Over the last few years, patent filings in northeast Asia – specifically China, Japan and South Korea – have grown significantly – and it doesn’t look like a decrease is in sight. In fact, this growth has contributed to the strongest rate of global intellectual property (IP) growth in nearly two decades, according to the World Intellectual Property Indicators 2013. The State IP Office (SIPO) in China accounted for the largest number of applications received by any single IP office (652,777). Japan ranks second in applications received (342,796) with the Republic of Korea ranking fourth (188,915).
It’s no surprise then that MultiLing is seeing increased demand for IP translation services across Asia. I sat down with my colleague, Adam Bigelow, who serves as the director of MultiLing’s Asia region, to discuss the unique set of challenges filing in these countries presents for both the translators and our enterprise clients. We spoke about Japan first, since this is where Bigelow is based. Our discussion on China and Korea will follow in the next few weeks.
What are some of the unique challenges of filing in Japan?
Translating patents into Japanese is a big challenge. According to a recent study by a German institute, Japanese is tied with Chinese as the two languages that have the most problems with incorrect translations. Both languages have a higher error rate for IP translations, which means that the patent translation process should be highly efficient and intensive. Without adequate Japanese translations, the nature of the patent will suffer and the meaning will be compromised.
A Japanese patent also requires a complete translation into Japanese characters. To complicate this further, the Japanese language uses 4 different alphabets, the phonetic hiragana and katakana, the traditional Chinese character-based Kanji, and the Romanized western alphabet. In many cases, technical terms can be rendered in more than one alphabet and choosing one over the other may result in different interpretations (e.g. kanji is generally interpreted more narrowly than katakana). This is part of the difficulty involved in performing an English-to-Japanese translation.
So what can companies do to ensure their patents are properly translated into Japanese?
This means that to attain the highest level of accuracy within translations of your patent, enterprises need a combination of highly skilled translators and a terminology management system that enables them to reuse previously translated content. Without these two translation methods working in tandem, there is far more room for error and inconsistency.
Any other challenges?
Unlike most countries, Japan requires enterprises with offices outside of Japan to hire a patent agent residing in Japan. This is often a Japanese patent attorney or a project manager.
Filing patents in Japan can also be extremely intricate because of the extra steps required after filing the patent application. For example, a Request for Examination must be submitted within three years of submitting the application or the patent will not be granted and will be considered withdrawn. This request essentially establishes that an application has been filed and that it is ready for review by the Japanese Patent Office (JPO).
What are some other Japanese patent laws we should know about?
Japan’s patent law is based on the first-to-file system, whereby the first party to file is granted the patent. The inventor must submit a request, specification, claims, any drawings necessary, and the abstract to the JPO. Japan patent law allows an application in foreign languages (currently only in English), if the applicant submits a Japanese translation within 14 months from the filing or priority date.
Japan also allows a six-month grace period for disclosures made through an experiment, publication, or a presentation at a study meeting or an exhibition, or when the invention becomes publically known against the applicant’s will. Such disclosures do not form part of the prior art. This exemption is much broader than the one available under European patent law, but is significantly narrower than that provided under U.S. patent law.
Japan seems to have some unique requirements about prior art. What can you tell us about this?
Yes, published Japanese patents contain a vast amount of crucial information when filing a patent in Japan. However, these previous patents have been filed in Japanese, which makes the research process difficult for foreign filers. While technology such as the European Patent Office’s Japanese IP translation system (providing Japanese-to-English translation) may simplify the search for prior art, it should not replace a human translator for the patent application itself.
Any final words?
When translating into Japanese or any Asian language, you really need to have someone on the ground that knows the language, culture and filing process – including where to find case histories and related art. It’s invaluable, and in the case of Japan, required by law.