BOSTON PATENT LAW
`ASSOCIATION NEWSLETTER
`
`Summer 2010
`
`EDUCATION, SERVICE, COMMUNITY
`
` Volume 41, Issue 3
`
`In This Issue
`
`President’s Message
`
`President’s Message…...……...…1
`
`BPLA's Influence Seen in Bilski
`Decision ……………………...……3
`
`Accuracy in Patent Translation.....4
`
`2010 Judges Dinner Pictures.......8
`
`Countdown to 2013: Five Things
`Everyone Should Know About
`Recapture of Copyrights Under 17
`U.S.C. § 203……………………....9
`
`Federal Circuit Confirms En Banc
`that Both Written Description and
`Enablement are Required for
`Patentability………………………11
`
`A Collaboration between the
`Museum of Science and the
`BPLA……………………..……….15
`
`The BPLA Files Amicus Brief in
`the Therasense Case, Advocating
`for the Objective “But For” Test as
`the Sole Materiality Test as it
`Relates to Inequitable Conduct..16
`
`Job Postings……….…...……..…17
`
`Upcoming Events
`
`Monday, Sept. 27
`USPTO Road Show
`
`Thursday, Sept. 30
`Member Networking and
`Cocktail Social
`
`Tuesday, Nov. 4 -
`Wednesday, Nov. 5
`
`Advanced PCT Seminar
`
`The Boston Patent Law Association
`continues to provide members with a
`variety of programs and functions –
`despite our hot summer! The Judges
`Dinner this year was held on June
`4th and over 200 members and
`guests attended the event. The
`evening began with a cocktail
`reception held outside on
`the
`waterfront at
`the John Joseph
`Moakley United States Courthouse.
`We moved indoors for dinner, where
`our keynote speaker, Tyler “Dr. Vino”
`Colman, introduced the wine pairing
`to complement each course. Colman
`presented on “Wine Politics: How
`Governments, Environmentalists,
`Mobsters, and Critics Influence the
`Wines We Drink,” which is the title of
`his first book published in July 2008.
`I had the privilege to present this
`year's BPLA Distinguished Public
`Service Award to the Honorable Rya
`W . Zobel
`for her significant
`involvement in a number of patent
`cases, as well as her involvement
`with
`the Federal Judicial Center,
`which provides
`training
`for new
`judges and CLEs for sitting judges.
`Judge Zobel graciously accepted the
`award, and entertained us with a
`“claim” reciting the key components
`of the plaque we awarded to her.
`
`The BPLA Summer Outing was held
`at Fenway Park on Friday, July 16th
`when the Boston Red Sox took on
`the Texas Rangers. The BPLA was
`well represented in the 300 bleacher
`seats we were able to secure. The
`weather was extremely hot until a
`sudden rain shower cooled us off
`and c aus ed a gam e d el a y.
`
`President Lisa Adams
`
`Unfortunately, the game ended with
`the Rangers beating the Red Sox 8-
`4. But despite the loss, it was an
`exciting evening as Bengie Molina
`became the eighth player and first
`catcher since 1900 to hit for the
`cycle, even managing a grand slam.
`
`As you may recall, back in April the
`Amicus Committee filed an amicus
`brief in the appeal of Ex Parte Bilski.
`The Supreme Court handed down a
`decision on June 28, 2010 rejecting
`the machine-or-transformation
`test
`as the sole test of process patent
`eligibility based on an interpretation
`of the language of §101. In the
`decision, Justice Kennedy cites to
`the BPLA amicus brief, which
`explained
`that
`the machine-or-
`transformation
`test would create
`uncertainty as to the patentability of
`software, advanced diagnostic
`medicine techniques, and inventions
`based on linear programming, data
`
`(Continued on page 2)
`
`EX1039
`Yita v. MacNeil
`IPR2020-01139
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`Presidents Message Continued
`(Continued from page 1)
`
`
`compression, and the manipulation of digital signals.
`See Ex Parte Bilski, 561 U.S.___, p. 9 (2010).
`
`The Amicus Committee of the BPLA also recently
`filed an amicus brief in the appeal of Therasense, Inc.
`v. Becton, Dickinson and Co. and Nova Biomedical
`Corp. and Bayer Healthcare LLC, which is scheduled
`to be heard by the Federal Circuit Court of Appeals
`en banc in November 2010. Timothy D. Johnston
`and Rory P. Pheiffer, both of Nutter McClennen &
`Fish LLP, served as counsel on the amicus brief.
