, the longer the time spent on translating the patent specification.    

Translation of patent documents is a skill requiring expertise both in technology and the languages concerned. Considering the implications of inaccurate translation, good translation skills are highly valued across the industry.     

Patent translation in other areas    

Translation requirements are not limited to patent preparations only. Projects related to prior art search, freedom-to-operate analysis, etc., may also require patents to be translated. Even in such situations, the translations have to be as accurate as possible to precisely determine whether the documents being researched are pertinent or not. The scope of such translation activities may range from translating only the abstract to determine whether a given document is relevant or not, to translating the entire patent document.      

Translation can also play a vital role in patent litigation. Such litigations may involve the need to translate several documents, as quickly and precisely as possible. The translated documents may be admissible as evidence and can form the basis on which the outcome of such disputes will depend. Ideally in such cases, translations would be considered as issues relating to facts, and be finalized and agreed upon by parties to the dispute as early as possible. On the agreed basis the trial can then proceed. This issue was highlighted in a case decided by the English and Wales Court of Appeal in the case of Gemstar (see end note 7). In this case, the issue revolved around a patent reference in Japanese. The Court making its ire evident stated that issues which are based on translations should be resolved and agreed upon as early as possible. Moving ahead, the Court further stated that for deciding the dispute the translated document itself would be the basis for constructing the true scope of the subject matter being claimed. It was further stated that when considering the translated document the Court would be responsible for the question of construction (see end note 8).         

Translations entail additional expenditure     

Translation is considered to be one of the significant cost-components for securing patent rights in any jurisdiction (see end note 9). Furthermore, various requirements laid down by the EPO also require that translated version of the granted claims be provided to the EPO. This additionally induces a cost on the applicant. The costs get further compounded if the applicant seeks patent protection in other contracting states of the EP, as the applicant would be under an obligation to provide the translated specification to the respective member states.    

Developments and recent changes      

Various regulations are being updated so as to ease the costs related to translation. Furthermore, different jurisdictions are also providing online tools which provide translation facilities. For example, a recent collaboration between EPO and Google has resulted in a service – Patent Translate (see end note 10).  The online tool enables translation from and to English and other languages which include French, German, Spanish, Italian, Portuguese and Swedish, covering approximately a vast majority of all patents issued in Europe. The collaboration seeks implementing translation services allowing translation of patents from and into all 28 languages of the EPO member states, as well as Chinese, Japanese, Korean and Russian. Although this step may not have a direct impact for applicants seeking to ensure patent protection in different jurisdictions, it clearly does make the patent references in other languages largely accessible for other activities such as prior art search, invalidation analysis and FTO analysis.      

Conclusion      

Translation is certainly one of the more important and perhaps one of the less publicized aspects of patent protection. The importance of this activity is realized by both the patent practitioner who is now providing only translation related services, as well as by patent offices around the world. It is true that translation can be heavy on the pocket, but this financial burden is outweighed by the prospects of the end result, i.e. balanced and secure patent protection.    

End notes

  1.      Topliff  v. Topliff, 145 U.S. 156
  2.      Rule 21 of the Patent Rules
  3.      Article 65 of the European Patent Convention  (EPC)
  4.      Rule 71(3) of the EPC
  5.      35 U.S.C. § 371(c)(2)
  6.      35 U.S.C. § 371(d)
  7.      Gemstar  Tvguide International Inc & Others v. Virgin Media Ltd & Another -  [2011] EWCA Civ 302 
  8.      [2011] EWCA Civ 302, para 11-12
  9.      How much do patents cost? [http://www.wipo.int/sme/en/faq/pat_faqs_q2.html]
  10.    EPO Website - EPO and Google remove language barriers from patent documentation  [http://www.epo.org/news-issues/news/2012/20120229.html]    

[The first and second authors are respectively Principal Associate and Associate in the IPR Division of Lakshmikumaran & Sridharan, New Delhi]
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