We previously looked at an instance where a poorly translated sentence in a single quarterly earnings report greatly harmed the financial image of Sharp Corp., a large producer of electronics. This event illustrates the need for a professional translation of important financial, technical, and legal documents that will be used during litigation or to make business decisions. An article from the China IP News by Richard V. Burgujian, Esther H. Lim, Wenye Tan, and Ningling Wang, titled “Practical Considerations and Strategies in Drafting U.S. Patent Applications,” provides descriptions of two cases that demonstrate the importance of using high-quality professional patent translations during litigation. A poorly translated patent application may need to be amended to improve the translation of a foreign word, and this amendment may narrow the scope of the patent and therefore decrease its value. A patent may be deemed unenforceable if the references submitted with a patent application are not fully translated. A company or individual will pay the price of narrower patent claims or complete loss of patent rights if poorly translated documents are submitted during patent litigation.
Continue reading to learn about two patent cases that illustrate the importance of high-quality patent translations during litigation, and learn how you can obtain the most linguistically and technically accurate professional translations in order to avoid the consequences of a poorly translated document!
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co
According to the article by Burgujian, et al., the US Supreme Court reasoned in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. that:
the U.S. Patent and Trademark Office might require the applicant to clarify an ambiguous term to improve the translation of a foreign word under § 112 of the U.S. Patent Law. But if a § 112 amendment is necessary and narrows the scope of the patent, even if only for the purpose of better description, prosecution-history estoppel still applies. Thus, prosecution-history estoppel can greatly limit the reach of a patent claim and diminish the value of the patent.
An improper translation of a patent application submitted to the USPTO may necessitate a § 112 amendment to the patent document in order to clarify and improve the translation of a foreign word. If the amendment narrows the scope of the patent, then prosecution-history estoppel applies and the applicant may no longer invoke the doctrine of equivalents to broaden the scope of their claims. Applicants should therefore utilize a professional patent translator in order to ensure that no amendments are needed to clarify or improve translated terms.
Semiconductor Energy Laboratory Co. v. Samsung
The article by Burgujian, et al. describes a case where Semiconductor Energy Laboratory (SEL) Co. only submitted a partial translation of a Japanese-language reference, and Samsung asserted that the partial translation constituted inequitable conduct by SEL:
The Federal Circuit agreed with Samsung and viewed the submission of the partial translation as an attempt to influence the examiner not to obtain a full translation of the reference, because the inventor’s native language was Japanese. The Court held that SEL committed inequitable conduct and the patent was unenforceable.
Any prior art references submitted to a patent office or a court of law should be entirely translated by a professional technical translator, in order to avoid any possible charges of purposely failing to disclose relevant prior art through incomplete translation of the relevant documents. Professional translators will not suggest a partial translation of a reference for a patent application knowing that it may result in inequitable conduct. Partial translations are appropriate for informational purposes, and expert patent professionals can alert customers in advance to the potential risks of only partially translating a reference.
How to Obtain the Best Professional Translations
Customers should only utilize professional technical translators who possess an in-depth knowledge of the patent process when choosing who will translate prior art or patent documents to be used during litigation. Landon IP is a leading provider of patent-related services, including patent search, advanced patent law training (Patent Resources Group), and translation. We know how important every word is in a patent document because we live and breathe patents as searchers, attorneys, former examiners, and patent law educators. Customers who use Landon IP translation services receive highly accurate patent translations due to native-language patent translators and in-house technologists who cross-check the translation for technical accuracy and readability during our proprietary quality control process, QuadCheckTM. Lower cost vendors and general translation providers may save you a few dollars, but they are more likely to produce a translation containing errors because they don’t know patents, and one mis-translated word can narrow the claims of the patent or render it unenforceable. Be sure to obtain only the highest quality patent and technical translations for litigation and business purposes by using the professional translation services of Landon IP.
Do you know of any legal cases that demonstrate the need for a professional translator? Let us know in the comments!
This post was contributed by Joelle Mornini. The Intellogist blog is provided for free by Intellogist’s parent company Landon IP, a major provider of patent searches, trademark searches, technical translations, and information retrieval services.