{"id":333,"date":"2019-06-25T01:05:08","date_gmt":"2019-06-25T05:05:08","guid":{"rendered":"https:\/\/www.ata-divisions.org\/LawD\/?p=333"},"modified":"2025-02-11T13:11:55","modified_gmt":"2025-02-11T18:11:55","slug":"the-impact-of-errors-in-patent-translation","status":"publish","type":"post","link":"https:\/\/www.ata-divisions.org\/LawD\/the-impact-of-errors-in-patent-translation\/","title":{"rendered":"The Impact of Errors in Patent Translation"},"content":{"rendered":"<p><strong><br \/>\nThe Impact of Errors in Patent Translation<\/strong><\/p>\n<p>By Heike Holthaus<\/p>\n<p><!-- ----------------------------------------------------- --><\/p>\n<table style=\"width: 347px; border: 2px solid black; height: 187px;\" align=\"right\">\n<tbody>\n<tr>\n<td>Study of the Steinbeis Institute for Intellectual Property Management:<\/p>\n<ul>\n<li>About 81% of study participants know from their own practical experience of cases of errors in the translation of patent applications<\/li>\n<li>More than one in four reported being aware of situations where translation errors severely damaged ability of an applicant to secure patent protection<\/li>\n<li>58% described translation errors as a \u201clatent risk\u201d to the viability of their international patent portfolios<\/li>\n<\/ul>\n<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n<p><!-- ----------------------------------------------------- --><\/p>\n<p>In an ideal world every translation is flawless: terminology spot on \u2013 check; no errors in grammar or punctuation \u2013 check; syntax appropriate for target conventions \u2013 check. In reality, errors happen, even (or especially?) in patent translation. Whatever the cause may be, published patents contain mistranslations and poor terminology choices. When only the abstract and\/or claims are translated, these errors are perpetuated when the specifications are translated as well, since terminology must be consistent throughout the entire patent.<\/p>\n<p>So, I\u2019ve been having these nagging questions in my mind: How common are errors in patent translations? Can they be corrected when push comes to shove? What <em>are<\/em> the consequences of errors in patent translation?<\/p>\n<p>Last year, I had the opportunity to ask an US patent attorney at an IP seminar and the answer he gave just bewildered me. \u00a0\u201cWe can always file another one,\u201d he answered in a very unconcerned manner. Hm\u2026so it\u2019s no big deal.<\/p>\n<p>Dmitry Yakovlev, patent attorney at Gorodissky &amp; Partners (St. Petersburg) presents a different attitude \u00a0in his recent article <a href=\"https:\/\/www.gorodissky.com\/publications\/articles\/get-found-in-patent-translation\/\"><em>Get found in patent translation<\/em><\/a>: \u201cIn patent translation, accuracy of translation is of utmost importance, as the scope of patent protection may be badly affected by one improperly place comma.\u201d Oh, so it is a big deal. Wait, what?<\/p>\n<p><strong>Correcting mistakes: It\u2019s complicated\u2026<\/strong><\/p>\n<p>At the EPO and USPTO, for example, translation errors may be corrected if certain conditions are met, such as:<\/p>\n<p>From <a href=\"https:\/\/www.uspto.gov\/web\/offices\/pac\/mpep\/s2163.html#d0e215099\">MPEP 2163.07<\/a> Guidelines for Examination, USPTO:<\/p>\n<ol>\n<li>OBVIOUS ERRORS<\/li>\n<\/ol>\n<p>An amendment to correct an obvious error does not constitute <a href=\"https:\/\/www.uspto.gov\/web\/offices\/pac\/mpep\/s1481.html\">new matter<\/a> where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.\u00a0<em>In reOda,<\/em>\u00a0443 F.2d 1200, 170 USPQ 268 (CCPA 1971)\u2026 Where a U.S. application as originally filed was in a non-English language and an English translation thereof was subsequently submitted pursuant to\u00a0<a href=\"https:\/\/www.uspto.gov\/web\/offices\/pac\/mpep\/mpep-9020-appx-r.html#d0e318327\"><strong>37\u00a0CFR 1.52(d)<\/strong><\/a>, if there is an error in the English translation, applicant may rely on the disclosure of the originally filed non-English language U.S. application to support correction of an error in the English translation document.<\/p>\n<p>Or perhaps as from <a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/guidelines\/e\/h_vi_2.htm\">A-VII, 7 EPO<\/a>: Correction and certification of the translation:<\/p>\n<p>Any error in the translation filed can be corrected at any time during proceedings before the EPO, i.e.