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Author Topic: Issue w/ typo in foreign-language document  (Read 409 times)

Rheo

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Issue w/ typo in foreign-language document
« on: 04-21-17 at 10:13 am »

I'm curious about how to handle this:

A foreign client wants a direct US application based on a foreign application. The foreign application was translated for the US application. The translator wrote a note with the translation that a somewhat different word appeared in the foreign language near the end (a single time), but it is pretty clear in context that this word was actually supposed to be a word that had been used throughout the specification.

So he just translated it as the word it was supposed to mean and sent the side note. It also appears from the context that what he is saying is true. The foreign attorney who wrote the application also said that it was just a mistake (the mistaken spelling probably then got spell-corrected to form a somewhat different word).

How should I address this in the US application? Possible courses of action: (1) just ignore it and file a specification with the correct word, (2) file a specification with a translation of the false word and also a preliminary amendment explaining the issue and changing it to the correct word or (3) something else that I haven't thought of.

Any advice? The mistake only appeared at the end of the specification and not in the claims, so it's not all that important. I just don't want any surprises years from now if the patent gets litigated.

Thanks in advance
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Robert K S

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Re: Issue w/ typo in foreign-language document
« Reply #1 on: 04-21-17 at 10:46 am »

I don't have a direct answer to your question but I can offer that you might want to read and understand carefully Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961), and MPEP sections 2163.07 and 217, before you make your decision.  They are not directly on point for your situation but they may be relevant depending on what you choose to do.

I don't have any authority to cite for saying this, but it would seem to me that part and parcel of the job of legal translation is the correction of minor obvious errors in the source document.
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still_learnin

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Re: Issue w/ typo in foreign-language document
« Reply #2 on: 04-21-17 at 11:28 am »

.... might want to read and understand carefully Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961), and MPEP sections 2163.07 and 217, before you make your decision.  They are not directly on point for your situation but they may be relevant depending on what you choose to do.

This may be a silly question, but I don't do a lot of foreign-to-US filings, so I'll ask it.

The MPEP that Robert referred to (2163.07) says that, with respect to correcting errors, there's a difference between a US filing (in English) that claims priority to a foreign document, and a US filing in a foreign language followed by a translation. Namely, the second method allows more opportunity for correction:

Quote
Where a foreign priority document under 35 U.S.C. 119 is of record in the U.S. application file, applicant may not rely on the disclosure of that document to support correction of an error in the pending U.S. application. Ex parte Bondiou, 132 USPQ 356 (Bd. App. 1961). This prohibition applies regardless of the language of the foreign priority documents because a claim for priority is simply a claim for the benefit of an earlier filing date for subject matter that is common to two or more applications, and does not serve to incorporate the content of the priority document in the application in which the claim for priority is made. This prohibition does not apply where the U.S. application explicitly incorporates the foreign priority document by reference. ...

Where a U.S. application as originally filed was in a non-English language and an English translation thereof was subsequently submitted pursuant to 37 CFR 1.52(d), 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.

This seems like a good reason for filing non-English first.

I'm curious which of these two options is the most common practice: file in English, or translate later into English? And if the former, what's the advantage, given that it appears to be a disadvantage when it comes to correcting translation errors.
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Rheo

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Re: Issue w/ typo in foreign-language document
« Reply #3 on: 04-21-17 at 09:29 pm »

I'm thinking of just filing the specification as-is (with the correct word, not the word as originally written) and also filing a note as a "miscellaneous letter" that the translator used the correct word but sent a remark about the issue.

The translator DID, after all, use the correct word (meaning the word that was intended, not the mistaken word originally written) in the translation.
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NJ Patent1

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Re: Issue w/ typo in foreign-language document
« Reply #4 on: 04-22-17 at 03:54 pm »

Rheo:  My thoughts.  You are filing straight Paris?  Incorporate the first-filed foreign application by reference.  I failed to do this once and got into an issue.  I’ve occasionally had a similar situation to yours and I’ve used two approaches.  If the discrepancy could in anyway be problematic later, file the literal and an amendment to the spec to address it now.  If the difference is one of “shading of meaning” and you are competent in the language in question, file with the “correct” word and paper the file. 
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