Patents have restrictions on regions. A patent is valid only within a specific geographic region, and if a specific patent is desired to be valid in another region or country, it should be filed in that region or country using the local official language. For example, if an American applicant for a patent wants to have the right of this patent in China, the American applicant needs to file this patent in Chinese before the China National Intellectual Property Administration. Similarly, if a Chinese applicant applies for a patent right in America, the applicant needs to submit an English text to the USPTO. All these procedures involve interlingual translation.
Interlingual translation seems easier to Chinese applicants as their school education covers English language learning and they are able to understand English patents or English notifications more or less, and thereby most Chinese applicants can easily find some obvious technical errors, if any.
However, to most foreign applicants, Chinese is very difficult. In this case, many foreign applicants entrust Chinese patent agencies to deal with patent affairs. Without an employee who understands Chinese, it's more likely that these foreign applicants never check the Chinese documents at all, and entrust a patent agency with full powers.
However, is it the case that patent agencies never make mistakes? Let's look into the following example.
This patent is involved in a lawsuit in China. ESCO CORP filed a lawsuit against Ningbo lu-kun International Trading Ltd for infringing the right of this patent. Let's see claim 20 of this patent:
20. 一种用于挖掘机的耐磨构件(12)，所述挖掘机具有一凸唇和一固定在该凸唇上的突出部(18)，该凸唇带有一挖掘边(23)，突出部(18)从挖掘边伸出到前端，该耐磨构件(12)包括会聚而形成一窄前端(51)的会聚壁(43，45)、侧壁(47，49)和插口(53)，所述插口(53)由会聚壁(43，45)的会聚面(55，57)、侧壁(47，49)的侧面(59，61)限定而成，会聚面(55，57)朝向所述窄前端(51)会聚，其特征在于所述插口(53)包括一个形成在所述突出部(18)上的用于接收一凸轨(35)的凹槽(65)，该凹槽(65)沿着与会聚面(55，57)中的一个相同的方向倾斜。(A wear-resistant member (12) for an excavator, the excavator having a lip and a projecting part (18) fixed on the lip, the lip having a digging edge (23), the projecting part (18) extending from the digging edge to a front end, the wear-resistant member (12) comprising converging walls (43, 45) converging to form a narrow front end (51), sidewalls (47, 49) and a socket (53), the socket (53) being defined by converging surfaces (55, 57) of the converging walls (43, 45) and side surfaces (59, 61) of the sidewalls (47, 49), the converging surfaces (55, 57) converging towards the narrow front end (51), characterized in that the socket (53) comprises a groove (65) formed on the projecting part (18) for receiving a rail (35), the groove (65) being inclined along a direction the same as that of one of the converging surfaces (55, 57).)
Now let's analyze the highlighted part of this claim:
"所述插口(53)包括一个形成在所述突出部(18)上的用于接收一凸轨(35)的凹槽(65)" (the socket (53) comprises a groove (65) formed on the projecting part (18) for receiving a rail (35)). From this expression, it can be determined that the socket (53) comprises a groove (65), the groove (65) is formed on the projecting part (18), and the groove is used for receiving a rail (35).
Figure 2 is shown below:
As shown in figure 2, the rail (35) is located on the projecting part (18), and the projecting part (18) is fitted to the narrow front end (51). Figure 5 illustrates the narrow front end (51), as follows:
As shown in figure 5, the socket (53) comprises the groove (65), but the groove (65) is not located on the projecting part (18).
Therefore, the expression "所述插口(53)包括一个形成在所述突出部(18)上的用于接收一凸轨(35)的凹槽(65)" (the socket (53) comprises a groove (65) formed on the projecting part (18) for receiving a rail (35)) does not make sense logically: as the socket (53) and the projecting part (18) are two independent components, it is impossible that the groove (65) is located both on the socket (53) and on the projecting part (18). Hence, an error has occurred during translation. The logical relationship should be that the socket (53) comprises a groove (65), the groove (65) is used for receiving a rail (35), and the rail (35) is formed on the projecting part (18). The erroneous translation gives the false understanding that the groove (65) is located on the projecting part (18), while the correct understanding is that the rail (35) is located on the projecting part (18).
