KHE International Patent Office
Case Study

Failure due to vague expression in Japanese translation

Company A, manufacturing industrial machines, submitted a patent application regarding maintenance system of fabrication machines characterized with computer software algorithm to EPC and could obtained patent rights in nine designated countries in EU.  Company A submitted the same invention to Japanese Patent Office based on the EPC application.  The original application provided technical scope of the invention by discussing theory of the algorithm, function of the computer software and behavior of the hardware in conjunction with the software.  However, the Japanese examiner rejected the application with reason, that is, the invention lacks industrial applicability and inventiveness with mentioning that the invention is “a simple assembly of well-known hardware devices operating under a rule of mathematical algorithm.”

Cause of Company A

The technical scope and meanings, especially the cooperative behavior between computer software and hardware devices in the system function, were not clearly presented or discussed in the specification of the Japanese translation.  Furthermore, Japanese attorney did not submit appropriate opinion and amendment in the office action.  As the results, the reason for refusal was not resolved.