Indefiniteness: Bad Translation/Lack Of Definition Redux – Intellectual Property – United States – Mondaq News Alerts

United States: Indefiniteness: Bad Translation/Lack Of Definition Redux

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I previously wrote about a Federal Circuit Opinion that affirmed
a lower court ruling that the term “half-liquid” was
indefinite despite the apparent mis-translation of the original
Italian term “semiliquido” https://www.lifesciencesipblog.com/indefiniteness-bad-translation-lack-of-definition-or-both.
On March 1, 2021, the losing party (IBSA Institut Biochimique,
S.A., Altergon, S.A., IBSA Pharma Inc.) filed a petition for writ
of certiorari in the U.S. Supreme Court and so I thought it would
be interesting to take another look at this case. Indeed, the
petitioner presented a novel question for review of the lower
courts’ decision of indefiniteness of the term at issue. The
question presented in the petition is:

Whether, pursuant to the United States’ obligations under
the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court
construing the claims of a U.S. patent may give no weight to a
foreign priority patent application, despite its submission to the
U.S. Patent & Trademark Office during prosecution of the
patent-in-question, because it is written in a foreign language and
exhibits minor differences from the U.S. patent resulting from a
translator’s judgment.

In essence the argument presented in the petition is that the
Federal Circuit decision improperly treated a foreign
applicant/inventor differently because of the translation error
(semiliquido apparently is correctly translated to semi-liquid not
half liquid) because the lower courts allegedly excluded the
understanding of the inventors’ in their native Italian. This
statement from page 5 is illustrative:

If the lower courts’ view holds, precedent will be set to
give foreign applications no weight in claim construction
proceedings, as the types of differences the courts found
dispositive here are common with translations, no matter the
foreign language. That rule would flatly contravene the requirement
that a foreign application be treated equally as a domestic one.
And the rule would have profound implications for foreign
applicants’ right to claim priority to their domestic
applications.

On April 5, 2021, the U.S. Supreme Court denied, without
explanation, the petition. My commentary on the case remains:
humans make errors so pay careful attention to translations,
particularly to important features of the invention. Despite the
petitioner’s arguments here, as most patent practitioners
should be aware there are various times during the life cycle of a
patent application/patent when corrections can be made to the
specification and/or claims, e.g., after filing, during
prosecution, before issuance, and post-issuance via certificates of
correction (for relatively minor errors) and reissues. I am not
aware of any instances where foreign applicants have any
disadvantages in these types of correction procedures at the
USPTO. 

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