In this edition, we consider the language and translation requirements of the IP5 offices¹.  While it is not surprising that all of the IP5 offices require filings to be translated into certain languages, many filings outside a filer’s home jurisdiction are accomplished using the Patent Cooperation Treaty (PCT) in the filer’s home language.  PCT Article 22 specifies that applicants “shall furnish” a copy of the application “and a translation thereof (as prescribed),” leaving the formalities of translation filing to the national or regional designated office.

This article will look at each of the IP5 countries’ requirements for language and translations, and how these requirements might differ based on whether filing is via the national stage of the PCT or a direct national filing.

China
Rule 3 of the Implementing Regulations of the Patent Law of the People’s Republic of China states that “any document submitted in accordance with the provisions of the Patent Law and these Implementing Regulations shall be in Chinese.” 

In addition, Rule 3 requires that “the standard scientific and technical terms shall be used if there is a prescribed one set forth by the State.”  Where there exists no generally accepted translation in Chinese for a foreign name or scientific or technical term, the term “shall also be indicated” in its original language.  Therefore, applicants employing nonstandard terminology should be especially attentive to translations into Chinese to ensure accuracy.

The Revised Guidelines for Patent Examination, which entered into force on February 1, 2010, also provide that where any required “certificate or certifying document” is in a foreign language, the State Intellectual Property Office of the People’s Republic of China (SIPO) may request a Chinese translation of the document into Chinese within a specified time period.

South Korea
Article 4 of the Patent Regulations as amended by Ordinance No. 215 of the Ministry of Commerce, Industry and Energy of December 31, 2003, states that, except for priority documents, all documents to be submitted to the Korean Intellectual Property Office (KIPO) shall be prepared in the Korean language.

United States
A detailed section of the Code of Federal Regulations, 37 CFR § 1.52, includes language, paper, writing, margins, and compact disc specifications.  Subsection (b)(1)(ii) of that provision requires that the “application or proceeding and any amendments or corrections to the application” be “in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.”  Most filers from outside of the United States are accustomed to the pervasive requirements for certificates or declarations attesting to the truthfulness of filings made in the U.S. Patent and Trademark Office (USPTO), and translations are no exception.

European Patent Office
The European Patent Convention (EPC) Article 14 specifies that the official languages of the European Patent Office (EPO) are English, French, and German.  Subsection (2) states that a European patent application “shall be filed in one of the official languages or, if filed in any other language, translated into one of the official languages in accordance with the Implementing Regulations.”  Under Rule 40(3) of the Implementing Regulations (June 2012), a two-month time period for filing a translation is provided.

Japan
The regulations under the Japanese Patent Act, including the amendments entered into force on April 1, 2012, specify at Chapter I, § 2, that all documents (except for the power of attorney) must be written in the Japanese language, unless otherwise stipulated by law.  Subsection (2) stipulates that a power of attorney, a nationality certificate, or other documents written in a foreign language “shall be accompanied by the translation” when filed at the Japan Patent Office (JPO).

Time Periods for Filing Translations
As can be seen above, the EPO is the only authority among the IP5 that permits direct filing in any language.  All other offices require filing in the official language.  When entering the national stage from the PCT where the international application is not in the official language of the IP5 jurisdiction, time periods for filing the translation are as follows:

• Japan and China, which are 30-month PCT states, each provide a two-month extension for the filing of a translation.  A surcharge is charged by SIPO, but there is no surcharge by the JPO.

• South Korea, which is a 31-month PCT state, requires a translation at the time of entering the national stage.

• The United States, which is a 30-month PCT state, provides for a seven-month extension of time in which to file a translation and complete a national stage entry under 35 § 371.  An applicant is given two months from the date of the notification by the USPTO or 32 months from the priority date, whichever is later, to provide the translation, which may be extended for up to five additional months pursuant to the provisions of 37 C.F.R. § 1.136(a), for a surcharge.

• The EPO, which is a 31-month PCT office, provides a two-month extension for the filing of the translation, without surcharge.

Conclusion
While many aspects of patent law around the world enjoy increased harmonization, language and translation requirements at major patent offices still require practitioners to become versed in local regulations.

¹ The “IP5” are the patent offices of the five predominant intellectual property jurisdictions in the world, namely, the United States of America, the European Union, Japan, South Korea, and China.