`Erik P. Belt and Robert M. Abrahamsen, co-chairs of
`the BPLA Amicus Committee, and Derek P. Roller,
`Andrew W. Schultz, and Michael P. Visconti, all
`attorneys at Nutter McClennen & Fish, as well as
`Joshua Matt, also contributed to the brief.
`
`The BPLA also recently announced the Invented
`Here! Program, which was jointly developed by the
`BPLA and the Museum of Science (MoS). Past-
`President Mark Solomon and the New Lawyers and
`Law Students Committee have been working closely
`with the MoS over the past year to rekindle the
`relationship the BPLA and the MoS enjoyed in the
`late ‘80’s and early ‘90’s with the Inventors Weekend
`Program. The new Program, the Invented Here!
`Program, is expected to be an annual recognition
`event that honors New England’s newest and most
`innovative technologies. The honorees will advance a
`MoS mission of playing a leading role in transforming
`the nation’s relationship with science and technology
`and will advance the BPLA’s missions of Education,
`Service and Community. The innovative technologies
`are expected to shape the way people interact with
`each other and
`the world around
`them,
`fulfill
`important individual and/or social needs in novel
`ways, educate and inspire students both in the
`classroom and outside of school-time, or ensure a
`more sustainable future for our environment. More
`
`information about the program can be found on our
`website.
`
`The Contested Matters Committee, co-chaired by
`Susan Glovsky of Hamilton, Brook, Smith &
`Reynolds, Michael McGurk of Finnegan, Henderson,
`Farabow, Garrett & Dunner, and Donna Meuth of
`Eiasi Inc., welcomed Chief Administrative Patent
`Judge Michael R. Fleming as the guest speaker for
`the Board of Patent Appeals and Interferences –
`State of the Board held on June 7, 2010. Chief
`Judge Fleming provided a presentation on the State
`of the Board and New Board Initiatives, along with a
`brief update on Patent Reform as it applies to the
`Board.
`
`The Litigation Committee, co-chaired by Martin
`O’Donnell of Cesari and McKenna, and Douglas
`Doskocil of Goodwin Procter, organized an event
`held on June 15, 2010 entitled “Engaging Your
`Patent Jury,” which featured the Honorable William
`G. Young. Judge Young gave guidance on how the
`bench would like litigators to handle jury trials to
`minimize juror confusion.
`
`We have a full schedule of events in store for the fall
`as well. Please keep your eyes out for a member
`social that we are planning for late September. We
`will also host the annual USPTO Road Show on
`September 27th, and an announcement with be sent
`out shortly. Our annual PCT Seminar will be held on
`November 4th and 5th at the Holiday Inn Boston at
`Beacon Hill. As a reminder, you can register for all
`events on our website.
`
`Please continue to check out our calendar of events
`on the website, where upcoming events are featured.
`
`I encourage each of you to remain actively involved
`with the BPLA, and to reach out to the Board of
`Governors and the Committee Chairs with any
`comments or suggestions.◊
`
`We would like to thank our accountants for providing the BPLA with outstanding service over the years
`
`
`
`Suzanne M. Monahan, CPA
`Kelly A. McLaughlin, CPA
`David M. Walsh, CPA
`
` 1
`
` Batterymarch Park, Suite 101
`Quincy, MA 02169-7454
`617-769-9600
`www.daviesmonahan.com
`
`With approximately 16 years in providing accounting, auditing, tax, and consulting services, we attribute our
`
`long-term success to understanding our clients’ needs and providing high-quality, timely service.
`
`2
`
`2
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`
`
`
`
`BPLA's Influence Seen in
`Bilski Decision
`
`
`
`
`
`
`business method claims, the Federal Circuit applied
`the so-called “machine-or-transformation” test. The
`BPLA’s concern was that this test is a relic of the
`Industrial Age of the 19th Century and thus could be
`used to reject patents on emerging technologies, such
`as medical diagnostics and
`computer-related
`inventions.
