Experience Sharing on Claim Amendments on the Grounds of “Obvious Mistakes”

Linda Liu & Partners

I. Background Introduction

In recent years, the number of foreign patent applications entering China exhibits a steady growth on a yearly basis. Foreign applications are required to be translated to Chinese in order to be accepted by the China National Intellectual Property Office (CNIPA) for subsequent prosecution.

During translation of a patent application, due to the linguistic differences or the capability of the translator, translation errors occur occasionally, causing the technical expression of the translated Chinese application document to be inconsistent with the original patent application, which not only is disturbing in the prosecution, but even affects the stability and the enforcement of the patent right in the post-granting period.

To cope with this matter, foreign patent applications entering China via the PCT is allowed to correct the Chinese translation by a translation correction procedure. However, no such remedy is offered for foreign patent applications entering China under the Paris Convention.

With an actual case of a patent application entering China under the Paris Convention in the practice of the author, this article intends to share the experience successfully convincing the examiner to accept corrections of obvious mistakes in the translation, in hopes of providing inspirations for your future patent practice.

II. Case Introduction

The subject case was transferred to us in the middle of prosecution.

Before the client entrusted us with the subject case, in order to overcome the inventiveness objections set forth in the previous Office Action, the client intended to incorporate the additional technical feature “transmission ratio deviating from value 1.000 ...” of a dependent claim into independent claim 1, so as to make a clear distinction from the cited reference document. However, the number “1.000” in the dependent claim was translated to “1000” by mistake when entering China. Such a translation error made it impossible to substantively distinguish the invention from the reference document by this technical feature, and caused additional difficulty in convincing examiners to accept the inventive step of the application. In view of this, it is imperative to correct the translation error in the claims.

To this end, the original agent submitted, on behalf of the client, voluntary amendment to correct the mistranslation in response to the previous Office Action, while stating the reason that the number “1000” was obviously a typo missing out decimal mark, and is thereby clarified to be “1.000” based on the context.

However, the examiner did not accept this correction. The examiner gave the following opinions: the amended feature was not recited in the original description and claims of the application; although it was described in the description that “... the number of the teeth is different by only one”, it could not necessarily be obtained accordingly that the transmission ratio is deviated from the value 1.000...; and the expression of “1.000” was not common for indicating a transmission ratio in the art; thus, the modified feature could not be directly and unambiguously determined from the disclosure contained in the original description and claims of the present application; therefore, the amendment went beyond the scope of the original description and claims.

III. Argument Strategy

As the legal basis of making proactive amendment to correct an “obvious mistake”, it is specified in the Guidelines for Patent Examination that: “Obvious mistakes” means the incorrect contents which can be clearly judged from the context of the initial description and claims and without any possibility of other explanations or amendments.

On this basis, the keys to convincing the examiner to recognize the “obvious mistake” and the amendment are as below:

1) explaining the irrationality of the value “1000” amongst the original expression; and

2) stating that there is no possibility of a value other than the corrected value “1.000”.

Upon the entrustment of the client, we thoroughly studied the subject case and stated the following arguments in response to the outstanding OA.

1) With reference to the section of background art of the description, in many cases, a transmission mechanism is used to decrease or increase the speed of a rotating component. In these cases, a transmission ratio approximate to 1 is meaningless. However, the transmission mechanism for the sensor in the present application has a function completely different from the function of increasing or decreasing the rotational speed. By means of two gears of which the effective diameters are only slightly different from each other (i.e., with a transmission ratio slightly offset from the value of 1), and with the aid of two emitter magnets and two magnetic sensors, signals from two gears (rotating at only slightly different speeds) are compared, thereby significantly improving the measurement resolution.

When a transmission mechanism is used following the above measurement principle, as clearly foreseen from the context of the present application, a transmission ratio that deviates slightly from the value 1000 is completely meaningless. Therefore, the “value 1000” recited in the original filed application document is an obvious mistake. The technical solution defined by the obvious mistake cannot bring about the desired technical effect in the technical field of the present application.

2) The present application describes that the effective diameter of the two gears is only slightly different and the numbers of teeth of the two gears are different only by one. Based on the common knowledge of transmission mechanism in this field, the transmission ratio of the transmission mechanism consisting of the two gears should deviate slightly from “1”, and not possibly from “1000”, “100” or “10”.

Furthermore, although the text of the priority document cannot be cited to support the amendment in the subject case, we still reminded the examiner to take a look at the German priority document, where in the same line of the value “1,000” there is also recited the value “0,5”. It can be inferred therefrom that in German the sign “,” indicates a decimal point marking the integer digits; so “1,000” in German is actually “1.000”. This different usage of decimal points is caused by the linguistic convention of the German language. In German, the comma “,” is the decimal point while the thousandths is denoted by the period “.”.

IV. Conclusion

By our above arguments, the examiner was convinced and accepted the correction of the “obvious mistake”. The go-beyond-scope problem was eliminated, avoiding being rejected due to the mistranslation.

Despite of the correction of “obvious mistake” in the subject case being approved by the examiner, the process was not smooth and depends greatly on the subjective judgment of the examiner. There was great uncertainty in how much correction the examiner can accept. As a result, additional time and costs were incurred to the client. In light of this, it would still be the best to be precautious. The patent attorney should be responsible and constantly check the consistency between the translation and the original application document in preparing a foreign patent application. For any confusion, the attorney should further study the technical solution and consider the intended expression from the perspective of the applicant and the inventor, so as to prepare the translation and determine the terminology in line with the technical principle.

When encountered with a mistake in the translation needing to be corrected, the attorney should state the reason for the amendment in depth and explain that the modified solution is the only possibility in order to convince the examiner to accept the amendment.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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Linda Liu & Partners

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