HCBC and BioStart are seeking early stage, technology focused entrepreneurs who are in need of assistance in building their business and their business plan.  They are offering a 10-week program called Kauffman FastTrac® TechVenture™. This is the second offering of this program locally.  They offered this program in the Fall of 2010, and successfully graduated 7 entrepreneurs who are in the process of starting or growing technology focused companies. Now, HCBC and BioStart are looking forward to getting the Spring 2011 session started.

If you know of someone who might benefit, please feel free to send me an email or contact Patrick Longo to  have a quality conversation about the program.

Here are some basic details:

  • Number of companies needed to start the program – 8
  • Day of Time of Class – Wednesday from 8:30 am to 11:30 am
  • Price Tag – $399 / person
  • Discounts Available – the program costs $250 for any HCBC or BioStart Tenant
  • Businesses coaches – BioStart’s Carol Frankenstein and HCBC’s Mary Myers and Patrick Longo

To learn more about the program, please visit their website at http://biostart.org/techventurecincy/index.html

  Print This Post   Email This Post

After filing a series of five continuation-in-part (“CIP”) applications, which added new matter , a patent finally issued containing claims covering Abbott’s antibody.  Centocor then relied on the added material as evidence of written description to support later asserted claims.

The Federal Circuit poo-poohed the idea saying that PTO guidelines prevent claiming a high affinity, neutralizing, A2 specific antibody with a human variable region if it was not possible at the time of filing using “conventional,” “routine,” “well developed and mature” technology. Centocor Ortho Biotech v. Abbott Labs, U.S. Court of Appeals for the Federal Circuit (10-1144).

Patent holders Centocor Ortho Biotech and New York University sued Abbott Labs alleging that Abbott’s Humira® antibody infringes claims 2, 3, 14, and 15 (“the asserted claims”) of U.S. Patent No. 7,070,775 (“’775 patent”). After a five-day trial, the jury found Abbott liable for willful infringement. The jury rejected Abbott’s argument that the asserted claims were invalid, and awarded Centocor over $1.67 billion in damages. Hence, Abbott appealed.

The patent involves antibodies to human tumor necrosis factor a (TNF-a). Overproduction of TNF-a can lead to various autoimmune conditions, including arthritis.

By 1985, many researchers had produced antibodies to human TNF-a. These antibodies were typically produced in mice and were not suitable for use in human patients. While such antibodies do bind to TNF-a, they do not bind to a place on TNF-a that reduces the harmful TNF-a activity. Since such antibodies do not reduce TNF-a activity, they cannot be used to produce the desired therapeutic effect. In other words, the activity of an antibody is related to both how tightly the antibody sticks as well as the specific location on TNF-a where the antibody binds.

In developing their therapeutic TNF-a antibodies, Centocor and Abbott pursued very different strategies. Centocor’s path began by identifying a mouse antibody to human TNF-a that had both high affinity and neutralizing activity (“the A2 mouse antibody”). Centocor then used known techniques to modify its mouse antibody to make it more human. By keeping the parts of the mouse antibody that are responsible for the affinity and the neutralizing activity and changing the less critical portions of the antibody to make these portions more human, scientists sought to preserve the activity of the antibody while reducing its immunogenicity.

By exchanging the A2 mouse antibody’s mouse constant region with a known human constant region, Centocor produced a “chimeric” antibody with a mouse variable region and a human constant region. The resulting chimeric antibody was less immunogenic than the A2 mouse antibody because it contained significantly less mouse protein.

Because the chimeric antibody contained a mouse variable region, it was not considered to be “fully human.” A chimeric antibody still contains foreign protein, so it is more likely to elicit an immune response than a fully-human antibody. Centocor filed a patent application disclosing both its A2 mouse antibody and the chimeric antibody in 1991. The application discussed the immunogenicity problem and the difficulties associated with making a fully-human antibody to a human protein like TNF-α.

Centocor subsequently filed a series of continuation-in-part (CIP) applications. In 1993, the U.S. Patent and Trademark Office rejected certain pending claims in a CIP application because they encompassed antibodies with “less than an entire mouse variable region[].” The PTO asserted that the specification only enabled antibodies with fully-mouse variable regions. Instead of responding to the rejections, Centocor filed a new CIP application and abandoned the pending application. So, the PTO issued the same rejection. Again, instead of responding, Centocor abandoned its application and filed three substantially identical CIP applications in 1994.

These 1994 CIP applications added new matter that Centocor relied on as evidence of written description to support the asserted claims. Although Centocor made these few additions, it did not present claims to human variable regions when it filed the 1994 CIP applications.

