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JAT Bulletin 176, November 1999
Statutory Subject Matter
Utility
Novelty
Inventive Step
While many translators shudder when they hear the p-word,
recent discussions on the JAT-list have shown that there is
considerable interest in patent translation among translators
and in the legal and practical aspects involved.
This article presents a brief introduction into the main
concepts that are common to patent systems around the world.
Some of the terms that will be introduced are: Novelty,
inventive step, and priority, among others. A
clarification of these and other legal terms is necessary to
understand the patent application process, that is, what
patents are all about, why they are written the way they are,
and how the translator can best serve the client.
Future articles of this series will cover real-life
examples,
in particular in patent claims.
Patent law is different from country to country. There is a
common theme, yet there are considerable variations, not only
in the law but also in format and style of patent
applications. This introductory article, however,
concentrates on those aspects of patent law that are the same
in all major industrialized nations - thus, unless indicated
otherwise, you can assume that all the information in this
article holds true for the U.S., Japan and Europe. The major
procedural differences between these countries - as far as
they are of relevance for the patent translator - will be
highlighted in a later article.
The idea behind the patent system is to reward inventors for
making new and useful inventions. Inventors have to invest
time and money in making inventions; the patent system
provides them with an incentive to make inventions and to
disclose their inventions to the general public. Let’s take
a look at a hypothetical example from the field of
pharmacology in a world without a patent system:
Company A has developed a new tincture against balding. The research effort has cost several million dollars, and the drug is a huge success on the market. However, since it is easy to analyze and synthesize its chemical constitution, other companies start to copy the product and sell it at a lower price than Company A. Because of the intense competition, Company A is forced to lower its prices, which reduces its profits to the point where it cannot even recover the expenses for its research.
If companies like Company A are not protected from freeloaders and copycats, they will lose interest in investing their resources in making inventions, which slows down the technological progress as a whole - or so it is argued. The patent system gives the patent owner the right to exclude others from using his invention for a limited time, thereby ensuring that there is a chance to recover the expenses for making the invention:
A patent is the right to exclude others from practicing an invention.
A patent is therefore a negative right, namely the right to exclude others from making, using or selling the invention. It is not a positive right that gives the patentee the right to make, use or sell his invention.
By granting patents, society benefits in two ways - firstly, from the technological progress that is promoted by giving incentives to make inventions (in our example, this means that a cure against balding becomes available). Secondly, society benefits from the disclosure that the inventor is forced to make when applying for a patent (this means that not only becomes a new drug available, but the inventor also has to disclose how it can be produced, and this information becomes publicly available).
The term of a patent is limited. The patentee can extend the duration of the patent term by paying maintenance fees, but not indefinitely (e.g. up to 17 years after issuance of the patent in the U.S.). Thus, the technology protected by the patent eventually goes to the public domain, thereby (at least in theory) enhancing the technological progress of the general public.
A patent does not give the patent owner the right to use an invention. Assume, for example, that the new drug developed by Company A is effective in promoting hair-growth, but also slightly hallucinogenic when inhaled in large doses. In such a case, Company A may be able to obtain a patent, but whether it will be allowed to manufacture and sell the drug will depend on other factors (for example, a completely unrelated application procedure before the FDA in the U.S.). Another common pattern is that a patent is a development based on an older patent. Imagine that after a patent is issued to Company A, Company B patents a tincture based on Company A’s invention, but suppressing its hallucinogenic effect. In such a case, neither Company A nor Company B are allowed to practice this second invention (i.e. make and sell the new better drug) without the other party’s approval. Company A has the right to exclude others from making the new drug, because it has a patent on the basic formula, and so does Company B, which has a patent for the enhanced formula. A common solution for such a scenario is a cross-licensing agreement, in which both companies allow each other to use the relevant patents. (If a third company, Company C, wants to make the new better anti-balding drug, they find themselves in the uncomfortable position of having to negotiate licensing agreements with two different companies, Company A and Company B.)
Anyone, regardless of nationality. It is important to
distinguish between the “inventor” and the “applicant”.
The inventor is obviously the person who made the invention.
This can also be a research team consisting of two or more
inventors who worked together on the same invention, and in
that case the names of all contributing inventors have to be
notified to the patent office. The inventor cannot be a
company or an institution - it must be one or more natural
persons. The applicant pursuing the application before the
patent office, on the other hand, can also be a legal entity
(a company or institution), and enjoys all rights from the
patent once it is granted.
