Do Not Neglect IP Translation at the EP Validation Stage
Shares in the Taiwanese company Giga Solar Materials have recently fallen* due to a patent infringement lawsuit filed by Germany’s Heraeus Holdings GMBH. Shares dropped 3.94%, which for a company with a 32B New Taiwan Dollar (US$1B) market capitalization equates to a significant loss in shareholder value.
No one can tell yet how this case will play out in the courts, and shareholders can expect the value of their investment to fluctuate significantly as the case progresses. This is just one of a great many examples that send a clear message: patent infringement litigation is a serious business that can knock a company to its core and cost millions.
A patent is a highly technical legal document. An attorney (or agent) carefully crafts his words to ensure that every line is as needed either precise or ambiguous, thus ensuring the applicant can both commercialize his product and protect it the best he can if ever it comes to litigation.
Although the percentage of patents that go to litigation may be low, it can cost a company significantly if it is found that the translated text does not represent the patent holders initial intention.
At Park IP Translations, we talk with IP professionals across the world. These people range from in-house counsel representatives to patent attorneys at large law firms, sole practitioners and the inventors themselves. They are innovative and clever people, who tell us the challenges of their role and the complexities of taking an idea and moving it through the patent process to eventually seeing that patented invention through to full commercial production.
A general concern mentioned daily by these IP professionals is the increase of expectations placed on these legal professionals to be more aware of their value chain when acting in the interest of their client, at a global level. In the past, it would be acceptable to use a country-by-country model to file and translate. Independent surveys such as that carried out by the Steinbeiss Institute** have shown that a centralized model for translating IP content can not only generate cost savings, it also results in higher quality, more accurate translations. There result is stronger, more reliable international protection.
It is true that the implications of a poor translation and the impact during litigation can vary between European Patent (EP) and Patent Cooperation Treaty (PCT) procedures. If the applicant is lucky, then areas of concerns raised during the PCT application process will highlight the need to correct the foreign application and any error in the original translation. This is after paying the additional attorney costs associated with avoidable office actions.
The process of European Validation for any EP application varies in each country and therefore translation requirements will vary too. With EP, finding a poor translation at the validation stage is much harder. With no examination once an application is validated in a target country, the only real checkpoint is if the patent is litigated. Of course, at this point it will be too late, and recourse to the original granted text may be limited or unavailable depending on the country. No one wants to deal with missing a deadline.
Not doing due diligence with the company or law firm carrying out IP and legal patent translations is tantamount to not having house insurance. By the time you realize you need it, it is too late. From a Park IP perspective, we know the importance of highly accurate EP and PCT translations. Using our ISO 9001:2008 framework, we have created a proven repeatable process that drives our quality metric of 99%.
Litigation is a costly, complex process, damaging to brands and reputations. It is also sometimes necessary for patent holders to assert their legally protected intellectual property and defend their business interests from infringement. That often requires litigation, and applicants going into international infringement litigation will want to do so armed with the strongest protection possible and confidence in their understanding of what their patents actually say.
Don’t be tempted to cut costs and use unqualified translation resources. Prevention is better than cure (or litigation). Use experienced, specialized legal translators to ensure all target locales are accurately represented.
Tim Moorcroft is European Business Development Director at Park IP Translations, a Welocalize company.
**Steinbeiss Institute: Translation of patent application: a challenge in globalized IP Management – Dec 2013 IAM Magazine with updated findings presented at the IP Service World Nov 2014.