Avoiding Getting Lost in Translation

In many non-English speaking jurisdictions, where a translation into the national language is required to complete national phase entry of a PCT application, it’s possible to lodge the translation subsequent to the national phase entry deadline.  Being able to lodge a translation subsequent to national phase entry can be a great help, particularly if the Applicant makes a late decision to proceed in the country in question.  Depending on the timing there may not be sufficient time to organize a translation or there may be urgency surcharges if a translation has to be done in a rush.

For example, in Japan it’s possible to lodge a Japanese translation within two months of national phase entry provided that a Form 53 has been lodged by the national phase entry deadline.

In Brazil a translation into Portuguese of at least the claims must be lodged by the national phase entry deadline, but the remainder, i.e. the greater part, of the translation can be lodged subsequently in a time limit set by the Brazilian Office.

New Zealand has a very civilized system that requires a verified English translation to be lodged within three months of national phase entry, extendible up to a total of five months.

In the USA the translation can be filed subsequent to national phase entry but doing so will incur an additional processing fee from the USPTO.

In contrast, the Australian Patents Act isn’t so forgiving to applicants of non-English patent specifications.  The Australian Act doesn’t  provide any mechanism for late filing of a translation when entering the Australian national phase.

Section 29A(5) of the Australian Patents Act stipulates that:

             (5)  An applicant of a PCT application must do the following within the prescribed period [31 months from earliest priority date]:

                     (a)  if the application was not filed in the receiving Office in English—file a translation of the application into English;

                     (b)  in any case—file the prescribed documents and pay the prescribed fees.

Although the Australian Commissioner of Patents has the power under Regulation 3.2C(4) to direct an Applicant to provide the required Address for Service in Australia or New Zealand, subsequent to national phase entry, there is no corresponding power to allow for late lodgment of a translation.

As of 25 September 2019, the requirement for a Certificate of Verification of a translation, i.e. a certificate by the translator or another person fluent in both the original language and English, attesting to the accuracy of the translation, is no longer required unless directed by the Commissioner.

Furthermore, Regulation 3.5AF (2C) provides that:

   (2C)  If the applicant for the PCT application becomes aware of an error or omission in the translation of the specification, the applicant may file a corrected translation of the specification.

In addition 3.5AF(2G) provides that:

   (2G)  An error or omission in a translation of a specification of a PCT application, or the filing of a corrected translation of a specification of a PCT application, does not have the effect that the requirements of subsection 29A(5) of the Act have not been met in relation to the application.

Therefore, in the event that an Applicant has no time to have a formal translation prepared prior to national phase entry into Australia, one possibility is to submit a machine translation into English in order to meet the requirement of section 29A(5), that a translation be lodged by the 31 month deadline, and then subsequently lodge a corrected translation under Regulation 3.5AF(2C) if the machine translation is found to contain errors or omissions.

Of course, the best possible way is to file a complete and accurate human translation by the national phase entry deadline.  However, if that is simply not possible due to time constraints, then a machine translation lodged prior to the deadline, followed with a corrective human translation may be the only option.

Please do not hesitate to contact our patent attorneys if you require any further information relating to filing requirements in Australia and New Zealand.

photo of dictionary page showing german and english translation
Michael Buck
written by Michael Buck, Principal