In many cases, the inventor and applicant are the same person, but the more common pattern is that an inventor works for a company and transfers all rights in the invention to his employer (usually because of clauses in his work contract to this effect). This is called “assignment”; the inventor assigns the invention to the applicant. Two or more applicants can pursue an application together, which might be the case if there is a joint research effort by two companies. In this case, they are called “joint applicants”.
Typical applicants are medium-sized and big corporations.
There are still independent inventors working out new ideas
in their garages, but they are rare birds and usually don't
have the resources to pursue applications actively and stand
up against big corporations in court.
In order to obtain a patent, it is necessary to file a patent
application with the patent office. The details of what has
to be included in the application vary from country to
country, but practically everywhere the application must
include
The rules of most national patent offices prescribe a certain
format for the description and the claims. These rules vary
from country to country. In particular, there are big
differences in the acceptable claim formats, as certain types
of claims are common in one country but not accepted in
others. A translator translating patent applications to be
filed with a patent office should know these differences and
be able to point out possible pitfalls to the client.
Statutory Subject Matter: US patent law explicitly defines four categories of subject matter for a utility patent:
The three criteria that an invention has to fulfill are:
utility, novelty and inventive step (non-obviousness),
Utility: The utility requirement is usually the easiest to fulfill. In order to be considered useful, an invention has to be operable and capable of fulfilling a function beneficial to humanity. The invention does not have to be more useful or better than existing inventions. Thus, an invention solving a technical problem may still be patentable even though the problem has been solved already in a much more economical fashion.
Examples of inventions that fail the utility requirement are
perpetual motion machines (accepted by the scientific
community to be impossible and therefore inoperable), and
inventions that are inevitably unreasonably dangerous.
Novelty: The
foremost condition an invention has to fulfill to be
patentable is that it has to be new. So the first thing an
examiner does when comparing an application with the prior
art is to examine whether the invention as filed by the
applicant has already been known at the time of application.
Incidentally, novelty is related to one of the fundamental
differences between US patent law on the one hand and
Japanese and European patent law on the other hand. Compare
the following crucial paragraph in US law (emphasis by the
author) ...
35 USC Section 102A person shall be entitled to a patent unless...with Japanese patent law... JPL 29 (1)
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or [...]Any person who has made an invention which is industrially applicable may obtain a patent therefore, except in the case of the following inventions:
(i) inventions which were publicly known in Japan prior to the filing of the patent application;
(ii) inventions which were publicly worked in Japan prior to the filing of the patent application;
(iii) inventions which were described in a publication distributed in Japan or elsewhere prior to the filing of the patent application.
[...]
This means that of two applications on the same
invention filed by two different applicants, US patent law
regards the application that was invented first as newer,
whereas Japanese patent law regards the application that was
filed first as newer. This is why US patent law is also
called a first-to-invent system and Japanese (and European)
law a first-to-file system. Can this make a difference?
Consider the following case: Inventor A has made an invention
on January 1, 2000 and files it in Japan and in the US on
April 1, 2000. Inventor B has made the same invention on
February 1, 2000 and files it in Japan and in the US on March
1, 2000. Thus, inventor A will be granted the patent for the
US (because he was the first to invent), whereas inventor B
will be granted the patent for Japan (because he was the
first to file the application).
This has some important consequences for the patent business,
as it is one of the main reasons that Japanese companies tend
to file applications at a comparatively early stage in the
development process. This is enhanced by relatively low
filing costs in Japan (appr. $100 if no request for
examination is made) and the possibility of deferring
examination for up to seven years. For this very reason,
statistics on the number of applications by certain companies
in certain countries are next to meaningless, as they reflect
not so much the inventive activities in those countries as
differences in legislation.
Inventive Step (non-obviousness): Whereas the novelty standard precludes patents from being granted for inventions that are identical with older inventions, the non-obviousness standard precludes patents for inventions that are perhaps not identical but too close to what has been known to the public at the time of filing (in Europe and Japan) or at the time the invention was made (in the U.S.). In other words, an invention has to be “inventive” or “non-obvious”, and if it is only a trivial variation of a pre-existing matter, it is said to be “not inventive” or “obvious”. Again, let’s have a look what the law says:
US patent law:
35 USC Section 103(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Japanese Patent Law:
JPL 29 (2)Where an invention could easily have been made, prior to the filing of the patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of an invention or inventions referred to in any of the paragraphs of Subsection (1), a patent shall not be granted for such an invention notwithstanding Subsection (1).
To qualify for patent protection, an invention must be
“non-obvious” (US terminology), i.e. involve an “inventive
step” (European terminology). It is not possible to obtain a
valid patent if the differences between the invention and the
prior art are too small. This requirement is the most
important requirement, but also the most difficult to apply.
