Section 51: Translations of documents forming part of a Treaty Application (PCT National Phase Entry)

Introduction

1. Regulation 65 requires that a verified translation of any document filed in a language other than English and forming part of a Treaty application must be filed within 5 months (3 months plus 2 months extension) of the commencement date of the national phase.

2. More particularly, separate verified translations of the following may be required to be filed within 5 months of the commencement date:

• the description, claims and drawings (if there are drawings) of the original Treaty application,
• Article 19 amendments (or the entire document published by WIPO incorporating the Article 19 amendments), and
• Article 34 amendments.

3. Any translations of this type, not just translations of the description, claims and drawings, should be labelled as a CETOS (Certified English Translation of Original Specification) document type in the IPONZ case management facility.

4. If any drawings are not indexed or notated in English then the drawings with translated indices or notations should be supplied as part of the verified translation (the lettering used in the drawings should be in the Latin or Greek alphabet and any non-English text should be translated into English). This requirement applies to other specialized parts of documents, sequence listings for example, that are not indexed or notated in English.

5. If a verified translation is not filed within the time allowed under Regulation 65, then the applicant may have failed to fulfil their obligations under Article 22(1) or Article 39(1), as the case may be, within the prescribed time limit, and consequently the application may be treated as void under Section 51(1)(d) or (e) of the Act.

Regulations and definitions

6. In accordance with regulation 3 of the Patents Regulations 2014 or common usage:

• Translation means an English language document that is ostensibly a translation of a document in a language other than English (foreign language document).
• A verified translation means a translation to which a certificate of verification is attached.
• A certificate of verification means a signed and dated statement that the translation is, to the best of the knowledge of the person who signs the statement, a true and complete translation of the foreign language document. The statement should clearly identify the accompanying document to which it relates. Example: translation of PCT/JP2017/0345768.
• The ‘accompanying document’ means any foreign language document forming part of a treaty application for which a verified translation may be required. These documents include the original description, claims and drawings of the application, and amendments made under Article 19 or Article 34 of the Patent Cooperation Treaty. In the case of a Treaty application any accompanying document for which a verified translation may legitimately be provided is ostensibly filed at IPONZ when the International application designating New Zealand is made, or in the case of amendments proposed during the international phase under Articles 19 or 34, when those amendments are filed.
• The ‘commencement date’ means the date of entry of national phase, that is the date the application is submitted into national phase.

7. Although a verified translation is sometimes referred to as a certified translation, a verified translation is ‘verified’ by the translator as being a true and complete translation whereas a certified translation indicates not only that the translation is verified by the translator but also that the translator is ‘certified’ by some official organisation. IPONZ will generally only require verified translations.

Filing translations into the IPONZ online case management facility

8. A verified translation should be filed on the patent application file via the IPONZ case management facility as either:

• a single electronic document including the translation and the certificate of verification
• a bundle of documents filed substantially at the same time and including the certificate of verification and the document or documents (e.g. separate electronic files for the translations of the description, claims and drawings respectively) purporting to be the translation(s) to which the certificate statement relates.

9. On the occasion of entering a Treaty application into the national phase, if the IPONZ case management facility detects (from a language tag held in PatentScope) that the International application was made in a language other than English, then the option to file a CETOS (Certified English Translation) is made available. If the CETOS is not filed immediately, the case contact is provided a task with a 5 month deadline to do so.

10. Filing an English language complete specification when a Treaty application is entered into the national phase does not circumvent the requirement to file a verified translation. The complete specification document should be filed as the type ‘Complete specifications’ and although it may be derived from a verified translation document, by removal of the verification certificate for example, two distinct documents should be filed: the English language complete specification and the verified translation. In the rare case in which the English language complete specification is a copy of a verified translation that is not a translation of the accompanying document (the wrong translation has been filed), not only must the correct verified translation be filed, but the correct original ‘accompanying’ document should also be identified and filed.

11. If the ‘file CETOS’ task is not completed by the deadline set then the application will be marked off as void. Therefore, if the applicant wishes to progress the application it is important to utilize the task to file the verified translation(s) by the set deadline.

12. It is possible that a failure to set a ‘file CETOS’ task or to respond to such a task may in some circumstances indicate that the “essential English documents” that are required for substantive examination of the application have not been filed. It is important that the applicant ensures that these essential English documents (translations) are filed at the time the application is entered into the national phase, and have been properly verified within 5 months of the entry into national phase.

13. Any cases marked void in this way are restorable, because ostensibly the applicant has failed to fulfil the applicant’s obligations under Article 22(1) or 39(1)(a) of the PCT (to file a verified translation within the allowed time).

How IPONZ examines verified translations

14. The translation as filed in the IPONZ case management facility may not be verified to the satisfaction of the Commissioner for one or more of the following reasons:

• The certificate may be properly completed, but the translation does not explicitly identify the accompanying document, for example by including the PCT application number, or the examiner is unable to ascertain, by inspecting the documents or otherwise, that the translation is indeed a translation of the accompanying document.
• The translation is not a translation of the accompanying document (i.e. the wrong document has been filed). This sometimes happens, for example, when translations of co-pending applications with similar subject matter get mixed up.
• The certificate of verification is not filed with the translation on the patent file in the IPONZ case management facility as noted in paragraph 8 above.
• The certificate is not properly completed so as to include the translator’s signed and dated statement of truth and completeness and/or the identity of the accompanying document.

15. If, when a case is taken up for examination, the examiner determines that a translation already filed has not been satisfactorily verified, an objection will be entered in the first examination report. The applicant should file a properly verified translation and request an extension of time under regulation 147 in which to do so in their response to the objection. Alternatively the applicant may request the Commissioner waive the requirement to file these translations (under regulation 149).

16. An Examiner will only commence examination of the application and complete specification once the necessary documents to do so are available in English (the complete specification, sequence listing, deposit certificate, and amendments to complete specification). The substantive examination will commence on the basis of those English language documents, notwithstanding that a translation or properly verified translation has not yet been filed. However, the examiner will raise an objection in the first examination report requiring a translation or properly verified translation to be provided.

Correcting administrative and filing errors:

17. If the applicant files verified translations in time but fails to use the ‘file CETOS’ task resulting in the application being marked void, the voiding of the application will be corrected by IPONZ under section 201. The applicant can request this correction if necessary using ‘maintain patent’ in the IPONZ case management facility. If the application is taken up for examination before the application is marked void, IPONZ will cancel the ‘file CETOS’ task and proceed with the examination.

18. Sometimes, a ‘file CETOS’ task is not set, for example when an application is filed as a standard application in lieu of being able to enter the national phase before publication of the international application (very early entry). If the applicant does not file a verified translation in time, then when the application is taken up for examination the first examination report will advise that the translations have not been filed. The applicant should file the verified translations and request an extension of time under regulation 147 in response to the objection.