Text Versions in Various Countries ©(Part I of II)
Field of Endeavor
The present article relates to text versions of the patent specification, and more particularly to those in different countries.
The global village has ever been a term being fascinating, worthy of worship and deserving careful study regardless of kinds of vigorous protests in various international trade-related meetings. It is totally moving enough by simply imagining that people of different mother languages, religions and skin color treat one another like country folks. According to the traditional Chinese philosophy or Buddhistical theory, every physical object or even a single phenomenon must have its own birth and death or ebb and flow. Although the song ¡§We Are the World¡¨ is not often heard here and there nowadays or there might be a fading globalization tide currently, the global village is still a term which is of enough fascination and capable or arousing emotional motion. This might originate from the fact that the global village is the ultimate goal or the real ideal to the marrow for the human society in the deep sea of our souls.
It appears if there really is a global village in which there is no unnecessary or trouble-causing country boundary, there must be a unified patent law in this world in advance since it seems that the patent law is the most harmonized aspect in the law sector of the human society.
It has been known that harmonization might have been or be or will be a great idea as is reflected by past trilateral efforts among USPTO, EPO and JPO in promoting harmonization of the patent practices by means of which some fruits, e.g. 20-year patent term adopted by the USPTO, have been generated. It would appear that after harmonization, the daily life for patent practitioners might become easier because it is readily understandable or recognizable for a practitioner in a first specific country about the patent practices or scenarios happening in a second specific country for a specific application under prosecution.
Nevertheless, it might become dull and boring if greater harmonization is reached since the life might not be so colorful if no differences are found among local practices or countries, which might explain or be well demonstrated by the fact that a lot of people love to travel to experience different cultures or to receive cultural shocks to advance themselves somehow through potential self-education. More importantly, if much harmonization is arrived at, there are less opportunities for a foreign client to solicit helps locally, which might mean a lesser local job opportunity, which in turn might have become a problem everywhere in the world.
Although whether we or others are pros or cons of the global village is irrelevant to this article, as a patent practitioner involving international practices, we are facing issues, to be discussed hereinafter, relating to harmonization, which is a term having some affairs or something to do with the global village, which is a term, in its ideal extent, referred to a situation where there are no unnecessary or trouble-causing distinction, discrimination or differences in respect of either one of law, culture and beliefs in our daily patent practice lives.
Perhaps, we should not go further to mention what are not closely related to the real topic of this article and should head toward discussing what are most intended to be dealt with.
Summary of Developments
As is well-known, before a patent becomes enforceable as some kind of rights, there must be a patent specification. Although the specification might have different versions during the prosecution, in practice, it does not have any change during the prosecution history. Unlike the infrequent or unusual precedents of changes in the specification, it is quite frequent or common to experience there are different versions of claims during the prosecution, either in view of the prior art to narrow down the original claims or stay away the anticipation of the prior art or of the newly identified unclaimed subject matter(s) in the original specification to be put in an additional claim set or a divisional application.
Regardless of the involvement of either the description part in the specification or the claim portion, there commonly are issues of different versions of texts causing some potential issues, which generally belong to the following categories:
1. New Matter: This category might not cause a big dispute at least because no one will have any intention to deny that there could not be a new matter during the prosecution of a specific patent. Nevertheless, there still are issues as to whether there exist a new matter in a specific amendment, deletion and/or addition;
2. Invention Base: Due to the language issue, it might be controversial as to which text should serve as the basis for examination, interpretation or judgment of the involved invention. The controversial extent might become more serious if the time periods for different stages of, e.g. filing, examination or infringement are taken into consideration;
3. Permitted Allowance: Normally, everything has an allowance either in terms of macroscopic or microscopic viewpoint. It might be problematic if an amendment in a first country is legal but illegal in a second country, or more serious if the amendment has a first meaning in the first country but a second meaning in the second country. What should we do under the above situation? Hereinafter, we try to deal with the above situation either superficially or in details, to the largest possible extent, although we might not be able to provide answers to all of the relevant issues.