`
`Relying explicitly on the BPLA’s amicus brief, among
`others, Justice Kennedy signaled
`the Court’s
`willingness
`to protect
`innovation
`in emerging
`technologies:
`
`
`test may well
`The machine-or-transformation
`provide a sufficient basis for evaluating processes
`similar to those [**20] in the Industrial Age -- for
`example, inventions grounded in a physical or other
`tangible form. But there are reasons to doubt
`whether the test should be the sole criterion for
`determining the patentability of inventions in the
`Information Age. As numerous amicus briefs argue,
`the machine-or-transformation test would create
`uncertainty as to the patentability of software,
`advanced diagnostic medicine techniques, and
`inventions based on linear programming, data
`compression, and
`the manipulation of digital
`signals. See, e.g., Brief for Business Software
`Alliance 24-25; Brief for Biotechnology Industry
`Organization et al. 14-27; Brief for Boston Patent
`Law Association 8-15; Brief for Houston Intellectual
`Property Law Association 17-22; Brief for Dolby
`Labs., Inc., et al. 9-10.
`
`
`Id. at 803.
`
`The BPLA hopes to have more influence on pressing
`matters of intellectual property law. If you become
`aware of amicus opportunities, please bring them to
`the attention of the Amicus Committee Co-Chairs, Erik
`Belt of McCarter & English LLP and Bob Abrahamsen
`of Wolf Greenfield & Sack, P.C.◊
`
`3
`
`The Boston Patent Law Association has been making
`the voices of its members heard on patent and other
`intellectual property controversies by contributing two
`to three amicus curiae briefs to trial and appellate
`courts each year. As the BPLA has become more
`vocal, the courts have started to listen. Most recently,
`Justice Kennedy cited to the BPLA’s amicus brief in
`Bilski v. Kappos, which left open the possibility that
`business methods can qualify as patentable subject
`matter under 35 U.S.C. § 101 (the threshold provision
`of patent law, governing what subject matter is eligible
`for patent protection).
`
` A
`
` major theme of the BPLA’s amicus briefs in Bilski
`and in other cases has been the importance of patents
`to innovation and the American economy. A subset of
`that theme is that the nature of innovation has
`changed since the patent laws were originally drafted
`by Thomas Jefferson and that patent law must be read
`to accommodate that change. The original patent
`laws were drafted in an age when the state of the art
`involved gears and cogs and springs. Now, state of
`the art involves amino acid sequences and data
`packets and information. If the patent laws cannot be
`read
`to accommodate
`innovations
`in emerging
`technologies, particularly those in biotechnology and
`digital communications, then innovation will stall and
`the economy will suffer.
`
`Justice Kennedy relied on this theme in crafting the
`Supreme Court’s Bilski opinion. Indeed, the three
`most important words of that opinion may be “But
`times change.” Bilski v. Kappos, 177 L. Ed. 2d 792,
`803 (2010). In keeping with that spirit, the opinion
`goes on to interpret § 101 as a “dynamic provision
`designed
`to encompass new and unforeseen
`inventions.” Id. (citation omitted).
`
`The question then became whether the test of patent
`eligibility that the Federal Circuit applied was proper
`under § 101. In an appeal from the United States
`Patent & Trademark Office’s rejection of certain
`3
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`
`
`
`Accuracy in Patent Translation
`
`
`
`
`
`
`By Bruce D. Popp, Ph.D., American Translators
`Association Certified Translator for French and English
`
`Introduction
`
`Accuracy is essential to a patent
`t r a n s l a t i o n . A n
`i n a c c u r a t e
`translation which is not recognized
`as such can have serious
`consequences
`for
`the patent
`practitioner or the inventor. The
`consequences can even be so
`severe as to lead to loss of patent
`right or enforceability. A better
`understanding of what is involved
`in translation helps make it clear
`that it is a demanding intellectual
`activity requiring excellent reading
`comprehension in the language of
`the original document, knowledge
`of the technical subject matter of
`the document, and good writing
`and editing skills in the language of
`the translation. A skillful translator
`brings all these elements together.
`
`This article starts with an example
`of an error in the translation of a
`patent application from Japanese
`into English and the significant
`effort involved in getting the error
`corrected. The matter was finally
`decided by the Court of Customs
`and Patent Appeals (In re Oda).
`
`then provides a
`The article
`simplified example of a translation
`of one sentence. There are many
`reasonable translations of this one
`simple sentence. Beyond
`the
`paramount
`issue of accuracy,
`important factors include: clarity,
`writing style, and readability. These
`factors will generally be clear to the
`reader. The differences between
`the examples shown
`relate
`to
`these
`factors. While necessary,
`
`good writing style is not sufficient
`for obtaining or
`recognizing a
`quality
`translation because a
`translation error could have been
`introduced when
`the original
`document was misunderstood or
`its meaning distorted.
