Patent Law and Theory
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Patent Law and Theory

A Handbook of Contemporary Research

Edited by Toshiko Takenaka

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.
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Chapter 10: ‘Lost in Translation’: The Legal Impact of Patent Translation Errors on Claim Scope

Donald S. Chisum and Stacey J. Farmer


Donald S. Chisum and Stacey J. Farmer True art selects and paraphrases, but seldom gives a verbatim translation. (Thomas Bailey Aldrich, American Poet (1836–1907)) Introduction For an inventor who has just conceived of a groundbreaking invention, having the potential to impact global markets on a grand scale, surely a visit to the patent office ranks high on the ‘to-do’ list. The inventor will certainly endeavor to fully capture the inventive concept in a well-drafted patent application. Suppose following the grant of the patent in the inventor’s most prized foreign market, the inventor realizes that the relevant patent specification contains a fatal translation error, an error so significant that it reduces the scope of the originally disclosed and claimed invention to an utterly meaningless conception. Unfortunately, this situation occurs with some frequency as a patent application travels across borders between the different national and regional patent offices. An inventor may thus receive vastly different scopes of protection for patents granted in individual countries for the same inventive concept, not necessarily because these patent offices granted the patents under differing patentability criteria – but because the translated patent specification happened to include one or more translation errors that unduly narrowed the patent scope despite all due care exercised by the translator. In other words, the inventive concept became ‘lost in translation’.1 Alternatively, and probably less common, a translation error may result in a patent claiming a broader scope than any of its counterparts to thereby confer more protection than is appropriate, which...

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