Article 3(2) of the ROC Patent Law Enforcement Rule partly provides that ¡§documents for filing patent or handling patent-related matters shall be in Chinese.¡¨ Through this provision, we know unless otherwise provided, patent-related documents should be in Chinese, which might mean the Chinese text will be the sole discretion as to advantages and disadvantages in interpretation or construction of a specific patent application. Article 25(4) of ROC Patent Law stipulates that ¡§if specification and required drawing in the preceding paragraph are submitted in a foreign language text and Chinese translations thereof have been supplemented within the period specified by the patent-dedicated office, the filing date shall be the date on which the foreign language text is submitted. While not supplemented within the specified period, the application shall not be entertained provided if the supplement has been effected before an action in this connection is rendered, the filing date shall be the supplementing date,¡¨ with which we would like to add and/or reason as follows:
1. As is a well-established international practice, in Taiwan, ROC, specification and required drawing can be submitted in a foreign language text to provisionally secure a filing date. In the priority system under the Paris Convention which has been well practiced, it is not seldom to find that a foreign filing is made on or near the deadline. The human being is an extremely subtle and complicated animal and might be driven to exercise some rational or irrational decisions if there is a time factor, e.g. the deadline. Since it becomes somehow unrecoverable after the deadline, some queer thoughts might emerge from one¡¦s potential conscience. Since these thoughts and the resulting decisions might become spectacular, we cannot but respect such reality to untiringly protect or grant such a provisional filing date. To safeguard this human right, it has nearly been internationally adopted that a foreign text is good enough to secure a filing date (where Mainland China is an exception);
2. If Chinese translations thereof have been supplemented within the period specified by the patent-dedicated office, the provisional filing date shall officially become the local filing date. Although the provisional filing date has then been accorded official, it is not the end of problems. Rather, it initiates kinds of issues to be discussed hereinafter, mainly through the subject matter discrepancy between texts of different languages, caused by translation;
3. If Chinese translations are not supplemented within the specified period, the application shall not be entertained and become withdrawn, which, again indicates that the Chinese text is the basic player in construing the protecting scope of a patent. Issues like what the role the original language will play, what kinds of relation between different languages are, how to resolve disputes ensuing therefrom will arise;
4. The above-mentioned provision nonetheless adds that although it has been determined not to entertain the application due to lack of the statutory Chinese text, if the supplement has been effected before a rejection action in this connection is rendered, the filing date shall be the date the applicant supplements the Chinese text in order to compromise between the law authority and the private interests of the applicant.
In the Patent Examination Guidelines, the IPO adds that since the filing date is the basis for judging whether a specific application has novelty and non-obviousness and determining the filing priority, it is critical to decide the filing date, that in as much as the filing date is secured by the foreign text, the supplemented Chinese text cannot go beyond the foreign text, and that the foreign text shall not be amended or supplemented in order to retain the principle that the patentability under the patent system is decided on the basis of the filing date. Although there should be no one who desires to negate the criticality of the filing date and challenges the loyalty to the rule of new matter prohibition, we do have some comments here:
1. Although the Guidelines mention that the foreign text should not be amended or supplemented, which must originate from the new matter prohibition rule, we might want to ascertain exactly:
A. Whether our patent practices really do not allow any amendment and supplementation to the foreign text? This is because if the amendment or supplement is simply made to root out unclear matter without introducing any new matter, we foresee no reason why this should be banned. Further, as a matter of fact, or in practices, we can submit amendment to this effect;
B. Whether this means that whenever there is an amendment to the Chinese text, there is no necessity to submit the corresponding amended foreign text in order to keep the above observance. To this end:
a. If the amended foreign text is needed, it will cause much problem to the local patent office and the applicant since it means there are considerations for issues regarding the translation cost and the translation reliability. As is exemplarily evidenced to be problematic, the applicant complains a lot about the required translation of the priority documents in some countries;
b. If not, there might be instances of doubts or enquiries as to whether there is a new matter or what the real disclosure of the foreign text is;
c. In practices, it is up to the discretion of the applicant whether an amended foreign text is to be submitted with the Patent Office, i.e. the IPO. Specifically, since the prosecution of a local patent application is based on the submitted Chinese version, even if an amended foreign text is submitted, the amended foreign text can only serve as a reference, which means:
I. Upon examination, the examiner may or may not refer to the amended foreign text;
II. In litigation, the amended foreign text may or may not play a role. This is because while in the first instance, it cannot play a role because the accorded patent rights shall base on the statutory Chinese text whereas in the second instance, it surely can play a role because it should act as a reference in some situation, e.g. one where an unclear point is to be rectified.
