Just a few years ago, the German IP profession suddenly became very, very nervous. The Regional Court of Düsseldorf had issued its first of a handful of decisions wherein the German part of a European Patent was declared ineffective ex tunc for lack of a proper translation of the patent specification into German. This was the Tamsulosin case published in GRUR Int. 2007, 429. In this case, one description page (from the section titled “Background of the Invention”) was inadvertently missing from the German translation filed with the Patent Office. This missing page in the translation – probably the result of a copying or postage error, or even a loss of the page only within the Patent Office, this could never be clarified – was sufficient for the Regional Court to dismiss Patentee’s application for a preliminary injunction and to declare the entire patent ineffective, i.e. unenforceable, for Germany. While this appears to be quite a draconic penalty for failure to (completely) fulfil a formal requirement, there was even worse to come for the patentee in one of the next decisions of the Regional Court of Düsseldorf (Court File No. 4b O 146/07) announced in 2009. In this case, the German translation was essentially complete, with the sole exception that the sub-headings used in the English text, i.e. “Technical Field”, “Background Art”, “Brief Description of the Invention”, “Brief Description of the Drawings” and “Best Mode for Carrying out the Invention”, had been omitted in the German translation. This was enough for the Regional Court of Düsseldorf to hold the entire patent ineffective for the territory of the Federal Republic of Germany. The Regional Court took an extremely rigid view on what was necessary to fulfil the statutory requirement of filing “a German translation of the patent specification”. It argued that the translation must be 100% complete, and therefore any missing parts, as irrelevant as they may be for the technical content of the patent, are lethal if the patent is to be enforced in infringement proceedings.
This approach met widespread criticism, but the Regional Court of Düsseldorf (followed by other Regional Courts) applied it for quite some time and the Presiding Judge of one of the Boards of the Regional Court of Düsseldorf even published an article in a law journal (Voß, GRUR 2008, 654), justifying the court’s approach. As a consequence, patentees became quite concerned about the enforceability of their patents in Germany and their professional representatives worried about their professional liability in the case of such a minor incompleteness which had never been thought to matter or had even thought to be good practice before. It is likely that several thousands of German translations were carefully scrutinized again and numerous requests for correction or completion were filed to reduce the risk of similar decisions.
Fortunately, the pendulum then slowly swung back. The Regional Court of Düsseldorf itself withdrew somewhat from its earlier line that the translation has to be 100% complete, ruling that the omission of a few single words (in this case e.g. the headings “Description” and “Claims”) did not cause an information deficit in the German version and was thus harmless – cf. Olanzapine (4b O 63/09), announced in June 2009.
At around the same time (mid 2009), the Regional Court and Higher Regional Court of Munich decided another case against the patentee. In this case, both the heading “description” and 13 lines in the description text were missing. However, on further appeal, the Federal Court of Justice reversed the decision in record time and remanded the case back to the Higher Regional Court for further consideration and judgment on the merits thereof – cf. Nabenschaltung II (Xa ZR 74/09, announced 18 March 2010). The Federal Court of Justice held:
If the patentee has timely filed a translation of a European patent which was not published in German, Article II § 3 para 2 IntPatÜG (Law on International Patent Conventions) does not apply and the legal effects of the patent for the Federal Republic of Germany come into being even if the translation has omissions . Such omissions are fundamentally to be regarded as errors of translation, the legal consequences of which are determined by Article II, § 3 para 4 and 5 IntPatÜG.
In short, such omissions in the translation can be corrected just like ordinary errors, with the only penalty being that a third party that was bona fide relying on the accuracy of the (incorrect) translation and was therefore using the invention in Germany has a right of free continued use thereof.
This decision of the Federal Court of Justice was much welcomed by the patent profession and translators, since it took out most of the steam from the earlier decisions of the Regional Courts of Düsseldorf and Munich. The German patent litigation world was in order again, and objections by defendants relying on an incomplete or incorrect translation have once again become very rare.
But what about the prosecution world? Since 1998 it is possible to validly file a German patent application in a foreign language. The relevant statute is Section 35 of the Patent Act of which the relevant parts are reproduced below:
(1) Should an application not be drafted in German or should parts not be drafted in German, the applicant shall be required to file a German translation within three months of the filing of the application. (…)
(2) The filing date of a patent application shall be the date on which the documents referred to in Section 34(3), nos. 1 and 2, have been received and, if they contain any statements that would appear to constitute a description, the date on which documents referred to in Section 34(3), no. 4, have been received
1. at the Patent Office; or
2. at a Patent Information Center (…)
Should the documents not be drafted in German, this shall apply only if a German translation is received by the Patent Office within the time limit referred to in the first sentence of subsection (1); if no such translation is filed, the application shall be deemed not to have been filed. (…)
The open question, therefore, was what happens when a German translation is seriously incomplete and a request for correction is not filed within the three-month term provided in Sec. 35(1). This decision had to be made in the case of a German patent application directed at a method and device for forecasting/detecting polishing end point and a method and device for monitoring real-time film thickness. In this case, the applicant had indeed filed a fairly incomplete translation, i.e. only the first three lines of claim 13 and no translation of original claims 14-26. As no request for correction was filed within the statutory 3 month period, the German Patent and Trademark Office deemed the application as not having been filed and refused to even assign it a filing date. Applicant appealed.
As Mark Twain recognized, Germans love loooong words, and this is even more so at the level of the Federal Court of Justice. The “method and device for forecasting/detecting polishing end point” was accordingly translated and merged into a single German word, i.e. “Polierendpunktbestimmung”, and this became the keyword of the FCJ’s (early) Christmas present to the patent profession in 2011 (File Number X ZB 10/10, available here). Namely, the Federal Court of Justice held that even a rather serious incompleteness of the German translation, as in this case, can still be rectified even after the 3-month period and constitutes no reason to deem the application as “not to have been filed”. The headnotes of the decision read as follows:
a) The legal consequence that the foreign language patent application is deemed not to have been filed for lack of timely filing of a German translation, does not ensue if the applicant files, within three months after the filing date, a German translation of the application pursuant to Section 34 para 3 no 1 and 2 German Patent Act, and later files information in German language that is at least prima facie to be regarded as a description of the invention, and if the translation is certified by a lawyer or patent attorney or is made by an officially authorized translator.
b) The certification of the translation requires a declaration that is at least of the essence that the translation is, to the best knowledge of the Authenticate, a proper and complete transmission of the foreign application documents into the German language.
Thus, the “Polierendpunktbestimmung” decision once again confirms the Federal Court of Justice’s pragmatic and generous way of dealing with translation issues and, in a broader context, with human failure. It deserves a note of appreciation and certainly constitutes a good message for the upcoming Christmas period. And so the author takes this opportunity to wish all readers happy holidays and a lot of good decisions to report in the forthcoming year.
Thorsten Bausch
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