x

This website uses cookies to improve your experience. Continue if you are OK with this or read more in our privacy policy. 




How not to get lost in patent translation

16-12-2015

Lynn Wang, Yuming Wei and York Faulkner

Translation errors are difficult to remedy after a patent is granted in China. Lynn Wang of Peksung Intellectual Property, Yuming Wei of Jun He Law Office and York Faulkner of Finnegan, Henderson, Farabow, Garrett & Dunner give some examples of the pitfalls of translation and how to possibly overcome them.

Filing an international patent application under the Patent Cooperation Treaty (PCT) is becoming much more routine due to the convenience of simultaneously establishing the priority date of an invention in all 100-plus PCT member countries.

Moreover, most applicants find that after drafting and filing their priority application in their home country, there is little more substantive work required for completing the subsequent national phase filings in each of the targeted PCT countries and regions. Typically, all that remains is to translate the priority application into the local languages where the national phase filings have been made. Because the translated application becomes the basis for examination in each of the national phase countries, rendering an accurate translation is a necessary and, needless to say, important step in prosecuting the PCT applications.

Figures 1 and 2 show, for example, the basic workflow of filing and prosecuting a PCT national stage application in China. The process is similar in Japan, Korea, Indonesia, Mexico, Brazil, and most other member countries.

figure2-pct-applications.jpg

figure2-officeactionprocedure.jpg

As shown, translation work enters into each step of national phase filing and prosecution. In fact, translation expense accounts for most of the costs associated with (1) filing a national phase application, and (2) responding to office actions and otherwise prosecuting the application. Typically, Chinese to English translation costs range from $18,000 to $23,100, and Korean to English translation ranges from $20,000 to $23,100. Japanese to English translation rates are even higher: from $23,000 to $30,100.

Table 1 shows cost data generated from 30 randomly selected invoices for US to China national stage high-tech cases. As shown, translation expense is more than half of the combined government and agent/attorney fees.

table1-averagefilingcosts.jpg

Generally speaking, however, achieving high quality translation is very difficult. Rendering high-quality patent translation requires expertise in three areas: (1) patent, (2) technological, and (3) linguistic. Is it possible for one translator to have it all? Although there are many examples of technically trained, bilingual attorneys, it is generally not cost-effective to engage those individuals in the work of routine translation. Therefore, it is certainly rare to find a working translator with such diverse skills, especially at economical billing rates.

Realistically, most of the translation work is done by competent translators who have some prior technical training or who have gained some level of technical experience through their translation work. Most translation service companies add a quality assurance step by having a more experienced supervisor review and finalise the translations. As a result, more and more applicants are taking advantage of translation service companies for their ability to deliver high capacity and high quality translations at a relatively low cost.

Despite the general competence of translation service companies, we have seen in our daily work that the novel technology discussed in the patent filings often presents a challenge to even the best translators. As a result, we employ native Chinese-speaking individuals with advanced technical degrees from US universities to review draft patent translations. On those occasions where the technology is particularly challenging, we engage people with US PhDs to review the client’s patent translations.

During our ten-plus years of closely managing and working with US clients in filing patent and other IP applications in China, we have seen some common issues and problems arising from patent translation at the national stage of PCT filing. Very often, the applicant (especially a small company) may not be aware of these problems until the patent is enforced and little can be done to correct the problems at that late point in time.

How (if possible) can translation errors be minimised during prosecution? Here we briefly analyse several common translation errors seen in patent filings in China, how the errors affect the scope of patent protection (your patent rights), and possible ways to avoid or correct the errors.

Getting it right

At the national stage, China’s State Intellectual Property Office (SIPO) requires a Chinese translation of all PCT patent applications published in a foreign language. Indeed, SIPO conducts its examination of only the Chinese translation; that is to say, SIPO will not check the Chinese translation against the original foreign language version of the application. As a result, in China ensuring the accuracy of the Chinese translation is extremely important at the national phase.

Nevertheless, despite the importance of accuracy, translation errors are common, perhaps due to a variety of factors, including the translator’s lack of technical experience and language proficiency. According to a small sample review done in 2014, translation errors led to changes in the scope of protection in no less than 10% of 200 filed/granted cases. In practice, common translation errors fall into the following categories, which are analysed briefly on a case-by-case basis.

