Home | Databases | WorldLII | Search | Feedback Edited Legal Collections Data

Chisum, Donald S.; Farmer, Stacey J. --- "‘Lost in Translation’: The Legal Impact of Patent Translation Errors on Claim Scope" [2009] ELECD 245; in Takenka, Toshiko (ed), "Patent Law and Theory" (Edward Elgar Publishing, 2009)

Book Title: Patent Law and Theory

Editor(s): Takenka, Toshiko

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845424138

Section: Chapter 10

Section Title: ‘Lost in Translation’: The Legal Impact of Patent Translation Errors on Claim Scope

Author(s): Chisum, Donald S.; Farmer, Stacey J.

Number of pages: 34

Extract:

10 `Lost in translation': the legal impact of
patent translation errors on claim scope
Donald S. Chisum and Stacey J. Farmer



True art selects and paraphrases, but seldom gives a verbatim translation.
(Thomas Bailey Aldrich, American Poet (1836­1907))

Introduction
For an inventor who has just conceived of a groundbreaking invention, having
the potential to impact global markets on a grand scale, surely a visit to the
patent office ranks high on the `to-do' list. The inventor will certainly
endeavor to fully capture the inventive concept in a well-drafted patent appli-
cation. Suppose following the grant of the patent in the inventor's most prized
foreign market, the inventor realizes that the relevant patent specification
contains a fatal translation error, an error so significant that it reduces the
scope of the originally disclosed and claimed invention to an utterly meaning-
less conception.
Unfortunately, this situation occurs with some frequency as a patent appli-
cation travels across borders between the different national and regional patent
offices. An inventor may thus receive vastly different scopes of protection for
patents granted in individual countries for the same inventive concept, not
necessarily because these patent offices granted the patents under differing
patentability criteria ­ but because the translated patent specification happened
to include one or more translation errors that unduly narrowed the patent scope
despite all due care exercised by the translator. In other words, the inventive
concept became `lost in translation'.1
Alternatively, and probably less common, a translation error may result ...