Using Patents
`to Find the
`Terminology
`You Need
`
`By Bruce D. Popp
`
`As a patent translator, you can
`
`benefit from the public availability of
`target-language patents. Today, patents
`and published patent applications are
`widely available on the Internet. In
`addition to helping you solve termi-
`nology issues, looking at target-lan-
`guage patents can help improve your
`writing style in the target language and
`subject area knowledge. Read on to
`find out how to identify specific target-
`language patents that can help you find
`relevant terminology.
`
`Art Appreciation
`Patents are understood and exam-
`ined by comparing the invention being
`
`How does the translator match the “exact terms” from
`the source language to the target language?
`
`patented to the existing art, and more
`specifically the prior art. In this con-
`text, art has nothing to do with Picasso.
`Here, it refers to the scientific and tech-
`nical arts. More specifically, art means
`the body of publicly available scien-
`tific and technical knowledge relating
`to a specific subject pertinent to the
`invention. This knowledge is often
`
`written and published in scientific or
`technical journals, industry standards,
`trade magazines, and in other patents
`or published patent applications any-
`where in the world. Information can
`also become known to the public
`through conference presentations,
`demonstrations at trade shows, or
`product trials. As such, the art is
`
`16
`
`The ATA Chronicle I May 2009
`
`EX1040
`Yita v. MacNeil
`IPR2020-01139
`
`

`

`always changing. A very relevant
`article may appear in a journal today; a
`new product may be
`introduced
`tomorrow. Be that as it may, examining
`this material provides a rich source of
`terminology for patent translators.
`
`How It Works
`When a patent application is exam-
`ined or an issued patent is being
`opposed months or years after the
`application was filed, all that matters is
`what was known in the art when the
`application was filed (or at the time of
`invention). The patent is being com-
`pared to what came before it. Anything
`that became part of the art after the
`application date is irrelevant. This is
`the distinction that “prior” makes in
`the term “prior art.”
`During
`the patent application
`examination, the relation of its subject
`matter to the prior art must be under-
`stood. This is important because when
`it is compared to the prior art, the
`invention must prove to be novel1 and
`nonobvious2 (or involve an inventive
`step3). This means that a patent practi-
`tioner—for example, a U.S. or
`European patent agent, U.S. patent
`attorney, or French conseil en pro-
`priété industrielle—preparing a patent
`application must research the art. This
`search includes the sources provided
`on page 21 and at the end of this
`article, but most notably published
`patent applications and patents. The
`practitioner must establish: 1) what
`portion of the art was known prior to
`the invention; and 2) which source
`documents the closest prior art. After
`identifying the prior art, the patent
`practitioner who prepares the applica-
`tion must describe the prior art—typi-
`cally this will include the numbers of
`one or more patents—and cite the ref-
`erence(s) documenting the closest
`prior art. During the examination of
`the patent application, a patent exam-
`
`Skimming the discussion of the prior art on the first few
`pages of the patent can be a useful way to begin
`looking for terminology.
`
`iner—usually a civil servant working
`within a patent office—will also
`search the prior art to determine
`whether
`the application
`should
`become a patent. If the examiner finds
`different or closely related items, he
`or she may require the patent practi-
`tioner to revise the application to
`address the prior art found. If an
`invention has been described in the
`prior art, a patent will not be granted.
`
`The Translator’s Task
`When subsequently translating the
`patent application, as a patent trans-
`lator, you must understand the termi-
`nology used in the patent, as well how
`to render it correctly in the target lan-
`guage. Title 35 of the United States
`Code (“U.S. Patent Law”) section 112
`states that the “specification [the part
`of a patent application that describes
`the invention and how it is different
`from what was known before] shall
`contain a written description of the
`invention...in such full, clear, concise
`and exact terms...”4 On the face of it,
`this would seem to make patents a
`very desirable source text for transla-
`tion. What translator would not love
`to have a source text that is required
`by law to be “full, clear, [and] con-
`cise?” (No more complaining about
`bad writing, right?)
`
`The Other Shoe
`Those last two words, “exact
`terms,” however, hint at a bigger
`problem. How do you match the
`
`“exact terms” from the source lan-
`guage to the target language? The
`U.S. Patent Law continues: “...as to
`enable any person skilled in the art to
`which it pertains...to make and use the
`same.” This is where the other shoe
`drops. The target audience is “any
`person skilled in the art.” Therefore,
`the
`focus of your
`terminology
`research should be the “exact terms”
`in the target language that enable “any
`person skilled in the art” to make the
`invention. This means that you need
`to find the terms a person skilled in
`the art would use.
`Where and how can you find the
`exact terms from the art? As a patent
`translator, you need a variety of tools
`to do this successfully, including rou-
`tinely consulting available diction-
`aries, glossaries, and other reference
`works. In addition to references, there
`is another way of finding the exact
`terms: using the results from the
`searches conducted by the patent
`practitioner and patent examiner to
`identify closely related target-lan-
`guage patents from the art.
`Unlike a patent examiner, you do
`not need to be concerned about dates
`or “priority” when researching termi-
`nology. Something that comes later—
`for example, a reference that cites the
`patent being translated—can still be
`useful for terminology. Clearly this
`tool will not work all the time, and it
`might work only on rare occasions in
`certain language combinations. When
`¬
`it works, however, it can be a
`
`The ATA Chronicle I May 2009
`
`17
`
`

