For patent practitioners, translation is everywhere

The development, maintenance and enforcement of a strong international patent portfolio are increasing priorities for businesses of all sizes across a wide range of industries. The World Intellectual Property Organisation (WIPO) reports that “following a 3.9% decrease in 2009, patent filings worldwide have now rebounded strongly, with accelerating growth rates – 7.6% in 2010, 8.1% in 2011 and 9.2% in 2012”. This trend is being driven in part by the growth in patent filing in developing economies such as China, Mexico, Russia, Brazil and India.

As patent positioning plays an increasingly important role in the global marketplace, those charged with managing and asserting a firm’s international patent portfolio face a complex and multifaceted challenge. Applications for patents on new innovations must be drafted, filed and seen through to grant. Licence agreements must be pursued, negotiated and implemented. Patent infringements must be identified and, when necessary, enforcement action must be taken to remedy such infringements. In addition, patent practitioners at multinational firms must stay constantly vigilant in order to protect their firms from litigation, in part by assessing and monitoring the landscape of enforceable patents held by other parties in their firms’ target markets.

While each of these responsibilities is different, one thing they all have in common is a frequent dependence on translation. Translation plays an important but widely underappreciated role in almost all of the key functions associated with managing a global company’s patent portfolio and the importance of that role goes beyond its often considerable budget impact.

During prosecution, translation has a bearing on grant determination and the scope of a patent application’s enforceable coverage. Translated material informs a firm’s assessment of its IP positioning in foreign markets, potentially influencing decision making with regard to new product launches, prospective acquisitions, enforcement actions or a firm’s negotiating position in licensing discussions. Should a firm face a production of foreign language documents during the discovery phase of litigation, its case will be built, its strategy developed, the case tried and the outcome determined largely on the basis of translated documents.

For globally competitive firms in IP-intensive industries, translation should be viewed as a critical element of the portfolio management function. This article begins with an overview of the challenges associated with performing accurate translations of the complex technical material relating to patents. It goes on to explore the many different ways that translation can affect a firm’s ability to compete globally where IP positioning grows more important every year. We also review the way that many firms go about the business of obtaining translations, which is often fragmented, decentralised and ad hoc. Finally, it proposes a plan of action for firms to take control of this key aspect of portfolio management.

Translation is more than just a commodity

Patent texts and related documentation represent some of the most demanding source material for translation professionals. Yet experienced, capable patent translators are a scarce and valuable resource.

According to 2012 data gathered by the US Bureau of Labour Statistics, the median translator classified as working in “professional, scientific and technical services” earns about 19% more than the median of translators as a whole. That category is sufficiently broad to encompass translators who work with material of a less demanding nature, with less at stake and requiring less in the way of expertise than the translation of patent applications, such as user manuals, marketing materials and agreements in addition to other legal texts of a non-technical nature. Although the bureau does not provide data on patent translators specifically, the extent of training and expertise required for patent translation likely allows for many US patent translators to command wages approaching the top 10th percentile of earners in the industry. This also depends in part on a translator’s individual output capacity.

In order to render any source text properly in another language, a translator must absorb and understand that text’s meaning. The text contained in patent applications often describes extremely complex technology requiring advanced technical expertise to be fully absorbed and understood. When translating highly technical material contained in a patent application, the translator typically requires a relatively in-depth understanding of the invention’s technical field.

Figure 1. Growth in global patent filings

Source: World Intellectual Property Organisation, World IP Indicators 2013

To take a simple, hypothetical example highlighting the importance of understanding context in translation, consider the different possible meanings of the English word ‘field’. If a patent claim referring to a ‘magnetic field’ were rendered in its translation as describing a ‘magnetic meadow’, it is not hard to imagine the potential for adverse consequences.

To capture the specific and precisely defined elements of an invention disclosure in a patent translation fully and accurately, or research documentation pertinent to an infringement suit, both linguistic and technical competency are required. Yet these alone are not enough to achieve the best and most reliable results. As noted in a 2010 New York Law Journal article on translating patent applications (Vol 24, No28), truly qualified patent translators should understand “at least the basics of patent practice”.

