Partial Translation Services in Complex Patent Cases

Patent Translation Services for IP Litigation

In a complex patent case, such as one dealing with technology, is a party required to provide a foreign language translation of the entire text or will a foreign language translation of the relevant sections suffice? In one such case, a party opted to submit the entire document in its original Japanese and, according to 37 CFR sect. 1.98(a), (c), provided an accurate, concise foreign language translation of all relevant portions. Furthermore, pointing to the Manual of Patent Examining Procedure (MPEP), one is not required to “discuss differences between the cited information and the claims”.

Although the court agreed with the party’s reasoning, it based its decision on a determination of witness credibility. Here, the expert witness was a Japanese native speaker. Based on the evidence and testimony, the Court found the witness to not be credible, stating that he knew a more complete foreign language translation of the document would decrease the chances of a patent being issued and, based on this understanding, “consciously decided which sections to reveal to the PTO” via a partial foreign language translation. Thus, the court indicated that although a complete foreign language translation is not needed, submitting partial translations will raise questions as to witness credibility.

To read our legal translation blog entry “What Trial Lawyers and Litigators Should Expect from a Deposition Interpreter and from On-Site Legal Translators”, click here.

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