`

`Using Patents to Find the Terminology You Need Continued
`
`Figure 1: The References Cited from the Cover Sheet
`of U.S. Patent 5,406,549
`
`Figure 2: Citation of the Prior Art in French Patent 2,666,348
`
`valuable and authoritative source
`of exact terms of art in the target
`language.
`
`Looking for Art in
`All the Right Places
`As you begin searching for relevant
`terminology,
`it
`is
`important
`to
`remember that the patent itself must dis-
`close the closest prior art.
`In U.S. patents and published patent
`applications, the cover sheet provides a
`bibliography prepared by the U.S.
`Patent and Trademark Office using
`information provided by the applicant.
`For example, consider U.S. Patent
`5,406,549. The relevant section of the
`cover sheet from this patent appears in
`Figure 1, and you can download a copy
`using one of the online resources listed
`on page 21. In Figure 1, the “[56]” is the
`numbered
`field code, or
`INID
`(Internationally Agreed Numbers for
`the Identifica-tion of Data), for the “list
`of prior art documents” appearing on
`the cover sheet.5 Here, the list of prior
`art documents cites five other U.S.
`patents and an equal number of docu-
`ments presented to U.S. standards
`bodies. In this example, all of the refer-
`ences are in English, so they are
`unlikely to be useful if you are trans-
`lating the patent out of English. You
`should not stop the search at the refer-
`ences, however, as there are a few more
`areas to check out.
`
`Mining the Resources of the
`European Patent Office
`In European and other patents, a
`discussion of the prior art generally
`starts after the first few paragraphs.
`This is the best place to start looking
`for sources of relevant terminology.
`Consider, for example, French Patent
`2,666,348 in Figure 2.6 The last two
`paragraphs on the first page in Figure
`2 list two U.S. and one Canadian
`patent as relevant prior art. These are
`
`18
`
`The ATA Chronicle I May 2009
`
`

`

`Figure 3: Bibliographic Information from the European Patent Office for U.S. Patent 5,406,549
`
`useful for translating this patent from
`French into English.
`One important advantage of the
`European Patent Office website is that
`it provides bibliographic information
`as part of the entry for a patent. As an
`example, we can look up the U.S.
`patent from Figure 1 on the website.
`
`(Tip: In the Number Search field on the
`site, remember to put US before the
`patent number, and remove any spaces
`or commas.) The “Biblio graphic data”
`tab from the search result is shown in
`Figure 3. On the right within the blue
`background, we can see the list of
`patents cited; it is the same list as pro-
`
`vided on the cover sheet of the patent
`itself. Under the “Also published as,”
`we see that this patent was published in
`Japan and Europe (the European patent
`application is in English).
`In the lower left corner of the area
`with the blue background, there is a
`¬
`link to “View list of citing docu-
`
`The ATA Chronicle I May 2009
`
`19
`
`

