Updated 2000-02-01
Preparing a Patent Specification for Filing with the U.S. Patent and Trademark Office
JAT Bulletin 178, January 2000
Patent applications translated for filing with a national or
regional patent office have to observe a specific format. This
article concentrates on the preparation of an English patent
application for filing with the United States Patent and
Trademark Office (USPTO), based on a Japanese (Paris priority)
specification, which is by far the most common route for
Japanese applicants. There are two other possibilities, for
which the prescribed format may differ slightly from the format
described below, namely (i) filing a PCT application or (ii)
filing the application in Japanese first, followed by
submitting an English translation within a time limit
determined by the USPTO.
There are several documents that a translator is confronted
with when asked to translate a patent specification into a
document that is suitable for filing as a patent application
with the USPTO.
First of all, there is a written description, which includes a
description of the prior art, a description of the invention,
the claims, and an abstract. (Legally speaking, the abstract is
not part of the description, but the translator does not have
to be concerned with this, and for now we'll just regard it as
a part of the same document.)
Usually, the description is accompanied by a set of drawings,
numbered "Fig. 1", "Fig. 2", etc. If you see a reference to
drawings in the description but were not provided with the
drawings by your client, ask your client to send you the
drawings.
Sometimes there is also a document listing the name of the
applicant, the names of the inventors and their addresses. This
document is not a part of the specification, but contains
necessary information for the foreign representative to file
the application. This document is usually prepared by the
Japanese benrishi, and sent as a so-called
"Information Note" to the associate foreign attorney, together
with the specification.
The elements of the description
The description of a U.S. patent application consists of
several parts, most of which have some correspondence in the
Japanese original:
The title
BACKGROUND OF THE INVENTION
1. Field of the Invention
2. Description of the Related Art
SUMMARY OF THE INVENTION
BRIEF DESCRIPTION OF THE DRAWINGS
DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS
WHAT IS CLAIMED IS:
ABSTRACT OF THE DISCLOSURE
The order of the elements of a Japanese application is a
little different:
【発明の名称】
【特許請求の範囲】
【発明の詳細な説明】
【発明の属する技術分野】
【従来の技術】
【発明が解説しようとする課題】
【課題を解決するための手段】
【発明の実施の形態】
【発明の効果】
【図面の簡単な説明】
【符号の説明】
【要約】
【課題】
【解決手段】
【選択図】
Sometimes the order of the Japanese application to be
translated has already been rearranged to conform with U.S.
requirements. If not (i.e., if it is still in the 'Japanese'
order) someone has to rearrange the parts to conform with U.S.
(or European) requirements. Usually, this is considered the
translator's job.
The following briefly explains the elements of a U.S.
application and to which elements of the Japanese application
they correspond. Please note that while the USPTO prescribes
the precise order of these elements, there are some variations
to the headings used for the different subsections. For
example, instead of "WHAT IS CLAIMED IS:", sometimes "WE
CLAIM:" or (in case of a single inventor) "I CLAIM:" can be
found. Some patent law firms may have preferences, but these
are merely of a stylistic nature. The following is simply one
example of a frequently used pattern. The corresponding
Japanese sections are indicated in 【square brackets】.
[The title] 【発明の名称】
This is self-explanatory. It should be noted that the USPTO
recommends restricting the title to two to seven words.
BACKGROUND OF THE INVENTION
The BACKGROUND OF THE INVENTION is usually divided into two
sub-sections, namely "Field of the Invention" and "Description
of the Related Art", each having their counterpart in
Japanese:
1. Field of the Invention 【発明の属する分野】
This section usually consists of one or two sentences, stating
the field the invention pertains to. In virtually all
applications, this is a sentence like "The present invention
relates to [whatever field the invention relates to]", often
followed by a sentence like "In particular, the present
invention relates to [whatever field the invention relates to
in particular]".
2. Description of the Related Art
【従来の技術】【発明が解説しようとする課題】
In this section, which is also often called "Description of
the Prior Art", the applicant describes what he regards as
related or prior art. In the U.S. the applicant has a duty to
disclose information on technology that is related to the
invention, and this duty can be satisfied by including a
description of related technology in this section. Usually this
section consists of a series of short descriptions of related
inventions, as published in other patent publications or
scientific articles. This portion of the application can be
very difficult to translate, as the applicant often summarizes
entire patent applications in one or two short
paragraphs.
It should be noted that some benrishi try to avoid
the expression "prior art" at all cost. The reason for this is
that "prior art" is thought of as documents that a person
skilled in the art has knowledge of, and such documents can be
held against the application, leading to a rejection, whereas
"related art" describes similar technologies, but not
necessarily in the same field. The rationale for avoiding the
term "prior art" is that if the applicant uses the term "prior
art" for a certain document this can be interpreted as an
admission that this document is available to be held against
his invention.
