Can you file a U.S. provisional patent application in a language other than English? - Yes! - by Richard Neifeld, Ph.D. Patent Attorney
United States laws and rules of practice in patent applications allow for the filing of a U.S. provisional patent application in any language. In particular, 37 CFR 1.52(d) states that:
A nonprovisional or provisional application may be in a language other than English. ...
(2) Provisional application. If a provisional application is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
However, a provisional application provides no benefits unless it is either subsequently converted to a non-provisional application (which is a bad idea) or another application, whether U.S., PCT, or foreign, is subsequently filed and properly claims priority to the provisional application. The regulatory requirement for such a priority claim in a U.S. application are specified in 37 CFR 1.78, which is entitled "Claiming benefit of earlier filing date and cross-references to other applications." The pertinent subsection is 37 CFR 1.78(a)(5)(iv), which reads as follows:
If the prior-filed provisional application was filed in a language other than English and an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application or the later-filed nonprovisional application, applicant will be notified and given a period of time within which to file an English-language translation of the non-English-language prior-filed provisional application and a statement that the translation is accurate. In a pending nonprovisional application, failure to timely reply to such a notice will result in abandonment of the application.
Accordingly, you can file a provisional application in a language other than English (such as Chinese, Japanese, or German) and, after subsequently filing a regular U.S. application, file a translation of the provisional application and a certification that the translation is accurate in the regular U.S. application to obtain the benefit of the filing date of the provisional application in the subsequently filed regular application. HOWEVER, note carefully the consequences of claiming priority and not timely filing the translation into English and certification of accuracy of the translation - - "failure to timely [file the translation of the provisional application in the later filed application] ... will result in abandonment of the [later filed] application." Accordingly, any patent filing strategy relying upon the filing of U.S. provisional applications in a language other than English needs to carefully monitor the process to ensure timely filing of English language translations and certifications of the translations in the United States Patent and Trademark Office.
Rick Neifeld is a Ph.D. (in Physics) patent attorney and managing partner and President of Neifeld IP Law, PC, whose URL is www.Neifeld.com. Neifeld IP Law is located near the USPTO, and it specializes in U.S. and international patent protect ion, licensing, advise, and counseling, and specialty matters at the USPTO. Rick is also a patent interference practitioner, former Chair of the Interference Committee of the AIPLA, and co-owner of the patent related services provided at www.PatentValuePredictor.com. Rick can be contacted at .