The language used in patent applications is carefully structured and the precise terminology carefully selected, in consideration of various patent laws and regulations which are often rife with nuance. From the same article: “complex sentence structures, particularly in the claims, and the need to maintain the breadth, narrowness or ambiguity of the original language also contribute to the particular translation challenge posed by patents.” Supreme Court Justice Henry Billings Brown was not even thinking about translation when he wrote, in the court’s 1892 decision in Topliff v Topliff (140 US 156): “The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”

Patent translators face the same challenge. They must capture “with requisite certainty the exact invention of the patentee” in a foreign language which might have radically different rules and conventions governing syntax and sentence structure, both generally and in the particular context of patent applications.

A similar level of specialised knowledge and expertise applies to translators working with discovery material during patent litigation. Document productions may contain all manner of technically demanding material – from lab notebooks to research documentation, product specifications and development plans, quality assessments and technical performance metrics, memos and other correspondence regarding all of the above. In addition, correspondence will frequently blend technical material with colloquial language and dialect-specific idioms, introducing another level of native-language expertise to the list of required translator qualifications.

The translations required by patent practitioners involve some of the most technically and linguistically demanding material available. To execute those translations accurately requires a roster of highly qualified translation professionals with specialised expertise. It also requires a well-defined process with robust quality assurance measures and concrete metrics for monitoring and improving performance. This process needs to be capable of handling a volatile workflow of inconsistent volume, which potentially spans dozens of languages and multiple technical fields.

All of which is to say that patent translation should not be regarded as a commodity. The challenging nature of the source material – together with the scope and variability of a global patent department’s translation needs – suggests that firms may benefit from a careful evaluation of their translation sourcing practices. This is especially true in light of the pervasive ability of translation to affect a firm’s patent positioning across nearly all portfolio management functions, which is explored in the next section.

Figure 2. Patent filing growth in developing countries 2012

Source: World Intellectual Property Organisation, World IP Indicators 2013

Where translations arise

Foreign filing and patent prosecution

Translation needs arise early in the lifecycle of an international patent family. Foreign patent protection is most commonly sought by way of Patent Cooperation Treaty (PCT) national phase entry, direct national filing under the Paris Convention and national validation of granted European patent applications. As a component of this process, firms seeking to extend protection into non-English speaking jurisdictions normally must submit a translation of the patent application into the local jurisdiction’s official language.

This requirement is more than a simple formality: the IP authority in most non-European patent jurisdictions conducts its own examination based on its own IP laws and regulations. In general, the translation is the controlling text both during examination and in the event of an infringement suit. Errors in the translation of a patent application can materially compromise a patent examiner’s grant determination, as well as the scope of the patent’s claims and the viability of enforcement action later on. While it is possible to file amendments correcting such errors in some countries, the specifics vary widely and in most cases an applicant’s opportunity to take corrective action is restricted to the period prior to grant or earlier. Even when translation errors are identified before grant and recourse is available, the preparation and filing of required amendments create added expense and a longer time to grant, increasing the cost of patent ownership and delaying the possibility of enforcement.

Translation is also a key driver of the expense associated with obtaining patent protection in foreign countries. In comments offered to the US Patent and Trademark Office regarding the costs faced by small and medium-sized enterprises in pursuing international patent protection, the American Intellectual Property Law Association (AIPLA) noted that: “with regard to the acquisition of international patent rights, translation costs, annuity fees, and foreign professional fees represent significant expenses and act as barriers that often prevent small businesses from applying for foreign patents.”

Indeed, translation costs can escalate quickly as the list of target countries grows. The graph below provides an approximate estimate of the translation costs associated with filing a typical patent from five industry categories in Japan, Korea, Mexico, China, Brazil and Russia based on research compiled internally by Park IP Translations using data gathered from published US patent applications.

Translation is also integral during prosecution when a patent examiner issues an office action in another language or cites a non-English piece of prior art. With patentability often depending on nuanced interpretation of granular technical details, it is important for the attorneys drafting the response to fully understand the precise meaning of the office action, as well as any art that the action cites.

