Filing Patents in Asia 101

IPFrontline.com

By Adam Bigelow, Director, Asia Region, MultiLing

Filing patents in any foreign country comes with a unique set of challenges, from learning new laws and filing processes, to effectively searching patent databases in local languages, and translating to and from these languages.

When translating to and from Asian languages such as Chinese, Japanese and Korean, these languages have their unique set of challenges. A 2013 study conducted by the Steinbeis Transfer Institute of Stuttgart, Germany, showed that patent errors happen most often with these Asian languages. While not impossible to overcome these challenges, enterprises currently seeking to do business in these Asian countries often experience years of lost revenue due to longer time-to-grant for their patents, more office actions and limited scopes of patent rights.

Having an expert in each country that not only knows the language, but also the culture and filing process of each country – including where to find case histories and related art – is critical. Those filing for patent protection, however, should be familiar with key requirements in these three countries to facilitate patent protection.

China

Laws

While China established protection for inventions, utility models and designs in its 1984 introduction to patent law, its 1992 amendment extended rights to microbiological products and pharmaceutical and chemical inventions. Chinese patent laws include:

No Mistranslation Amendments: An applicant must provide China’s State IP Office with a written request, description and abstract, and a series of claims in either Chinese or English, with Chinese translations included. Amendments related to errors in translation are not allowed.

Grace Period: There is a six-month grace period for public disclosures if the invention was shown in international exhibitions sponsored or recognized by the Chinese government, or published at certain predetermined academic or technological conferences.

Filing Paths

As in other countries, foreign entities can file for patent protection in China through either the Patent Cooperation Treaty (PCT) or Paris Convention. To get a patent approved more quickly, the applicant should consider filing directly in China via the Paris Convention.

If patents have previously been granted and validated in other countries, the Patent Prosecution Highway (PPH) between SIPO and the European Patent Office (EPO) – and other important patent offices – will significantly expedite the examining procedure in China. SIPO recognizes the results of the EPO examination and may grant a patent directly on the claims that EPO allowed. Thus, if the inventor files an application with EPO first and then files the same application in China, inventors should consider filing a PPH request to expedite the examination and decrease overall costs of obtaining a patent in China.

Translation Issues Specific to Chinese

In addition to ideographic characters, Chinese employs a radically different sentence structure than other languages with Germanic or Latin roots. For example, while English uses verb tense to indicate whether an event has happened or will happen, Chinese uses adverbs and context clues. Translation into an Asian language like Chinese requires a full understanding of the original source, followed by what some call a “transcreation”, done sentence-by-sentence. If the original concept in a sentence is not fully understood, the translation of that sentence will easily reveal the misunderstanding.

Other translation issues with the Chinese language include two different writing systems (traditional and simplified); not using articles such as ‘the’, ‘a’ or ‘an’; and plurality, as Chinese doesn’t employ the concept of adding an “s” or other such letters to indicate more than one, instead requiring a qualifying phase such as “a plurality of.”

Japan

Laws

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 Japan Patent Office (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. However, like in China, the applicant may not amend the foreign language file.

The following laws also apply:

Patent Agent: Enterprises that have their premises established outside of Japan need to hire a patent agent residing in Japan. Often, this person is a Japanese patent attorney, although it can also be an administrative figure with an address in Japan. Often, the patent agent is the project manager, ensuring that the process of patent filing goes smoothly, including the translation of legal documents from English to Japanese.

Request for Examination: Filing patents in Japan can be intricate because of the extra steps 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 JPO review.

Grace Period: Japan 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.

Filing Path

As in China, foreign entities can choose to file via PCT or the Paris Convention. If previously filed in other countries, they can request participation in the Patent Prosecution Highway.

Prior art contained in Japanese patents

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 EPO’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.

Translation Issues Specific to Japan

A Japanese patent requires a complete translation into Japanese characters. To complicate this further, the Japanese language uses four 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).

Korea:

Laws

Patent Agent: As in Japan, Korea does not allow foreign companies or individuals with addresses outside Korea to file patent applications to the Korean IP Office (KIPO) without being represented by a Korean attorney or agent.

Filing Process: As in China and Japan, foreign entities can choose to file via PCT or the Paris Convention, or if previously filed in other countries, additionally apply for participation in the Patent Prosecution Highway. If PCT is chosen, a Korean national phase application must be filed within 31 months of the PCT filing date (or 31 months of the earliest priority date, if priority is claimed), and a Korean translation may be submitted within 14 months of the earliest priority date. Accordingly, the system requires that the specification be translated into Korean efficiently and on time. The application will be considered withdrawn, if the Korean translation is not submitted within 14 months.

Amendments: Unlike the universal process, where new matter should be avoided at all cost, Korea accepts an addition as a legal amendment. The new matter issue is not raised as long as the added limitation is deemed obvious from the specification teachings or drawing illustrations. Starting in January 2015, a Korean translation may be amended based on an application in a foreign language, if the application was filed before the Korean translation was submitted and the correction(s) to the Korean translation must occur within the allowed period of time for amending the specification.

Grace Period: As long as the invention is filed in Korea within one year from the date of public disclosure, the invention is not deprived of novelty or inventiveness. While certain countries accept the grace period for a PCT application based on the grounds that the basis application was filed within one year from disclosure, Korea does not. It is also possible to obtain a one-month extension for filing a Korean translation of a PCT application.

Requirements for Spec: Unlike the United States, Korea does not impose a duty of disclosure (i.e., Information Disclosure Statement). However, the recent trend is that a specification lacking prior art patent data in the background section will be rejected and an office action issued for lack of clarity. However, the addition of prior art patent data is not deemed to be a new matter issue.

Substantive Examination: Like Japan, China and Europe, the KIPO reviews patentability of an application only upon receipt of a request for substantive examination. The deadline for filing a request for substantive examination is five years from the patent filing date (or five years from a date of PCT filing in the case of a PCT national phase application).

Translation Issues Specific to Korean

Like Chinese or Japanese, Korean is a character-based language, and thus the risk of mistranslation is very likely. Different word order from that of English or Chinese also hinders translation technology and causes a higher likelihood of translations errors.

Challenges Accepted

As an increasing number of foreign entities seek protection for their intellectual property in these northeastern Asia countries, knowing the unique challenges of filing in these countries – and partnering with those intimately familiar with the language, culture and laws – will ultimately reduce office actions, decrease the risk of litigation and speed time to grant.

For the original article, visit http://ipfrontline.com/2015/03/filing-patents-in-asia-101/