Technical misunderstanding leading to translation errors

Example 1: CN patent number 200680044517.4; PCT/US patent number 2006/037868

Current status: granted/live

Independent claim 85 of the original publication states: “… a second water injector for injecting into each of the plurality of rotatable chambers a second amount of water to partially quench [emphasis added] in each of the plurality of rotatable chambers a gas resulting from the ignition of the fuel in the rotor combustion cavity located within the rotatable chamber to reduce the temperature of the gas in the chamber …”

As published, the Chinese translation states: “第二水喷射器,其用于将第二数量的水喷入到所述多个可旋转的室中的每一个中,以在所述多个可旋转的室中的每一个中部分地熄灭由于在位于所述可旋转的室滃的所述转子燃烧腔滃点燃所述燃料而产生的气体,以降低所述室中所述气体的温度”

According to dictionary.com, the word “quench” has several meanings:

(i) To slake, satisfy, or allay (thirst, desires, passion, etc);

(ii) To put out or extinguish (fire, flames, etc);

(iii) To cool suddenly by plunging into a liquid, as in tempering steel by immersion in water;

(iv) To subdue or destroy, overcome, or quell; and

(v) Electronics: to terminate (the flow of electrons in a vacuum tube) by application of a voltage.

To select the accurate Chinese translation of “quench”, the translator needs to understand the technical solution in the application based on a reading of the whole specification of the application. In the filing, the translator translated the word “quench” as “熄灭” (putting out a flame). However, the specification and claim itself describe a specific technical feature involving a second water injector that injects an amount of water to partially quench the gas resulting from the ignition of the fuel in the rotor combustion cavity to reduce the temperature of the gas in the chamber.

Therefore, in this context, “quench” means to cool the gas and reduce the temperature of the gas, and “quench” should have been translated as “cooling” (“冷却”) in Chinese, instead of “putting out a flame” (“熄灭”).

Example 2: CN patent number 200780010566.0; PCT/US patent number 2007/061183

Current status: granted/live

Independent claim 1 of the original application states: “… Z is C1-C6 alkyl, C2-C6 alkenyl, C2-C6 alkynyl, substituted C1-C6 alkyl, substituted C2-C6 alkenyl, substituted C2-C6 alkynyl, acyl, substituted acyl, substituted amide, thiol or substituted thio.”

As published, the Chinese translation states: “… Z是C1-C6烷基、C2-C6烯基、C2-C6炔基、取代的C1-C6烷基、取代的C2-C6烯基、取代的C2-C6炔基、酰基、取代的酰基、取代的酰胺、硫醇或取代的硫.”

The translator translated the sentence as “Z is … organosulfur compound (a class of compounds that are analogous to alcohols and phenols but contain sulphur in place of oxygen) (硫醇) or substituted sulphur (取代的硫)”. Based on an understanding of the whole sentence, we can tell that Z is a substituent group. Neither “component” nor “sulphur” can be a substituent group, so the word “thiol” in this sentence should mean “thiol group” (“巯基” in Chinese) and “substituted thio” should mean “substituted thio group”.

Example 3: CN patent application number 201180008475.X; PCT/US patent application number 2011/025124

Current status: issued

Independent claim 17 of the original application states: “… a redistribution layer formed over the dielectric film and in electrical communication with the active [emphasis added] surface of the die unit …”

As published, the Chinese translation states: “… 重分布层,其在所述介电薄膜上形成而且与所述晶片单元的有效表面电气通信”

The translator translated the word “active” as “effective” (“有效” in Chinese). However, the word “active” here means “有源” (which is a technical term in electronics, and means the device with power that can be used to amplify signal). The word choice in translating “active” may alter the scope of protection.

