Lost in Translation

Patent terminology needs to be precise.  It is important that when filing a patent in a foreign country, for example, in the national phase of a PCT application, each word of the original specification is accurately translated, and the scope of the invention is maintained.  When translating the original specification (e.g. English) into another language (e.g. Chinese), a word-by-word translation is usually applied, especially when translating the claim language.  However, not each English word has its exact counterpart in Chinese. Sometimes, subtle difference in the definition may lead to Examiner rejections.

My least favorite English word for the month is “schedule”, as in “schedule a clutch operation”.  It is clear in English that when one schedules something, such as scheduling a meeting, you select a time for the meeting.  Thus, when one schedules a clutch operation, the timing of such operation is determined.  In the Chinese specification, a Chinese agent might translate “schedule” into the Chinese word “计划”.  The translation is totally legitimate – one that you can find in any English-Chinese dictionary.  However, there is subtle difference between the two words, the English word “schedule” means “to plan (something) at a certain time”, while the direct translation of the Chinese word “计划” is “plan”.  So you see where the issue is: by translating “schedule” to “计划”, the translation loses the “time” element.  As a result, the Chinese Examiner can reject the Chinese claim for lack of clarity.

When obvious translation errors happen in the national phase of the PCT application, the error may be corrected during patent prosecution by referring back to the original PCT application.  However, when the error is not so obvious, such as the example above, more details may need to be added to the claim language for clarification. 

To avoid the translation issue, several strategies may be applied when drafting the original specification.  For example, the specification should have sufficient details to support the relatively abstract or higher level concept disclosed in the claim.  The details may include flow charts and timelines.  Further, it may be helpful to express the same concept using different wording at intermediate levels of abstraction.  Lastly, always use terminology that has been widely accepted in the field.