\u00a0during pre-grant proceedings and also during opposition proceedings, bringing the translation into conformity with the application as filed in the original language (e.g.\u00a0with the originally filed Japanese-language PCT application). However, correction of the translation during opposition proceedings will not be allowed if it contravenes\u00a0<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/ar123.html\"><strong>Art.\u00a0123(3)<\/strong><\/a>, i.e. if it implies an amendment of the claims which extends the protection conferred.<\/p>\n<p>As I said, it\u2019s complicated. Under <a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/guidelines\/e\/h_vi_3_4.htm\">H-VI, 3.4 EPO<\/a>: Correction of the translation of the claims:<\/p>\n<p>According to\u00a0<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/ar70.html\"><strong>Art.\u00a070(1)<\/strong><\/a>, the text of a patent in the language of the proceedings is the authentic text. It therefore follows that the translations of the claims of the patent specification required by\u00a0<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/ar14.html\"><strong>Art.\u00a014(6)<\/strong><\/a>\u00a0are for information only. Hence no examination of the translations takes place (<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/guidelines\/e\/c_v_1_3.htm\"><strong>C\u2011V,\u00a01.3<\/strong><\/a>); in particular, the translations do not form part of the decision to grant the patent. Therefore they cannot be corrected under\u00a0<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/r140.html\"><strong>Rule\u00a0140<\/strong><\/a>, either.<\/p>\n<p>Hence the only possibilities for the patent proprietor to amend translations are when the patent is maintained in amended form (<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/r82.html\"><strong>Rule\u00a082(2)<\/strong><\/a>) or, as indicated in\u00a0<a href=\"https:\/\/www.epo.org\/law-practice\/legal-texts\/html\/epc\/2016\/e\/ar70.html\"><strong>Art.\u00a070(4)<\/strong><\/a>, before a national authority.<\/p>\n<p>Once the patent issued, errors may be there for good, putting the patentee at risk for litigation, non-enforceability and invalidation, etc. Irreparable damage is done when the patent does not hold up during infringement proceedings. Like in this case from Mr. Yakovlev\u2019s article:<\/p>\n<p><em>In a Russian patent granted to Company A, based upon a PCT application, expression \u201ca container adapted to contain a body of liquid\u201d was mistranslated to mean literally \u201ca container with a body of liquid\u201d. Infringement proceedings were initiated in Russia against a company that was alleged to be by marketing in Russia a product manufactured in a third country, in which the patented invention was used. However, the alleged infringer successfully argued that the patented invention was not used in their product as their product did not include the body of liquid, unlike the patented invention. <\/em><\/p>\n<p>Or when it is invalidated:<\/p>\n<p><em>In another case, in a Russian patent granted to Company B (PCT national phase) expression \u201cmedian particle diameter\u201d was mistranslated to mean \u201caverage particle diameter\u201d. An opposition to a Decision on Grant of this patent was filed with the Russian Patent Office (RUPTO), on the grounds of lack of novelty and inventive step. Prior art cited in the opposition recited, inter alia, \u201caverage particle size\u201d. Patent owner tried to rectify the mistranslation, however RUPTO refused, as the application was examined taking into account \u201caverage\u201d and not \u201cmedian\u201d particle size. As a result, patent was invalidated in full.<\/em><\/p>\n<p>In China, corrections after grant are not allowed. <a href=\"https:\/\/www.kingandwood.com\/article.aspx?id=IPBulletin081127-02&amp;language=en\">Chen Wenping<\/a>, writing on translation errors into Chinese, is quoted in an <a href=\"https:\/\/www.translationdirectory.com\/articles\/article1365.php\">article<\/a> on Translation Directory:<\/p>\n<p><em>\u201cEven worse, patent holders are not allowed to correct such translation errors after the issuance of a patent.