`
`This discussion provides some
`insight into what is needed to get
`an accurate translation. Finding the
`right translator is important, and
`consideration needs to be given to
`qualification, specialization, and
`subject matter. A good translator
`can provide more than just an
`acc urate patent
`translation:
`working with a
`translator can
`provide more information about the
`patent,
`including errors
`in
`the
`foreign patent, and understanding
`of patent process in the other
`country.
`
`What’s at Stake?
`
`To err is human, and humans
`preparing, prosec uting, and
`t r a n s l a t i n g p a t e n ts a l l e r r
`occasionally. The severity of errors
`can range from minor grammatical
`or punctuation errors
`that are
`hardly worthy of note;
`through
`more serious errors that may need
`to be corrected and require a
`certificate of correction or even a
`reissue in order to correct them; to
`the most serious errors, which
`cannot be corrected and are
`prejudicial to the enforceability and
`value of the patent. The time,
`effort, and cost to correct an error
`(and the injury if the error cannot
`be corrected or is unrecognized)
`
`4
`
`4
`
`increases dramatically along this
`range.
`
`In re Oda (443 F.2d 1200; decided
`by CCPA July 1, 1971) arose from
`an effort to correct a translation
`error present in an issued patent.
`The patent claimed three organic
`dyes that could be used in a
`printing process. The error involved
`the name of a chemical used in the
`synthesis of the dyes. Because of
`the error in the chemical name, the
`description of
`the process
`for
`s ynthesis of
`the d ye was
`insufficient and consequently there
`was a risk that the patent would be
`found invalid and unenforceable.
`
`The US patent application was
`based on
`the
`translation
`into
`English of the Japanese patent
`application from which priority was
`claimed. In the US application as
`filed (which included the translation
`error), one step in the synthesis of
`the organic dye involves a nitration
`reaction in the presence of nitrous
`acid and sulfuric acid. The US
`application referred to nitrous acid
`six times. The correct translation
`was nitric acid, not nitrous acid,
`and that was the error that needed
`correction. Nitric acid, H2NO3, is a
`common laboratory reagent and
`strong acid. Nitrous acid, HNO2, is
`less common—it decomposes
`rapidly—and a weak acid.
`
`To correct the error, a reissue
`application was filed. The reissue
`application was rejected by the
`examiner, and the rejection was
`
`(Continued on page 5)
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`Accuracy in Patent Translation
`(Continued from page 4)
`
`
`sustained by the Board of Patent
`Appeals and
`Interferences. The
`issue in case was whether the
`change from nitrous acid to nitric
`acid to correct the error in the
`reissue application introduced new
`matter not present in the original
`application as filed. The examiner
`and the BPAI held that correcting
`the error did introduce new matter.
`On appeal, the CCPA found that,
`since affidavit evidence had been
`provided showing that the error
`and its correction would be obvious
`to a person skilled in the art, new
`matter had not been introduced.
`The decision is cited often for what
`it says about new matter.
`
`At a practical level this illustrates
`the time, effort and expense that
`can be incurred when attempting to
`correct an error in a patent.
`
`Although the above example deals
`with a US application based on
`t r a ns l a t i o n of a J ap a n e s e
`application, it should be noted that
`errors
`in
`translations of other
`documents could have serious
`consequences. A translation error
`in a foreign patent or non-patent
`literature could, for example, lead
`to a flawed understanding of the
`prior art with consequences for the
`assessment of the novelty and
`obviousness of a client’s invention.
`
`A partial defense against errors in
`translations
`to be
`filed as US
`p a t e n t a p p l i c a t i o n s ,
`i s
`t o
`incorporate by
`reference
`the
`foreign application, either explicitly
`or through a claim under 37 CFR
`1.55 for priority of a prior-filed
`f o r e i g n a p p l i c a t i o n . T h i s
`incorporation by reference would
`then provide a route for introducing
`m a t e r i a l
`f r o m
`t h e
`f o r e i g n
`application into the US application
`to correct omitted or incorrectly
`translated material without raising
`questions about new matter. The
`issue of whether
`there was
`deceptive intent would still need to
`be addressed.
`
`Incorporating the foreign patent by
`
`reference does not resolve the
`challenge of
`identifying
`the
`omission or other translation error
`and supplying and justifying the
`correction. Perhaps more difficult,
`the omission or other translation
`error must still be identified and the
`correction supplied and justified.