The description of the conventional technology is often
followed by listing the problems that are encountered in this
conventional technology and which the invention is supposed to
overcome. In Japanese applications, this part constitutes a
separate subsection, namely 【発明が解説しようとする課題】,
which concludes with a statement of the object of the
invention:
「本発明は、…ことを目的としている。」 In U.S. applications,
this statement of the object of the invention is customarily
included in the next section, namely:
SUMMARY OF THE INVENTION 【発明が解説しようとする課題】,
【課題を解決するための手段】
This section begins with the object of the invention, i.e.,
some variation of: "An object of the present invention is
[whatever the object is]. A further object is []. Yet another
object is []." Among patent drafters in Japan and U.S., there
are—broadly speaking— two different
approaches to this summary section. One approach is to actually
formulate a summary of the invention, stating its purpose, and
how the invention attains that purpose. However, in Japanese
applications, more often than providing an actual summary, this
section simply rehashes all the claims.
In practice this means that there is a series of sentences
like:
請求項１の発明の○○装置は、…ことを特徴とする。
請求項２の発明の○○装置は、…ことを特徴とする。
請求項３の … etc.
.. or some variation thereof, sometimes with interluding
paragraphs explaining why each claimed configuration is
preferable. This practice is also called "reclaiming", and the
rationale for it is that Japanese and U.S. rules alike
prescribe that the summary section has to be "commensurate with
the invention as claimed". Japanese rules even stipulate that
technical terms used in the claims have to be disclosed in the
description (i.e., the 【発明の詳細な説明】 section). The
easiest way to satisfy this rule is to copy and rearrange the
claims into the summary section. As a translator, you can
consider yourself lucky if you encounter a "reclaiming" summary
section, as this often allows you to process a thousand or more
words in a matter of several minutes if you translate the
claims first and then cut and paste them into the reclaiming
section.
BRIEF DESCRIPTION OF THE DRAWINGS 【図面の簡単な説明】
There is a one-to-one correspondence between English and
Japanese for this section. Sometimes the Japanese refers to a
series of drawings (e.g., illustrating a process) collectively
as 図１ or so on, even though there are, for instance, 図１A -
図１D. In such a case, the English should be "Figs. 1A to 1D
show [...]", and not "Fig. 1 shows ...", as the latter might
provoke a rejection. Also, according to U.S. rules, drawings
should not be identified using small letters and parentheses
(e.g., "Fig. 1(a)"), but with capital letters without
parentheses (e.g., "Fig. 1A), although a rejection on such a
minor informality will likely only be issued be an overzealous
freshman examiner".
DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS
【発明の実施の形態】
This is usually by far the longest and most detailed section
of the specification, in which the applicant explains one or
more "embodiments" (i.e., working examples) of the
invention.
The purpose of this detailed description is to enable any
person skilled in the pertinent art or science to make and use
the invention without involving extensive experimentation. In
fact, U.S. law even provides a yardstick regarding the quality
of the description (37 CFR 1.71: "The specification must
include a written description [...] and is required to be in
such full, clear, concise, and exact terms as to enable any
person skilled in the art [...] to make and use the
same.").
A few important consequences can be drawn from this
requirement:
The applicant, and by extension the translator, is
"responsible" for the portion of the description setting forth
the embodiments (in contrast to the portion describing the
prior art). This means the translator has to correct errors and
inconsistencies (or at least point them out to the
applicant).
The translator must have sufficient knowledge of the
technology. If the translator is clueless about the technology,
there is a strong possibility that the final specification is
not "full, clear, concise, and exact" as required by the law,
as choosing the right terminology and resolving ambiguities is
reduced to a game of chance.
For U.S. specifications, it is customary to end the DETAILED
DESCRIPTION OF THE PREFERRED EMBODIMENTS with a disclaimer, in
which the applicant states that the preceding examples are only
examples, and that there are other ways to work the invention.
The author generally uses the following disclaimer (even when
there is no corresponding text in the Japanese original):
"The invention may be embodied in other specific forms without
departing from the spirit or essential characteristics thereof.
The embodiments disclosed in this application are to be
considered in all respects as illustrative and not restrictive,
the scope of the invention being indicated by the appended
claims rather than by the foregoing description, all changes
that come within the meaning and range of equivalency of the
claims are intended to be embraced therein."
Following the 【発明の実施の形態】 in Japanese, there is a
section called 【発明の効果】, which usually states that the
invention in fact achieves the desired effect (i.e., object).
The author usually omits this section from the English
translation unless it includes information that is not
mentioned elsewhere.
Another section that has no correspondent in a U.S.
specification is the section 【符号の説明】, following the
【図面の簡単な説明】. Again, this section should be omitted
from the U.S. specification.
