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The importance of the description of the patent documents

The stage of preparing a patent application is fundamental in the process of protection of a certain Intellectual Property right, since the document is to show the description of the invention claimed and the analysis of grant or not of the patent to be performed in line with the contents of the same.

The patent document is to show a series of requisites, as laid down in the legislation in force of the area. Article 24 of Law 9,279/96 – Intellectual Property Law (IPL) – provides for the descriptive sufficiency as a condition of patentability, which means that, for the application to be granted, it is necessary that, in theory, a technician on the matter (in the case the Examiner of the Brazilian Patent and Trademark Office (BPTO) understand the inventive concept prepared, which is apt to reproduce the invention through only from its reading.

In the above respect, the detailed description of the invention is important, in that the Examiner, even though he is a specialist in the subject matter, might not have the best specific knowledge of the matter. To this effect, however better described and better detailed is the subject matter of the invention, however more are the chances of the application to be accepted.

Furthermore, the text prepared must embody all the possibilities claimed, since, once the scope of the invention is defined, and the application filed, the same cannot be changed. Hence, a well written document must show the object of protection properly described – note that it is not allowed the addition of matter to the application through the development of process. In this respect, a properly written document is to show the object of protection described in details, and, just as well, its possibilities now and/or in the future with a view to satisfying the requisites of descriptive sufficiency and, at the same time, not to restrict the scope of the invention.

To protect an Intellectual Property right is traditionally a complex and expensive process. Taking into consideration that the patent document is the basis for all the later stages of analysis, once filed and begun the contents of the same cannot be altered to the effect of enlarging the matter sought. The preparation of the application is a key stage which will directly interfere with the result of the case.

A badly written application may lead to technical requirements, increase of the risks of litigation, delay in the time for grant, reduction and/or lack of understanding of the scope of the invention and even to the extent of invalidating the application, and, thus, making the process much more costly and dilatory, in addition to harming the opportunities on launching on the market the invention claimed.

On an international scale, the cost, to a large extent, is due to translations, this being the key stage of the process. The error/ mistake in translations, even of a single word, may cause all the consequences previously raised. The qualified translation of patent documents requires both the linguistic knowledge and the specific one in the area to which the invention claimed refers. Team of translators must consist of linguists of the native country, scientists, engineers and legal specialists.

Very frequently, Offices of Industrial Property engage independent translators and make partnerships in other specialized offices in each country of interest. In spite of local agents having knowledge concerning the native language of the country’s culture and respective legislation, many a time the translators selected lack sufficient knowledge for the translation of the patent documents.

Moreover, several translators and/or local translators involved in a same patent document to be applied in different countries may cause errors/mistakes, as there is no change of ideas between them and the inventors of the documents in issue and many times not even among them. In this regard, an error/mistake found and corrected by an agent may easily not being perceived as an error/mistake in another place.

Therefore, the ideal procedure is to use a single team of translation which will afford a simplified process, having a centralized management of projects, especially if the patent document prepared will be validated in various countries, in various languages. To work with a sole supplier will involve efficiency and accuracy in the process of translation of patent document, since that will permit the collaboration among the local translators, agents and the client.

In light of all the above, in order to protect an Intellectual Property right efficiently, by reducing the time for the grant and the costs of the case, both at an national and international level, it is necessary that attention be given to the crucial phases of each case, which concerns the preparation of the patent document or the translation of the same respectively.

Carmen Sánchez-Puelles