Misunderstanding of English due to complicated grammar/sentence

Example 4: CN patent number 200780020919.5; PCT/US patent number 2007/063022

Current status: deemed withdrawn

In this application, the original English version of independent claim 1’s claims were:

“1. A method of playing a modified poker card game using a standard deck of playing cards, the card game comprising at least one deal, the deal comprising the steps of:

(a) dealing a predetermined number of hole cards to each player face down;

(b) dealing a predetermined number of community cards face up;

(c) allowing each player the option of receiving an option card;

(d) allowing each player to receive an option card in step (c) to receive the option card as a face up option card or as a face down option card;

(e) assembling the best poker hand of each player from a predetermined number of the face down cards available to that player and from a predetermined number of the face up cards available to that player, the face down cards available to each player being that player’s hole cards and any face down option card possessed by that player, the face up cards available to each player being the community cards and any face up option card possessed by that player; and

(f) declaring the player with the best poker hand assembled in step (e) as the winner of that hand.”

Its Chinese translation as published states: “由每位玩家可用的预定数目的面朝下牌和所述玩家可用的预定数目的面朝上牌组合出所述玩家的最好的一手牌”

Unfortunately, the Chinese translation reversed the meaning of the original claim: (e) assembling the best poker hand of that player from a predetermined number of the face down cards available to each player and from a predetermined number of face up cards available to that player.

Inaccuracy resulting from failure to understand the scope of the invention

Example 5: CN application number 201180036371.X; PCT/US application number 2011/041562

Current status: pending

The original English version of independent claim 17’s claims were:

“17. A double-stranded nucleic acid molecule wherein the antisense strand (SEQ ID NO: 114) includes (5’>3’) one or more 2’OMe sugar modified ribonucleotides, a mirror nucleotide or a 2’-5’ linked ribonucleotide in one or more of positions 5, 6, 7 or 8 (5’>3’), and a 3’ terminal nucleotide or non-nucleotide overhang; and the sense strand (SEQ ID NO:80) includes (5’>3’) 4 or 5 consecutive 2’-5’ linked nucleotides at the 3’ terminal or penultimate positions, a nucleotide or non-nucleotide moiety covalently attached at the 3’ terminus and a cap moiety covalently attached at the 5’ terminus.”

The published Chinese translation states: “17. 一种双链核酸分子,其中反义链(SEQ ID NO:114)包括(5’>3’)位置5、6、7或8(5’>3’)中的一个或多个位置处的一个或多个2’OMe糖修饰的核糖核苷酸、镜像核苷酸或2’-5’连接的核糖核苷酸,以及3’末端的核苷酸或非核苷酸突出端;且有义链(SEQ ID NO:80)包括(5’>3’)3’末端位置或倒数位置处的4或5个连续的2’-5’连接的核苷酸、共价连接在3’末端的核苷酸或非核苷酸部分以及共价连接在5’末端的封端部分”

Here, the word “modified” was translated as “修饰的”, which means “to decorate”. However, in view of the invention as a whole and the intended solution proposed in this application, what was claimed was a double strand RNA with some groups changed at certain positions. Accordingly, “modified” should have been translated as “改性的”, which means “to cause a change, to make a difference”.

This type of translation error is similar to the translation mistakes caused by the misunderstanding discussed in example one above. However, this translation inaccuracy is even harder to discern because both meanings of “modify”, “修饰的” and “改性的”, are contained in the dictionary. It requires a person with profound experience in the art to discern the difference and select the appropriate translation. Similar translation errors appear in claims 38 and 43 of the same patent.

Translator carelessness

4.1 Carelessness

Example 6: CN patent number 200680052475.9; PCT/US patent number 2006/047518

Current status: deemed withdrawn

The original English version of independent claim 81 states: “A method of reducing fat intake in a subject in need thereof, comprising (a) selecting a subject deficient in enterostatin; and (b) administering to the subject an amount of enterostatin effective for reducing fat intake.”

The published Chinese translation states: “权81. 在有需要的个体中减少食物摄取的方法,该方法包括:(a)选择缺乏肠抑素的个体;和(b)向所述个体施用可减少食物摄取的有效量的肠抑素”

Here, the translator made a careless error, translating “fat intake” as “food intake”, resulting in a version of claim 81 that reads: “A method of reducing food intake in a subject in need thereof, comprising (a) selecting a subject deficient in enterostatin; and (b) administering to the subject an amount of enterostatin effective for reducing food intake.

Needless to say, “fat” and “food” are totally different from the perspective of the claimed invention. The mistranslation will undoubtedly defeat the intended scope of protection and possibly affect the claim’s validity.

