How to Deal With the Risk of Things Being Lost in Translation in a Divisional Application

2021.05NEW

© btrenkel/i-Stock

“More than this, there is nothing . . .”-Roxy Music (Lyrics by Bryan Ferry; © BMG Rights Management)

Similar to what Bill Murray sang at the karaoke bar in the movie Lost in Translation, when a divisional application is filed, it is crucial to make sure that nothing essential is lost therein. Ensuring that nothing is lost calls for careful consideration when a translation comes into play, i.e., when the earlier (parent) application was originally filed in a foreign language.

This article will discuss how to deal with such lost-in-translation issues regarding divisional applications. As the background for this is somewhat complicated, we will start with an explanation of the requirements for a valid divisional application, followed by practical advice in this regard.

The Requirements for a Valid Divisional Application
If any of the following time requirements and substantial requirements are not met, the divisional application will be treated as being filed on the actual date; therefore, if this date is after the publication of the parent application, the novelty of the divisional application will be denied. Deficiencies regarding substantial requirements can be remedied by an amendment to the specification of the divisional application in question, as long as this amendment does not amount to added matter (new matter).

Time Requirements
A divisional application can be filed:
  a) any time before the end of the response term for the 1st Office Action (OA);
  b) during the response term for a subsequent OA;
  c) within 30 days after a decision of grant; and
  d) during the appeal period (after a decision of rejection).

Substantial Requirements
A valid divisional application must satisfy all of the following requirements:
  i) only a portion of the inventions disclosed in the specification of the parent as of immediately before the filing of the divisional application is covered by the claims of the divisional application;
  ii) none of the matters disclosed in the divisional application amounts to added matter (new matter) in view of the specification as filed of the parent application (i.e., the application in the original language); and
  iii) none of the matters disclosed in the divisional application amounts to added matter (new matter) in view of the specification of the parent application as of immediately before the filing of the divisional application (i.e., the application in Japanese).

The requirement i) above is considered to be normally met. Moreover, for a divisional application filed when an amendment to the specification is admissible, if the requirement ii) is met, the requirement iii) is automatically met.
This is because in such a situation, the requirement iii) can always be met by amending the specification of the parent before filing a divisional application, if necessary; the reason therefor is that the specification of the parent can be expanded so that anything falling within the specification in the original language is covered (even so, an actual amendment to the parent is not necessary in order to satisfy the requirement iii)). In other words, if a divisional application is filed when an amendment to the specification is admissible, only the requirements i) and ii) need to be met.

Practical Advice

Level 1
The following divisional applications can be filed when an amendment to the specification is admissible (i.e., wherein it is only necessary to meet the requirements i) and ii)):
  – divisional applications filed any time before the end of the response term for the 1st OA;
  – divisional applications filed during the response term for a subsequent OA; and
  – divisional applications filed simultaneously with the filing of an appeal.

For these divisional applications, we recommend filing in the original language, followed by the filing of a Japanese translation thereof. The reason therefor is that doing so will allow you to amend the specification of the divisional application based on the original-language version of the specification, while avoiding the risk of a situation in which a mistranslation cannot be remedied.

Level 2
The following divisional applications can be filed when an amendment to the specification is inadmissible (i.e., wherein the requirement iii) must be met, in addition to i) and ii)):
  – divisional applications filed within 30 days after a decision of grant; and
  – divisional applications filed during the appeal period, but not filed simultaneously with the filing of an appeal (during the appeal period, an amendment is only admissible when it is filed simultaneously with an appeal).

Special care is necessary for these applications because of the additional requirement iii). Specifically, if a Japanese translation of the specification of a parent application includes a certain type of translation error, it would normally be impossible to meet both of the requirements ii) and iii); therefore, such divisional applications will be considered to be filed on the actual date. This problem may be overcome by deleting the term, phrase, etc. relating to the translation error from the divisional application in question, as long as doing so does not amount to added matter (e.g., as long as the term, phrase, etc. only appears in a dependent claim). In this context, it should be noted that the risk of the inability to delete such a term etc. becomes higher after grant, since amendments made after grant must satisfy additional requirements.

This can be illustrated as follows by using examples of typical translation errors as explained in Part VII, Section 2 of the Examination Guidelines. This section of the Guidelines does not address issues relating to divisional applications, but does provide general guidance on foreign-language applications. Both of the cases below relate to the erroneous omission of technical features in the original language. Further, one of the cases relates to an unallowable generalization, while the other case relates to a missing alternative feature.

Type I: Unallowable generalization
If the original term “rubber treated to be heat-resistant” is mistranslated into “rubber” in the Japanese translation of the parent and this translation error remains uncorrected when filing a divisional application, it would be impossible to meet both of the requirements ii) and iii) without deleting the corresponding term in the divisional application. This is because these requirements require that the corresponding term in a divisional application must not be added matter (new matter) in view of both “rubber treated to be heat-resistant” (in the specification as filed of the parent application) and “rubber” (in the specification of the parent application as of immediately before the filing of the divisional application); however, this is theoretically unachievable.

Type II: Missing alternative features
In contrast, even if the original phrase “Feature A may be a1, a2, a3, or a4” is mistranslated into “Feature A may be a1, a2, or a3” in the Japanese translation of the parent and this translation error remains uncorrected when filing a divisional application, it would be possible to meet both of the requirements ii) and iii). This is because these requirements require that the corresponding phrase in a divisional application must not be added matter (new matter) in view of both “Feature A may be a1, a2, a3, or a4” (in the specification as filed of the parent application) and “Feature A may be a1, a2, or a3” (in the specification of the parent application as of immediately before the filing of the divisional application); this is achievable if the phrase “Feature A may be a1, a2, or a3” is selected in a divisional application at the time of filing, or even later by way of amendment.

Since it is generally hard to confirm beforehand that a Type I error is not included in any of the essential features in a Japanese translation (including an essential feature to be incorporated into an important claim in the future, by way of amendment), we recommend, as a safety measure, avoiding the filing of a divisional application when an amendment to the specification is inadmissible. Specifically, you should consider the following.

When receiving an OA:
Please consider filing a divisional application in order to avoid the risk of receiving a decision of grant before doing so, and thereby losing the opportunity to file a Level 1 divisional application.

When receiving decision of rejection:
Please consider filing a divisional application simultaneously with the filing of an appeal, even if there is no longer a need to pursue the parent application (appeal fees can be minimized by reducing the number of claims to one).

Nevertheless, if you decide to file a Level 2 divisional application, unlike a Level 1 divisional application, we recommend doing so in Japanese. The reason therefor is that you would otherwise need to pay extra official fees for filing in a foreign language, even though the extent covered by such a divisional application does not alter depending on the language of the divisional application. This is because in order to meet the requirements ii) and iii), any subject matter that is only disclosed in the specification of the parent in the original language cannot be pursued.