How To Manage Patent Costs With Quality Applications, Accurate Translations

By Jeremy Coombs

The number of patent applications filed worldwide continues to increase, up by 4.6 percent in 2014 for a total of nearly 2.7 million, according to the 2015 edition of the World Intellectual Property Indicators. The increasing number of patents filed worldwide demonstrates the strength of ongoing innovation and the value companies put on protecting their intellectual property where they wish to do business. The filing numbers would likely be even higher, and across more countries, if the filers were more prepared for the costs associated with filing patents.

This is especially true when it comes to obtaining quality translations necessary to file the patent in multiple foreign jurisdictions. If the innovator cuts any corners in the translation process the costs can be even higher down the road. Even one mistranslated word can result in expensive litigation from competitors questioning the patent’s validity.

While examples of translation errors in patent applications aren’t often reported in the media, they do continue to wreak havoc on both the prosecution process and patent enforcement. Weaknesses often don’t surface for many years, which creates an unknown ticking time bomb in a company’s patent portfolio.

For example, the South Korean Supreme Court last year ruled on a suit brought to invalidate the original Duoback chair patent, which was based on a faulty Korean translation of the German original. The plaintiff argued the error-filled translation rendered the patent invalid. Even though the patent tribunal dismissed the claim, the patent holder still had to spend the time and money fighting the litigation. And even if the litigation never goes to court, potential errors might reduce its market value and the ability of the patent holder to enforce it.

As a result, investing in accurate quality translations now can increase a company’s IP protection — and resulting revenue — worldwide while reducing overall patent ownership costs.

Research Confirms Cost of Inaccurate Patents

According to a 2013 study by the Steinbeis-Transfer-Institute Intellectual Property Management of Munich, 80 percent of people directly involved in patent filing have also dealt with translation errors. Translation errors can greatly impact the cost of patents, according to Steinbeis. More specifically, these errors can cause:

• Office actions that create a delay in the patent being granted
• The latent risk of an unenforceable patent
• Additional internal and external costs
• The unfortunate need to limit the number of patents filed due to unexpected costs that exceed budget

As the study shows, accurate translations are imperative. But the cost of accurate translations can also limit the number of jurisdictions where an inventor can file. What’s an inventor to do?

A Streamlined Translation Model Reduces Risk, Lowers Costs

The answer to this no-win scenario is a new model for defining and producing quality IP translations — one that enables filers to better manage and reduce the overall cost of their patent portfolio while improving scientific and legal accuracy.

Traditionally, original patent applications are sent to regional law firms for “processing,” which includes translation as one of the filing services. Patent owners have little say in the cost and quality of translation. Law firms rarely have enough translation business to maintain an active pool of translators, reviewers with sufficient scientific and local market expertise, or technology to enhance the process. In addition, their translators have little ability to interact with translators in other jurisdictions or directly with the client.

The resulting translations regularly prompt office actions due to translation errors and clarity issues, increase the risk of litigation, and create inconsistency across multiple language translations of the same patent. No wonder the costs are high. Yet the Steinbeis study concludes that half of all organizations still use this traditional model for foreign patent filing and another 34 percent use this model in conjunction with other processes.

So how can companies ensure more accurate translations without breaking the bank? Legal teams and patent translation service providers are increasingly adopting a streamlined process for patent translations that offers a superior method for creating quality and efficiency. Essentially, one translation company manages all patent translations at the beginning of the application process, with global operations centralized by technology. This offers several benefits:

• Clients receive quality translations from native translators who also have technical expertise in the client’s field.
• Clients benefit from technology investments that improve the translation process, quality and security, and create efficiencies over time with terminology management and translation memories.
• Law firms and foreign agents can focus on legal work.

An ideal example of the benefits is a manufacturing company in Japan, whose executives believed had room to improve its IP department operations. It wanted to eliminate office actions related to translation, reduce the patent time-to-grant by three months and reduce the total cost of owning the patents by 10 percent.

Six months after incorporating a streamlined model for translation, the company had filed 183 patents in eight jurisdictions. Twelve translators had translated 2 million characters and contributed 5,200 terms to the manufacturer’s database. Even better, the company could attribute the following to improved translation processes and quality:

• Eliminated translation and clarity-related office actions
• Decreased time to grant by six months — double the original goal
• Reduced total cost of patent ownership by 30 percent — three times the goal

Much like this example, when you truly identify and budget for the real benefits, threats and costs of IP translations, such as those outlined above, a streamlined model for translation makes the most sense for any size company. Who wants to run the risk of the patent being invalidated by unknown errors? The price is too high.

Jeremy Coombs is the senior vice president of operations at MultiLing, the innovative leader in intellectual property (IP) translations and related support services for foreign patent filings. He joined MultiLing in 1999 and has become one of the company’s principal operations and technology minds. In his current role, he manages large-scale translation and localization projects for companies such as Dell, LSI Corporation, Qlogic, Intuit, and GE Healthcare.