当業者に期待し得る程度を超える試行錯誤を必要とする

[Herman]

What would be a good way to translate the following (from a demand for
trial, relating to violation of the enablement requirement):

前述の特許権者が主張した技術常識に基づけば、XXXの有効な免疫原性を示す用量を見いだすために、当業者に期待し得る程度を超える試行錯誤を必要とするものである。

Based on the common technical knowledge asserted by the patentee as
discussed above, finding a dosage of XXX that exhibits effective
immunogenicity....


Herman Kahn

[Frank Apps]

Hi Hermann

"Based on the technical common knowledge asserted by the patentee as discussed above, in order to find a dosage of XXX that exhibits effective immunogenicity, it would be necessary to perform trial and error to a degree surpassing the extent that could be expected from a person skilled in the art."

Or, more literally, omit "to a degree"

David Apps

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[John Stroman]

Herman,

This is a common expression in JPO documents probably originating in the guidelines for examination. The preferred translation at WIPO is: "would require trial and error beyond the scope that would be normally expected of a person skilled in the art."

John Stroman

​

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[John Stroman]

Herman,

I should add that examiners tend to paraphrase the original Japanese, so in my example the first "would" can simply be "requires," the second "would" can be "could," and the whole ending can be "beyond that which could normally be expected of a person skilled in the art," depending on your personal preference and style.​

John Stroman

----------------

[Herman]

On 01/07/17 05:48, John Stroman wrote:
> Herman,
>
> This is a common expression in JPO documents probably originating in the
> guidelines for examination. The preferred translation at WIPO is: "would
> require trial and error beyond the scope that would be normally expected
> of a person skilled in the art."

The wording "...that would be normally expected of a person skilled in
the art" seems to suggest that this is talking about expectations
specifically towards persons skilled in the art, like "you can't expect
*a person skilled in the art* to make that much trial-and-error effort".

It would seem more logical to interpret this as talking about what would
be required of a person skilled in the art, i.e. that a person skilled
in the art would need to make more trial-and-error effort than... (such
a person could be reasonably expected to make if the description is to
be deemed enabling).

Herman Kahn

[John Stroman]

Herman,

I agree. 

My only goal in responding was to provide an expression that is preferred by WIPO. That being said, some of the WIPO preferences sound unnatural to my ear, and I suspect they may have been written by a Japanese native speaker.

Perhaps JPO has a newer rendering. You can try going to the JPO website, searching for key words of the phrase in Japanese to locate the corresponding section, and then reading the same section in their tentative English translations of the guidelines or handbook for the guidelines. The JPO website is not particularly user friendly though.

As I noted in my other message, the examiners themselves sometimes paraphrase or omit parts of the original when writing their opinions, so the Japanese written by the examiner may not exactly match the language of the original regulation or guideline.

Good luck,

John ​

----------------

[Herman]

On 01/07/17 15:29, John Stroman wrote:
>
> My only goal in responding was to provide an expression that is
> preferred by WIPO. That being said, some of the WIPO preferences sound
> unnatural to my ear, and I suspect they may have been written by a
> Japanese native speaker.

What do you mean "preferred by WIPO"? Do they have guidelines for
Japanese-English translation or something?

Herman Kahn

[Herman]

On 01/07/17 15:29, John Stroman wrote:

Japanese native speaker.
>
> Perhaps JPO has a newer rendering. You can try going to the JPO website,
> searching for key words of the phrase in Japanese to locate the
> corresponding section, and then reading the same section in their
> tentative English translations of the guidelines or handbook for the
> guidelines. The JPO website is not particularly user friendly though.
>
>

The JPO's English version of the guidelines uses the language

"a person skilled in the art would have to make trials and errors beyond
the reasonably-expected extent"
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/1_1.pdf

I suppose that gets the meaning across, but it sounds rather awkward to me.

Herman Kahn

[John Stroman]

Herman,

I agree. It does sound awkward. I'm sure you can come up with something better.

John​

----------------

[John Stroman]

Herman,

It is part of my Felix glossary.

I cannot name the source.

John​

----------------

[Mika J.]

On Sat, Jul 1, 2017 at 2:56 PM, Herman <sl...@lmi.net> wrote:

It would seem more logical to interpret this as talking about what would be required of a person skilled in the art, i.e. that a person skilled in the art would need to make more trial-and-error effort than... (such a person could be reasonably expected to make if the description is to be deemed enabling).

I don't quite follow this, but let's just say that the light source of the moon, or the exact mechanism of how it shines, doesn't matter as far as I can tell.

To direct the eye of the reader to the moon that is being pointed to by the source text, let's not stare at the finger doing the pointing too close or too hard.  

