German Federal Supreme Court strengthens position of foreign-language patent applicants

Mistakes in the German translation of a patent application filed in a foreign language can be corrected anytime and do not lead to loss of the patent.

At the German Patent and Trademark Office (GPTO) patent applications can be filed that are not composed in the German language. The applicant thus safeguards the filing date for the technical disclosure content of his foreign-language application. However, a German translation must be filed within three months after the filing of the foreign-language application which then becomes the basis of further examination procedure. In the present case, the Federal Supreme Court decided on the consequences which omissions and mistakes in the German translation may trigger.

In the case to be decided by the Federal Supreme Court the GPTO had ruled that a foreign-language patent application was to be taken as not filed if later, after the three months period, the translation showed any omissions. The omissions became manifest in that only 12 of the 26 claims of the foreign-language application were entirely translated. The legal fiction of the non-filed application – that is the denial of the filing date – is provided for by the law (Section 35 (2), p. 2 German Patent Act) in case of a translation not duly filed within the deadline. The GPTO had therefore equated a faulty translation with a missing translation.

In its decision of July 18, 2011 – X ZB 10/10 – the Federal Supreme Court found that such conduct was contrary to the spirit and purpose of the law, since by Section 35 German Patent Act the non-German applicant was explicitly given the possibility to safeguard the disclosure content of his foreign-language application. The foreign applicant should not be forced to file a priori in the German language, because in this case, he would expose himself to the danger of losing technical disclosure content which could be missing later, if the case may be, for delimitation vis-à-vis the prior art. On the other hand, it would not make sense to first give the possibility to the applicant to safeguard his filing date for his foreign-language application, and to then deny that filing date if the subsequently filed translation is faulty.

The Federal Supreme Court does not find the minimal requirements for the translation to be higher than the foreign-language application itself. These minimal requirements are: the name of the applicant, an application for grant and – at least the appearance of – a description. The law does not require any patent claims for the granting of an application date. If the above preconditions for a translation are fulfilled, the legal fiction of the non-existent application does not apply, which means that in the concrete case the claims missing in the translation did not trigger the legal consequence of the loss of the application date.

The decision is very welcome since it clarifies that mistakes in the translation of patent applications not filed in the German language are not legally detrimental. Such mistakes do not lead to loss of the application date and can be corrected at any time during the application proceedings. From an attorney’s point of view, the decision is also to be evaluated very positively. If the Federal Supreme Court had decided that mistakes in the patent applications may indeed lead to a loss of the application date, the German representative of the applicant would be exposed to substantive liability risks. He would have the choice to either file the foreign-language application of his client as it is, and to file a translation later, or to file a German translation directly. The first alternative would involve the risk that a subsequently filed faulty translation may lead to a loss of the application date. The second alternative entails the risk to lose technical disclosure content which may later be missing, as the case may be, for delimitation against the prior art.