USPTO Examiners sometimes reject claims in translated patent applications with a “blanket” indefiniteness rejection, rather than detailing specific issues in particular claims.
Such a rejection might be made with form paragraph 7.34.07, which states, “The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.”
What do the Examiners mean?
Contemporary American patent practice generally does not list the elements in a single-paragraph sentence as shown, for example, in US Patent No. 1,647 (Samuel Morse’s 1840 patent for telegraph signs).
Instead, contemporary American practice presents claim elements in multiple subparagraphs separated by a line indentation. 37 CFR 1.75(i). We have heard this style called “element-by-element” style.
It is our understanding that, for example, the Japan Patent Office does not have a preferred claim format.
Consider an original Japanese application including claims that do not use “element-by-element” style. If these claims are translated literally, then the claims might receive a “blanket” indefiniteness rejection.
Also, foreign-origin claims sometimes recite some features in “element-by-element” style but additionally include large portions in a descriptive or “story telling” format. An Examiner might consider such a claim to be narrative, particularly when the claims recite result-oriented features.
Finally, Applicants should realize some Examiners include this form paragraph as a matter of course. That is, the Examiners will include this form paragraph in the first Office Action of every translated case. Indeed, we have seen Office Actions where this form paragraph has been included, even if there are no issues in the claims. So, it is possible there is no problem.
What should Applicants do? The best option is for a foreign Applicant to have local (e.g., Japanese) counsel draft the original claims in “element-by-element” style and to focus the claim on structural (i.e., not result-oriented) features.
Another option is to have a human translator localize the claims in “element-by-element” style. However, this option might not be available, due to strict requirements about how accurate a translation must be, for example, in PCT applications.
Of course, Modal PLLC can also assist with revising claims prior to filing in the US, such as via a Preliminary Amendment. We also can assist by conducting Examiner interviews to discuss the specific issues in any claims. Please contact us, if you would like a further discussion.