`
`A better approach, with broader
`scope and lower-cost, is to avoid or
`at least find the translation error
`before it makes its way into an
`application or other documents
`filed with the USPTO. To help you
`avoid
`translation errors,
`the
`remainder of the article will discuss
`what is involved in translation, how
`errors
`in
`translations can be
`assessed and understood, and
`how to get accurate translations
`that meet your needs.
`
`What Does Translation Involve?
`
`To help you understand what is
`involved in translation, I'd like to
`start with an example of a simple,
`famous French sentence. Since
`many people take French in high
`school, I hope this is a good
`language
`for an example. The
`sentence is from Le petit prince by
`Antoine de Saint-Exupery. It is,
`"On ne voit bien qu’avec le cœur.
`L’essentiel est invisible pour les
`yeux.” The vocabulary is basic, and
`so is the grammar although one
`does need to recognize the ne…
`que negative construction.
`
`A hypothetical high school student
`in a third or fourth year French
`class should reasonably be able to
`come up with "One does not see
`well except with the heart. The
`essential is invisible for the eyes."
`With a small improvement on this
`would be, "One sees clearly only
`with the heart. What is essential is
`invisible to the eyes." This offers
`three improvements. First, using
`only instead of does not… except
`is less literal (It's no longer an
`exact parallel of
`the French
`construction.) and sounds a little
`better
`in English. Second,
`the
`French adverb bien has a much
`broader range of meaning than the
`English word well so "sees clearly"
`is certainly well within the meaning
`
`5
`
`5
`
`of the French sentence and gets at
`what it means to see well. Third,
`perhaps influenced by the French
`preposition, the first variant says
`invisible for and is corrected to
`read invisible to.
`
`With a professional translator one
`can hope for something a little
`better. The first thing to recognize
`is that the real subject of the first
`sentence is the heart. Placing it at
`the end of the sentence is effective
`in French, but in order to receive its
`proper emphasis and attention in
`English it really needs to be near
`the beginning of the sentence. The
`next objection is that in normal
`spoken English, one
`is not
`normally used as a pronoun for an
`unspecified individual; that use is
`normally reserved for more formal
`written language and in fact I used
`it that way two paragraphs ago.
`Then
`there
`is
`the handling of
`L ’e s s e n t i e l wh i c h h a s
`l ef t
`something behind in becoming The
`essential. This is a harder issue to
`deal with satisfactorily. With those
`considerations
`in mind,
`the
`sentences can beneficially be
`rewritten as, "Only the heart sees
`clearly. What matters on the inside
`is invisible to the eyes."
`
`In translating, three key intellectual
`skills are used. The first is good
`reading comprehension of
`the
`source document -- the document
`to be translated. For documents
`about complex subject matters,
`such as quantum well lasers or
`existential philosophy, knowledge
`of
`the subject matter and
`its
`specific vocabulary is essential to
`reading comprehension. This
`is
`why the importance of finding a
`translator with both linguistic skills
`and subject matter knowledge
`should not be overlooked.
`
`Skipping over the middle, the third
`skill is good writing in the target
`language –
`the
`language
`into
`which
`the document
`is being
`translated. As people experienced
`with preparing patent applications
`and writing briefs, you certainly
`know firsthand the value of good
`writing skills. Writing skills are
`(Continued on page 6)
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`Accuracy in Patent Translation
`(Continued from page 5)
`
`important to translators too.
`
`consent form to be given to a
`patient considering participating in
`a clinical trial of a chemotherapy
`drug.
`
`effects of the drugs to wear off into
`an instruction to understand how
`the drugs affect the patient before
`d r i v i n g . T h e
`t r a n s l a t o r ' s
`comprehension of the source text
`was wrong, and
`therefore
`the
`translation was wrong even though
`it is clear and reads smoothly in
`English.
`
`The sentence is
`
`"vous ne pourrez donc pas
`conduire votre véhicule ou faire
`fonctionner une machine jusqu’à
`ce que les effets de tous les
`médicaments qui vous ont été
`administrés se soient estompés”
`
`and the translation was
`
`"you should not drive or operate
`machinery until you understand
`how all the drugs which you have
`been given affect you."
`
`The case described above, In re
`Oda, involves incorrect translation
`of basic chemistry
`terminology.
`Beyond
`the difference
`in
`the
`oxidation state of nitrogen, nitric
`acid
`is a common
`laboratory
`reagent and nitrous acid is not. I
`have no information about how the
`error occurred, but systematic
`repetition on all seven occurrences
`seems
`to clearly
`indicate a
`deliberate choice of
`the wrong
`term. Would better knowledge of
`chemistry, especially organic
`chem istr y,
`have
`prevented this error?
