Translation is

EverywhereUnderstanding the impact of language

translation on portfolio management,

managing risk, and taking control

Matthew Sekac

Senior Director, Sales Strategy

Email: msekac@parkip.com

Translation is Everywhere

– The need for translation arises—and has a

meaningful impact—across nearly all patent

portfolio management functions.

– Many organizations engage the need for

translations reactively and downstream.

– Fragmented and uncoordinated sourcing

practices create inefficiency, compromise

quality, and introduce risk.

– Moving sourcing decisions upstream adds

business value, improves competitive

positioning, and reduces risk.

Patent Department

Filing &

ProsecutionLicensing

Freedom to

OperateLitigation

TRANSLATION NEEDS:

Applications for Filing

Prior Art References

Office Actions

TRANSLATION NEEDS:

Enforceable Patents

Published Apps

Agreement Text

TRANSLATION NEEDS:

Enforceable Patents

Published Apps

License Agreements

Diligence Material

TRANSLATION NEEDS:

Discovery Material

Depositions

Court Exhibits

SOURCING DECISIONS:

Foreign Associates

Outside Counsel

In-House Dept Staff

SOURCING DECISIONS:

In-House Dept Staff

Outside Counsel

SOURCING DECISIONS:

Outside Counsel

Foreign Attorneys

SOURCING DECISIONS:

Outside Counsel

Everywhere, But Sometimes HiddenR

ISK

“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.”

Chief Justice Henry Billings Brown

Topliff v. Topliff, 140 U.S. 156 (1892).

Patent Filing & Prosecution

– Translation is required for:

• Filing patent applications in most non-English

speaking countries.

• Foreign language prior art references.

• Foreign language office actions.

– Impact of translation:

• Key driver of costs associated with foreign filing.

• May affect the duration, cost and outcome of

examination.

• May affect the viability of enforcement action

post-grant.

Freedom to Operate

– Translation is potentially required for:

• Issued foreign-language patents and pending

applications.

• License agreement terms.

• Diligence materials.

– Impact of translation:

• Translated text informs the risk assessment

around potential infringement litigation.

• The viability of an international acquisition or

product launch may depend on the precise

contents of foreign language claims.

Litigation

– Translation is potentially required for:

• Discovery material (paper & electronic).

• Depositions of non-English speaking individuals.

• Court exhibits and other documents.

– Impact of translation:

• Escalates the cost of discovery—often

considerably.

• Attorneys depend on foreign-language

resources to identify responsive documents,

develop their case, and argue that case in court.

Licensing Activity

– Translation is potentially required for:

• Another party’s foreign language patents that

are candidates for licensing.

• A firm’s own foreign language patents.

• Licensing Agreement text.

– Impact of translation:

• What exactly you’re paying for when licensing

foreign language patents—the examination

process may have altered the scope of issued

patents within the same family.

• Understanding your negotiating position vis-à-vis

the credibility of enforcement action.

So, how are you managing your

translation needs?

Fragmented Sourcing Creates Risk– In part because many organizations lack

visibility of their translation needs, those needs are engaged reactively--at the point of need.

– Multiple, fragmented buyers engage a fragmented assortment of providers.• In-house administrative and legal staff.

• Domestic outside counsel.

• Foreign associates.

– Uncoordinated sourcing practices create inefficiency, compromise quality, and introduce risk.• Buying power is diluted as spend is dispersed ad hoc.

• Reduced transparency of need, spend, and providers.

• Word product quality and consistency is compromised and difficult to monitor.

• No source of accountability.

Patent Department

Filing &

ProsecutionLicensing

Freedom to

OperateLitigation

TRANSLATION NEEDS:Applications for FilingPrior Art References

Office Actions

TRANSLATION NEEDS:Enforceable Patents

Published AppsAgreement Text

TRANSLATION NEEDS:

Enforceable Patents Published Apps

License AgreementsDiligence Material

TRANSLATION NEEDS:

Discovery Material

DepositionsCourt Exhibits

SOURCING DECISIONS:

Foreign AssociatesOutside Counsel

In-House Dept Staff

SOURCING DECISIONS:In-House Dept Staff

Outside Counsel

SOURCING DECISIONS:

Outside CounselForeign Attorneys

SOURCING DECISIONS:

Outside CounselRIS

K

Case Study #1

– An attorney at a law firm was performing a

Freedom to Operate assessment for a large

pharmaceutical company.

• The client was evaluating the possibility of

bringing a new product in-house.

• Attorney had identified several relevant

applications published in English, and needed to

know where else those applications had been

filed, as well as whether they had been issued,

abandoned, or were still pending.

• In some cases translation was required to

understand the scope of enforceable claims.

Case Study #2

– In-house counsel at a multinational

telecommunications company was tasked

with evaluating the viability of asserting an issued patent in Japan.

• The attorney required a translation of the

company’s own patent back into English to verify

that the issued text properly reflected the text of

the priority application.

• In addition to ensuring that the scope of the

claims had not been altered during prosecution,

the attorney wanted to verify that one key

passage had been accurately rendered and the

precise phrasing preserved.

Case Study #3– Mitsubishi Chemical Corp v. Barr Laboratories

718 F.Supp. 2d. 382 (S.D.N.Y. 2010).

• Barr sought to invalidate a Mitsubishi patent connected

to Argatroban, an injection drug w/ sales > $100 million.

• Barr’s central argument in the case involved a Japanese-

language journal article, particularly one key sentence.

• Mitsubishi offered its own translator with an alternate

interpretation of the Japanese sentence, which differed

in its placement and construal of a single modifying

phrase.

• In the end, a patent dispute over a drug worth more than

$100 million in annual sales turned on whether “7.5%

Dsorbitol-4% ethanol” was interpreted as an adjectival or

adverbial phrase. Mitsubishi prevailed.

Takeaways

– Many organizations sacrifice transparency,

increase costs and introduce risk through

their translation sourcing practices.

– Costs may escalate from both inconsistent

pricing structures and redundant

expenditures.

– The lack of accountability encumbers

efforts at corrective action.

– Organizations subject themselves to adverse outcomes by engaging translation

needs reactively.

Moving Translations Upstream

– By proactively engaging the need for

translation upstream, firms can add business

value, improve competitive positioning, and

better manage risk.

– Action Plan:

• Most important: gain transparency.

• Quantify spend.

• Identify existing providers.

• Investigate pain points and improvement

opportunities.

• Seek guidance; consult with prospective partners.

• Take control.

Park IP Translations15 West 37th Street

8th FloorNew York, NY 10018Office: 212.581.8870

Fax: 212.581.7722Email: info@parkip.com

contactMatthew Sekac

Senior Director, Sales Strategy

Email: msekac@parkip.com

Office: 212-581-8870

Direct: 212-765-5111