4.2 Missing words

Example 7: CN patent number 200680049988.4; PCT/US patent number 2006/049577

Current status: abandoned due to missing annuity payment

The original English version of independent claim 1’s claims were: “A wedge-shaped loudspeaker enclosure affixed at the apex of the wedge to the centre of said single loudspeaker enclosure between the two single loudspeaker enclosure cavities.”

The published Chinese translation states: “楔形扬声器音箱,在顶端固定到在所述两只单个扬声器音箱腔之间的所述单个扬声器音箱的中间”,ie, a wedge-shaped loudspeaker enclosure affixed at the apex to the centre of said single loudspeaker enclosure between the two single loudspeaker enclosure cavities.

In this application, the phrase “of the wedge” (“楔形的”) plays an important role in limiting and describing the speaker and eliminating this phrase changes the scope of protection significantly.

Example 8: CN patent number 201180017277.X; PCT/US patent number 2011/023524

Current status: pending; appealed

The original English version of independent claim 10 states: “Claim 10. A kit comprising one or more containers filled with a TOR kinase inhibitor or a pharmaceutical composition thereof, reagents for detecting LKBl gene or protein loss or mutation, AMPK gene or protein loss or mutation, or both, relative to wild type.”

Its Chinese translation as published states: “权10. 一种试剂盒,包括装有TOR激酶抑制剂或其药物组合物,用于在患者的癌症中或患有肿瘤综合征的患者中检测LKB1基因或蛋白缺失或突变、或者AMPK基因或蛋白相对于野生型的缺失或突变、或者两者的试剂的一个或多个容器 ...” ie, “… reagents for detecting LKBl gene or protein loss or mutation, AMPK gene or protein loss or mutation, or both …” Here, “relative to wild type” is missing from the Chinese translation.

This error is particularly troubling because “relative to wild type” in this sentence plays an important role in the claim: it explains that detecting LKBl and AMPK gene or protein loss or mutation is based on a comparison with wild type. Therefore, the absence of “relative to wild type” from the translation removes the basis of comparison from the claim, and the meaning and scope of the gene or protein loss or mutation of LKB1 and AMPK becomes unclear. The entire meaning of the translated content is mistaken, and the scope of this claim, if valid, is altered.

4.3 Additional words that do not exist in the original publication

Example 9: CN patent number 200680044517.4; PCT/US patent number 2006/037868

Current status: granted/live

The original English version of independent claim 85 states: “… a plurality of radially protruding and movable vanes disposed within the slots and extending to and engaging the inner surface of the stator.”

The published Chinese translation states: “径向突出并且可移动的多个叶片,其被布置在所述槽内并且延伸至所述定子的所述内部表面并可滑动地与所述定子的所述内部表面接合,” ie, “… a plurality of radially protruding and movable vanes disposed within the slots and extending to and slidably engaging the inner surface of the stator.”

Here, “slidably” was not part of the original English version of the claim. Including the term in the claim unnecessarily limits the scope of the claim.

These translation errors all lead to alterations in the intended scope of protection, at best, or invalidation of the claim, at worst. Translation errors may result in the following consequences:

Narrowing of the scope of protection;

Denial of the patent application; and

Invalidation of an issued patent.

Translation error remedies

It is often difficult to find translation errors during prosecution. Most errors are not discovered until the patent is asserted in litigation or becomes the subject of invalidation proceedings. There are several reasons for this.

First, we assume that translators and their associated firms/companies try their best to ensure the quality of their translations. But, unfortunately, it is virtually impossible to avoid translation mistakes completely without severely adding to the cost of translation. Obviously no-one would file an application on behalf of a client while knowing it contains translation mistakes. But each practitioner has limitations that can lead to error.

Is it possible to find mistakes during office action procedure? Typically, when translating an office action from the Chinese language, the translator may search for corresponding terms/sentences/paragraphs in the original English publication as a reference for the translation to avoid re-translating the terms but rarely reviews much of the prior translation.

Therefore, although translating office actions presents an opportunity for detecting translation errors, it does not necessarily result in an exercise of re-checking the entire original translation for mistakes.