Freedom to operate assessments

Before acquiring a company or taking a new product to market, firms will frequently conduct a ‘freedom to operate’ analysis in order to assess the risk of possible litigation arising from infringing another party’s existing intellectual property. A comprehensive freedom to operate analysis can be costly. In this analysis, a thorough assessment of the product and the relevant marketplace is conducted. Competitors and the components of similar products are evaluated and existing licensing and manufacturing arrangements analysed. An extensive survey of unexpired patents and published applications pending grant is also performed. The total cost, according to patent attorney and founder of popular IP law blog IPWatchdog.com Gene Quinn, is typically “at least $10,000 and sometimes substantially more”.

The analysis is further complicated when a firm is seeking product clearance for a foreign jurisdiction. The regulatory environment, market conditions and competitive dynamics can vary widely from country to country. The same is true of each jurisdiction’s laws governing patent protection. Many jurisdictions have varying standards governing patentable subject matter:

• Patents filed in multiple countries may have been granted claims of differing scope.
• A holder of a foreign patent may have failed to pay required maintenance fees to retain protection.
• Some countries have unreliable enforcement regimes – there may also be statutory limitations on damages in certain countries.

There is also the potential challenge of assessing the IP positioning in the context of a patent landscape composed entirely of foreign language claims. The results of a freedom to operate survey are a major factor in a firm’s evaluation of a prospective acquisition or a new product’s financial viability. Decisions regarding potentially significant investments in the development and launch of a new product hinge on these risk assessments. Finally, the accuracy of these assessments may rely heavily on the accuracy of patent translations.

In order to evaluate the danger of patent infringement litigation posed by enforceable patents in a foreign jurisdiction, firms must first gain a thorough understanding of precisely what is claimed in those patents. If the claims are in a foreign language, that understanding will depend on the content of a translation. Firms and their attorneys may engage foreign counsel for assistance and guidance in understanding the patent claims and the broader context of applicable IP laws. However, in order to fully absorb and comprehend the conditions facing a new business venture, firms will want to read those patents for themselves. Their conclusions will be guided by their understanding of translated text.

Licensing negotiations

Once a patent has been granted, it becomes an asset with real business value that firms will seek to maximise. One option for monetising a patented invention is to license its use to other parties, and licensing specialists perform an especially important function for global firms with large patent portfolios and products that integrate the use of multiple patented inventions. Steve Jobs once said that the portfolio on iPhone components and functionality was over 200 patents – and those are just Apple’s patents (source: Intellectual Property Today, November 2009). Companies such as Nokia and Samsung also license technology to Apple, which is then integrated into the final iPhone product. Apple’s innovations are licensed, in turn, to companies such as Nokia and Samsung for integration into their own final products.

The environment for licensing professionals and the way that those professionals engage their environment can vary from industry to industry and from firm to firm. They are influenced by factors such as pre-existing cross-licensing arrangements, developments in ongoing or prospective infringement suits, the evolution of new technologies, international competitive dynamics and the firm’s overarching business goals and initiatives. To the extent that a firm’s licensing strategy and negotiating posture depend on the claims of foreign language patents, that firm will depend for information on the accuracy of language translation.

A firm may even require translations of applications filed under its own name that were translated by another party for filing abroad. Firms counting on the threat of enforcement action as a source of negotiating leverage will frequently commission translations of their own patents to ensure that such a threat is credible – that is, to be sure that their patent claims say what they should.

Figure 4. Translation costs (BR, CN, KR, JP, MX, RU)

Source: Park IP Research and the USPTO

Litigation

It may seem surprising that firms spend tens of thousands of dollars on freedom to operate assessments in order to avoid infringement suits, until one sees the price tag of a patent infringement suit. Writing for cnet.com, Jim Kerstetter reports that a survey by the AIPLA found that in the United States: “For a claim that could be worth less than $1 million, median legal costs are $650,000. When $1 million to $25 million is considered ‘at risk,’ total litigation costs can hit $2.5 million. For a claim over $25 million, median legal costs are $5 million.” That is just to fight the battle; those numbers do not include the potential costs for defendants ordered to pay damages.

In addition to being expensive, patent suits are increasingly a fact of life for firms in innovation-driven industries, especially those doing business in the United States. Due in no small part to the divisive class of organisations known as ‘patent assertion entities’ and commonly referred to as ‘patent trolls’, infringement litigation is on the rise. In 2013 the number of patent suits filed in US district courts was more than double the number filed just five years earlier. There has also been a sustained increase in Section 337 investigations at the US International Trade Commission, another venue for patent assertion favoured by many patent holders due to the speed of its proceedings.