`It
`seems
`likely,
`although simple due
`diligence might have
`prevented the error
`as well.
`
`
`“Would better
`
`knowledge of ...
`
`organic chemistry,
`
`This sounds like a straightforward
`stock phrase that you might expect
`to see on a prescription that you
`pickup from a pharmacy. Looking
`only at
`the
`text
`in
`English there is no
`reason to suspect any
`problem with
`the
`translation, but
`the
`translation is wrong in
`an important respect.
`I n
`t r y i n g
`t o
`understand what had
`led the translator to
`make
`this error,
`I
`c a m e
`t o
`t h e
`conclusion that they
`did not understand
`the word "estompés"
`w h i c h
`i s
`n o t
`commonly used and
`therefore
`obscure.
`They compounded this error by
`failing to look up this word in a
`dictionary and understand
`its
`meaning.
`
`But now I need to get back to the
`middle, the part that joins reading
`comprehension and writing skills
`together and
`transfers meaning
`from one
`to
`the other. For a
`translation to be accurate, meaning
`present in the source must be
`transferred
`into
`the
`target and
`meaning not present in the source
`should not be introduced into the
`target.
`If
`the source
`is broad,
`vague, or ambiguous
`then
`the
`translation needs to be comparably
`broad, vague, or ambiguous. For
`technical and patent translation, it
`is generally necessary that each
`linguistic unit of meaning present in
`the source be conserved during
`translation into the target.
`
`For literary or marketing translation
`other qualities may also need to be
`transferred. There qualities involve
`n a r r a t i v e p a c e , c h a r a c t e r
`development, perspective, and
`dialogue, and these need to be
`respected even though they may
`lead
`to compromises with
`the
`meaning.
`
`Sources of
`Translation
`
`Inaccuracy
`
`in
`
`At this point I want to discuss some
`of
`the ways errors occur
`in
`translation. It is my opinion that
`there were
`three main ways:
`m i s u n d e r s t a n d i n g o f
`t h e
`vocabulary or grammar
`in
`the
`source document (this is related to
`the
`first
`translator skill, good
`comprehension of the document to
`be
`translated),
`incomplete or
`incorrect understanding of
`the
`subject matter
`(state-of-the-art)
`and
`its
`terminology, and
`finally
`poor writing mechanics
`in
`the
`target document (which is related
`to the third translator skill).
`
`As an example of the first way
`translation errors can occur, I want
`to use a sentence that I came
`across when editing a translation
`that had been prepared by another
`translator. The document being
`translated was
`in an
`informed
`
`have prevented this
`
`error? It seems likely,
`
`although simple due
`
`diligence might have
`
`prevented the error as
`
`well.“
`
`While the error in the
`medical instructions
`is difficult to spot in
`the absence of the
`original text or prior
`ex pe ri e nc e
`t h at
`would cause you to
`r e d - f l a g
`t h e
`translation
`(“That
`can’t be right!”), and
`the error in In re Oda
`is hard to spot, errors resulting
`from poor writing in English are
`relatively easier to spot. Careful
`proofreading can generally
`find
`these errors, but their correction
`may
`require
`reference
`to
`the
`o r i g i n a l
`f o r e i g n
`l a n g u a g e
`document.
`
`This word means abated or worn
`off, so a corrected translation is:
`
`"you should not drive or operate
`machinery until the effects of all
`the drugs which you have been
`given have worn off."
`
`the
`that
`is no question
`There
`chemotherapy drugs in this clinical
`trial will cause unpleasant side
`effects that make it dangerous to
`drive. By making this error, the
`trans lator has c hanged an
`instruction to wait for the side
`6
`
`6
`
`Getting an Accurate Translation
`
`Given the potential cost of an
`inaccurate
`translation and an
`awareness of how errors may
`creep
`into a
`text, how can a
`translation client be sure of getting
`
`(Continued on page 7)
`
`

`

`Summer 2010
`
`
`
`
`
`BPLA NEWSLETTER
`
`
`
`
`
` Volume 40, Issue 3
`
`Accuracy in Patent Translation
`(Continued from page 6)
`
`
`one that is accurate? I have some
`specific recommendations.
`
`Start with a professional translator
`who
`is well qualified and who
`specializes in the subject matter
`that you need translated.
