I have a question regarding antecedent basis in claims.
I work for a Japanese patent law firm that translates Japanese patents into English to be prosecuted in the US. I have not yet attempted the US patent bar, but have been working here for several years correcting translations done by Japanese translators whose first language is not English.
I frequently have arguments with translators concerning antecedent basis because in the Japanese language, there is no use of articles such as "a/an" and "the".
English language patents translated by Japanese tend not to use "the" in the claims for things that have inherent antecedent basis. For example, "a weight of said object is in a range of 10 to 50 g" is used instead of "the weight of said object is in the range of 10 to 50 g". Here, it is my understanding that since it is impossible for any single object to have more than one weight and any given point in time, "weight" has inherent antecedent basis with respect to "said object". I argue that "the range" should be used, as it implies that it is the one specific range intended to limit the weight of the object.
Is my understanding incorrect? More importantly, has there been any precedent in which giving antecedent basis to something that inherently has antecedent basis has caused a problem in case law?
I would appreciate any input. Thanks.
You're always better off using "a/n" rather than "the" for the first use of a term. You can use "the" for the first use if the term is an inherent feature of the claimed invention. The problem with this, if the examiner calls you on it, is that you now have to argue something is or is not inherent to the claimed invention.
Do you really want that on the record?
上記質問者が例示したのと同じような事例があって、特許事務所へ米国出願明細の修正を依頼したことがあります。つまり the → a の修正。この時、特許事務所の担当者からは「ネイティブのチェックをきちんとしていて問題ないと言われているが、客先の好みですから直します」と、嫌味とも、事務所の悲哀ともとれる返事をもらいました。