2. It would appear that the above Guidelines suggest that the reason why the foreign text cannot be amended or supplemented is to observe the rule that the patentability depends on the filing date. If the new matter prohibition rule has been unexceptionally inherent in one¡¦s mind, it might not be necessary to interrelate amendment or supplement with patentability or filing date of a specific application. The sole discretion as to whether amendment or supplement should be allowed should be whether there is a violation of the new matter prohibition rule. Specifically, if there is introduced a new matter, it should be readily clear that no amendment or supplement could be made. Nevertheless, if there is superficially no new matter to be caused, we might need to consider the following:
A. It might be possible there really is a new matter problem even though it is externally apparent there is no new matter introduced;
B. If there really is not a new matter, it naturally leads to the result that there is no necessity to curb the amendment or supplement of the foreign text
3. It would appear to be natural for the Guidelines to take that in as much as the filing date is secured by the foreign text, the supplemented Chinese text, regardless of whether there is an amendment, cannot go beyond the foreign text.
The Guidelines go on to add that if the applicant still selects to prosecute a patent application based on an amended foreign text without the first approval on the amendments by the IPO but supplements the Chinese text for the amended foreign text, the filing date shall be the date on which the amended foreign text is submitted. We can here notice an infrequent flexibility of our IPO because we cannot find a stubbornness. Specifically, we normally encounter in the past that IPO will render its rejection every when an applicant cannot explicitly follow what the law and/or regulation provide. In the present situation which normally occurs when there is an amendment having gone beyond the original disclosure, it might be possible that a lot of Patent Offices in various countries might reject to entertain the application with amendments or reject to accept the amendment so that the applicant can only accept to prosecute the application with the original text or try to file another application with the amendment. According to our IPO, the applicant can opt to prosecute an application with the amendment but need to accept a later filing date which is the date on which the amendment going beyond the original disclosure is submitted to the IPO. It is believed this is a good measure for reference by other countries.
The Guidelines further add that the comparison base for judging whether the supplement or amendment goes beyond the original specification and drawings is the Chinese text which secures the filing date. Accordingly, what is supplemented in the Chinese text must be what the foreign text has disclosed. The logic conjunction between the former two sentences is not very clear or readily apparent. Nevertheless, it would appear Guidelines intend to state:
1. The Chinese text is the base for prosecution (and infringement judgment);
2. Whether the supplement or amendment after the filing date has a new matter should be decided by comparing with the Chinese text on which the application is based to be accorded with its filing date;
3. Nevertheless, any supplement or amendment after the filing date or contents of the Chinese text shall find their bases in the original foreign text.
Guidelines further state that when the supplemented Chinese text goes beyond the disclosure of the foreign text due to translation error, missing or other factors and the prescribed term for supplement of the Chinese text has expired, it is not permissible to submit a replacing second version of Chinese text by withdrawing the first Chinese text version and a retranslation is required in order to ensure the contents will not go beyond the foreign text. If the correct Chinese version is supplemented before an action is made, the date on which the foreign text is submitted may serve as the filing date. If the applicant still selects to prosecute its patent based on the Chinese text which goes beyond the foreign text, or cannot timely supplement the correct Chinese text as notified, the date on which the Chinese text going beyond the foreign text is submitted shall be the filing date. We can thus know in our practices:
1. Guidelines take those reasons which will cause a supplemented Chinese text goes beyond the disclosure of the foreign text include translation error, missing or other factors. Nevertheless, it is believed that the main origin for a supplemented Chinese text going beyond the original disclosure of the foreign text comes from added descriptions or additional claims in the supplemented Chinese text which cannot find supports from the original foreign disclosure. It is further believed that reasons which cause added descriptions or additional claims to become necessary might include:
A. For clarity: So far as the added contents are concerned, this might include or be categorized into two types, i.e. one belonging to the acceptable clarification while the other one belonging to the banned new matter;
B. For better protection: Although better protection for a patent application needs not appear in terms of the claims since a sound specification or description could help interpret a better protecting scope, better protection on a specific technique based on a patent application normally is substantiated through the presentation of a new claim or claim set which will not involve a new matter if derivable from the original foreign text or might relate to a new matter if not derivable therefrom and is thus banned.