There is a lot of case law out there with which a patent
attorney should be familiar, and there are some commonly
accepted indicators of patentability (e.g., commercial
success brought by the invention, a long-felt problem solved
by the invention, etc.). However, except perhaps for the rare
case of a ground-breaking invention, it is very difficult to
predict whether an invention will pass the non-obvious
requirement. This is partly because the complete state of the
prior art is usually not known when the application is filed.
Some patent offices have formalized the process of examining whether an invention is non-obvious, and most patent offices apply a similar test or some variation to this:
However, the right to claim priority is limited to twelve months after the first filing. Thus, if Company A misses the priority deadline, it can still file a patent application, but it will not be able to claim the filing date of the earlier application. Let’s assume that Company A files the US application a week later than in the above scenario, i.e. on November 7, 2000 instead of October 31, 2000. In that case, the filing date of the application filed by Company B on June 1, 2000 predates the filing date of Company A, so that Company A would not be able to obtain a patent.
Patent offices are very strict about priority deadlines, and
missing this deadline can cause irreparable loss to the
client’s patent rights, as any patent translator should be
aware.
The parts marked in square brackets [ ] are optional and may
or may not add to the quality of the final product. Please
note that the times given vary from country to country and
are only given as a rough guideline. Only the one-year
priority deadline is universal (except for PCT applications).
In the following table, “associate office” means a foreign
(i.e. outside of Japan) patent law firm entrusted with filing
the application and representing the applicant before the
patent office, and this foreign representative does not have
to be (and usually is not) affiliated with the Japanese
patent law firm (特許事務所）. Also, note that work
attributed to the Japanese patent lawyer (弁理士） is not
necessarily performed by someone having that qualification,
but is often done by technical staff acting under the
guidance of a benrishi.
| 1. Invention | An inventor in a Japanese company makes an invention, and the company (called “applicant” below) decides that the invention merits filing a patent application in Japan. | ||
| 2. Preparation of Specification (in Japanese) | The applicant notifies the tokkyo jimusho of the case, gives all relevant information and sets a target deadline for filing an application with the Japanese Patent Office (JPO). The specification is prepared by the inventor(s), by specialized staff in the inventor’s company (e.g. a patent department), or by an outside benrishi. Often, the inventors write a rough draft, which is then reviewed and optimized by the benrishi. The preparation of the specification includes writing the description, making the drawings and formulating the claims. | ||
| 3. Filing the Patent Application with the JPO (Priority Date) | The benrishi files the patent application (i.e. specification, filing fee and all other necessary documents) with the JPO. This sets the priority clock ticking, and the applicant now has one year to prepare a translation and submit an application to other patent offices around the world. The official filing date is also called the “priority date”. (Further proceedings before the JPO are not discussed in this table, and where a “patent office” is mentioned below, it refers to patent offices outside Japan.) | ||
| [4. Preparing a Japanese “Specification for Translation”] |
Several months after filing the patent application
in Japan, the applicant has a better grasp of the
importance of the invention. It is now possible for
the applicant to decide where to file applications
abroad, and the benrishi is notified of
this decision. The benrishi prepares a
Japanese draft to be translated. This may involve:
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| 5. Preparing the Translation | A translation is prepared, based either on the “specification for translation” prepared by the benrishi or on the specification of the original priority application. In the latter case, the translator has to be especially careful to make sure that the final translation complies with the rules of the country or region where the application is to be filed. The translation may be prepared inhouse, by an agency, or by a freelancer. | ||
| [6. Translation Check I] | The translation is checked by the benrishi. | ||
| [7. Translation Check II] | The translated specification is checked by a native speaker patent attorney (e.g. an associate patent attorney in the U.S. who is familiar with U.S. rules and case law, and who is able to point out deficiencies in the translated specification). | ||
| [8. Translation Check III] | The translation is checked by the inventors. | ||
| 9. Filing the Patent Application Abroad (not later than priority date + one year) | Once the inventors have given their OK to the final version, the translated specification, together with all other necessary documents, is mailed to associate offices in the countries where foreign applications are to be filed. The associate patent attorney prepares all necessary forms and submits the application to the national/regional patent office. The deadline for this is one year after the filing date of the Japanese application (exception: PCT applications). | ||
| 10. Publication of the Patent Application (priority date + 18months) | The Japanese application is published 18 months after the priority date. If an application has been filed in Europe, it is published as well, but US applications are not published. | ||
