Resources / Blog

It Takes a Patent Lawyer

Dec 10, 2009

Given the current state of the global economy, few companies can afford not to consider cost-cutting measures regarding their intellectual property procurement and patent translations.

Whether you are the Chief Patent Counsel for a Fortune 500 biotech company, or a patent attorney representing clients with a very limited patent portfolio, evaluating your patent translation costs related to overseas patent prosecution could make a significant difference in your–or your client’s–bottom line.

Chances are you or your outside counsel currently relies on foreign associates to handle both the translation and the national phase filing of the application. Many patent groups have never seriously considered the possibility of “unbundling” these services and using a separate vendor for the patent translation. Certainly there are a number of advantages to the status quo approach. For law firms, reciprocity is important, and providing your foreign associates with more business—including translation business—helps your firm get more business in return. For busy and often under-staffed in-house patent groups, dealing with one foreign patent firm as a “one-stop-shop” for both translating and filing a patent in a given country appears easier and more convenient. For the foreign associates, the status quo is also ideal, since the high fees they charge for translating the patent is an important revenue stream.

But this convenience could be far more expensive than you realize. Given limited patent budgets, cuts that are not made in translation costs could lead to other reductions that are far riskier: the outsourcing of patent drafting work, a reduction in the number of countries you file in, or the use of less accurate machine translations to translate prior arts that are critical in understanding the patentability of an application that is being drafted.

There are several options for companies that want to reduce their patent translation costs related to filing. The most obvious option—one that is becoming far more common—is filing your patent only in countries where the filing language is English. That means filing in the United States, Canada, India, Australia, Israel, and the EPO (though claims need to be translated into French and German), and several other important markets without incurring any translation costs at all. Certainly, this strategy will significantly reduce the overall cost of filing a specific patent. But of course it also means that your or your client’s invention will not be protected in several major world economies and economic blocs: Brazil, China, Japan, Russia, Latin America, and the Gulf States, to name but a few.

Another option to reducing patent translation costs is focusing on regional blocs where one translation will cover multiple countries. For example, translating your patent into Arabic will allow you to file with the GCC (Gulf Cooperation Council), which includes Saudi Arabia, Kuwait, Qatar, and the UAE. That same Arabic translation (with minor modifications) can also be used to file in Egypt.

Finally, another strategy that is worth considering is turning to a patent translation firm—like Morningside—with proven expertise in translating patent applications. Once the patent translation is completed and returned, you can submit it directly to your foreign associates for filing. Depending on the number of countries where you file, the savings can be very substantial. For example, one of our clients estimated that they would save over $500,000 a year on their filings by using our services for the translation work, and relying on their foreign associates for the filing work only. By saving on translations, they have been able to avoid other cuts in their patent budget and improve their overall bottom line.

We will have more to say about the process of switching from foreign associates for patent translation work in a future posting.

But first a quick note about translation firms. While most American firms employ experienced, certified translators, only a small number of these firms specialize in patent translations. And even fewer utilize native language translators in the target countries with the technical and linguistic background to handle a complex nanotech or biological patent.

But even that is not sufficient. Even the best translators, editors, and project managers probably do not have the necessary legal and technical knowledge to guarantee the most accurate translation possible. It takes a patent lawyer with significant expertise in his country’s patent laws and a grasp of legal nuances related to a patent’s claims. That is why Morningside partners with patent firms in the target countries and relies on native language patent attorneys to oversee the translation process, and carefully edit and proofread the translated application. We believe that it takes a patent lawyer, and most of the patent lawyers that we are pleased to count among our clients believe it does too.

Compromising on patent translation costs should not entail compromising on quality. And one aspect of quality you should absolutely not compromise on is ensuring that your translated applications are carefully reviewed by a patent attorney in the target country before they are filed.

Get the latest insights delivered to your inbox

  • ¨ You agree we can store your data. We promise to keep it safe. Learn More