Translation is
EverywhereUnderstanding the impact of language
translation on portfolio management,
managing risk, and taking control
Matthew Sekac
Senior Director, Sales Strategy
Email: [email protected]
Translation is Everywhere
– The need for translation arises—and has a
meaningful impact—across nearly all patent
portfolio management functions.
– Many organizations engage the need for
translations reactively and downstream.
– Fragmented and uncoordinated sourcing
practices create inefficiency, compromise
quality, and introduce risk.
– Moving sourcing decisions upstream adds
business value, improves competitive
positioning, and reduces risk.
Patent Department
Filing &
ProsecutionLicensing
Freedom to
OperateLitigation
TRANSLATION NEEDS:
Applications for Filing
Prior Art References
Office Actions
TRANSLATION NEEDS:
Enforceable Patents
Published Apps
Agreement Text
TRANSLATION NEEDS:
Enforceable Patents
Published Apps
License Agreements
Diligence Material
TRANSLATION NEEDS:
Discovery Material
Depositions
Court Exhibits
SOURCING DECISIONS:
Foreign Associates
Outside Counsel
In-House Dept Staff
SOURCING DECISIONS:
In-House Dept Staff
Outside Counsel
SOURCING DECISIONS:
Outside Counsel
Foreign Attorneys
SOURCING DECISIONS:
Outside Counsel
Everywhere, But Sometimes HiddenR
ISK
“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.”
Chief Justice Henry Billings Brown
Topliff v. Topliff, 140 U.S. 156 (1892).
Patent Filing & Prosecution
– Translation is required for:
• Filing patent applications in most non-English
speaking countries.
• Foreign language prior art references.
• Foreign language office actions.
– Impact of translation:
• Key driver of costs associated with foreign filing.
• May affect the duration, cost and outcome of
examination.
• May affect the viability of enforcement action
post-grant.
Freedom to Operate
– Translation is potentially required for:
• Issued foreign-language patents and pending
applications.
• License agreement terms.
• Diligence materials.
– Impact of translation:
• Translated text informs the risk assessment
around potential infringement litigation.
• The viability of an international acquisition or
product launch may depend on the precise
contents of foreign language claims.
Litigation
– Translation is potentially required for:
• Discovery material (paper & electronic).
• Depositions of non-English speaking individuals.
• Court exhibits and other documents.
– Impact of translation:
• Escalates the cost of discovery—often
considerably.
• Attorneys depend on foreign-language
resources to identify responsive documents,
develop their case, and argue that case in court.
Licensing Activity
– Translation is potentially required for:
• Another party’s foreign language patents that
are candidates for licensing.
• A firm’s own foreign language patents.
• Licensing Agreement text.
– Impact of translation:
• What exactly you’re paying for when licensing
foreign language patents—the examination
process may have altered the scope of issued
patents within the same family.
• Understanding your negotiating position vis-à-vis
the credibility of enforcement action.
So, how are you managing your
translation needs?
Fragmented Sourcing Creates Risk– In part because many organizations lack
visibility of their translation needs, those needs are engaged reactively--at the point of need.
– Multiple, fragmented buyers engage a fragmented assortment of providers.• In-house administrative and legal staff.
• Domestic outside counsel.
• Foreign associates.
– Uncoordinated sourcing practices create inefficiency, compromise quality, and introduce risk.• Buying power is diluted as spend is dispersed ad hoc.
• Reduced transparency of need, spend, and providers.
• Word product quality and consistency is compromised and difficult to monitor.
• No source of accountability.
Patent Department
Filing &
ProsecutionLicensing
Freedom to
OperateLitigation
TRANSLATION NEEDS:Applications for FilingPrior Art References
Office Actions
TRANSLATION NEEDS:Enforceable Patents
Published AppsAgreement Text
TRANSLATION NEEDS:
Enforceable Patents Published Apps
License AgreementsDiligence Material
TRANSLATION NEEDS:
Discovery Material
DepositionsCourt Exhibits
SOURCING DECISIONS:
Foreign AssociatesOutside Counsel
In-House Dept Staff
SOURCING DECISIONS:In-House Dept Staff
Outside Counsel
SOURCING DECISIONS:
Outside CounselForeign Attorneys
SOURCING DECISIONS:
Outside CounselRIS
K
Case Study #1
– An attorney at a law firm was performing a
Freedom to Operate assessment for a large
pharmaceutical company.
• The client was evaluating the possibility of
bringing a new product in-house.
• Attorney had identified several relevant
applications published in English, and needed to
know where else those applications had been
filed, as well as whether they had been issued,
abandoned, or were still pending.
• In some cases translation was required to
understand the scope of enforceable claims.
Case Study #2
– In-house counsel at a multinational
telecommunications company was tasked
with evaluating the viability of asserting an issued patent in Japan.
• The attorney required a translation of the
company’s own patent back into English to verify
that the issued text properly reflected the text of
the priority application.
• In addition to ensuring that the scope of the
claims had not been altered during prosecution,
the attorney wanted to verify that one key
passage had been accurately rendered and the
precise phrasing preserved.
Case Study #3– Mitsubishi Chemical Corp v. Barr Laboratories
718 F.Supp. 2d. 382 (S.D.N.Y. 2010).
• Barr sought to invalidate a Mitsubishi patent connected
to Argatroban, an injection drug w/ sales > $100 million.
• Barr’s central argument in the case involved a Japanese-
language journal article, particularly one key sentence.
• Mitsubishi offered its own translator with an alternate
interpretation of the Japanese sentence, which differed
in its placement and construal of a single modifying
phrase.
• In the end, a patent dispute over a drug worth more than
$100 million in annual sales turned on whether “7.5%
Dsorbitol-4% ethanol” was interpreted as an adjectival or
adverbial phrase. Mitsubishi prevailed.
Takeaways
– Many organizations sacrifice transparency,
increase costs and introduce risk through
their translation sourcing practices.
– Costs may escalate from both inconsistent
pricing structures and redundant
expenditures.
– The lack of accountability encumbers
efforts at corrective action.
– Organizations subject themselves to adverse outcomes by engaging translation
needs reactively.
Moving Translations Upstream
– By proactively engaging the need for
translation upstream, firms can add business
value, improve competitive positioning, and
better manage risk.
– Action Plan:
• Most important: gain transparency.
• Quantify spend.
• Identify existing providers.
• Investigate pain points and improvement
opportunities.
• Seek guidance; consult with prospective partners.
• Take control.
Park IP Translations15 West 37th Street
8th FloorNew York, NY 10018Office: 212.581.8870
Fax: 212.581.7722Email: [email protected]
contactMatthew Sekac
Senior Director, Sales Strategy
Email: [email protected]
Office: 212-581-8870
Direct: 212-765-5111