\u201d<\/em><\/p>\n<p><strong>Consequences <\/strong><\/p>\n<p>As we have seen in the examples above, once the patent is published, translation errors can have disastrous consequences for the patent owner.<\/p>\n<p>But since the work of a patent translator is not limited to translating patents for filing, or even only patents, other consequences must be considered as well. Texts presented for translation can include any text related to prior art search (discovery phase), patent prosecution (prosecution phase) and litigation (litigation phase), each with their own list of possible consequences of translation errors. To truly understand what\u2019s at stake for inventors, applicants and patent owners, let\u2019s have a look at what these may be:<\/p>\n<p>Discovery phase:<\/p>\n<ul>\n<li>Misrepresentation of prior art due to mistranslation leads to wasted R&amp;D efforts<\/li>\n<li>Initiation of a patent process that cannot be successful<\/li>\n<\/ul>\n<p>Prosecution phase:<\/p>\n<ul>\n<li>Rejection of the patent application on grounds of prior art objections<\/li>\n<li>Rejection of the patent application due to clarity objections when they cannot be overcome without adding new matter<\/li>\n<li>Deviation from the intended scope of protection, which could render the patent worthless to the patentee<\/li>\n<\/ul>\n<p>Litigation phase<\/p>\n<ul>\n<li>Initiation of infringement proceedings by a competitor due to a mistranslation in the claims<\/li>\n<li>Invalidation of the patent<\/li>\n<li>Failure of infringement proceedings initiated by the patentee<\/li>\n<\/ul>\n<p>These are but a few examples; I am sure the list is not exhaustive.<\/p>\n<p><strong>Financial impact for the patentee<\/strong><\/p>\n<p>Aside from the aforementioned consequences, the financial impact of translation errors can be immense. A new translation, additional filings, office communications and attorney fees, and the delay in prosecution are direct costs added to the patent.<\/p>\n<p>The consequential costs, however, will ultimately be much higher. As translators, we usually have no idea what it cost the company to develop the invention in the first place \u2013 or the loss of revenue if the patent is denied or invalidated. And we can hardly imagine the financial impact of infringement proceedings.<\/p>\n<p>In 2013, Alexander J. Wurzer and Theo Gr\u00fcnewald conducted a survey for the Steinbeis-Transfer-Insitute. Four hundred IP professionals and patent attorneys were asked to complete an online survey, of which 73 responded. The results were published in the article \u201cDas latente Risiko Patent\u00fcbersetzung\u201d (The latent risk patent translation) in issue 12\/2014 of <a href=\"https:\/\/www.wolterskluwer.de\/service\/anzeigenmediadaten\/mediadaten\/mitteilungen-der-deutschen-patentanwaelte\/\"><em>Mitteilungen der deutschen Patentanw\u00e4lte<\/em><\/a><em>. <\/em>Here are some excerpts (translated from German, quoted with permission):<\/p>\n<p><em>\u201c<\/em><em>When translating a patent application into different languages, it can happen that individual terms or text passages are translated imprecisely or even such that the meaning is changed. This can lead, for example, to a patent family having a different scope of protection in different countries, purely on the basis of the translation of the application text<\/em>.\u201d<\/p>\n<p><em>\u201cThe vast majority of study participants (approx<strong>. 81%<\/strong>) know of cases in which errors in the translation of patent applications have been detected from their own practical experience.\u201d<\/em><\/p>\n<p><em>\u201cThe study did not deliver reliable results on the frequency of incorrect translations of patent applications. However, in view of the far-reaching experience of the study participants in this field, it can be assumed that incorrect translations of patent applications occur regularly in practice.\u201d<\/em><\/p>\n<p>The consequences reported by the study participants were grouped under a cost aspect and an enforceability aspect:<\/p>\n<p><strong>Cost aspect:<\/strong><\/p>\n<ul>\n<li>Translation errors detected early on led to additional costs in terms of time and money.<\/li>\n<\/ul>\n<p><strong>Enforceability aspect: <\/strong><\/p>\n<ul>\n<li>The enforceability of incorrectly translated patents was impaired.