By Tyler Young
Do you ever wish the process for filing a patent application were a little more uniform from one country to the next? If so, you’re probably not alone. For those who file, the requirements can be confusing and inconsistent across jurisdictions.
We’ve compiled eleven of the world’s strangest translation-related filing requirements. These requirements are certainly unusual, if not challenging. We also provide some helpful strategies for dealing with them.
Many countries allow patent applications to be filed in any language initially, as long as the application is translated into a country’s official language in short order. (No more than two official languages is the norm for most jurisdictions.)
- The strange: Although Iceland’s only official language is Icelandic (spoken by 92% of its citizenry), the country’s patent office accepts filing in five different languages, more than in any other country. The full text can be in either Icelandic, English, Danish, Swedish, or Norwegian. But here’s another hitch: The claims and abstract need to be submitted in Icelandic.
- The strategy: Yes, any of the five languages are accepted at filing; however, an English or Icelandic translation must be submitted at grant. To save filing another translation, you can simplify the process by going with English or Icelandic from the start.
Filing a patent translation is usually a legally binding exercise. That means an incorrect translation could ultimately change a patent’s scope and diminish enforceability through a priority filing. In this unfortunate scenario, your competitor could obtain a license to perpetually infringe on your pending patent simply because of an incorrect translation.
- The strange: Sweden has opted out of legally binding translations. In the event that a translation is found to be incorrect, the courts will rule based on the wording of the priority filing. This unusual rule makes translation a mere formality.
- The strategy: Even if your priority filing wasn’t filed in English, translate and file in English anyway. You’ll have an edge on filing in other countries because it’s much easier to find an English-to-Chinese translator, for example, than a Swedish-to-Chinese one.
Virtually all patent offices grant a patent for the geographic area in which they claim jurisdiction, be it a patent for national or regional (like the EPO, GCC, or ARIPO) protection. In other words, national patent offices grant patents just for the corresponding nation, and regional patent offices do the same for their region.
- The strange: A patent granted at Switzerland’s national patent office also includes a patent grant in Liechtenstein. That’s right, two for the price of one!
- The strategy: Since it’s impossible to file for a patent in either Switzerland or Liechtenstein separately (as both are inextricably connected, even by annuity), you literally have a buy-one-get-one-free deal you can’t avoid if you tried.
4) Sierra Leone
Patent law is enacted by local government, so filing patent applications can be legally acknowledged and defensible.
- The strange: Prior to 2012, patents in Sierra Leone could be obtained through the re-registration of patents granted or validated in the United Kingdom. Unfortunately, the Patents and Industrial Designs Act of 2012 ended that practice. While the country’s patent laws remain in place and patent applications are still accepted, no regulations currently exist and no Registrar is appointed to process filed applications. As a result, patent applications can be lodged in Sierra Leone on the basis that they will be dealt with once regulations are in place.
- The strategy: Use a loophole to receive a patent in Sierra Leone through the African Regional Intellectual Property Organization (ARIPO). As Sierra Leone is a member of the regional body, any patent granted by ARIPO is also covered in Sierra Leone. Section 49 of the Patents and Industrial Designs Act of 2012 provides that the Registrar can communicate a refusal of an ARIPO designation; however, since there is no Registrar for Sierra Leone, the patent is accepted by default.
5) United Arab Emirates
Most patent offices either accept patent applications in one language or require applicants to choose from among multiple acceptable languages for filing. At the translation deadline, however, only one final language is usually required.
- The strange: The United Arab Emirates (UAE) is unique in that it requires both English and Arabic at filing. Most international applicants will already have an English translation of their application; but in the event that the priority filing is in another language, a rare two translations will be due at the UAE filing deadline.
- The strategy: While you must to include both Arabic and English versions of your application at filing with the UAE, consider instead filing regionally through the Gulf Cooperation Council (GCC). The GCC also requires both Arabic and English, but it expands your protection beyond the UAE to other nearby countries with similar markets, like Saudi Arabia, Oman, Kuwait, Bahrain, and Qatar. Keep in mind, however, that a GCC patent is a direct filing and is therefore due at 12, not at 30 or 31, months.
Many countries have more than one official language. Typically, the resident patent office accepts patent applications in those languages. For example, even if you speak French but live in the German-speaking part of a country, a French translation is still acceptable.
