Given the sluggish economic recovery and continued budget pressure on IP departments, it makes sense to consider new strategies for lowering the steep costs related to international patent filing. Translations can account for up to 50% of the cost of national stage entry, so cost-cutting strategies could make a significant difference in the bottom line. Strategic costs savings can then be used to stretch a diminishing budget, or offer opportunities to expand patent protection into other countries without busting your budget.
Before moving into discussion about ways to cut cost it is important to focus on the end goal. It is one thing to cut costs, but to borrow a popular political phrase – you want to cut with a scalpel, not a cleaver. Thus, keeping in mind the ultimately end goal at every step will allow you to engage cost cutting strategies without compromising your patent project. Of course, the end goal is to obtain the broadest, strongest patent portfolio; obtaining patents in a variety of jurisdictions where meaningful business opportunities exist.
Here are a few options and ideas to consider:
1. English Only
The most obvious option—one that is becoming far more common—is entering only into countries where the filing language is English. That means filing in the United States, Canada, India, Australia, Israel, and many EPO countries without incurring any translation costs at all (except for German and French claims translation after grant in Europe). Certainly, this strategy will significantly reduce the overall cost of filing a specific patent, but it also means that you 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. Therefore, while this may work for some, it will not be the idea strategy for many who need broader based patent protection world-wide.
2. Focus Filings
Another option to reduce 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 can also be used to file in Egypt and Jordan. Similarly, obtaining a translation into Latin American Spanish allows you to file your application in Mexico and across Latin America. If you combine this strategy with an English filing strategy (see above) you could obtain significant world-wide protection in English speaking countries and in Latin American Spanish countries, for example. That makes a nice patent footprint, which may be enough for some inventions.
3. Conversion into Similar Languages
If you are filing in a) Latin America and Spain, b) Brazil and Portugal, or c) China and Taiwan, it makes sense to obtain one translation and then “convert” it for filing in additional countries. For example, a Latin American Spanish translation obtained for filing in Mexico can be revised into European Spanish for EP validation in Spain. Similarly, an application translated into Traditional Chinese for Taiwan can be converted into Simplified Chinese for filing in China. Editing/revising an existing translation is far less expensive than ordering a new one.
4. Repetitive Text Analysis
Inquire about repetitive text discounts, especially if you use boilerplate language in your applications and are translating more than one patent into the same language, or have translated similar patents into that language in the past. For example, if you are filing an application in Russia that is very similar to an application filed previously, make sure that whoever handles the translation refers to the previous translation and performs a repetitive text analysis. The cost difference will often be substantial.
5. Shop Around
One easy way to determine if you can significantly reduce total filing costs without having to change any filing strategy is to request an estimate from several translation vendors on a patent you have already filed. By comparing your actual invoices with the estimate, the potential for savings will be clear.
6. Translation Specialists
Another strategy worth considering is turning to a patent translation firm with proven expertise in translating patent applications. As is the case with legal services in the patent arena, you want to seek specialized expertise. If your invention relates to a biotechnology innovation you wouldn’t ordinarily seek the assistance of an electrical engineer. Patent applicants are among the most difficult documents to translate because by the very nature of a patent application what is being described must in some way be unique.
Lowering patent translation costs utilizing the above strategies should not entail compromising on quality. And one aspect of quality you should not compromise on is ensuring that your translated applications are carefully reviewed by a patent attorney in the target country before they are filed.
Make sure that whoever handles the translation includes in-country patent attorney review as part of the proofreading process. Even the best translators 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 the patent’s claims.
Why is this important? In 1892, in the case of Topliff v. Topliff, 145 U.S. 156, the United States Supreme Court explained that a patent application is one of the most difficult legal instruments that can be drafted. The Supreme Court explained:
The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.
This very same assertion was echoed by the United States Supreme Court 1963 in Sperry v. Florida, 373 U.S. 379, when Chief Justice Earl Warren explained:
Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U. S. C. 101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under state law. It also involves his participation in the drafting of the specification and claims of the patent application, 35 U. S. C. 112, which this Court long ago noted “constitute[s] one of the most difficult legal instruments to draw with accuracy,” Topliff v. Topliff, 145 U.S. 156, 171.And upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art.
This is true not only for the United States, but rather the rule applies around the world. There are good ways and bad ways to minimize translation costs. Just make sure that you are cutting costs wisely and not compromising quality. At the end of the day the patent process is expensive, so saving a few dollars as the expense of compromising rights is not a good trade-off. Through appropriate planning on where to file, filing in countries where the translation is a conversion to a similar language and having professional translation services with patent attorney proof-reading is the sensible way to minimize cost without compromising on quality.