Patent prosecution is global in nature. Successful patent applications must include an invention that is new and inventive over the state of the art, no matter the language. With the proliferation of machine translations, foreign language prior art is more common than ever. Today we consider a dispute over a machine translation’s accuracy from both the substantive and procedural point of view.
An example can be seen from the prosecution of application 15/052,514 to Telefonaktiebolaget LM Ericsson. The examiner relied repeatedly on a translation of a foreign patent document Zhang (CN 103188663A). However, the translation was not only incorrect, but key portions cited by the examiner were virtually incomprehensible. That did not stop the examiner from forcing the applicant to appeal. Then, only after the appeal brief was filed did the examiner provide a proper human translation, which was then relied on by the examiner in the Answer. Ericsson objected to the timing of this new evidence in their reply, without fully addressing it. In the end, Ericsson’s strategy was unsuccessful on both fronts, not only did the PTAB rely on the human translation, it faulted Ericsson for trying to exclude it without following proper procedures on new grounds of rejection.
Turning to the first issue, an applicant can force/request the examiner to obtain a proper translation. MPEP § 2120 (II) explains that:
Examiners may rely on a machine translation of a foreign language document unless the machine translation is not of sufficient quality to be adequate evidence of the contents of the document. See In re Orbital Technologies Corporation, 603 Fed. App’x 924, 932 (Fed. Cir. 2015). A request by the applicant for the examiner to obtain a human language translation should be granted if the applicant provides evidence (e.g., a translation inconsistent with the machine translation) showing the machine translation does not accurately represent the document’s contents.
Here we see that the burden is on the applicant to provide evidence (e.g., a translation inconsistent with the machine translation) showing the machine translation does not accurately represent the document’s contents. Ericsson did so here, providing another machine translation (a Google translation) as well as copy of counterpart application EP 3319352 A1. The latter evidence here is a common way to obtain free publically available professional translations of a foreign document that serves as the basis of an EP application. This forces the examiner to then obtain a proper translation. However, the MPEP provides no specifics on timing.
Here, the examiner did not provide such proper translation until after the Applicant filed their appeal brief. The caused some problems as Ericsson’s primary arguments were directed at the deficiencies of the poor translation. The PTAB took no pity but rather applied a “gotcha” bureaucratic approach:
During appeal, Appellant had the opportunity to challenge the Examiner’s reliance on the human translation in the Answer as a new ground of rejection through a petition to the Director under 37 C.F.R. § 1.181. MPEP § 1207.03(b) (9th ed. Rev. 07.2015 Nov. 2015). Having reviewed the record, we do not find that Appellant has submitted a petition to the Director. The “[f]ailure of [an] appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.” 37 C.F.R. § 41.40(a). The Board lacks authority to review a petitionable matter.
As we have explained in past posts, an applicant must either petition such an issue or accept it and prepare a full response in the reply. Failure to do so gives the board an easy way to affirm.
So, if you have an examiner relying on an erroneous machine translation, make sure to find evidence of a discrepancy to force the examiner to obtain a proper translation. However, be ready with arguments that take into account this new translation, even if it comes after your appeal brief is filed.