Get found in patent translation

In the present digital era, translations continue to remain a field of intense intelligent action and, quite literally, an art for a human. This is especially true for patent translations, where accuracy is a must and where the scope of patent protection may be affected by one unfortunately misplaced letter or comma, especially in growing economic importance jurisdictions where judiciary systems tend to be rather strict with regard to patent litigations being too new for them. With such new type of litigation, they naturally tend to follow indeed every letter and comma in interpretation of claims. With the globalization of economy, demand for patent translations keeps growing and ever-increasing costs are involved. Despite all efforts to aid or even substitute a translator with a variety of automatized solutions, competent translations remain a complicated task which only a skilled and diligent human who has a good command of both translation ‘source’ and translation ‘target’ languages can resolve. And, at least, ‘to err is human’. This article is an overview of the nature of translation errors, or mistranslations, their consequences when it comes to patent applications and granted patents, and possible ways to rectify, or better to avoid, such mistranslations.

On the nature of mistranslations

As with any other field of work involving extensive input of human efforts, patent translation is prone to errors caused by “human factor”. In terms of nature of errors that may occur in translations, two broad types may be identified – i) typographical, clerical, or technical errors where something other than what is written was clearly meant, and ii) errors caused by a translator’s failure to properly understand the original text or to choose an appropriate counterpart in a translation ‘target’ language. The main factors that affect the overall quality of translations and add to the occurrence of errors are:

• Fast growing volumes of translations;
• Escalating translation costs;
• Strive to save time and funds on translations;
• Rise of “intermediary” languages use;
• Absence of unified standards for patent translation.

According to the WIPO statistics, the number of international patent applications filed under the PCT grew by 7.3% in 2016 – the fastest increase since 2011 and the seventh consecutive year of growth. An estimated 233,000 PCT applications were filed in 2016. Between 2002 and 2016, the share of PCT applications published in English decreased almost continually, from nearly 70% to 50%. Meanwhile, the share of PCT applications published in Chinese increased, from less than 1% to 12.4%. The share of applications published in Japanese and in Korean also increased sharply over the past 10 years, by about 9 and 6 percentage points, respectively. This trend leads to growth in use of English as “intermediary” language in scenarios where e.g. an originally Japanese or Chinese or Korean patent application is to be filed in other parts of the world. This, in its turn, adds to costs of translations and provides an additional space for translation errors.

Against the background of escalating translation costs involved in foreign patenting, applicants often strive to cut translation costs and save funds and time on patent translations. Translation service providers offer ‘onestop’ translation services in translating a patent application into a desired number of languages at costs sometimes lower than offered by patent law firms. This may look tempting for an applicant compared to traditional patent law firms. To summarize, there is presently a pressure on intellectual property rights service providers to keep pace with the growing demand for patent translations without jeopardizing the quality of translations.

Consequences of translation errors for applicants and patent owners

In patent translations, accuracy of translation is of utmost importance, as the scope of patent protection enjoyed under an eventually granted patent may be badly affected by one improperly placed letter or comma. Experience accumulated by patent attorneys and lawyers worldwide shows that patent owners may face grave consequences if a translation error goes away unnoticed and thus unrectified. Generally, from an applicant’s or patent owner’s perspective, the consequences of translation errors may include, just to name a few:

• Failure to obtain a positive decision on a patent application in the course of national/regional examination procedure due to clarity objections, which cannot be overcome without adding new matter
• Invalidation of patents due to mistranslations
• Denial of efforts at rectification of errors in the face of mistranslation
• Scope of protection shifts from the intended scope making the patent worthless in protection of patent owner’s rights

To illustrate how translation-related errors of various kinds may affect the protection enjoyed under a granted patent, just a few examples will be given.

In a Russian patent granted to Company A, based upon a PCT application, expression “a container adapted to contain a body of liquid” was mistranslated to mean literally “a container with a body of liquid”. 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.

In another case, in a Russian patent granted to Company B (PCT national phase) expression “median particle diameter” was mistranslated to mean “average particle diameter”. 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, “average particle size”. Patent owner tried to rectify the mistranslation, however RUPTO refused, as the application was examined taking into account “average” and not “median” particle size. As a result, patent was invalidated in full.

A patent granted to Company C included claims for a process involving a paste whose composition included a range with an upper limit of 80%. However, said upper limit was erroneously indicated as 50% in an English translation of the original French patent application. The patent owner filed with the UK Patent Office for a correction of this clerical mistake, but this was refused due to the missed statutory term. Thus, UK patent remained with the upper limit of 50% and not 80%.

Taking into account the aforementioned, it is a fair assumption to note that patent translations are costly, but the cost of translation errors can hardly ever be measured, while a mistranslated or even misspelled word may render a patent for a million-dollar-worthtechnology null and void or fail to protect the patent owner’s rights in case of an infringement.

Remedies for translation errors

Having discussed the nature and possible consequences of errors in patent translations, let us now turn to possible remedies for such mistranslations, to which applicants and patent owners may resort in various jurisdictions. However, probably somewhat jumping ahead, it can be stated that the existence of sufficiently effective remedies for mistranslations is still a question of many ‘ifs’.