| 11. Official Communication | If the examiner at the foreign patent office believes that the invention is not patentable (i.e. not new or not inventive) and/or that the application has formal deficiencies, an official communication is mailed to the benrishi. The time between the filing of the application and the first official communication varies wildly and depends upon the country and the workload in the department to which the examiner belongs. Typical times are one to three years. A deadline (usually between three and six months) is set, within which the applicant has to file a reply. | ||
| [12. Translation of Official Communication into Japanese] | In the case of English, the translation of official communications into Japanese is most often handled in-house by staff of the benrishi’s tokkyo jimusho. For most other languages, a translation into English is prepared by the foreign associate office (Korean and Chinese/Taiwanese patent law firms are sometimes able to provide translations into Japanese). | ||
| 13. Preparation of Draft Reply in Japanese | The Official Communication is forwarded to the inventors, together with prior art documents cited by the examiner. The inventors study the cited prior art and instruct the benrishi how to react to the Official Communication. A draft reply is prepared in which the applicant submits arguments in favor of his application or rebuts the examiner’s arguments. The reply may also include a set of amended claims with the goal of correcting formal deficiencies and/or to circumventing prior art cited by the examiner. | ||
| [14. Translation of Draft Reply to Official Communication] | Needless to say, the reply to the Official Communication has to be translated into a language accepted by the corresponding national/regional patent office. | ||
| 15. Preparation of Reply to Official Communication | Based on the draft reply, the foreign representative prepares a Written Reply and files it with the patent office. | ||
| 16. Next Official Communication |
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| 17. Grant | The patent office notifies the applicant that the application is in position for grant, and a patent is granted after the applicant has paid all necessary fees. | ||
| 18. Publication of the Patent | The patent is published by the patent office. This gives the patentee (former applicant) the right to go after infringers and sue companies practicing the invention. |
Patents and patent-related documents are translated for
various purposes. When being confronted with a piece of
“patent translation”, it is useful to take a step
back and try to understand where the original came from
and what will happen to the translation, as this may
have an impact on what is expected from the translator.
The paramount criterion for deciding how to translate
should be the goal of the client (here 'client' means
the party who ultimately pays for the translation, and
that is rarely a translation agency). In the case of a
translation to be filed as a patent application, the
ultimate goal of the client is to obtain the broadest
possible scope of protection, and the ideal translation
would be one that ensures just that - the broadest
possible scope of protection. In other cases, the
client orders a translation simply because he is
obliged to submit a “complete” or “true”
translation of a certain document (e.g. the priority
document(s)) to the patent office, and in such cases,
the translator will have to sign a statement to the
effect that the translation is “complete” or
“true”. Some problems arising from this issue “for
filing” vs. “for information” translation will be
highlighted in a later article.
Besides patents, there are other forms of intellectual
property protection. The main ones are:
Designs offer protection for the shape, pattern and
color of an article. They protect the aesthetic aspects
of a product, whereas a patent protects the utilitarian
aspects.
Labels, logos or brand names can be protected by
trademarks. If a consumer sees a package with a
wellknown brand name on it, he has the right to assume
that it contains the “real thing”. Companies that
imitate well-known brand names or logos on their
product can therefore be subject to sanctions. It is
interesting to note that trademarks can be registered
(therefore the oft-seen term “registered trademark”),
but trademark rights can also result without
registration if the mark is well-known. For example,
even if Intel had never registered a trademark for
“Pentium”, it could enforce its trademark rights
against competitors trying to appropriate a similar
name, because the name “Pentium” is wellknown.
Copyrights protect works of authorship, including
literary works, musical works, motion pictures,
computer programs and others. A fundamental difference
between patents and copyrights is that it is not
necessary to "copy" an invention to infringe a patent.
In fact, a company may independently develop a new
technology and still be held liable for infringement of
a patent of another company even though they never knew
of that patent. A copyright, on the other hand, can
only be infringed by someone who actually copies what
is being copyrighted.
Sometimes a company may come to the conclusion that a
patent is not the best form of protection for its
intellectual property. For example, publishing its
technology by applying for a patent may put it at a
disadvantage, or, even if a patent is granted it may be
difficult to enforce. In such cases, the company may
decide to keep its technology secret. However, this
strategy may cause problems if the same invention is
made and asserted by another company. Perhaps the most
famous example of a trade secret is Coca-Cola’s secret
formula. Another typical example is customer
lists.
After the patent has been allowed, the entire text of the patent is published again (here called "Japanese Patent Publication"). Note how the number of claims and their scope differs between the original application and the patent eventually issued. This is a result of amendments introduced by the applicant during prosecution.
In the U.S., on the other hand, the patent application
is kept secret until the patent issues, so the patent
is published only once.
Click here to view the same patent on the patent
server of the USPTO.
Japanese Patent
Application