The USPTO didn't like the translation (again)....
Warren Smith
One of my Japanese clients just had an office action on a US patent application due to a "translation error" (or, more specifically, due to USPTO confusion over what should be considered to be a valid translation).
I have heard rumors about this problem before, but I am now facing it myself.
The translation of a patent application (provided by my client in Japan), used US-style claim numbering, where the original Japanese (in a PCT filing) followed the Japanese style of claim numbering. That is, while the original said :
請求の範囲
[請求１] ...
[請求２] ...
the translation was as follows:
Claims
What is claimed is:
1. ...
2. ...
The USPTO rejected the application, and is requiring me to file a new translation.
I spoke to the formality examiner, and he tells me that he has sent out "thousands" of these notifications in the last year due to a change in policy about what constitutes a full and complete translation. He is aware that the Japanese text that is "missing" just says "claim," so told me to put "Claim" in front of each number (Apparently he is not concerned about the addition of "What is claimed is:" or the deletion of "の範囲.")
I will attempt to change the policy, but wanted to give my colleagues a heads-up in the meantime.
Warren Smith
Bill Lise
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