- The strange: If your company is located in Belgium, you must file in the predominant language of that particular region. For example, a company based out of northern Belgium would need to file in Dutch, while a French translation would be required for a company from southern Belgium. There’s even a small German-speaking region bordering Germany in which only a German translation is acceptable.
- The strategy: Good news: Unless your company is based in Belgium, this statute doesn’t affect you. However, if your company’s Belgian operation writes and files a patent in-country, make sure the patent is written in the region’s “official language” or, oddly enough, you will need a translation for the priority filing.
Jurisdictional language requirements are usually standard. Patent offices publish a list of languages acceptable at filing along with those accepted later at the translation deadline. If a language is listed by a patent office as acceptable, it’s generally as sufficient as any other.
- The strange: Although the patent office in Burundi lists Kirundi, French, and English as acceptable languages, the office’s intellectual property department has made clear that its examiners are more comfortable with French.
- The strategy: Despite the temptation to use English, provide a French translation. True, examiners are expected to be objective in their decisions, but why not help them feel as comfortable as possible when the fate of your requested protection hangs in the balance?
Patent offices typically ask that a full translation of a patent application be submitted by either the filing or translation deadline (frequently called an “extension”). If you’re going to use an extension, the entire translated application will be due at the later date. If an extension isn’t going to be used or isn’t available, the full translation (where required) is due at the standard filing deadline instead.
- The strange: Brazil is one of the few countries that requires only a partial translation at filing—namely, the abstract, claims, and title. By making a modest initial investment to obtain the partial translation, the applicant secures a filing date and simply delays the need to file the full translation for up to 60 days.
- The strategy: If you’re willing to pay the nominal extension fee and—more importantly—the additional time would improve the quality of the translation, take advantage of the additional 60 days. It’s better to get it right the first (or in this case, the second) time.
9) South Africa
Deadline extensions for submitting a patent translation are commonly offered around the world. Principally, the goal is to allow inventors additional time to secure a proper translation, if needed. Depending on the size of the application, a thorough translation consistent with the source patent should only take a few weeks to produce.
- The strange: South Africa offers a generous three-month extension to filers who need time to improve translation quality. The law is written somewhat ambiguously, however. Some interpret the law to mean that a six-month extension is permitted. It isn’t clearly spelled out.
- The strategy: Three months is already a very generous amount of time to complete a thorough and accurate translation of your application into one of South Africa’s official languages (English, Afrikaans, Zulu, or Xhosa). So, unless you have an extenuating circumstance in which three months won’t suffice, don’t flirt with risking rejection of your application because an examiner doesn’t interpret the law the same way you do.
Traditionally, jurisdictions offer a single translation extension (2-3 months), which almost always costs nothing to take advantage of.
- The strange: Taiwan prefers to be generous in its translation requirements, perhaps more so than any other jurisdiction in the world. A four-month extension is available to produce a Traditional Chinese translation. Not enough? An additional two months can be tacked on, providing up to six months to complete the job. Both of these extensions are also free!
- The strategy: While six months of free translation deadline extensions may seem quite generous, Taiwan’s total translation time (from the priority date) in comparison to other jurisdictions tells a different story. In fact, when viewed from that lens, Taiwan’s translation time (including extensions) actually trails that of every other country offering a Patent Cooperation Treaty (PCT) pathway. Taiwan’s filing deadline is 12 months through the World Trade Organization (WTO). The more commonly used PCT solution provides at least 30 months to file and translate. To put this in perspective, the final translation time for Taiwan, including all available extensions, is 18 months from the priority date—a far cry from Germany’s 30 months total with no available extensions.
Member states of the European Patent Organization traditionally also allow a direct PCT filing to each country’s respective national patent office as an alternative to validation after an European Patent Office (EPO) grant. It usually makes more sense to file a national PCT application if your plan is to file in less than five European countries.
- The strange: France opted out of PCT filings nationally, but not internationally. Direct filings are still possible, but in order to take advantage of the generous PCT time table, France requires a PCT filing through the EPO first. Once complete, France grants a post-examination validation automatically.
- The strategy: If you can wait until after an EPO grant to enforce protection in France, file with the EPO, wait for the grant, and then translate only the claims into French and German (assuming you submitted a European patent application in English). If you plan on venturing outside of France as part of your strategy, validating in additional countries is also a cost effective way to protect your invention throughout Europe.
We’ve shared some of the most bizarre filing requirements we could find, but our list is certainly not exhaustive. What weird requirements have you come across that we’ve overlooked?