Posted by Elizabeth Golluscio on Mon, May 24, 2010 @ 11:20 AM
As we alluded to in our last blog post, the cost of translation work can be a crippling factor when it comes to seeking patent protection. When looking to outsource your translation work, you should remember that translating your claims is just as important as drafting them and should only be left to experts.
Here at inovia, we are pleased to announce iptranslator — our new patent translation product offering to support foreign filing.
What sets us apart from other translation firms is our “double certification” methodology: (1) each patent application is translated by a native speaker who is skilled in the relevant technical field and then (2) the translation is reviewed and approved by a local patent attorney.
Already used in conjunction with our PCT national phase entry and European validation products, we have been doing expert IP translations for over 8 years and have translated over 20 million words into 41 languages.
Posted by Jeff Shieh on Tue, May 18, 2010 @ 09:52 AM
With IP budgets experiencing significant cutbacks in the last year, many applicants have struggled to maintain the same level of global protection they were able to achieve in “fatter” times. As a result, many applicants must grudgingly reduce the number of countries selected for national stage entry for their PCT applications.
In many countries, translation of the PCT application is a major component of the cost for national stage entry. As such, translation costs certainly play a key role when applicants decide where to seek patent protection.
Aside from outsourcing your translation work, another tip for stretching your IP budget is to file in countries which use the same translation. For example (assuming an English specification), the translation into Spanish required to enter into Mexico can also be used for entry into Colombia and other Spanish-speaking South and Latin American countries.
Similarly, a Chinese translation prepared for use with a Taiwanese filing can often be used as a basis for the translation needed for China (though note that Taiwan is not a PCT country, so the translation would have been prepared earlier for direct filing there, often at the same time the PCT was lodged).
Given that translation costs can run into the thousands of dollars, applicants exercising this strategy can realize significant savings, albeit in narrow country combinations. Especially in today’s economic climate, every little bit counts!
Posted by Jeff Shieh on Wed, May 12, 2010 @ 04:16 PM
Nearly all applicants pursuing international patent protection are aware of the importance of choosing a competent foreign agent, but often do not know exactly what factors to look for when selecting one.
Some applicants simply rely on the network of agents currently retained by their domestic counsel. However, this strategy can be hit-or-miss and is often as much based on indirect benefits to the domestic law firm (e.g. reciprocity) as on what's best for the applicant.
Based on my experience, here are some of the criteria I believe applicants should look for in choosing or evaluating their foreign agents.
• Ability to communicate effectively in English. Patent law is complicated enough. No need to make things worse by speaking with someone less than proficient in English.
• Experience in a broad range of industrial fields. You certainly don't want someone with an electrical engineering background prosecuting your pharmaceutical application.
• Ability to forward communications from their local patent office to the client in a timely manner, and diarize any deadlines. Few things frustrate patent attorneys more than receiving a foreign office action, and finding that the first month out of a 4-month period for response has already lapsed.
• Expert translations of foreign documents into English. Incoherent translations require a call to the foreign agent for clarification. And then you're likely to run into the problem discussed in the first bullet point.
• Ability to receive instructions and lodge a response in accordance with those instructions. Applicants need to make sure foreign agents understand their prosecution strategy and follow it.
• Ability to advise on any idiosyncrasies of the local jurisdiction. Many U.S. practitioners are unaware of the nuances of patent law in foreign jurisdictions. A good foreign agent will modify applicant's instructions so they make sense in their local patent office.
These certainly are not the only factors one should look at when searching for an agent to represent their invention in a foreign jurisdiction. However, we've found that those agents who do satisfy all these criteria contribute immensely in minimizing any potential snags that may pop up during prosecution.
Separately, see this older post for tips to minimize costs when instructing patent attorneys.
Posted by Jeff Sweetman on Mon, Jan 11, 2010 @ 04:09 PM
While we presently accept externally-prepared translations in principle, we sometimes find that translations we receive from clients are not of high quality.
Additional costs are then incurred in having our agents "fix" the translation. Worse (if it's not bad enough), the client may end up paying the full cost again to have it translated from scratch - not ideal if they've already paid for the first one!
You should be able to say the following about a patent translation:
It is a true and accurate translation of the source document.
The translator is a native speaker of the destination language.
The translator is technically skilled in the relevant technology.
It takes into account any specialist legal language used by patent attorneys in the destination country, including idiomatic translation of special technical or legal words used in the source document.
It satisfies local formal requirements relating to character set, font size, spacing, margins and so on.
In our experience, translations prepared by anyone other than a specialist patent translator run the risk of significant deficiencies in some or all of the above areas.
For example, it is rare that even a person very skilled in the relevant technical field who writes well in the destination language and has a good understanding of the source language will have any knowledge of the legal language issues, or of the formalities.
The service level agreements we have with our agents require them to satisfy all the above criteria. We also require that the translation either be prepared by a patent attorney or comprehensively reviewed by a patent attorney prior to filing.
In virtually all countries, it is the translation that forms the basis for your rights. Any weakness or deficiency in the translation is a weakness or deficiency in the resultant protection - and worse, it's one you won't know about until it's too late.
If you have thoughts about translations (and particularly the importance of quality), we'd love to hear them.