Practical Advice
Mixed languages used in an international application
Q: I would like to file a PCT application in German with the European Patent Office (EPO) as receiving Office. The invention is in the field of digital communication and my draft application includes a number of technical terms in English. As English is the language commonly used in this field of technology, the terminology in question would be difficult to translate, and the translation of such key words would appear strange and risk being inaccurate and less succinct. Could the use of English terms be a problem during the PCT procedure?
A: Generally, the PCT requires that the description and claims of an international application are filed in a single language which is accepted by the receiving Office. If any such parts of the international application are in a language that is not accepted by the receiving Office, the Office is obliged to forward the application under PCT Rule 19.4 to the receiving Office of the International Bureau. If the description and claims use two languages and both languages are accepted by the receiving Office, as in your case, it will be up to the receiving Office to decide whether the use of any of the technical terms in English would be considered a defect in the application.
Until recently, there has been no specific provision in the PCT Regulations covering the handling of international applications in more than one language where all languages are accepted by the receiving Office. New PCT Rule 26.3ter(e), which entered into force on 1 July 2024, now provides a legal basis for receiving Offices to better address such situations. Under this Rule, where the description and claims of an international application are filed in more than one language but all those languages are accepted by the receiving Office, the Office may request the applicant to furnish a translation so as to bring the whole application into a single language. This single language must be all of the following: one of the languages of the description and claims as filed, a language accepted by the International Searching Authority (ISA) that will carry out the international search, and a language of publication.
However, before inviting the applicant to furnish a translation to bring the description and claims into a single language, the receiving Office should first consider whether requesting a translation would be appropriate in a particular case. Regarding the use of technical terms in English, it is largely recognized that certain technical fields commonly use English terms. This practice is accepted for PCT applications, even when the primary language of the application is not English. If an application includes specialized vocabulary in a language which is different from the language of the application, it is acceptable if it assists in the understanding of the disclosure. Examples of this include language-neutral terms (such as computer coding language), scientific publication citations, or inventions relating to translation technology. For example, a drawing in an application in the field of translation technology showing a computer screen displaying words in multiple languages should be accepted and the receiving Office will not usually invite the applicant to translate the terms in question (please refer to the PCT Receiving Office Guidelines, paragraph 65B).
However, if the receiving Office comes to the conclusion that the translation of parts of the description and/or claims into German (to correspond to the rest of your international application) would facilitate the understanding of the application, the receiving Office will invite the applicant to furnish the translation within one month of the date of receipt of the international application by the receiving Office. While this would not jeopardize the according of an international filing date, it is nevertheless advisable to translate the parts before filing the application to avoid additional administrative procedures, delays and attorney costs. Moreover, the receiving Office will not transmit the search copy to the ISA until it has received any required translations. It is expected that a situation where a receiving Office requests translation of a part of the description and/or claims would be relatively rare compared to requests for a translation of the entire application for international search purposes.
As regards the abstract or any text matter in the drawings, if they are not entirely in the language of the application and a translation would be appropriate, this will be treated as a formal defect which can be corrected before the receiving Office without affecting the international filing date in accordance with PCT Rule 26.3ter(a).
It should be remembered that, unlike substantive examiners at the ISA, formality examiners at receiving Offices are usually not technically qualified and may not always be able to evaluate whether words in the application require translation or not in the relevant technical field of the international application. While the receiving Office has some flexibility under new PCT Rule 26.3ter(e) to decide whether a translation is necessary for a particular term, should you be invited to furnish a translation, but you believe that the words in question cannot or should not be translated for the reasons mentioned above, you could contact the receiving Office to discuss the matter.