5.6.2.5 Translation of Specifications (requirements for certification, poor translations)

Date Published

Key Legislation:

Patents Act:

  • s104 Amendments by applicants and patentees  

Patents Regulations:

  • reg 1.3 Interpretation
  • reg 3.5AF PCT applications--translations and prescribed documents
  • reg 3.5AC PCT applications--amendment
  • reg 13.4 Prescribed period: acceptance of request and specification
  • reg 22.13 Declarations
  • reg 22.15A Certificate of verification and corrected translation

Patent Cooperation Treaty (PCT):

  • Article 19 Amendment of the Claims Before the International Bureau
  • Article 34 Procedure Before the International Preliminary Examining Authority 

Regulations under the PCT:

  • Rule 91 Rectification of Obvious Mistakes in the International Application and Other Documents  ​​​​​​​

Translation requirements for National Phase entry

Where a PCT application is filed in a language other than English, a translation must be filed for national phase entry. This translation becomes the Australian specification for examination purposes and will be either:

  • a document supplied by the applicant; or
  • a PCT pamphlet which is identified on its front page as an English translation.

The translation and certificate of verification (where required) do not need to be original documents. Photocopies are acceptable, provided they are accompanied by a declaration, properly executed in accordance with reg 22.13, to the effect that they are true copies of the originals.

The translation must be in respect of the whole foreign specification, including the claims, any substantive text that may appear on the drawings, graphics or photographs and any official certificates annexed thereto. For the translation to be a true translation, it must not incorporate any extraneous matter.

Note that where a translation of the PCT application is not supplied, CEG will not allow the application to proceed to national phase. However, if such a case accidentally reaches examination, it is to be returned to CEG.​​​​​​​

Translation Supplied by the Applicant

For translations supplied by the applicant, examiners are only required to check that there are no obvious discrepancies (for example, missing pages) and that the translation is suitable for reproduction.

Certificate of Verification

For translations filed on or before 25 September 2019, a certificate of verification for the translation must also be filed. In this situation examiners are required to check the verification. 

Under reg 1.3, a "certificate of verification" is a statement that:

  • a document to which the statement relates is a true and complete translation of the relevant document to the best of the knowledge of the person who signs the statement; and
  • is dated and signed.

A simple verification will be to the satisfaction of the Commissioner (an example can be seen in 5.6.2.5.1 Annex A - Example Verification of Translation Letter).

Where a translation is provided, but there is no verification, an objection should be taken (see, for example, PERP code [K1]).

Verifications will often state that ‘the translator is familiar with both languages involved’, however, reg 1.3 does not require such a statement.

Incomplete Translation

Note that the following information only applies to translations filed on or before 25 September 2019. 

Where the translation is incomplete (for example, missing a page), examiners should contact the applicant since the translation is taken to be the Australian complete specification. Examination should otherwise proceed to the extent that the translation allows. Where the translation is so incomplete that examination cannot be undertaken, the case file should be referred to CEG.

Incorrect Translation

Note: The following information only applies to translations filed after 25 September 2019. 

Where examiners have any doubts about the accuracy of the translation supplied by the applicant, they should first consult Patent Oppositions.  If Patent Oppositions are in agreement, then the applicant should be requested to file either: ​​​​​​​

  • a corrected translation of the specification and a certificate of verification for the corrected translation; or
  • a certificate of verification for the translation.

In this situation the period of time for acceptance may be extended by up to 2 months – see Request for Corrected Translation or Certificate of Verification for the procedures to be followed.

Drawings, Graphics, and Photographs with foreign language text

In general, the drawings, graphics, and photographs forming part of the foreign language specification (usually the pamphlet) are the ones that form the Australian complete specification. However, replacement drawings, graphics and photographs can be filed with the translation.

Where the drawings, graphics and photographs include foreign language text:

  • in the case of translations filed on or before 25 September 2019, examiners should object and request a translated version; or
  • in the case of translations filed after 25​​​​​​​ September 2019, examiners should follow the procedures outlined in Request for Corrected translation.​​​​​​​​​​​​​​

Abstract

Although the translation of a PCT application may include a translation of the abstract, this is not part of the Australian complete specification and its inclusion should be disregarded for all purposes pertaining to the complete specification. An abstract in this respect is taken to be any passage in the translation having the heading "Abstract".

Translation Supplied by the International Bureau

Where the filing language of the international application is not one of the languages of publication* under the PCT, the Receiving Office may forward an English translation of the international application to the International Bureau and this is published as the pamphlet rather than the original language version. These pamphlets are readily identified from their front page (see 5.6.19 Annex D – PCT Pamphlet Front Page, where the publication language [INID Code (26)] differs from the filing language [INID Code (25)]).

In these cases, the file will not include a copy of the foreign language specification.

Where the file contains both a translation in the form of a pamphlet and a translation supplied by the applicant, the examination report should be based on the pamphlet and the applicant informed of that fact.

For translations filed on or before 25 September 2019, there is the requirement that the translation be verified. In this situation, the pamphlet provided by the International Bureau is considered to be the verified translation of the PCT application.

Where examiners have any doubts about the accuracy of the translation supplied by the International Bureau, they should follow the procedures outlined above in Incorrect Translation.