Beginning with international applications, PCT Applicant’s Guide provides, in particular, that error in translation may be rectified during the national phase. Scope of translation may not exceed the scope of original language. Narrower scope may be broadened but must not exceed the original scope; broader scope may be limited accordingly with regard to international application or a patent resulting from it. Article 46 of the PCT states that “If, because of an incorrect translation of the international application, the scope of any patent granted on that application exceeds the scope of the international application in its original language, the competent authorities of the Contracting State concerned may accordingly and retroactively limit the scope of the patent and declare it null and void to the extent that its scope has exceeded the scope of the international application in its original language”. Thus, broader national scope due to incorrect translation may be retroactively limited. However, what remains unclear is whether this is also true for broadening the narrower national scope due to incorrect translation, and no effective date is envisaged for corrected translation of the granted patent in such case.

Turning now to the European Patent Convention, Rule 139 of the EPC defines three kinds of errors that are amenable to being corrected: i) linguistic errors, ii) transcription errors, and iii) mistakes. One criterion that must be fulfilled in order for an error to be corrected is that “the correction must be obvious in the sense that it is immediately evident, that nothing else would have been intended than what is offered as a correction”. However, it is not clear whether translation errors are to be treated as “linguistic errors” or “mistakes”, and whether they are amenable to such “obvious” corrections.

In Russia, Article 1393 of the Civil Code of the Russian Federation provides that the Patent Office “introduces, on the rights holder’s request, into a granted patent for invention … amendments related to information on the rights holder(s), author(s) … as well as amendments for correcting obvious and technical errors”. Item 3 (10) of the Rules for Drafting, Filing and Consideration of Documents … for the State Registration … of Inventions defines the “obvious” and “technical” errors as follows: “An error is considered to be obvious if a person skilled in the art understands that something other than written in the application was meant as of the filing date of the application, and no other amendment than the suggested one can be made. An error is considered to be technical if it is stipulated by incorrect spelling of words, incorrect punctuation, presence of misprints and informalities in bibliographic data of information sources and the like”.

However, none of the legislative documents considered by way of example clearly and definitely answers the following question: can translation mistakes be treated at the national/regional phase as: linguistic errors; mistakes; something other than written in the application that was meant as of the filing date of the application? Even more so, the possibility of rectifying translation errors when a granted patent is at hand, as well as the consequences of such rectification as to the validity and scope of the patent, remain uncertain. This seems to suggest an important conclusion: mistranslations and other translation-related errors should at best be avoided, or otherwise rectified, while the prosecution of the application is still in progress.

Ways to ensure an error-free translation

There are connections between the quality of a translation and the volume of the text, complexity of the subject, and, last but not least, period and budget for preparing the translation. Under the conditions of ever-growing amounts and costs of translations as mentioned above, new ways are needed to get a higher quantity of translations, of a higher standard, and a lesser price. One of the possible means to which applicants often resort to is outsourcing patent translations to translation service providers. The latter often refer to quality standards as a warrant of high quality of their translations. Indeed, there are various translation quality standards and guidelines in effect in different countries and regions, such as ISO 9001:2008, EN 15038:2006 in Europe, ASTM F 2575-06 in the United States or DIN 2345 in Germany. Translation quality standards provide grounds for expecting a highquality translation from a translation service provider. However, a study of these standards shows that all of them share substantially the same key points like the requirements for selecting human resources, managing client relations and translation projects, and coordinating project specifications with the client. In the meantime, none of the existing translation quality standards provides any requirements for the translation per se (consistency of terminology, clarity, use of standardized terminology, accuracy of conveying the original scope). Thus, existing translation quality standards are generally insufficient for assuring high translation quality.

Among other means for translating more, quicker, and, eventually, cheaper, one can name machine translation and computer-aided translation (translation assistance) tools. However, presently, machine translation can at best offer a “raw” text, which requires much effort in editing to attain an appropriate translation. Computer-aided translation tools may prepare good “raw” translational material, but require lots of setting up for editable vocabularies and complex strategies for segmentation and text block prediction. Moreover, they are not that effective in complex language structures of certain languages like Russian due to declensions/conjugations/cases inherent to the language grammar.

That being said, it still takes a human translator who is experienced in both the related technical field and patent-specific terminology to prepare a high-quality patent translation. There are a lot of subtleties in choosing an appropriate translation of any given term or phrase, and the right choice may be made only by an experienced translator guided, or at least supervised, by a patent attorney. This is since the latter is engaged in prosecution of a vast number of applications, during which sometimes clarity/translation rejections may arise and be resolved.

A dialogue is necessary between a translator and a patent attorney. The translator is carefully chosen to have an educational background and be experienced in the related technical field, provided with necessary glossaries and translation tools and the patent attorney will be experienced in prosecution of applications, patent litigation, has a background in the related field, and is regarded as a “cornerstone” of translation quality assurance. In this scheme, the patent attorney is not just another proofreader but performs expert reviews of translations. The expert reviews ensure stringent quality control of the translation, appropriateness and consistency of technical terminology, linguistic clarity and accuracy of translation, reproduction of breadth, narrowness or intended ambiguity of the original language. This is necessary in order to accurately reflect the technical and legal intent of the text, and control the use of standardized legal terminology and claim drafting language expected by examiners and other patent attorneys.

Routinely reviewing translation quality by internal bilingual or multilingual in-house individuals with expertise in patent prosecution and litigation is viewed as the very first of the “countermeasures” to mistranslations and other translation-related errors.