Avoiding having to translate two documents into English

A question came in from a good friend:

A client from a non-US country wants to enter the United States at the end of the PCT which was filed in a non-English language. He is working on a CIP but won’t have it ready until another few months. He would like to try and avoid the cost of a double translation. Can you think of a way for him to enter into the US at the end of the 30 months with the non-English language version, and somehow avoid having to translate that application, and then in a few months when he has the CIP ready here he will file that in the US and translate that one into English. My concern is that without filing an English translation of the first application, is he able to get somehow a valid US filing date?

Here’s what I think the answer is.
First, let’s restate the fact pattern to make it as clear as we can.

  • Client has a PCT (call it “A”) filed March 1, 2013 which means the 30 months will run out September 1, 2015.
  • Client would like to file a CIP (call it “B”) but will not have the document ready until October 1, 2015.
  • Client would like to have B enjoy a Section 120 relationship with A.

What is the bare minimum required for this to work?

Answer, no later than September 1, 2015, we pay the base US national phase fee in application A.  That’s it.  Nothing else.  The US designation of A will remain non-expired for at least two months as DO/EO/US slowly but eventually gets around to mailing a Notice of Missing Something.  The Notice will complain about the missing translation, the missing search fee, the missing exam fee, the missing oath.  Two months after that Notice, the US designation of A will expire.

We assume that B gets filed by October 1, 2015.  We further assume that B was filed with an Application Data Sheet duly memorializing the CIP domestic benefit claim to A. B is thus copending with A for purposes of Section 120 and all goals have been achieved.

Now we raise the hoop and see if we can jump through this hoop even though it is higher than the previous hoop.  Here is our tougher fact pattern.

  • Client filed a Japanese priority application (call it “P”) on March 1, 2013.
  • Client has a PCT (call it “A”) filed March 1, 2014 which means the 30 months will run out September 1, 2015.  We assume for sake of discussion that in A, the priority claim was timely presented according to PCT rules (within 16 months of P) and we assume for sake of discussion that in A, the certified copy of P was timely filed at the IB.
  • Client would like to file a CIP (call it “B”) but will not have the document ready until October 1, 2015.
  • Client would like to have B enjoy a Section 120 relationship with A.  In addition, client would like to have B enjoy a Section 119(a-d) relationship with P.
  • What is the bare minimum required for this to work?

Unless I am missing something, the answer is exactly the same.

Answer, no later than September 1, 2015, we pay the base US national phase fee in application A.  That’s it.  Nothing else.  The US designation of A will remain non-expired for at least two months as DO/EO/US slowly but eventually gets around to mailing a Notice of Missing Something.  The Notice will complain about the missing translation, the missing search fee, the missing exam fee, the missing oath.

A day or two after September 1, 2015, DO/EO/US will have retrieved the certified copy of P from the IB and will have made it of record in the US designation of A.  The Notice of Missing Something (form DO/EO/905) will list the certified copy as having been made of record on some date, probably September 1, 2015.  As of the date of the Notice, the US designation of A has a *perfected* priority claim as far as I can see.

Two months after that Notice, the US designation of A will expire.

We assume that B gets filed by October 1, 2015.  We further assume that B was filed with an Application Data Sheet duly memorializing the priority claim to P and duly reciting the CIP domestic benefit claim to A. B is thus copending with A for purposes of Section 120 and all goals have been achieved.  And B has a perfected priority claim to P, seems to me.  In that first Office Action the Examiner will check box 12 and will say that the certified copy is in the parent case.

I guess the underlying question is whether the applicant *needs* to have a perfected entrance into the US national phase in A for all of this to work.  I believe the answer is “no”.  It seems to me that the applicant needs only a *non-abandoned* (even if non-perfected) entrance into the US national phase in A for all of this to work.

Meaning that no, the client will not have to translate two documents into English.  Only the second document (the CIP) will need to be translated into English.

Posted in PCT |

One thought on “Avoiding having to translate two documents into English

  1. Some translation vendors will discount, i.e., only charge for the new matter, if they did the first translation, the new matter is readily identifiable (e.g., added as a new section rather than throughout the original disclosure), and one has a good relationship with the vendor.

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