Summary: Who bears the burden of translating foreign prior art? Unpack the debate on navigating global innovation, following a recent decision of the Calcutta High Court.
For an invention to be patentable, it must be novel and inventive. To ensure that these requirements are met, patent offices search for prior art, which are publicly available documents, such as, patent applications and journal articles. This search is not limited to the jurisdiction in which a patent application is filed. As a result, when a patent office conducts a search to identify relevant prior art, it is often the search throws up documents that are not in the English language. In such cases, must an examiner provide a translation of such documents to the applicant? This note discusses this question in detail.
The Indian position
The Indian Patent Office (“IPO”) does not, as a matter of practice, provide applicants with translations of non-English documents cited in examination reports or hearing notices. However, this practice was recently challenged before the Calcutta High Court (Advanced Electric Machines Group Limited vs. Controller of Patents Designs and Trademark, 2025 SCC OnLine Cal 3048) by a party whose patent application was rejected for lack of inventive step based on prior art documents which included a Japanese application. The Calcutta High Court held that if non-English prior art is cited by the Controller during examination, its English translation must be provided to the applicant along with the examination report.
This was a case being heard in appeal, filed by Advance Electric Machines Group Limited (Appellant) against the order of the Controller of Patents refusing their patent application for an electrical sub-assembly for electric/hybrid vehicles. The application had been rejected solely on the ground of lack of inventive step under Section 2(1)(ja) of the Indian Patents Act, 1970 (“the Act”). A key contention was that the Controller had cited a new document, D3, for the first time in the hearing notice — a Japanese document without an English translation, rendering it inadmissible.
The Court held that the procedure followed by the Controller in referencing D3 was erroneous and contrary to the Act. Primarily, the Court noted that since D3 was a Japanese document without an English translation provided, its use was unlawful. The Court ruled that the law requires parties to provide English translations for documents in foreign languages in all proceedings.
For this, the Court referenced Rule 20(3)(b), 20(5), and 20(6) of the Indian Patent Rules, 2003 (the ‘Patent Rules'), which deal with the requirement of submitting translations of international (PCT) applications where such applications are not filed in English. It also referred to Rule 21(2), which deals with filing an English translation of a non-English language priority application during the national phase of a PCT application in India. It further referred to Rule 61(2) of the Patent Rules, which governs opposition proceedings at the IPO, and which mandates that translations of all non-English documents referred to in an opposition notice must be accompanied by their attested English translation. The Court held that these rules should also apply to the Controller of Patents, a point not refuted by their counsel.
The Court accepted the appeal and remanded the application to a different office for rehearing, citing the aforementioned and other grounds.
The EPO position
In the proceedings of the European Patent Office (“EPO”), if a cited document is not in one of the official languages (English, French, or German), the search division should consider citing an abstract in an official EPO language instead. If a machine translation of a patent document into an official EPO language is obtained, the examining division must make this translation available to the applicant. Additionally, even if only a specific paragraph is needed, the search division may include it in the search opinion, but the full machine translation will also be made available to the applicant.
The USPTO position
In the US, if a document is in a language other than English and the examiner relies on it in an Examination Report, a translation must be obtained so that the record is clear as to the precise facts supporting the rejection. According to MPEP § 2120 (II), an applicant can force/request the examiner to obtain a human translation of the document, if the applicant provides evidence showing the machine translation is inaccurate (e.g., inconsistent translation). This is supported by the decision in In re Orbital Technologies Corporation, 603 Fed. App'x 924, 932 (Fed. Cir. 2015).
The Canadian position
In Canada, if the examiner finds a foreign language document relevant, they will first attempt to locate a version of the document (or at least its abstract) in English or French, which are Canada's official languages. When relying on a machine translation or a family member of a citable document, this must be clearly stated in the examination report. Additionally, applicants can rebut arguments based on such documents.
Major takeaways
The key distinction in prosecution practice in India, as compared with other jurisdictions, is the lack of a clearly stated requirement for translations of documents not in the English language. This is despite there being translation requirements present in the rules governing prosecution of national phase PCT applications, as well as in handling opposition proceedings.
In contrast, most foreign patent offices, notably the EPO, USPTO, and Canadian Patent Office, prioritize transparency by requiring translations of cited documents not in their official language.
The Calcutta High Court's recent judgement may prompt the IPO to adopt practices similar to patent offices abroad, which will have a positive effect on transparency and effectiveness of prosecution proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
