1. There are two ways to file the patent applications from the foreign countries in Japan. The first is to file the patent applications in Japan directly. The second is to file the patent application under the Patent Cooperation Treaty (PCT), of which Japan is a designated member state. Either way, it is necessary to translate the foreign languages (commonly English) into Japanese in order to properly obtain a patent.

2. There are commonly errors in translations into Japanese from a foreign language. Due to these errors in translation, "inadequate description" may be specified as the "Reason for Refusal". Both an additional fee and additional time are necessary in order to respond to the refusal notification. Even if the reason for refusal is not specified, the Scope of Right may have been miscalculated due to errors in translation.

3. We are afraid that this problem is due to the lack of English proficiency of Japanese people. In Japan, each person that attends University has studied English for about 10 years. Nowadays with the increase in internet usage and overseas tourists there are many occasions on which to meet native English speakers. However, in reality, the Japanese person's TOEFL ranking among Asian countries was worst in 2004-2005, 2005-2006, and was 3rd from the bottom in 2007.

4. Many Japanese patent firms commission the translation agencies for the translation of English documents. Patent attorneys and Technical staffs then check the Japanese translation and file the application. However, many translators have backgrounds in art and it is more difficult for them to understand technical features with accuracy. Additionally, some of the Japanese patent firms file applications without confirming the accuracy of the translations.

5. To prevent this problem it is necessary to predetermine English words and phrases to be used prior to the translation being started. This is because some of the words and phrases in English language may be interpreted differently which causes the translation to be erroneous. For example, the phrase "Vertical Direction" may be interpreted as both "Orthogonal Direction" and "Direction of Gravitation Force". If you would like to specify "Orthogonal Direction", you need to use this phrase, not "vertical direction". Much the same is true on the word "or". This word may be interpreted as both "otherwise" and "that is to say". If you would like to specify "otherwise", you need to use this word, not the word "or". We believe it is better to predetermine the English words and phrases in order to prevent misinterpretation during translation.

6. Choosing a patent firm is very important as you must depend upon a member of that firm to correctly determine the technical specifications from English document and correctly express the specifications in Japanese.

Many of the Patent Attorneys and Technical Staff at Gotoh & Partners have lived overseas and are proficient in the English language. In addition, most of us have worked for manufacturing companies as engineers and gained exceptional technical knowledge.

We check the document that are translated by the translation agencies in detail and then file the applications. Of course, we sometimes translate the English document by ourselves.

7. Have you chosen the right patent firm in Japan if...

• The patent firm receives the incomprehensible notification of reason for refusal because of the error in translation (for example, the examiner brings up the contents even though that contents is not described in the original foreign application).
• The patent firm receives the notification of reason for refusal of "inadequate description", even though the description of the original foreign document is clear.
• The patent firm does not explain about the notification of reason for refusal to the client in detail.

These patent firms do not have sufficient translation structure and they seem to be inappropriate to handle the foreign cases.
Hereafter, we would like to suggest choosing the patent firm in Japan with particular attention to these points.

Click here for an original version of this article in Japanese (pdf).

Gotoh & Partners