*The languages of publication under the PCT are Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish.​​​​​​​

Translation of PCT Amendments 

Requirements for Translation of PCT amendments

Amendments made under Article 19, Article 34 or Rule 91 can amend the contents of the translation depending on certain timing requirements. The following apply:

  • The translation becomes the complete Australian specification on the date it is filed. Therefore, any previous amendments made under Article 19, Article 34 or Rule 91 will need to be present in the translation to form part of the complete Australian specification. It is permissible to file the translation of the amendments as a separate document provided the translations are filed conjointly.
  • Any PCT amendments made after national phase entry do not form part of the translation, unless pursued under s104 (see Translation of PCT Amendments Not Filed below).
  • Article 34 amendments are only effective if the IPRPII was established before national phase entry, regardless of when the amendments were filed (see also 5.6.3.1 Consideration of Amendments made prior to Examination​​​​​​​).
  • In the rare circumstance that the translation is filed before the other requirements for national phase entry are met, any Article 19, Article 34, or Rule 91 amendments made between the date of filing the translation and national phase entry will amend the contents of the translation.

Note that where the description and/or claims were amended under Article 19, Article 34, or Rule 91 and a translation thereof has been filed, a translation of the original description and/or claims is not required.

Translation of PCT Amendments Not Filed

If the PCT amendments are not included in the translation, there is no bar to national phase entry and no objection arises. However, as the amendments are not part of the translation, they do not form part of the national phase specification.

Consequently, after entry into the national phase, any subsequent filing of translations of Article 19, Article 34, or Rule 91 amendments do not automatically alter the text of the translation. These amendments will need to be pursued under s104. Examiners may contact the attorney to discuss options for inclusion of the amendments, if they consider the amendments were intended to be incorporated.

Translation Requirements for Convention applications

In certain circumstances, the Commissioner may request an applicant to file a translation of a basic specification (see 5.6.2.8 Convention Applications).

A translation of a basic specification should comprise a full translation of that specification, including any certification.

Similar to translations in National Phase Entry, for translations filed on or before 25 September 2019, a certificate of verification for the translation must also be filed (see 5.6.2.5 Translation of Specifications (requirements for certification, poor translations)).  

A properly verified statement setting out any differences between a translation of a basic specification and the complete specification filed in respect of the Convention application, if it is in English, or a verified translation of the complete specification, if it is not in English, is also acceptable for meeting the requirements of a verified translation of a basic specification.

Certification is in a Foreign Language

The law in countries having a national language other than English may permit or require the basic specification to be filed in English, but the certification by the competent authority of the country's patent office is given in the national language. Where this occurs, a translation of the certificate must be provided.  (For translations filed on or before 25​​​​​​​ September 2019, a certificate of verification for the translation must also be provided).

Where the certificate from the competent authority is printed in two languages, one of which is English, no objection is to be taken and a separate translation of the certificate is not required, even if the non-English text appears to be more extensive than the English text (provided all required particulars are stated in English).​​​​​​​

The introductory pages of French basic specifications may include pages entitled "Requete" and "Page de Garde". Neither of these is required under the Regulations and if present do not need to be translated.

Request for Corrected Translation or Certificate of Verification

Note that the information in this part only applies to translations filed after 25 September 2019.

In rare circumstances where the Commissioner reasonably believes that a translation does not accurately reflect the contents of a document, the applicant may be requested to either file:

  • a corrected translation of the document and a certificate of verification for the corrected translation; or
  • a certificate of verification for the translation.​​​​​​​

(See reg 3.5AC(9), reg 3.5AF(2D) and reg 22.15A).

The applicant has 2 months in which to respond to the request, otherwise the application will lapse.

Examination Practice – Corrected Translation

Where examiners have any doubts about the accuracy of the translation, they should first consult Patent Oppositions to determine an appropriate course of action:

  • where no examination report is ready to be issued; examiners should contact CEG with a request that a corrected translation and/or certificate of verification be obtained from the applicant. Examination should be placed on hold pending receipt of the corrected translation and/or certificate of verification. After receipt of the document(s), examiners should follow the procedures outlined in Extending the Time for Acceptance below; or
  • where an examination report is ready to be issued; examiners should similarly contact CEG to request a corrected translation and/or certificate of verification, but examiners do not need to pause examination. Examiners should in the meantime issue the examination report. The report should include a note informing the applicant that formal notification regarding a request to provide a corrected translation and/or certificate of verification will issue (this will be sent by CEG). The time for acceptance should also be extended as indicated in Extending the Time for Acceptance below.

Extending the Time for Acceptance

Where a request is made by the Commissioner for a corrected translation and/or a certificate of verification, the period of time for acceptance may be extended by up to 2 months. Thus, the final date for acceptance (FDA) will be 14 months from the date of the first report (reg 13.4(1)(c)).

Where examiners consider that the time for acceptance needs to be extended, they should consult Patent Oppositions. A case note should be added to the file, stating that the FDA has changed as a result of a request by the Commissioner for the applicant to provide a corrected translation and/or a certificate of verification.​​​​​​​

The examination report should also indicate that the FDA is a later date. This later date can be specified in the report by including an additional comment in the introductory paragraph. Below is an example statement:

"The provisions of regulation 13.4(1)(c) provide that the final date for acceptance of this application is now <insert appropriate date in bold>.”

In the case of a first report, the following text should also be included:

“You have 14 months from the date of this report to overcome all my objection(s) otherwise this application will lapse.”​​​​​​​​​​​​​​

Poor Translations

Where the translation of a specification is so poor that the scope of the claims cannot be properly determined, and the nature of the invention cannot be ascertained, examiners should raise an objection of lack of clarity (see also 5.6.7.1 Claims are clear and succinct).  

Where it is necessary to restrict the extent of the search and/or report as a result of a poor translation, a note to this effect must be included in the report. The note should indicate that opinion is reserved with respect to those matters not covered by the report.