Voluntary amendment of translation errors

Remedial measures for voluntary amendment of translation errors must be taken in a timely and effective manner at the application stage, ie, before a patent is granted. By law, applicants have just two opportunities to correct translation errors through voluntary amendment: (1) before the publishing of inventions or announcement of utility models; and (2) within three months upon receipt of substantive examination notices.

Technically, beyond these two occasions, applicants are not allowed to correct translation errors by amendment. However, in practice, where applicants take the initiative to correct translation errors outside the two amendment periods, the examiners often authorise changes where the correction may simplify or shorten examination or where it is clear that fairness requires permitting the correction. We have successfully done that for clients.

However, when operating outside the amendment periods, it is fully within the examiner’s discretion to accept such an amendment. Indeed, this is a deviation from typical examination procedures and such requests will not always be accepted by SIPO. Under no circumstances will remedial amendments be accepted after the patent is granted.

Passive amendment of translation errors

When examiners find certain defects are indeed caused by translation errors, they usually choose to notify the applicants (ie, by issuing a notice of examination opinion or a notice of translation error amendment) and request that the applicants amend the translation, which is not a mandatory step of the examination. After receiving such a notice, the applicants can make amendments only according to the examiner’s request. Errors not mentioned in examination opinions are not be amended (unless they are of the same nature).

However, with the author’s (Yuming’s) many years of experience as an examiner at SIPO, in reality it is not easy for examiners to find translation errors. Generally, examiners will not compare filed documents in Chinese with the original foreign version, or further initiate correction procedures of translation errors.

"Remedial measures for voluntary amendment of translation errors must be taken in a timely and effective manner at the application stage."

They do so only when they are unable to understand the definitions of some words and sentences, or where mistranslated words lead to apparent (contextual) contradiction in understanding the technical content of the application.

Take the patent application used in example 2 for instance: the examiner apparently understood that Z is a substituent group instead of an integrated compound. Therefore, it is easy for examiners to recognise an apparent error in the claim translation. Other translation errors in the examples above are much more difficult for examiners to find.

This is particularly true where mistranslated words are clear in definition without apparent semantic contradiction. For example, where “fat” is translated as “food” an examiner will not easily notice the translation error.

It is also difficult for examiners to find omissive and excessive translation, as well as inaccurate translation of technical words. In such instances, examiners will carry out examination of applications containing the translation inaccuracy, leaving significant hidden problems of invalidity to the patents.

In sum, not all translation errors are in practice easily recognised and corrected. In fact, most are not.

Fatal effects of translation errors on issued patents

As discussed above, voluntary and passive amendments are limited to examination procedures, ie, before a patent is issued. There are no remedial measures available to correct translation errors in granted patents.

For example, in the case of the “sealed sliding fastener” (CN number 00819415.7) patent, translation errors occurred in the claim and instruction of the authorised patent, in which the two words “thermoplastic elastomer” and “thermoplastic elastomeric material” specified in the original published version of the patent were translated into “thermoplastic material”, while the two words “chemical bonding” and “welded chemically” specified in the original version were translated into “chemical linking bonding”.

The claimant of invalidity filed an application of invalidity, arguing that the Chinese translation of the original text exceeded the scope of disclosure contained in the original claim and instruction, violating article 33 of China’s Patent Law. Although the patentee argued that it was a translation error, it couldn’t be corrected due to a lack of remedial measures for correcting translation errors in the invalidation procedure. The re-examination board found that the issued patent exceeded the scope of the original text, and declared all claims invalid in violation of article 33 of the Patent Law.

"The power of the court to correct translation errors through claim construction is discretionary and applied on a case-by-case basis."

The patentee was unsatisfied with the decision of the re-examination board and instituted an administrative lawsuit with the Beijing Higher People’s Court, which wrote in its judgment that:

“In case of an error in the translation which leads to an amendment exceeding the scope of the international publication, the provisions of article 33 of the Patent Law shall be affirmed to be violated. The translation errors in the case are different in the definition from the original text in the international publication version, which cannot be directly and doubtfully determined in the words in the international publication. The translation errors constitute substantive amendment, leading to the protection scope required in the claim exceeding the scope. Therefore, it is reasonable for the court of first trial and the patent re-examination board to affirm the translation errors going beyond the original scope.”