WHAT IS CLAIMED IS: 【特許請求の範囲】
According to U.S. law, the specification "shall conclude with
one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention." (35 U.S.C. section 112; again, note that the
abstract is technically speaking not a part of the
specification, although it is always included in the same
document). There is a lot of case law on what "particularly
pointing out and distinctly claiming" exactly means, and
sometimes the Japanese claims have to be rewritten considerably
to conform with U.S. practice. One of the following articles in
this series will concentrate on this subject.
ABSTRACT OF THE DISCLOSURE 【要約】
Whereas under U.S. rules, the abstract has to be written as
one paragraph, it consists of three parts under Japanese rules,
namely 【課題】,【解決手段】 and【選択図】. 【課題】
paraphrases the object, and 【解決手段】 often simply repeats
the first claim, setting forth one possible configuration of
the invention. Often, the benrishi will rewrite this
section to agree with U.S. rules. When confronted with a
"Japanese-style" (i.e., three-part) abstract, the author
usually reverses the order of 【課題】 and 【解決手段】, i.e.,
putting the structure before the effect. 【選択図】 specifies
the drawing that is published by the Japanese Patent Office
together with the abstract. Since in the U.S. applications are
not published as of this writing, this item can simply be
omitted from the English specification for the U.S., but it
should be included in specifications to be filed in
Europe.
Sometimes, the examiner objects to the abstract because of
"legalistic language". The abstract ideally should be written
in straightforward English, and terms such as "comprise",
"embodiment", "means", etc. that have special meanings in
Patentese should be avoided.
Formatting the Specification
U.S. law contains precise instructions about the way patent
applications should be formatted when filed with the
USPTO:
37 CFR 1.52:
[...]
(b) The application papers [...] and also papers subsequently
filed, must be plainly written on but one side of the paper.
The size of all sheets of paper should be 8 to 8 1/2 by 10 1/2
to 13 inches (20.3 to 21.6 cm. by 26.6 to 33.0 cm.) A margin of
at least approximately 1 inch (2.5 cm.) must be reserved on the
left-hand of each page. The top of each page of the
application, including claims must have a margin of at least
approximately 3/4 inch (2 cm.). The lines must not be crowded
too closely together; typewritten lines should be 1 1/2 or
double spaced. The pages of the application including claims
and abstract should be numbered consecutively, starting with 1,
the numbers being centrally located above or preferably, below,
the text.
.. and ...
37 CFR 1.58:
[...]
In order that specifications may be expeditiously handled by
the Office, page numbers should be placed at the center of the
top or bottom of each page. It is a common practice and a
commendable one, to consecutively number all the lines or every
fifth line of each page. A top margin of at least 3/4 inch
should be reserved on each page to prevent possible mutilation
of text when the papers are punched for insertion in a file
wrapper.
[...]
Getting Started...
Let's assume you have just been sent a patent application to
be translated into English. So where do you start?
The first thing to be done is to check that the documents are
complete, and no pages or drawings are missing. Then, there are
two things that are very helpful to know for the translator,
and that you should ask your client, if this information hasn't
been provided anyway:
When is the application deadline?
Who is the applicant?
"Application deadline" (also called "priority deadline") does
not mean the deadline that your client gives you to hand in
your translation (that's the translation deadline), but the
deadline for handing in the patent application with the (e.g.,
U.S.) patent office. As you might recall from the first article
of this series, this deadline is one year after the application
date of the corresponding domestic (i.e., Japanese)
application. Knowing the application deadline makes it much
easier for the translator to appreciate the urgency of a case,
and perhaps negotiate an extension for the translation
deadline. Agencies tend to be less willing to do so, but
tokkyo jimusho are often quite receptive, if there is
enough wiggle room. Usually, the tokkyo jimusho sends
out the documents to the foreign representative about one week
prior to the application deadline. Add to that time for the
benrishi and possibly the inventor to check your
translation, and it is easy to see how much room for
negotiation there is.
It can be very helpful to know who the applicant is, as this
opens the possibility of researching related applications by
the same applicant and checking out terminology used by that
applicant in prior applications. Simply point your browser to
the USPTO
patent database and enter the name of the applicant and
perhaps a keyword.
Usually, tokkyo jimusho will tell you who
the applicant is, because it allows the patent translator to do
a better job. However, in some cases, the identity of the
applicant and the priority deadline are regarded as "sensitive
information" and not divulged to the translator, although this
practice seems to be rather counterproductive. You can also ask
for reference material, such as glossaries or recent
applications by the same applicant.
Click here to download a
boilerplate (in Word format) for a U.S. application conforming
with the above formatting requirements. Note that the Claims
and the Abstract should start on a new page.
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