Indefiniteness: Bad Translation/Lack of Definition Redux

April 15, 2021 – Article

            I previously wrote about a Federal Circuit Opinion that affirmed a lower court ruling that the term “half-liquid” was indefinite despite the apparent mis-translation of the original Italian term “semiliquido” https://www.lifesciencesipblog.com/indefiniteness-bad-translation-lack-of-definition-or-both. On March 1, 2021, the losing party (IBSA Institut Biochimique, S.A., Altergon, S.A., IBSA Pharma Inc.) filed a petition for writ of certiorari in the U.S. Supreme Court and so I thought it would be interesting to take another look at this case. Indeed, the petitioner presented a novel question for review of the lower courts’ decision of indefiniteness of the term at issue. The question presented in the petition is:

Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority patent application, despite its submission to the U.S. Patent & Trademark Office during prosecution of the patent-in-question, because it is written in a foreign language and exhibits minor differences from the U.S. patent resulting from a translator’s judgment.

            In essence the argument presented in the petition is that the Federal Circuit decision improperly treated a foreign applicant/inventor differently because of the translation error (semiliquido apparently is correctly translated to semi-liquid not half liquid) because the lower courts allegedly excluded the understanding of the inventors’ in their native Italian. This statement from page 5 is illustrative:

If the lower courts’ view holds, precedent will be set to give foreign applications no weight in claim construction proceedings, as the types of differences the courts found dispositive here are common with translations, no matter the foreign language. That rule would flatly contravene the requirement that a foreign application be treated equally as a domestic one. And the rule would have profound implications for foreign applicants’ right to claim priority to their domestic applications.

            On April 5, 2021, the U.S. Supreme Court denied, without explanation, the petition. My commentary on the case remains: humans make errors so pay careful attention to translations, particularly to important features of the invention. Despite the petitioner’s arguments here, as most patent practitioners should be aware there are various times during the life cycle of a patent application/patent when corrections can be made to the specification and/or claims, e.g., after filing, during prosecution, before issuance, and post-issuance via certificates of correction (for relatively minor errors) and reissues. I am not aware of any instances where foreign applicants have any disadvantages in these types of correction procedures at the USPTO.