`

`Using Patents to Find the Terminology You Need Continued
`
`Figure 4: Terminology Notes Written Directly on a Drawing from a Patent
`
`20
`
`The ATA Chronicle I May 2009
`
`

`

`ments.” (Since these documents cite
`the patent being discussed, they are
`part of the later, not prior, art, but they
`are still highly relevant for the trans-
`lator.) This link brings up a list of 18
`published patent applications and
`patents. It turns out that this is a rather
`significant patent in telecommunica-
`tions. Of the 18 patents listed, 15 are
`U.S. patents and two more are written
`in English; one is written in German.
`Thus, this one page has two lists of
`
`Since issued patents and published patent applications
`are in the public domain and widely available on the
`Internet, reading them for style and vocabulary
`is useful for improving your skill and the quality
`of your work as a patent translator.
`
`useful bibliographic information: the
`“also published as” and “cited docu-
`ments” lists. Together, the biblio-
`
`graphic information at this URL holds
`promise for translators working from
`English into German or Japanese.
`
`¬
`
`Additional Sources
`
`Published Resources
`
`The Patent Translators Handbook (American Translators Association, 2007),
`www.atanet.org/publications.
`
`Internet Resources
`
`Free Patents Online
`www.freepatentsonline.com
`U.S., European Patent Convention (EPC), Patent Cooperation Treaty (PCT), and patent
`abstracts of Japan (English interface).
`
`Patent Blog
`www.patentlyo.com
`A leading U.S. patent blog.
`
`Patent Searches
`http://ep.espacenet.com
`EPC, U.S., and many other countries (English/French/German interface).
`
`World Intellectual Property Organization
`www.wipo.int/pctdb/en
`PCT applications (interfaces in various languages).
`
`World Intellectual Property Organization
`National Office Databases
`www.wipo.int/patentscope/en/search/national_databases.html
`Offers links to national patent offices.
`
`Sources for Legislation,
`Regulation, and Treaties
`
`United States Patent and Trademark Office
`www.uspto.gov/web/offices/pac/mpep/mpep.htm
`Title 35 of U.S. Code and Title 37 of Code of Federal Regulation, also
`Manual of Patent Examination Procedure.
`
`European Patent Convention
`www.epo.org/patents/law/legal-texts/epc.html
`The EPC (governs European Patent Office) published in three languages,
`presented in parallel.
`
`World Intellectual Property Organization
`Patent Cooperation Treaty Resources
`www.wipo.int/pct/en/
`Available in various languages.
`
`Legifrance
`www.legifrance.gouv.fr/initRechCodeArticle.do
`On the drop-down menu, choose Code de la propriété intellectuelle.
`
`The ATA Chronicle I May 2009
`
`21
`
`