More than half of the money spent on patent infringement suits in the United States is spent during discovery. The scope of discoverable documentation in US courts is extremely broad and litigants routinely produce tens or hundreds of thousands of pages of documentation during the discovery process. Those documents are then reviewed and assessed by a team of attorneys and staff as they build their case.

In cases where one party produces documents in a foreign language (eg, 25,000 pages of Japanese emails, memos, lab notebooks and other materials), attorneys must find a resource for linguistic support. Firms hire or engage services to provide bilingual contract attorneys, foreign language document reviewers and translators. They depend on these resources to identify pertinent documents, develop a case on their basis and, if necessary, present those translated documents in court. A failure to appreciate the relevance of key foreign language documents properly or a substantive translation error in an important exhibit can meaningfully compromise a party’s interest in a high-stakes legal battle.

Fragmented and reactive buying practices

While translation is required in the service of very different purposes, the nature of the requirement is actually fairly consistent. Whatever the ends being pursued, in order to achieve those ends, patent professionals of all stripes encounter the need for reliable, accurate translations of technical patent and related documentation. In some cases it is difficult to anticipate specific instances of need. As an example, prior art translations are required sporadically in response to patent office actions. New licensing discussions may generate a need for translations on an ongoing basis. Litigation and discovery are unpredictable. On the other hand, some specific translation requirements are foreseeable. Firms know which of their applications will be coming due for PCT national phase entry 30 months in advance of the deadline.

Although a firm’s precise need for translation over the course of a given year may be variable and unpredictable, many firms can anticipate in broad terms that the patent department will require translation in the service of its various functions. Together with the pervasive importance of accurate translations, this suggests that firms would benefit from a top-down approach to managing their translation needs. They should have high-level transparency of spend and their providers.

Unfortunately, this is not the case at many firms. Rather than approaching translation as a key component of a portfolio management strategy, translation is instead regarded as more of an annoying inconvenience – something that represents little more than another hoop to jump through or box to check before moving on to the real business of prosecuting a patent, negotiating a licence agreement, arguing a case or evaluating a new opportunity. This attitude is evident from the fractured and ad hoc manner in which many patent departments make translation sourcing decisions. Suppliers are engaged at the point of need by individuals managing the administrative requirements of a particular function, with a strong bias towards legacy practice and little department-wide coordination.

In many cases, translations required in connection with foreign patent filings are handled by the foreign patent firms that serve as local counsel during prosecution. It is easy to see how the arrangement comes about, as patent applicants require a local agent in each target jurisdiction for guidance regarding jurisdiction-specific statutes and regulations:

• to prepare and file the required documentation on the applicant’s behalf;
• to serve as local representation before the applicable patent authority; and
• to assist in preparing amendments, office action responses or other disclosures where necessary.

The administration of translation requirements would seem to fit quite naturally into that slate of responsibilities, which is the main reason why foreign patent firms still handle a high proportion of translations for the applications they file.

The weakness to this set-up is a major limitation on the ability of applicant firms to gain visibility of and exert control over the processes, best practices and quality assurance measures in place to ensure that their patent applications are being translated accurately. The possibility of substantive translation errors represents a legitimate financial risk. Without the ability to monitor and influence how translations are prepared – without transparency or control – firms have no means by which to assess this risk or take action to mitigate it.

As long as a firm obtains translations for foreign patent filings from its foreign patent agents, it will face constraints on transparency and control. Many organisations routinely pursue patent protection in more than a dozen foreign countries – which means their patent translations are being handled by more than a dozen foreign patent firms, each deploying a different set of best practices in delivering services outside its core competency.

Figure 5. Translation sourcing decisions

Foreign patent law firms are not language specialists – they are law firms

The approach of different patent firms to delivering this service can vary widely. Some use in-house translators, some use freelance translators and some outsource to local translation companies, passing along the expense at a mark-up.