2. When the supplemented Chinese text goes beyond the disclosure of the foreign text, a retranslation is required in order to ensure the contents will not go beyond the foreign text. In this regard:
A. As is known, most of countries will examine an application to the formality first and then to the substantiality only after a relatively long period, e.g. one year. Whether or not there is the fact that the supplemented Chinese text goes beyond the disclosure of the foreign text is normally decided in the examination process to the substantiality, which happens well after the prescribed term for supplement of the Chinese text has expired, which, under Taiwan practices, is 6 months to the maximum extent from the local filing date. Accordingly, whenever it is ascertained that the supplemented Chinese text goes beyond the foreign text disclosure, the prescribed term for supplementing the Chinese text must have expired.
B. There might be a serious question as to how and why TIPO will find out the supplemented Chinese text goes beyond the disclosure of the foreign text since it has been made clear that the patent prosecution in Taiwan shall be based on the Chinese text. If this really is the case, the examiner will not normally review the foreign text, which in turn will make it impossible to find out whether or not the supplemented Chinese text goes beyond the foreign text disclosure. This logic discrepancy might be solved, scrutinized and/or discussed as follows:
a. Before substantive examination, the examiner must compare the foreign text and the Chinese text to determine whether the supplemented Chinese text is generally in agreement with the foreign text. Although this might be a good idea, it would appear no country adopts such a practice since it would never be effective, efficient, cost-effective or even necessary;
b. Since most countries normally do not do the comparisons between a foreign text and a text in a local language, it might be uneasy to reveal or find out there is an issue of going beyond an original disclosure. It would thus be strange why and how the examiners in TIPO would have the opportunities to ascertain a supplemented Chinese text is going beyond the foreign text disclosure since it has been provided that the prosecution base is the Chinese text. In practice, since a lot of people went abroad for graduate studies and English study is quite popular in Taiwan, there are a huge number of people who can read a foreign language, especially the English (or German or Japanese) so that some examiners are somehow interested to review the foreign text although they do know they shall go back to the supplemented Chinese text for examination. Accordingly, we might encounter once in a while in an office action that a learned examiner requires that some translations should be corrected in a specific way or even a retranslation is required. Such examiner is respectful since s/he pays more energies in examining the application and might be welcome by a foreign applicant due to the function of double check but might bring uncomfortableness to the local agent since every proud translator might have his/her own style in preparing the translation.
c. Perhaps, the best or most reasonable opportunity to find out whether there is a supplemented Chinese text which has gone beyond the disclosure of the foreign text is at the time when there is an infringement or a litigation in which the opponent will try every avenue to find out whether there is any defect or flaw possibly existent to attack a patent in issue. Nevertheless, at this time point, there has already been no chance to shift the filing date since a patent has been granted, or to require a retranslation since it will become terrifying in thinking how the patent gets matured through prosecuting a Chinese text requiring retranslation. Accordingly, it would appear that there will be rare instances that a supplemented Chinese text is found going beyond the foreign text disclosure.
d. Accordingly, whenever an examiner requires a retranslation, it would normally mean that the applicant might be very lucky or otherwise to have its application be examined by a careful and enthusiastic examiner requiring contents in the supplemented Chinese text closely correspond to or not go beyond the foreign text.
