Intellectual Property Attorneys


The New Patent Law in New Zealand

Filing of U.S. Provisional Patent Applications in Languages Other Than English

6 years ago

In various instances, it may be necessary to file U.S. provisional patent applications in languages other than English.

Concerning the issue of whether a translation of the foreign language text of the U.S. provisional application needs to be filed, it is a best practice to file an English translation at an early point in the pendancy of the provisional application, particularly when market and/or proprietary considerations may require urgent conversion of the provisional to a U.S. non-provisional application in order to issue a U.S. patent at an earliest possible date.

The U.S. patent regulations provide in 37 CFR 1.52(d) that:

A nonprovisional or provisional application under 35 U.S.C. 311 may be in a language other than English. ...  (2) Provisional application. If a provisional application under 35 U.S.C. 311(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.

and the regulations state in 37 CFR 1.78(a)(5) that 

If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5)) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned

Accordingly, to fully safeguard the commercial potential and value of the invention described in the provisional U.S. application, and avoid any later issues that could result, e.g., from USPTO miscommunication or failure to provide notice in a subsequent non-provisional application, it is a best practice to provide an English language translation, with a statement that the translation is accurate, at an early date in the provisional application.


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