Foreign Filing Best Practices for Patent Professionals

ThinkstockPhotos-466304815The last year was an unusual period for anyone in the global patent world. Many in the IP industry prepared for an unprecedented spike in US-originating patent applications, due for PCT national Phase Entry on or near September 15, 2015. Why? This was the consequence of an industry-wide phenomenon and rush to get new applications filed before the changes brought by the America Invents Act (AIA) that came into effect on March 16, 2013.

Park IP coined the phrase “AIA Aftershock” to describe the effects and impact of the sudden spike in demand for patent translations required to meet the PCT National Phase Entry deadline in September 2015.

We started early, working with our clients to help them prepare for this spike in work in order to protect and prevent any of their patents missing the deadline due to the unavailability of quality legal and patent translation resources. In doing this, were able to learn many new lessons and best practices to further improve how we manage our client’s global patent portfolios. Patents, domestic and otherwise, are such a valuable key asset to any enterprising organization. Many were surprised by the disorganization and chaos some firms and corporations experienced when it came to foreign filing during this unprecedented surge.

Based on our experiences, here are six best practices for foreign filing for anyone involved in the patent prosecution world:

#1 – Give instructions as early as possible in order to avoid rush fees for translation and extension fees. This will also ensure you have access to quality translation resources. In a 2015 survey, Park IP Translations asked a large sample of patent professionals how much lead time they normally had to work with when foreign filing. More than half of respondents reported that foreign filing decisions were made and instructions sent less than 30 days before the application deadline. Only 2% of respondents reported that they had allowed 90 days or more. Most PCT countries have grace periods available for submitting translated applications after the initial filing deadline. It is best to take a strategic approach though, plan ahead wherever possible and ensure your legal language service provider has the flexibility and scalability to adapt to tight deadlines.

#2 – Use regular resources for quality and consistency. If you have regular translation requirements, scheduling translation requirements in advance will enable the same team of translators working on your patent application. The more familiar a legal translator is with your company, products and industry, the more accurate the translation will be upon completion.

#3 – Work with a trusted partner for translations. The old model of relying on foreign associates to source translations locally is risky and offers no standardized quality control process across regions. Partner with someone who is an expert in patent translations and who applies standardized and measurable quality control measures for all languages.

#4 – Choose your translation partner carefully. Patent translation and quality should be at the core of their business. Don’t simply rely on old processes as ‘that’s the way it’s always been done’. It is well worth your time to do a detailed assessment of the language partners you work with to ensure you are getting the best possible value and quality. If you use a number of smaller translation vendors, it may be worth consolidating and reducing to achieve better consistency and lower costs.

#5 – Investigate options for working with a “one stop shop” provider of translation and filing services for PCT National Phase entry. This approach is especially beneficial for countries where you don’t have a strong relationship with local counsel. There are significant advantages in terms of process, quality and costs.

#6 – Centralize your process for EP Validations. The administrative work of sending out individual orders and the related correspondence to a network of upwards of 20 agents in different countries can be greatly reduced by working with a centralized provider.

If you have any questions or queries about legal translations, foreign filing, EP validation or any other matter relating to global patents, please drop me an email at jonathan.laidler@parkip.com

Jon

Based in Berlin, Jonathan Laidler is a Business Development Director at Park IP Translations.

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