Submitted by Lisa Siciliani, Sales Support Services
For project managers assigned the task of patent translation for filing in foreign countries, the byzantine world of patent documentation and terminology can be overwhelming. A few key issues explained in layman’s terms for those of us who are not attorneys may help to alleviate some confusion and consternation.
Patents around the world is an overview of the patent systems for the major global intellectual property and trademark offices. Skimmable and fact-filled, this European Patent Office webpage begins with descriptions of the various offices, which are interesting when comparing procedures, even if the statistics are a little dated.
Immediately following these descriptions is the first “Aha!” topic for the uninitiated. Did you know that while U.S. patent law is based on a “first-to-invent” principle, almost every other country worldwide follows a “first-to-file” system in their patent regulations?
As you can imagine, this plays into the filing strategy for individuals and firms who don’t have an unlimited budget for intellectual property protection. Just imagine the legal tangle that can result! McElroy has helped many clients as they frantically scramble to obtain the strongest, most uncontestable translation for a patent whose foreign filing deadline has suddenly turned out to be three days away. “Is anyone making coffee?”
The EPO goes on to outline some of the national differences in what can be patented and how many patents will be required for coverage. For instance, your timeline is certainly going to be impacted if a single original patent must be converted into multiple documents for translation to meet the standards of the Japanese Patent Office.
Differences between U.S. and European patents as described on Ius mentis has several easy-to-understand sections on some variations in what can be patented. You have to love this author’s humor in the statement, “It should perhaps be pointed out that ‘skilled person’ and ‘obvious’ do not mean the same in patent law as they do in real life.”
An important point we can take from this discussion is that superior patent translators can actually assist clients with their patent applications by virtue of their knowledge of proper structure, order of the claims, and other content issues within the patent documentation. The best patent translations are grounded in superior linguistic expertise, subject matter expertise rivaling the inventor’s, and knowledge of patent law for the target country. I’m sure experienced patent translators could add more to these requirements.
The generalization about translation costs in Foreign Patent Filing provided by Smith and Hopen, P.A. isn’t very accurate for budgeting purposes because of the wide range of factors that go into determining costs such as:
· Word count – Is this one little 2,000-word patent, or a single or multiple patents totaling 20,000 words?
· Language pair and translation direction – The difference in costs here can easily be threefold.
· Subject matter – Patents in well-established, common technologies will of course have a larger base of linguistic experts to choose from than those on the “bleeding edge” or in niche fields.
However, Pitfalls 3–5 listed at the bottom of this webpage, while super-simplified, describe critical facts if you are considering filing a patent in both the United States and another country.
Because language nuances are so critical in crafting a patent that is not only defensible, but even deters challenges (thus the expense of defending against them), we recommend you allow adequate time and a reasonable budget for the best translation possible. The return on investment can be enormous.
Footnote
This is not legal advice. Please consult an intellectual property attorney for specific guidance on patent law.
Resources
European Patent Office
Ius mentis, Law and technology explained
Smith Hopen
Subscribe