Patents In, Garbage Out? When machine translation mangles the prior art

Voltaire had it right when he said: “Woe to the makers of literal translations, who by rendering every word weaken the meaning.” Was he foreseeing the unfortunate results of feeding a Japanese specification through Google Translate? Probably not, but he had a point nonetheless.

"Shoes not allowed" - Michael Cornelius

EPO decision T 1343/12 concerns a machine translation of a prior art Japanese reference used in an inventive step objection. The Board, examining the ambiguous translation, was unable to reach a conclusion as to its meaning, and remitted the case back to the Examining Division “for re-consideration of the issue of inventive step in the light of a certified translation of D1.” What intrigued the IPKat was that the decision is silent on who has the legal responsibility of procuring this certified translation and who is expected to pay for it.

The Decision

The claims required that a surfactant in an oil-based composition was present in an amount of from 10 to 30% of the composition. The machine translation of document D1 had a single sentence which the Board held to be hopelessly ambiguous:

"The amount of the surface-active agent used besides the above of below 10 mass % is 0.1 to 8 mass % still more preferably preferably among the oils of this invention." [sic]

On one interpretation this could mean "up to 10%, more preferably 0.1% to 8%," teaching away from any values higher than 10%. On another interpretation (which is perhaps not convincing when the sentence is read in isolation, but is more plausible when read in context as the decision explains) this could mean 10% of one surfactant component plus 0.1% to 8% of another surfactant, i.e. giving a total of up to 18%, i.e. within the claimed range.

The Board held that this ambiguity could not be resolved from the machine translation, concluding:

4.8 Remittal to the examining division 

4.8.1 Since it appears that the assessment of inventive step hinges to a great extent on the true disclosure of D1 in terms of surfactant contents and the corresponding effects, a definitive conclusion regarding the issue of inventive step in the light of D1 cannot be reached based on the machine translation thereof, which appears to be unclear and/or ambiguous in several relevant aspects. 

4.8.2 Therefore, the board considered it appropriate to remit the case to the examining division for re-consideration of the issue of inventive step in the light of a certified translation of D1.

There then immediately followed the operative part of the decision:

Order 

For these reasons it is decided that: 

1. The decision under appeal is set aside. 

2. The case is remitted to the examining division for further examination of inventive step based on the claims 1 to 4 according to the request submitted during oral proceedings and on a certified translation of document D1.

Insofar as it goes, the decision is sensible. To evaluate a prior art document, one must rely on the content of that document or, as in some older cases, a prior published English abstract. If the content of the document cannot be unambiguously established but it appears relevant then it makes sense to establish that content definitively before proceeding further.

But did they need to remit to the Examining Division? An alternative approach was seen in an older decision: in T 243/96 the Board had doubts over the fidelity of the abstract to an original Japanese document, so they did the needful thing by supplying the applicant with a full translation of the original document. Presumably the Board here could have done the same, assuming that the doubts over D1's content were known to the Board in advance of the hearing. (In the interests of even-handedness, which is not normally her style, Merpel presumes that the applicants, being a couple of Japanese companies, could equally have resolved the ambiguity over D1’s content much earlier and at not too much expense, had they wished to do so. But, says the IPKat, why should they be expected to do so? And who's to say that a good translation will not reveal ambiguity in the original?)

But who pays?

"Unrecycling" - Drakhrub

It may be that the simplest answer to the IPKat's questions over who is responsible for getting the translation prepared is that the IPKat is imagining difficulties where none exist. Presumably when a Board of Appeal makes an order, this is addressed to the EPO department of first instance and not to the applicant. It would therefore be up to the Examining Division to implement that order, which presumably means that they must procure a certified translation at the EPO’s cost. This would also chime with the IPKat’s understanding that whoever alleges that a document deprives a claim of patentability would normally be expected to put forward their complete case without help from the applicant. 

But perhaps the Board was being more pragmatic and deliberately omitted to address who should procure the translation. It may have been wary of either (a) requiring the applicant to incur an additional cost for which there is no basis in the EPC, and which might be ultra vires, or (b) explicitly and publicly saying that in cases where a machine translation is sufficiently ambiguous and potentially relevant to patentability, the EPO is obliged to provide a certified translation to the applicant. While the cost of one translation won’t break the bank for either the EPO or the applicant in this case, the costs would add up for the EPO considering the number of foreign language references (i.e. not English, French or German) relied on per annum across the organisation. 

Merpel says maybe there's another way of figuring out what the Board intended. If machine translations can turn a meaningful text into an ambiguous one, might the program not sometimes translate ambiguity into clarity? It may be worth putting the final paragraphs of this Decision through Google Translate to see if any answer emerges as to who will fund the missing translation.

An interesting footnote, and a counterpoint to the assumption that the EPO should procure the translation, can be seen from the file wrapper. The EPO search cited the Derwent abstracts for three Japanese citations. Surprisingly (at least to this Kat) the search opinion started by requesting the applicant to provide the Examining Division with a translation of the three documents into an EPO language because their content seemed to be "of the utmost relevance". Rather than human translations, the applicant submitted the machine translations at issue in the appeal, which of course they were entitled to do. Indeed it is hard to see why the applicants were under any obligation (other than one of courtesy) to comply with a request to provide the Division with full translations.

Maybe readers have thoughts on whether applicants should be expected to supply the EPO with better ammunition to help invalidate their applications?