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In this article we examine whether the expense of expert patent translations can be justified in these days of budget constraints, particularly now that there are an increasing number of lower cost alternatives.

When is it appropriate to use specialists and when can costs be cut by using the cheaper alternatives without incurring any undue risk?

Whether you are a patent attorney, paralegal, patent agent, researcher in an IP services firm or even an inventor, there is an obvious temptation to consider using low cost translation providers. Patent translation can be a major drain on budgets, especially in the area of patent prosecution. Translation can account for 50% or more of the cost of PCT national stage filings and EPC validations so any scope for cost-cutting should be considered. However, when prices drop something has to be sacrificed. That sacrifice is usually in quality and cutting costs at the expense of quality can have drastic consequences.

Patents are essentially legal documents. They use very precise language to describe the claimed new uses and advantages of the invention. To create high quality translations, it is therefore necessary to employ translators who have a relevant technical background. It is not advisable, for example, to use a chemist to translate a patent dealing with aircraft propulsion units.

Patents tend to contain complex sentence structures, particularly in the claims where there is a need retain the breadth, narrowness or indeed ambiguity of the original language in order to accurately reflect the technical and legal intent of the text. They also use a standardized terminology expected by patent attorneys and examiners. All of this means that skilled linguists who are mother-tongue speakers and who are experienced in the peculiarities of patent translation should be used if a high quality translation is required.

Patent translations also require stringent quality control. Even skilled translators can make the occasional error. To minimize these errors being passed on to the user, a reliable translation will always have been reviewed by a second suitably skilled person.

Furthermore, if the translation is particularly important, for instance the translation of a key patent that will be used in an infringement case, it may be necessary to employ an independent proof-reader to ensure the highest quality.

These requirements make expert patent translations expensive. A brief patent translation or set of patent claims might cost $100-$300, however it is possible for the full translation of a lengthy patent to cost $1,000-$10,000 or more.

Lower cost translations are available. To keep the costs down, they are likely to be performed by machine or by a translator who is not a mother-tongue expert. Such a translator may have little or no technical knowledge of the matter in hand, may not be attuned to the requirements of patent offices worldwide, and may be operating in isolation without a quality control system to back them up.

IP practitioners require translations most regularly for R& D purposes or to file patent applications overseas. Failure to use high quality translations in each area brings a different type of risk.

Research & Development.

This involves gathering information from published patents in unfamiliar languages about new innovations or competitor activity for the purposes of Research & Development, IP portfolio maintenance & monitoring, or the support of patent licensing & commercialization activities.

Faced with limited budgets, companies may be tempted to avoid using translations when monitoring their competitors’ activities and reviewing developments. Or they may decide to use free machine translations. This will reduce costs in an area where legal quality translations are not required. However, this cost saving will come with the risk that important details are being overlooked and business opportunities are being missed. There is therefore merit in judiciously using expert translators for the more critical documents.

Patent Prosecution / Filing.

This involves translating prior art for domestic filings and translating applications for overseas filing to protect a company’s IP.

Patent filing costs, of which translations are a major component, have increased dramatically over the years. Filing in several countries incurs higher costs and may require the use of a range of local attorneys. This may lead to loss of control over costs, quality and the entire process. Where an amendment to the original document is required, it increases the complexity of working with several firms.

If using several local law firms and filing agents to manage and track everything, how much does it add to your administrative overhead in terms of management and invoicing? Does it inhibit your ability to maximise the re-use of translations, e.g. using a Portuguese translation to file in Portugal and Brazil? When in-country law firms bundle the cost of translations with other local filing services, do you know how they translate the texts and how much it costs? Are they using qualified experts who are supported by quality assurance processes? Might they be charging attorney-level rates for the translation work?

When gathering information for domestic filing, one of the many discount translation providers or machine tools that have proliferated on the Internet in recent years could be used. This would enable a rough idea of the content of related prior art to be obtained. However it may be considered prudent, if such an approach seems to indicate that important highly relevant prior art exists, to consider commissioning a full expert translation of that text so that you are sure of your ground. If you rely solely on machine translation or a low-cost translator, there is a risk that you may be misled about the scope of the prior art. A poor translation of the prior art may lead to a belief that a particular foreign publication poses no threat to an application, when in reality it anticipates or renders obvious its claims. This may lead the applicant to pursue the prosecution of their application and expose themselves to a risk of litigation at a later stage by a litigant who is using a better quality translation of that prior art.

The risks associated with translations for overseas filing are somewhat different to those of domestic filings. If a filed application is poorly translated it may delay or stall the prosecution which could be very costly. Most overseas law firms provide translations. Where they use their inhouse attorneys, the costs will typically be at the higher attorney rather than the expert translator rate. In some cases, they may not use their inhouse attorneys. Instead, they will pass the translation work out to the lowest bidder and file them with little or no review. Similar variations in quality can be expected if a translation agency is used which does not specialize in IP translations.

There are, then, hidden costs in using a network of overseas law firms rather than a single specialist translation provider. These costs come in the form of higher administration costs and lower opportunities to reap discounts from related work.

When centralizing your translation work by using a specialist translation provider you are effectively obtaining project management support, especially for multilingual projects such as national filings following a PCT (WO) application.

The specialist provider will assign a dedicated project manager whose job is to coordinate the whole process. Such providers are constantly improving and growing their translator network, enabling companies to gain access to an impressive and well-maintained talent pool. They also provide a single contact point for all queries and job hand-offs and a simplified billing process when compared to using a network of overseas law firms.

Furthermore, tangible cost savings can be offered by a specialist translation provider where translations are required for filing in related jurisdictions. For instance, it makes sense to obtain one translation in Spanish, Portuguese and Chinese for filing in Spain, Portugal and People’s Republic of China and then “convert” it for filing in Mexico, Brazil, Taiwan. Editing/revising an existing translation is far less expensive than ordering a new one from six individual law firms.

In short, for prosecution work where you require maximum protection against risk and optimal cost savings, it is best to use a translator provider which focuses on IP work and which employs skilled, specialist translators in all your required languages.

Striking the Right Balance

Across all of this activity, whether translating for information or prosecution, it should be remembered that translation is a human art, not a science. It is quite likely that two experts translating the same document would come up with slightly different translations. For this reason, another advantage of using a reputable expert translation company is that they will tend to be very open to communicating with their clients, adjusting their translations in line with approved glossaries or client preferences so that a long-term relationship of mutual understanding, consistency and reliability can be developed. In short, the value of a patent translation extends well beyond its cost. A poor quality translation can have disastrous legal and financial consequences.

No company, intent on protecting its valuable IP, can afford to take risks. Cutting corners, for short term cost saving, can lead to long term pain. That is why choosing a trustworthy and professional patent translation provider is so important.

The conclusion to be drawn from this is clear. If IP practitioners understand the risks associated with not using expert translations they will be in a better position to make informed decisions about cost-cutting in future.

Find out how Clarivate Analytics IP Translation Services can help you avoid costly errors in your patent translations. Or email ts.translations@clarivate.com to talk to us.