KHE International Patent Office
Case Study

Failure due to poor translation of PCT specifications without technical understanding

Company A, a world-famous consumer electronic company, held a basic patent regarding data transfer system for DVD recorders registered in major countries after submission of a PCT application.  However, the application was rejected only in Japan due to lack of novelty cited from an invention of communication technology that large Japanese consumer electronic Company B submitted.  Company A appealed against examiner's refusal decision but the appeal was dismissed.  The original PCT application was written in English and the Japanese translation given in Japanese application was not precisely described to reflect the technical terminology or to provide technically meaningful presentation.  In office action, the claims were amended using technical presentation described in the articles in public domain, therefore lack of novelty of the invention was not resolved.  As the result, Company A was forced to give up the tie-up with Company B for co-developing DVD products.

Cause of Company A’s failure

The inventor of Company A could not understand or correctly review the content of the Japanese specification.  The Japanese attorney in fact did not understand the technical sense and values of the invention.  The communication between the inventor and the attorney was not enough to appropriately complete the amendment.