Concerning this point, the patentee also holds the described opinion in the lawsuit:
"The plaintiff believes that the published text of this patent has an obvious error in this part, and believes that in the disclosure that "所述插口(53)包括一个形成在所述突出部(18)上的用于接收一凸轨(35)的凹槽(65)" (the socket (53) comprises a groove (65) formed on the projecting part (18) for receiving a rail (35)), the positional relationship between the projecting part (18) and the groove (65) is wrong, and the expression shall be corrected to be "所述插口（53）包括一个用于接收一形成在所述突出部（18）上的凸轨的凹槽（65）" (the socket (53) comprises a groove (65) for receiving a rail (35) formed on the projecting part (18)). The plaintiff requests the court to make modifications to this part to clearly explain the scope of this patent for the following reasons: 1. by thoroughly reading the text of this patent and especially considering the description thereof, a person of ordinary skill in the art would easily find this error and figure out the positional relationship between the two components; 2. this part is correctly expressed in the original text in foreign language and its translation of the international application of this involved patent submitted by the plaintiff according to the Patent Cooperation Treaty."
The court agrees with the opinions of the patentee:
"According to Article 4 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (II) (hereinafter referred to as Interpretation of Patent (II)), in spite that the claims, description or drawings are ambiguous to a person of ordinary skill in the art in terms of grammars, wordings, punctuations, graphics, symbols, etc., where said person of ordinary skill in the art could clearly arrive at only one unique understanding by reading the claims, description and drawings, the people's court shall make determination according to said unique understanding. In this case, by reading the claims, description and drawings of this patent, and referring to the original specification (English version and its translation) filed for PCT international application of this involved patent, a person of ordinary skill in the art could arrive at only one unique explanation, i.e. the technical feature "the rails are formed on the projecting part, and the socket comprises grooves for receiving rails", and claim 20 shall be amended to be "所述插口（53）包括一个用于接收一形成在所述突出部（18）上的凸轨的凹槽（65）" (the socket (53) comprises a groove (65) for receiving a rail (35) formed on the projecting part (18)) in order to correct the error. By comparison, the technical solution prosecuted for infringement includes the technical feature of claim 20 obtained after explanation and amendment. Therefore, the infringed technical solution includes all the necessary technical features defined in the claims of this involved patent, falling into the scope of protection of this involved patent."
It should be noted that neither the original international application nor the published patent application documents entering China include claim 20, and said claim was actually added in response to the notification of the office action during the substantive examination. It is hard to believe that such an obvious error could occur in the amendments to the claims during such an important procedure. One of the reasons might be that the foreign applicant did not understand Chinese and thus did not review the amended Chinese text, and the patent attorney did not pay much attention to this work.
Well, is there anything a foreign applicant can do to avoid such errors?
The simplest approach is to hire employees who read Chinese to review the patent documents. However, hiring more employees leads to increased costs. In this case, many foreign applicants adopt the method of entrusting agencies to handle the prosecution with full powers without checking the Chinese documents by themselves. To some extent, this is not because they have complete faith in agencies, but just because of the costs.
Here is a simple and economical method: input the amended claims in Chinese into an AI translation tool to get a text understandable to the foreign applicant, and in this way, the foreign applicant is at least able to find an obvious technical error in the Chinese claims. For example, we input the Chinese expression "所述插口(53)包括一个形成在所述突出部(18)上的用于接收一凸轨(35)的凹槽(65)" in the amended claim 20 into PremiWord Translation " http://www.premiword.com.cn/"
and obtained the following English translation:
The socket (53) comprises a groove (65) formed on the protrusion (18) for receiving a rail (35).
This English translation literally corresponds to the Chinese text in full. Therefore, as long as the foreign applicant takes a quick glance at this English translation, they can easily find the error in the Chinese version of claim 20.
Hence, an appropriate use of machine translation allows for reduced costs and improved accuracy of patent documents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
