Understanding the impact of language translation on portfolio management, managing risk, and taking control. Matthew Sekac, Senior Director at Park IP Translations shares valuable insights in mitigating risks in your patent and legal document translation experts. The information was presented to IP Service World in Germany in November 2014. Patent and intellectual property translation services at Park IP Translations.

1. Translation is
Everywhere
Understanding the impact of language
translation on portfolio management,
managing risk, and taking control
Matthew Sekac
Senior Director, Sales Strategy
Email: msekac@parkip.com

2. 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.

3. Everywhere, But Sometimes Hidden
Patent Department
Filing &
Prosecution
Licensing
Freedom to
Operate
Litigation
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
RISK

4. “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).

5. 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.

6. 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.

7. 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.

8. 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.

9. So, how are you managing your
translation needs?

10. 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.

11. Patent Department
Filing &
Prosecution
Licensing
Freedom to
Operate
Litigation
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
RISK

12. 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.

13. 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.

14. 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.

15. 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.

16. 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.

17. Park IP Translations
15 West 37th Street
8th Floor
New York, NY 10018
Office: 212.581.8870
Fax: 212.581.7722
Email: info@parkip.com
contact
Matthew Sekac
Senior Director, Sales Strategy
Email: msekac@parkip.com
Office: 212-581-8870
Direct: 212-765-5111