<\/li>\n<li>The scope of protection of the patent was directly limited by the flawed translation.<\/li>\n<li>An incalculable risk situation arose in the event of the enforcement of the property right against third parties.<\/li>\n<li><strong>More than one in four<\/strong> reported being aware of situations where translation errors severely damaged the ability of an applicant to secure patent protection.<\/li>\n<li><strong>Over half<\/strong> described translation errors as a \u201clatent risk\u201d to the viability of their international patent portfolios.<\/li>\n<\/ul>\n<p><strong>Conclusion<\/strong><\/p>\n<p>I don\u2019t know about you \u2013 but I find these results quite unsettling. I cannot wrap my mind around the implications. One could argue that the sample was too small to truly represent the state of affairs. Would the numbers look better if 7300 IP professionals would complete the survey? Accounting for the \u201chuman factor,\u201d what kind of numbers would be acceptable? Most importantly, how can these numbers be improved?<\/p>\n<p>Instead of writing a nice summarizing conclusion for you, I will leave you with these questions. Answers\u2026 anyone?<\/p>\n<p>_____________________________________________________________________________________________________________________________________<\/p>\n<p><em>About the Author:\u00a0<\/em><\/p>\n<p style=\"text-align: left;\"><img loading=\"lazy\" decoding=\"async\" class=\" wp-image-502 alignleft\" src=\"https:\/\/www.ata-divisions.org\/LawD\/wp-content\/uploads\/2019\/06\/super_large_heikeholthaus126778_avatar.jpg\" alt=\"\" width=\"89\" height=\"89\" \/>Heike Holthaus is a freelance translator specializing in patents, patent litigation documents, and technical texts. From the time she received her vocational degree as a forwarding agent until starting her career as a translator, she was the owner of an artisan bakery and a board member of an import start-up. She received her certificate in translation from World Language Services, Dublin, in 2012. In 2016, she joined Academia Webinars, a German professional development provider, as a presenter on patent translation.<\/p>\n<p><strong>\u00a0<\/strong><\/p>\n","protected":false},"excerpt":{"rendered":"<p>The Impact of Errors in Patent Translation By Heike Holthaus Study of the Steinbeis Institute for Intellectual Property Management: About 81% of study participants know from their own practical experience of cases of errors in the translation of patent applications More than one in four reported being aware of situations where translation errors severely damaged [&hellip;]<\/p>\n","protected":false},"author":4,"featured_media":501,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_genesis_hide_title":false,"_genesis_hide_breadcrumbs":false,"_genesis_hide_singular_image":false,"_genesis_hide_footer_widgets":false,"_genesis_custom_body_class":"","_genesis_custom_post_class":"","_genesis_layout":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[272,259],"tags":[47,46],"class_list":{"0":"post-333","1":"post","2":"type-post","3":"status-publish","4":"format-standard","5":"has-post-thumbnail","7":"category-lawd-expert-insights","8":"category-lawd-members-posts","9":"tag-german","10":"tag-patent-translation","11":"entry"},"jetpack_featured_media_url":"https:\/\/www.ata-divisions.org\/LawD\/wp-content\/uploads\/2019\/06\/happen-ontide-4.png","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/posts\/333","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/users\/4"}],"replies":[{"embeddable":true,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/comments?post=333"}],"version-history":[{"count":5,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/posts\/333\/revisions"}],"predecessor-version":[{"id":992,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/posts\/333\/revisions\/992"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/media\/501"}],"wp:attachment":[{"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/media?parent=333"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/categories?post=333"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.ata-divisions.org\/LawD\/wp-json\/wp\/v2\/tags?post=333"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}