When organisations select foreign law firms to represent their IP interests abroad, they are evaluating and selecting candidates to render legal services on the basis of their legal expertise. Often this occurs without much consideration being given to their proficiency in executing one of the most demanding forms of language translation. Even if the information were available and all parties were willing, few organisations have either the expertise or the bandwidth to thoroughly scrutinise, evaluate, implement and monitor compliance with a unified set of best practices and quality assurance measures across a global network of independent patent law firms.

The broadly exhibited tendency is for organisations to address their need for patent-related translations reactively, at the point in time when translation needs emerge. This usually means that purchasing authority is relegated to whichever party is directly engaged in performing the function for which a particular translation is required. That party is not necessarily an employee of the organisation whose interests are at stake. In fact, translation sourcing decisions are routinely made by third parties in the course of providing other services.

In the model described above, sourcing decisions for foreign filing translations are ultimately made by foreign patent firms. Should the need for translation arise during the prosecution of a foreign language office action or a piece of prior art, the domestic attorney (internal or outside counsel) responsible for prosecuting the application usually has the authority to procure a translation from the foreign agent or an alternative resource at his or her own discretion. Any translation needs arising in connection with licensing activities are similarly addressed at the time they emerge and by the individuals directly involved. An outside law firm engaged to prepare a freedom to operate assessment will normally procure translations, where required, through its own channels, passing along the expense as a disbursement.

The same is true for translations required during litigation. In the case of litigation, the expenditure can be considerably larger and sourcing decisions still more fragmented. Firms will typically appoint outside counsel to litigate infringement suits on their behalf and larger suits will often involve multiple defendants and therefore multiple co-counsel. All parties to the suit and each of their advocates will have some role in reviewing the documents produced during discovery. Should the document production contain foreign language material, everyone involved in the review will have need of translation support.

In addition to the potential challenge of documents numbering in the thousands or tens of thousands, the involvement of so many parties introduces the possibility of redundant expenditures on uncoordinated translation requests. In most cases, translation support during discovery is engaged at the discretion of outside counsel, often with little coordination between co-litigants and their advocates with regard to streamlining translation providers or document translation orders. The result is a situation where co-counsel A and co-counsel B are on the same side reviewing the same production and ordering their own separate translations of the same key documents.

In the first place, this is problematic for the obvious reason that the litigants are paying for multiple translations of the same documents. However, there are also serious concerns about the possibility of a case built on differing versions of the same key documents. If one side is working with multiple translations of the same document, each carried out by a separate provider, how will the attorneys sort out any disparities between the two? Translations prepared by different parties according to different processes will lead to different work products and the potential for different interpretations of important material. Which translation is more accurate? Which should be considered the controlling text? If one version suggests a more favourable interpretation to one side, but is ultimately deemed to be inaccurate, how damaging might that be to the case?

Move translation sourcing upstream

The key point is that a reactive, downstream and decentralised approach to translation sourcing decisions introduces both risk and waste into a firm’s portfolio management functions. By confronting the need for translation only when it arises, firms relegate purchasing authority to a fragmented assortment of parties, both internal and external, performing an assortment of responsibilities and with an assortment of evaluation criteria for selecting resources. This dilutes a firm’s purchasing power in price negotiations and creates a great deal of inconsistency and uncertainty.

By moving translation sourcing decisions upstream and evaluating preferred resources at a high level in a coordinated, centralised way, firms consolidate their buying power and improve their negotiating leverage. Remember, while translations are required in the service of varying functions – and the optimal model for service provider integration and workflow may differ across those functions – the basic need is largely the same. Firms can assess the competency of various providers to service those functions and negotiate favourable pricing, which can be applied consistently across all needs.

A centralised approach also imparts the important benefits of consistency and transparency of processes, best practices and quality assurance. Having evaluated and identified the best-suited translation providers, firms can be confident that they have taken the proper steps to minimise risk posed by translation errors and have equipped their patent professionals with the best resources to perform their functions. In the event that issues do emerge, firms will have the visibility and the control to identify the source of the problems and take steps to rectify them.

This is about more than just avoiding negatives, reducing risk and cutting costs. Firms have a real opportunity to gain an advantage over competitors which underestimate the role of translation in intellectual property. By taking control of translations from the top down, you can be more confident in the quality of your patent protection in foreign markets. You can go into licensing negotiations armed with better and more reliable information and be better positioned to identify, pursue and capitalise on new opportunities.