C. It might be hard to distinguish the sentence ¡§it is not permissible to submit a replacing second version of Chinese text by withdrawing the first Chinese text version¡¨ over ¡§a retranslation is required,¡¨ because:
a. Why a retranslation is not a replacing second version of Chinese text?
b. If a retranslation is acceptable, why a replacing second version is not permissible?
c. As is known, whenever it is found going beyond the foreign text disclosure or requiring a retranslation, there normally is an unsmooth Chinese text by which the examiner is motivated to read the foreign text or to find out what is happening. If a retranslation is required or acceptable due to the fact that the initial translation has errors, missed passages or other factors, it would mean an amended second version or a retranslation is acceptable. Nevertheless, a second version which is newly prepared according to the invention or the technique in the original foreign text rather than a retranslation of the original foreign text itself is not acceptable. Such interpretation might thus make the sentence in issue reasonable.
d. Also, we need to discuss why it appears that Guidelines reject withdrawing the first Chinese text version. The reason might be that as long as the initial Chinese version is withdrawn, the initial Chinese text is no more in record in theory. Accordingly, if we cannot keep track of the initial Chinese version, the file history might be somehow incomplete so that it would appear that Guidelines are saying as long as the first Chinese text can be kept in track in the official record, a second version, regardless of whether it is termed as a retranslation, to reflect what the initial foreign text is referred to is acceptable and satisfactory.
3. If the correct Chinese version is supplemented before an action is made, the date on which the foreign text is submitted may serve as the filing date. Even if a Chinese text, a retranslation or a correct Chinese version is not submitted within the maximum extended 6-month period, as long as a rejection action has not been rendered, the applicant can still submit the correct Chinese text in order to secure the filing date at the date on which the foreign text is submitted. Every grace measure is normally welcome by either the applicant or an attorney.
4. If a Chinese text goes beyond the foreign text disclosure, the applicant can select to go back to the original scope by submitting a retranslation as above-described. Alternatively, if the applicant still selects to prosecute its patent based on the Chinese text which goes beyond the foreign text, it would thus be clear from the above discussions that the date on which the Chinese text going beyond the foreign text is submitted shall be the filing date. It is interesting to note here again that a supplemented Chinese text can go beyond the original foreign text as long as the applicant can accept that the filing date of the involved application be shifted to a later date. This, again, is a very flexible measure and might be taken as a valuable reference by other countries where most countries might straightforwardly reject the application. Also, this can firmly denote that the prosecution of a Taiwan patent is based on the Chinese text rather than the foreign text. Likewise, in the situation that if the applicant cannot timely supplement the correct Chinese text as notified, the same conclusion will thus apply.
Guidelines finalize in this respect that the applicant shall submit concrete reasons if the supplemented Chinese text is the correct Chinese text when the original Chinese text is a wrong translation for the foreign text. For example, a retranslation due to wrong translation of terms shall be demonstrated through submission of, e.g. dictionary or relevant materials originating from National Compiling House. It would appear from this finality that:
1. If in the original Chinese text, there is a wrong translation for the foreign text, the applicant shall submit concrete reasons before it can assert that the supplemented Chinese text is the correct Chinese text. Accordingly, whether a supplemented Chinese text is to be submitted is not optional to an applicant. Rather, before the applicant can submit a supplemented Chinese text, it should have been prepared to demonstrate how and why there is an inadvertent wrong translation for the foreign text.
2. As an example, where a retranslation is required due to wrong translation of proper terms, the applicant could so demonstrate through the submission of documentation, e.g. dictionary or relevant materials originating from National Compiling House. Through such demonstration, the chance that an applicant tries to add new descriptions or new matter into the specification might be deterred.
Issues involved in this article might become more apparent and focused through the following discussions to the following topics.
Brief Items to be Discussed for Presenting Issues We Concern
* How many times there can be a new text version?
*Whether different text versions either of specification or claims involve a new matter?
*If the filing version and the grant version are different, which version will govern in the enforcement stage?
*Will a different text in another country influence the interpretation of the version in a specific country?
*Is it necessary and/or desirable and/or possible to harmonize the world patent examination in various countries?