`

`Using Patents to Find the Terminology You Need Continued
`
`Points to Keep in Mind
`
`(cid:129) When a patent application is examined, the relation of its subject matter to
`the prior art must be understood. This is important because the invention
`must be novel and nonobvious (or involve an inventive step) in comparison
`with the prior art.
`
`(cid:129) When subsequently translating the patent application, the translator must
`understand the terminology used in the patent, as well as its correct ren-
`dering in the target language.
`
`(cid:129) The focus of the translator’s terminology research should be the “exact
`terms” in the target language that enable “any person skilled in the art” to
`make the invention. This means that the translator needs to find the terms
`a person skilled in the art would use.
`
`(cid:129) As the translator begins searching for relevant terminology, it is important to
`remember that the patent itself must disclose the closest prior art.
`
`(cid:129) In European and other patents, a discussion of the prior art generally
`starts after the first few paragraphs. This is the best place to start looking
`for citations of patents from the prior art.
`
`(cid:129) One important advantage of the European Patent Office website
`(www.epo.org) is that it provides bibliographic information as part of the
`entry for a patent.
`
`(cid:129) Reading issued patents and published patent applications for style and
`vocabulary is useful for improving your skill and the quality of your work as
`a patent translator.
`
`(cid:129) Skimming the discussion of the prior art on the first few pages of the patent
`is a useful way to begin looking for terminology.
`
`Using Patents from the Art
`Having found a patent from the art
`in the target language, it is then nec-
`essary to explore it for the needed ter-
`minology. As far as I know, there is no
`magic bullet for this, but in addition to
`helping you find the target-language
`terminology you need, searching
`these patents may also expand your
`knowledge of the subject matter itself,
`which can be a significant advantage.
`I often find skimming the discussion
`of the prior art on the first few pages
`of the patent to be a useful way to
`begin looking for terminology. If the
`patent you are translating and the
`patent from the art have chemical for-
`mulas or drawings, these can be a
`useful way of lining up terminology
`between the two documents. The ref-
`erence numbers in the drawings can
`be particularly helpful.
`I usually print copies of drawings
`from the patent I am translating and
`make notes on terminology choices
`next to the reference numbers. (See
`Figure 4 on page 20.) A list of the ref-
`erence numbers with the name of the
`corresponding parts or assemblies may
`be provided in the discussion of the
`figures, and is even encouraged by
`some legal practitioners, though I have
`never seen it in practice.
`
`A Broader Perspective
`Beyond solving your immediate
`terminology problems, it is useful to
`review target-language patents for
`broader issues pertaining to patent-
`specific vocabulary, conventions, and
`writing style. In some cases, it can be
`difficult to find examples of target-
`language documents that are compa-
`rable to the source-language text you
`need to translate. Since issued patents
`and published patent applications are
`in the public domain and readily
`available on the Internet, reading
`them for style and vocabulary is
`
`22
`
`The ATA Chronicle I May 2009
`
`

`

`In some cases, it can be difficult to find examples of
`target-language documents that are comparable to the
`source-language text you need to translate.
`
`useful for improving your skill and
`the quality of your work as a patent
`translator. When I started translating
`patents, I looked for a patent to study
`in a subject area that I knew well and
`chose the one used in the first
`example (U.S. Patent 5,406,549).
`(Here, I had an advantage because,
`starting a few years after the patent
`was issued, I worked for several years
`in the same Bell Labs department
`with the inventor, so I already knew
`him.) You may want to do the same
`and look for a patent in your target
`language in a subject matter that you
`know well.
`If you are a patent translator,
`seeking out and consulting patents
`can have enormous benefits. You can
`look for related patents in the target
`language as a source of terminology,
`and for well-written patents that can
`strengthen your understanding of gen-
`eral issues of patent-specific vocabu-
`lary, conventions, and writing style.
`Reading patents in your target lan-
`guage is sure to make you a better
`patent translator.
`
`Notes
`1. See Title 35 United States Code
`[hereinafter Title 35 USC] §102(a);
`European Patent Convention [here-
`inafter EPC], 13th edition, July
`2007, Article 54; and Patent
`Cooperation Treaty [hereinafter
`PCT] as currently amended,
`Article 33(2).
`
`2. See Title 35 USC §103(a).
`
`3. See EPC Article 56 and PCT
`Article 33(3). Here and else-
`where—e.g., French Code de la
`propriété intellectuelle, Partie lég-
`islative Article L611-14—inven-
`tive step is defined in terms of
`being nonobvious to a person
`skilled in the art.
`
`4. EPC Article 83 and PCT Article 5
`impose similar requirements. For
`the patent practitioner and exam-
`iner, the main emphasis is on
`enabling, while acknowledging
`that clarity is also required.
`
`5. Numbered field codes on the cover
`page, or INID Numbers are avail-
`able at www.wipo.int/standards/en/
`pdf/03-09-01.pdf.
`INID
`is an
`acronym for “Internationally Agreed
`Numbers for the Identification of
`(bibliographic) Data.”
`
`6. This patent can be downloaded in
`its entirety from http://ep.espace
`net.com, a resource maintained by
`EPO. Click on Number Search on
`the left and then enter FR2666348
`in the field with no embedded
`commas or spaces; this website can
`be a little finicky about having
`exactly the format that it expects.
`
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`The ATA Chronicle I May 2009
`
`23
`
`