In the end, the Beijing court upheld the decision of invalidity by the re-examination committee by final judgment, and the patent was declared completely invalid.

It can be seen from this case that where corresponding remedial measures can be taken against translation errors in examination procedure, it is hard for them to be remedied after patents have been granted. Patentees have extremely limited means to amend patent documents in invalidation procedure, so translation errors cannot be remedied effectively in most cases. According to the provisions of the “Guidelines for Examination”, during invalidation procedure, patentees only have three ways of making amendment:

(1) Deletion of claim(s);

(2) Deletion of a technical solution in the claim; and

(3) Combining claims.

It can be seen that these three means are specific to the claim, and there is no way to amend or remedy translation errors in the specification (eg, in the aforementioned example). Meanwhile, where translation errors occur in all claims, they cannot be remedied by these three means. In invalidation proceedings under Chinese patent law, patentees are limited to amending claims by combination or deletion, other than replacing or amending a certain word or sentence.

However in countries such as the US, re-examination and reissuance procedures are available after the patent is granted, providing patentees an opportunity to correct errors arising from translation. In other instances, more routine transcription and typographical errors can be addressed through a certificate of correction. By contrast, translation errors are difficult to remedy after the patent is granted in China due to a lack of corresponding systems.

In another patent infringement case, the plaintiff, Wesco, owned the exclusive right to a Chinese invention (number 95196021.0) and brought a suit against the defendant for infringing claim 3 of the patent, which originated as a PCT application. Claim 3 of its Chinese publication mentioned a “… substantially rectangle second link …” (“基本上呈矩形的第二连杆”), whereas the PCT publication in English described a “… substantially U-shaped second link” (“基本上呈U形的第二连杆”). The plaintiff argued that the mistake was a mere typographical error that should not affect the scope of the claim. The Shanghai Higher People’s Court stated in the judgment as follows:

“Where there is a dispute in the definitions of technical terms in a claim, they shall be first explained in accordance with the patent specification, figures attached thereof, relevant claim(s) and patent examination historical records. When using the specification, the drawings thereof, relevant claim(s), examination historical records et al to correct apparent translation errors, it has to be the inherent contents/meaning contained in the claim(s) interpretation according to patent specification, figures attached thereof, relevant claim(s) and patent examination historical records et al.

“Where ordinary technical personnel in the field are able to be obviously and undoubtedly aware of the answers of corresponding errors after reading the patent specification, figures attached thereof, relevant claim(s) and patent examination historical records, the protection scope of the claims shall be determined in accordance with corrected claims. Such correction of apparent errors in the claims will not affect the certainty of the protection scope in the claims.”

In this case, the Shanghai Supreme People’s Court decided that “rectangle second link 呈矩形” was a typo of “U-shaped 呈U形”, thereby correcting and construing the scope of claim 3. This case shows that Chinese courts have discretion to construe the scope of claims in a patent, relying on internal evidence (they are the patent specification, figures attached, relevant claim(s) and patent examination historical records, etc, and external evidence (dictionaries, technical manuals, reference books, etc). This correction of translation errors through claim construction can be attempted as a remedial measure by patentees in litigation to some extent, mitigating and even eliminating the negative effects of translation errors.

However, it is important to realise that the power of the court to correct translation errors through claim construction is discretionary and applied on a case-by-case basis. The power can be exercised differently by different courts/judges. In addition, China is not a case law country, so legal precedents of courts only produce limited reference value (with the exception of the guiding cases of the Supreme People’s Court).

What is more important is that in a civil trial the court has the right to interpret claim scope. However, claim interpretation is premised on an assumption that the patent is valid, and determination of patent validity remains in the hands of SIPO’s re-examination board. There is hence a potential risk that the board will find the new/corrected claims to be invalid in a separate proceeding. In other words, the patent still can be cancelled by SIPO.

Therefore, under the current patent examination and invalidity procedures in China, the best time to make translation corrections is during substantive examination (including re-examination). The validity of a granted patent can be effectively guaranteed only when translation errors in the application text are found and removed in a timely manner.