*Is it necessary and/or desirable and/or possible to unify the final claim text in various countries?
*Is it necessary and/or desirable and/or possible to harmonize and/or unify the patent practices somehow, e.g. by initiating the requirements of Information Disclosure Statement?
*For a foreign applicant who secures a filing date with a specification in a specific original language, is it required to submit for every amendment an amendment text in the original language?
*Which one of texts in the local language and the original language shall be based for examination or interpretation or determination of infringement in which opportunity?
*What is the role the text in the original language should play in which opportunity, e.g. examination, infringement analysis or trial?
* How many times there can be a new text version?
Although as above-described, according to our IPO, the applicant can opt to prosecute an application with any kind of amendment to be embodied either in the Chinese text or the foreign text even beyond the original foreign text disclosure as long as it is prepared to accept a later filing date which is the date on which the amendment going beyond the original disclosure is submitted to the IPO, we would like to discuss more about this practice as follows:
1. The above practice might be a good measure because:
A. The applicant need not be bothered to refile an application although the applicant will lose the benefits of enjoying the original filing date. Accordingly, a continuation-in-part (CIP) according to the US practice is a great invention in the patent system. Since the inner priority system can only play some role like the CIP practice, we are still wondering why a lot of countries including ours have not adopted such a great system;
B. The applicant need not pay the filing fee one more time although the filing fee might be trivial when compared to the importance of patent grant or significant amendment.
2. Although the above practices might be not good enough when compared to the US CIP practices, countries having no comparable US CIP practices might take them for reference even already having the inner priority system.
3. The above practice has the following limitations that if the excessive text is the foreign one, the above remarks might always apply but if it is the Chinese one, there should be no other opportunities for submitting a re-supplemented Chinese text after the supplemented Chinese text by which a new filing date is accorded has been submitted.
Although a new Chinese text can be presented regardless of whether there is an amendment containing a new matter as long as the applicant is prepared to accept a delayed filing date, it does not mean the chance for submitting a supplemented Chinese text is unlimited as above-described. Specifically, in the case of repetitively submitting a newly updated foreign text, the annoying effect might only relate to a newly delayed filing date but the time period to submit the supplemented Chinese text will remain the date on which six months after the last updated foreign text is submitted expires. Nevertheless, in the case of trying to repetitively submit a newly updated Chinese text, the opportunity for such submission will terminate on the date on which six months after the foreign text is submitted expires. Specifically, according to the above discussions about Guidelines:
1. The time when it can be determined that the supplemented Chinese text goes beyond the original foreign text will be far after the original filing date since such substantive matter can only be revealed in the substantive examination stage;
2. According to Guidelines, although the applicant can repetitively submit an amended foreign text at the sacrifice of the delayed filing date, it does not have many opportunities to submit an amended Chinese text since demonstration as to how and why there is introduced no new matter is required, which might not be very easy;
3. Accordingly, if a supplemented Chinese text going beyond the original foreign text disclosure is desired at the sacrifice of the original filing date, the supplemented Chinese text shall add as much as the applicant desires in order to secure an earlier delayed filing date for the new matter contents with the recognition that it might be troublesome to submit a new Chinese text intended for correcting the supplementing Chinese text since there is required a demonstration to this effect.
Although the above might not be the real concerns for the current topic, which should have been referred to a situation that since there are unclear issues or descriptions in the original disclosure or specification, a second new text is still intended although there has been submitted a first text intentionally directed to rectify the unclear issues or descriptions but failing to fully solve unclear issues or descriptions, the above discussions could serve as excellent bases for reference to the really intended topic. Specifically, although an applicant can unlimitedly submit a newer text in order to resolve unclear issues or descriptions in theory without introducing therein a new matter, it would be uneasy for the applicant to convince others how and why it is necessary for it to consecutively submit a newer text simply to the above effect without any intention to cause introduced a new matter or it is impossible for it to submit a correct text once and for all. Accordingly, although the time for submitting a newer text is not statutorily limited, the time for such submission should be reduced to the largest extent in order to unfailingly secure the filing date without much trouble.