If examiners tend to paraphrase in Japanese, then the moon he is pointing to is simply bright in the given context, most likely.  

Here, your specialized field knowledge comes to play.  Translator is expected to know how the patent system works, dosage determination in immune system works, or where the moon is in relation to and shining towards the target reader.  Without that "skilled in the art" knowledge of the translator, that little finger could be pointing to any distant planet out there.

If the moon is the 実施可能要件違反, then we point to it by finding the language of excessive trial and error, or undue experimentation, and go from there.

http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/tukujitu_kijun_bm/02_0101bm.pdf

当業者に期待し得る程度を超える試行錯誤、複雑高度な実

験等をする必要がある場合)は、実施可能要件違反となる。

https://www.uspto.gov/web/offices/pac/mpep/s2164.html

2164.01(a)   Undue Experimentation Factors [R-08.2012]

A bit off topic, but I found this podcast fascinating, with keywords like 'weak patents' and 'complexity':

http://www.econtalk.org/archives/2017/06/robin_feldman_o.html

Mika Jarmusz 清水美香 

[Herman]

On 03/07/17 13:27, Mika J. wrote:
>
> On Sat, Jul 1, 2017 at 2:56 PM, Herman <sl...@lmi.net
> <mailto:sl...@lmi.net>> wrote:
>
> It would seem more logical to interpret this as talking about what
> would be required of a person skilled in the art, i.e. that a person
> skilled in the art would need to make more trial-and-error effort
> than... (such a person could be reasonably expected to make if the
> description is to be deemed enabling).
>
>
> I don't quite follow this, but let's just say that the light source of
> the moon, or the exact mechanism of how it shines, doesn't matter as far
> as I can tell.

The point was that "expected of a person skilled in the art" is
logically not the best translation, because the purport of the text
favors the reading 期待し得る程度を超える試行錯誤を当業者に必要とする - it is
talking primarily about what a person skilled in the art would need to
do, not what would be expected of such a person by somebody else.

Herman Kahn

[Mika J.]

Still not sure how to get back on track to be on the same page with you without more context.

(これは)

1. 前述の特許権者が主張した技術常識に基づけば、

2. XXXの有効な免疫原性を示す用量を見いだすために、

3. 当業者に期待し得る程度

4. を超える試行錯誤を必要とする「もの」である。

4. (This) 「is that which」 requires undue experimentation

3. normally required of ....

2.in order to find...

1. based on the common technical knowledge...

Mika Jarmusz 清水美香
        English to Japanese Translator
        http://inJapanese.us

Herman Kahn

[Herman]

On 03/07/17 16:37, Mika J. wrote:
> Still not sure how to get back on track to be on the same page with you
> without more context.
>
> (これは)
> 1.

> 2. XXXの有効な免疫原性を示す用量を見いだすために、
> 3. 当業者に期待し得る程度
> 4. を超える試行錯誤を必要とする「もの」である。

Maybe it can more clearly restated this way:

前述の特許権者が主張した技術常識に基づけば、
[当該請求項に係る発明は、]
XXXの有効な免疫原性を示す用量を見いだすために、
当業者に[対して、]
期待し得る程度を超える試行錯誤を
必要とするものである。

Herman Kahn

[Mika J.]

Hmm, that still does not change the parsing/meaning.   

I've added red font, if visible to you, to point out the little arrows all pointing cohesively towards the same interpretation leaving little room for ambiguity -- for lack of more sophisticated explanatory language on my part.  

1. 前述の特許権者が主張した技術常識に基づけば、

2. [当該請求項に係る発明は、]

3. XXXの有効な免疫原性を示す用量を見いだすために、

4. 当業者に[対して、]

5. 期待し得る程度を超える試行錯誤を

6. 必要とする「もの」である。

translation:

1. Based on the assertion by the patentee,

3. in order to find the effective dosage for XXX

4. [affecting/making] those skilled in the art (to)

5. to experiment more than reasonably expected of them

2. [This invention is]

6.  「is that which」requires (those skilled in the art to experiment)

[Herman]

The proper parsing of the original Japanese text isn't really at issue.
The issue was that the suggested translation "require trial and error
beyond the scope that would be normally expected of a person skilled in
the art" puts the emphasis in the wrong place, so it would correspond
more to a source text like the following:

前述の特許権者が主張した技術常識に基づけば、[本発明が]XXXの有効な免疫原性を示す用量を見いだすために必要とする試行錯誤は、当業者に期待し得る程度を越える。



Herman Kahn

[Mika J.]