`
`Unlike other professions, there are
`n o m a n d a t o r y
`l i c e n s e s o r
`professional credentials required to
`call oneself a
`translator. The
`American Translators Association
`(ATA) does certify translators, and
`certification is based on meeting
`eligibility
`requirements and a
`written practical exam in which two
`test passages are translated. This
`professional credential is optional
`and
`there certainly are very
`competent translators who could
`become certified but have, for any
`number of reasons, not chosen to
`do so. Nonetheless, it is useful to
`look for ATA Certified Translator to
`assure a
`reasonable
`level of
`qualification. This can be done
`using
`the ATA Directory of
`Translators and
`Interpreters
`available through their website.
`
`Some translators have advanced
`degrees in scientific or technical
`fields,
`relevant non-translation
`work experience, or a minor or
`coursework in a particular field.
`When considering working with a
`particular
`translator, ask
`them
`about their experience translating
`specific kinds of documents
`(patents, scientific or
`technical
`journal articles, etc.) and specific
`subject matter
`(biotechnology,
`mechanical engineering, etc.) and
`also ask them whether they have
`relevant training or experience in a
`particular field.
`
`Although it may be unnecessary for
`some documents, such as ones
`being translated to understand the
`state-of-the-art or context, when
`the accuracy of the translation is
`very important, ask the translator to
`have another translator edit their
`work. This will increase the cost,
`but it provides another set of eyes
`reviewing and checking
`the
`
`translation and another layer of
`certainty.
`
`A good translation takes time to
`prepare. Haste makes waste, and
`a translation done in a rush at the
`last minute to meet a tight deadline
`is no exception. Translators gain
`awareness of the limits on the
`amount of work they can do in a
`day and maintain good quality, and
`they develop schedules and work
`habits
`that accommodate
`this.
`Often they will have committed to a
`project that must be completed and
`delivered before new work can be
`started. While it may be possible to
`juggle or rearrange commitments
`with other clients -- or drink more
`coffee in an effort to squeeze more
`work into a day --, it is best to
`avoid unduly burdening
`the
`translators by planning ahead. Two
`days before
`the one-year
`filing
`anniversary of a foreign application
`is not the time to find out that
`translating that application will take
`five days. Anticipate when a
`translation will be needed and
`discuss with the translator how
`much
`time
`they will need
`to
`complete the translation. If another
`person will be editing
`the
`translation,
`this should also be
`c o v e r e d w h e n d i s c u s s i n g
`scheduling. Both of you will sleep
`better.
`
`Working with the Translator
`
`just send a
`Often you will
`document to a translator as an e-
`mail attachment with a request that
`it be translated and wait for the
`translation
`to come back as
`another e-mail attachment. This
`m a y w o r k o u t p e r f e c t l y
`satisfactorily most of
`the
`time.
`However, it's good to be aware that
`there may be other ways
`the
`translator can help you.
`
`the
`translating
`in
`Bec ause
`document the translator needs to
`read it carefully, closely, and with
`good comprehension,
`they will
`likely have read it more closely
`than anyone else since the author.
`Discussing the document with the
`translator once the translation is
`complete could be an opportunity
`
`to get an informed overview of the
`document or answers to specific
`questions.
`
`to
`translator
`When asking a
`prepare a translation of a patent or
`application, you should ask that
`they provide a separate set of
`"translator's notes"
`identifying
`possible errors
`they may have
`found their way into the patent. The
`notes should include the page and
`line number of the error, a quote of
`the word or line from the document
`being translated which contains the
`error, and an explanation of what is
`thought to be in error. Many times
`these will be just minor spelling or
`grammatical errors. On occasion,
`however, the translator may find
`more serious errors.
`
`A translator may also be able to
`provide observations or guidance
`on practices and conventions in the
`other country.
`In
`the
`film
`Inglourious Basterds, holding up
`the wrong fingers when asking for
`"trois verres" in a basement bar
`leads to an outbreak of shooting
`and violence characteristic of
`Quentin Tarantino
`films. What
`happens when you send a
`European colleague a document
`on 8½ by 11 paper with comments
`and notations in the right margin?
`In one situation I observed while
`working in an office in Brussels, the
`document had to be copied onto
`large size paper because copying
`onto A4 metric size paper
`truncated the comments, and a
`copy reduced to fit A4 paper was
`not
`legible.
`I hope
`they didn’t
`contemplate an outburst of
`violence, but the frus