Damages

Damages awards in recent Chinese patent lawsuits demonstrate the growing value of Chinese patents and emphasise the importance of countermeasures to prevent avoidable translation errors. In 2013, China’s Supreme Court resolved several leading cases and identified a historically large verdict and settlement amount in those cases. For example, in Yashilan Licensing and Intellectual Property Beijing and Angel Special Chemical Technology v Beijing Rui Shi Bang Fine Chemical Technology, the parties reached a court-mediated settlement of RMB 22 million ($3.5 million). In Huawei Technology v America IDC, the court found, among other things, that America IDC infringed Huawei’s patents and ordered compensation of RMB 20 million. Finally, in Zhongshan Longcheng Daily Commodity v Hubei Tongba Children’s Appliances, Tongba was ordered to pay Zhongshan RMB 1 million for infringing one of its utility model patents.

These cases show that damages awards in excess of RMB 10 million are becoming much more common in Chinese patent litigation. Additionally, patent litigation and IP litigation generally are becoming much more prevalent in Chinese courts. Table 2 shows the growing number of Chinese general IP and patent lawsuits over recent years.

table2-firstinstancecases.jpg

As the amount of Chinese patent litigation increases, we expect that translation errors may become more of an issue for patents that were originally filed as a non-Chinese version. Also, as the value of those litigations increases, we expect the accused infringers to exploit translation errors to their advantage to either avoid infringement or invalidate patent claims.

The challenge facing patentees, therefore, is undertaking worthwhile and effective countermeasures in an effort to minimise translation errors. Those countermeasures may include:

1. Routinely reviewing translation quality by internal bilingual in-house individuals;

2. Becoming much more selective in choosing translators and translation companies—knowing their language and technological strengths. Even the best translators of software patent applications may not be competent to translate biotechnology patent applications;

3. Performing in-depth and more careful review of ‘trouble spots’ in the patent applications, such as the claims themselves and those parts of the specification that provide the written description in support of the claims; and

4. Having a selected portion (such as 20%) of the translated patent applications reviewed by an independent party to assess translation quality. Some Japanese corporations have adopted these methods and have experienced positive results.

In the future, procedural reforms involving international treaties that are currently under consideration may offer some assistance in avoiding translation expense and the consequences of translation errors. For example, a more consolidated global patent system under the so-called Patent Prosecution Highway (PPH) would expedite and simplify examination in participating countries by deferring to the authorised search report, examination and outcome in the original patent office so long as one claim is found valid and issued as a patent.

As of June 2014, 17 countries (including the US, Japan, Korea, Sweden, Australia, the UK and Canada) have joined the Global PPH pilot programme. The results have been dramatic. In a recent case, a Chinese party’s application in Canada using the PCT-PPH pilot programme was approved in about three months, saving both time and expense.

However, it is not clear that China would immediately accept patent applications in English without translation: in that event, Chinese translations of a patent and its claims would not be prepared until the patent’s validity was challenged in the patent office or its infringement was asserted in court. Under those circumstances, considerable resources could be devoted to preparing accurate, error-free translations for use in those proceedings. There is hope that it may be something that happens in the future as an overall cost-saving initiative.

Lynn Wang is a counsel at Peksung Intellectual Property. She works in the Palo Alto office of Peksung IP USA. Having started working as a trademark attorney in China in 2004, Wang now focuses her practice on clients’ IP filing/prosecution and strategic planning, as well as online IPR enforcement. She can be contacted at: lynnw@peksung-usa.com

Yuming Wei is a member of Jun He Law Office. He is based in the Beijing office and works in the patent litigation group, focusing on intellectual property and dispute resolution. Before joining Jun He, he worked as an examiner at China’s State Intellectual Property Office and Patent Reexamination Board for five years. He can be contacted at: weiym@junhe.com

York Faulkner is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner. He is a trial lawyer with more than 20 years of experience handling litigation across a variety of industries, including pharmaceutical patent cases. He manages global litigation strategies requiring coordination between the US, Japan, South Korea, China, Australia, and Europe. He can be contacted at: york.faulkner@finnegan.com

Yuming Wei, York Faulkner, Lynn Wang, PCT, translation, patent,

WIPR

Payment types accepted