On Tue, Jul 4, 2017 at 12:52 PM, Herman <sl...@lmi.net> wrote:

The proper parsing of the original Japanese text isn't really at issue. The issue was that the suggested translation "require trial and error beyond the scope that would be normally expected of a person skilled in the art" puts the emphasis in the wrong place, so it would correspond more to a source text like the following:

前述の特許権者が主張した技術常識に基づけば、[本発明が]XXXの有効な免疫原性を示す用量を見いだすために必要とする試行錯誤は、当業者に期待し得る程度を越える。

Well, nice try but no cigar.  Herman and other good translators probably see it already, but a note is added at the end for those who may be curious.

Back on track, in pondering this もの at the end, let's notice that its presence adds a layer of distancing for the Japanese reader:  「ようなもの」「変なもの」「素晴らしいもの」「困ったもの」「大変なもの」「違反に値するもの」.

It's like saying "see, that moon there."

What we have in the text is 「必要とするもの」, so we get "this patent, which is such that it requires undue experimentation."

source:

前述の特許権者が主張した技術常識に基づけば、XXXの有効な免疫原性を示す用量を見いだすために、当業者に期待し得る程度を超える試行錯誤を必要とする「もの」である。

 

Note:

前述の特許権者が主張した技術常識に基づけば、[本発明が]XXXの有効な免疫原性を示す用量を見いだすために必要とする試行錯誤は、当業者に期待し得る程度を越える。 

The above changes the 本発明は topic/theme to 試行錯誤は topic/theme:

"The required/needed experimentation (will) exceed(s) the expected scope." 

This is not an accurate back translation of the English rendition "It requires trial and error beyond the expected scope."

Mika Jarmusz 清水美香

[Herman]

On 05/07/17 11:30, Mika J. wrote:

> source:
> 前述の特許権者が主張した技術常識に基づけば、XXXの有効な免疫原性を示す用

> 量を見いだすために、当業者に期待し得る程度を超える試行錯誤を必要とする
> 「もの」である。
> Note:
> 前述の特許権者が主張した技術常識に基づけば、[本発明が]XXXの有効な免疫原
> 性を示す用量を見いだすために必要とする試行錯誤は、当業者に期待し得る程度
> を越える。
>
> The above changes the 本発明は topic/theme to 試行錯誤は topic/theme:
> "The required/needed experimentation (will) exceed(s) the expected scope."
>
> This is not an accurate back translation of the English rendition "It
> requires trial and error beyond the expected scope."
>
>

Well, the change in topic is not in itself relevant to my point. One
could also say e.g.:
本発明は、...
必要とする試行錯誤が当業者に期待し得る程度を越える[ものである]。

The point was that moving "expected of a person skilled in the art" to
the end of the sentence shifts the emphasis or import of the sentence in
a way similar to when the Japanese sentence ends in 当業者に期待し得る程度を越える
as above (as opposed to the original text, which ended in 試行錯誤を必要とする).


With the thus shifted emphasis, the import of the sentence becomes
当業者以外の人に期待し得るかもしれないが、当業者には期待し得ない

whereas the import of the original text was
この他の発明は当業者に期待し得る程度を超える試行錯誤を必要としないのに、本発明だけがそんな試行錯誤を必要とする。

Herman Kahn

[Mika J.]

On Wed, Jul 5, 2017 at 1:16 PM, Herman <sl...@lmi.net> wrote:

The point was that moving "expected of a person skilled in the art" to the end of the sentence shifts the emphasis or import of the sentence in a way similar to when the Japanese sentence ends in 当業者に期待し得る程度を越える as above (as opposed to the original text, which ended in 試行錯誤を必要とする).

With the thus shifted emphasis, the import of the sentence becomes
当業者以外の人に期待し得るかもしれないが、当業者には期待し得ない

Ah, sorry for not following sooner that the issue is on moving "expected of a person skilled in the art" clause to the end of the sentence in ENGLISH.

> whereas the import of the original text was
> この他の発明は当業者に期待し得る程度を超える試行錯誤を必要としないのに、本発明だけがそんな試行錯誤を必要とする。

You have the context, and I support by saying that our source sentence does not go against it.

The difference you try to perfect in English may be too minute in practice, and from where I stand I can say that this has been a great exercise in discerning what's important to consider when we tackle a sentence to translate.  Thank you Herman.

Additional note:

> 本発明は、... 必要とする試行錯誤が当業者に期待し得る程度を越える[ものである]。

Well actually, I don't know how to complete the sentence using [ものである].  Sorry....

Mika Jarmusz 清水美香

[Mika J.]

On Wed, Jul 5, 2017 at 2:32 PM, Mika J. <mik...@gmail.com> wrote:

Additional note:

> 本発明は、... 必要とする試行錯誤が当業者に期待し得る程度を越える[ものである]。

You'll get a nesting level error.

Mika Jarmusz 清水美香