Multilingual Legal Translation and US Patent Law

Legal Document Translation for U.S. Patent Lawyers

With Tesla Motors recently announcing its intent to make all its patents public, US patent law is very much in the news. As this is likely to raise a lot of patent-related questions – both from the US and abroad – we should take this opportunity for a little refresher on US patent law as it pertains to foreign language translation of patents.

As a rule of thumb, all US patents must either be filed in English or accompanied with an English language translation. However, there is an exception that allows for the quick filing of a patent coming from a foreign country. According to the US law and subsequent rules of practice, a provisional patent application can be filed in any language.

This exception is found in 37 CFR 1.52(d), which states: “If a provisional application is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application”.

That being said, it is important to remember that a provisional application will provide the filer with no benefits unless another application is later filed and unless it would properly claim priority to the provisional application. Another option is to convert the provisional application into a non-provisional application, although this is not recommended. More information on filing a priority claim can be found in 37 CFR 1.78(a)(5)(iv).

According to the law, if a previously filed provisional application is submitted in a language other than English and no foreign language translation into English (and accompanying statement showing that the translation is accurate) was previously filed, such a translation and statement must be added to the file. The applicant will be notified of this requirement and given a set period of time within which they must submit an English translation and statement of accuracy.

In summary, what this means is that one can file a provisional application in a foreign language. Once one later files a regular US patent application, you can go back and file a foreign language translation of the provisional application and a certification that the translation is accurate. Doing so will give you the benefit of the filing date of the provisional application in the subsequently filed regular application.

Of course the opposite is also true. Failure to timely file the required English translation and certification will result in the abandonment of the later filed application. Fair warning to anyone using a patent filing strategy that relies on the filing of US provisional applications in a foreign language as a way of claiming priority. The key, of course, is careful monitoring to ensure timely filing of the required foreign language translation and certifications.

To read about patent translation services pertaining to intellectual property in Sweden, click here; about intellectual property in Italy, click here; about intellectual property in India, click here; about intellectual property in Japan, click here; about intellectual property in South Korea, click here; and about intellectual property in France, click here.

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