Q) 102(a): Need to file foreign language translation

by patentbar on August 19, 2008 · 7 comments

in Exam Questions

One question asks whether you have to file an English translation of a foreign-language reference.

§ 1.98 Content of information disclosure statement.
[…]
(3)(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).

{ 7 comments… read them below or add one }

1 SNo Gravatar May 18, 2010 at 1:56 pm

English translation might not necessary for claiming a foreign priority (different from IDS; 1.98):

37 CFR 1.55(a)(4) (i): An English language translation of a non English language foreign application is not required except:

A) When the application is involved in an interference
B) When necessary to overcome the date of a reference relied upon by the examiner,
or

C) When specifically required by the examiner.
ii) If an English language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.

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2 SarahNo Gravatar May 18, 2011 at 4:27 pm

Got this question today 5/18/11.

You do NOT need to file a translation with your IDS unless asked.

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3 TheGhostOfBilskiNo Gravatar April 10, 2012 at 11:38 pm

ditto 4/6/2012

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4 RickyNo Gravatar November 2, 2011 at 2:29 pm

Here is my summary about English translation when claiming earlier priority:

1. When claiming a provisional app. NOT in English, English translation is required.

2. When claiming foreign priorty, it is not, as S said.

The rule above doesn’t make much sense to me, but it is what it is.

Sarah, what is exactly your question? I am not 100% sure about English translation requirement in IDS, quote from MPEP 600-141,– “(ii)A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in § 1.56(c).”

“readily availabe” makes me scratch my head.

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5 maggieNo Gravatar November 15, 2011 at 5:57 pm

You don’t have to supply translation when filing an IDS.

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6 maggieNo Gravatar November 15, 2011 at 11:49 pm

No translation is needed unless asked for:
1. Interference
2. IDS -normally only A concise explanation of the relevance if in non-english
3. When necessary to overcome the date of a reference relied upon by the examiner
4. Specifically requested by examiner

7 SolNo Gravatar April 7, 2012 at 8:21 pm

“1. When claiming a provisional app. NOT in English, English translation is required.”

The translation is required in the provisional not in the nonpro claiming benefit to the pro

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