Abbott pursued an alternative path and sought to engineer a fully-human antibody. First, Abbott’s collaborators created an enormous phage display library containing a spectrum of human variable regions. They searched this library for variable regions that bind to human TNF-α. In the process, they developed a technique known as “guided selection” to help identify variable regions from the library that bind in a specific place so the variable regions have neutralizing activity. After identifying human variable regions that bind to human TNF-α, they used various techniques including “chain shuffling” and “affinity maturation” to improve the binding affinity of the variable regions. These human variable regions were combined with known human constant regions to create fully-human antibodies.

By 1995, Abbott had created the therapeutic antibody Humira®. Abbott filed a patent application disclosing this high affinity, neutralizing, fully-human antibody to human TNF-α in 1996. See U.S. Patent No. 6,090,382. The PTO granted the patent in 2000, and Abbott obtained regulatory approval to market Humira® in 2002.

After the grant of Abbott’s patent and after regulatory approval of Humira®, Centocor filed its claims to fully-human antibodies. Because the patent family disclosing Centocor’s own chimeric antibody was still pending in 2002, Centocor filed the claims as part of a thirteenth application in the family, explicitly claiming human variable regions and fully-human antibodies. Asserted claim 2 and the claim from which it depends are illustrative:

  1. An isolated recombinant anti-TNF-α antibody or antigen-binding fragment thereof, said antibody or antigen-binding fragment comprising a human constant region, wherein said antibody or antigen binding fragment (i) competitively inhibits binding of A2 (ATCC Accession No. PTA-7045) to human TNF-α, and (ii) binds to a neutralizing epitope of human TNF-α in vivo with an affinity of at least 1×108 liter/mole, measured as an association constant (Ka), as determined by Scatchard analysis.
  2. The antibody or antigen-binding fragment of claim1, wherein the antibody or antigen binding fragment comprises a human constant region and a human variable region.

Independent claim 1, which is not at issue in this appeal, covers antibodies with a human constant region and a variable region from any source. The scope of claim 1 includes, but is not limited to, chimeric antibodies. Asserted claim 2 is limited to antibodies with human constant regions and human variable regions. Asserted claim 3, which also depends from claim 1, likewise claims antibodies with human variable regions. All of the asserted claims cover human variable regions and fully-human antibodies like Abbott’s Humira®.

The district court jury found that the asserted claims were not invalid for anticipation, lack of enablement, or lack of written description.

The written description requirement of 35 U.S.C. § 112, ¶ 1 provides, in pertinent part, that:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

To satisfy the written description requirement, “the applicant must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure in the specification of the patent.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Assessing such “possession as shown in the disclosure” requires “an objective inquiry into the four corners of the specification.” Ariad, 598 F.3d at 1351. Ultimately, “the specification must describe an invention understandable to [a person of ordinary skill in the art] and show that the inventor actually invented the invention claimed.” Id. A “mere wish or plan” for obtaining the claimed invention is not adequate written description. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).

The pivotal issue in this case concerns whether the ’775 patent provides adequate written description for the claimed human variable regions. The asserted claims cover fully-human antibodies that possess the same therapeutic properties as Centocor’s chimeric antibody, i.e., high affinity, neutralizing activity, and binding at a specific place on human TNF-α. Accordingly, the 1994 CIP applications must provide written description for an antibody to human TNF-α with (1) a human constant region, (2) a human variable region, (3) high affinity for human TNF-α, (4) neutralizing activity, and (5) the ability to bind to TNF-α in the same place as Centocor’s A2 mouse antibody (“A2 specificity”).

Abbott pointed out that the specification does not disclose any fully-human, high affinity, neutralizing, A2 specific antibody. Moreover, the specification does not disclose a single human variable region. Abbott argued that the only described antibody is the chimeric antibody, which has a mouse variable region. Abbott also argued that Centocor has merely disclosed tools that might be used in an attempt to make the claimed invention—essentially, that Centocor’s disclosure is no more than a mere wish or plan for how one might search for a fully-human antibody that satisfies the claims. Finally, Abbott pointed to testimony from Centocor’s inventor indicating that the disclosure did not include examples about making a human antibody because “it was never [Centocor’s] intention to make a human antibody.” J.A. 18312, 18:19-24.

The court agreed:

Contrary to Centocor’s assertions, very little in the ’775 patent supports that Centocor possessed a high affinity, neutralizing, A2 specific antibody that also contained a human variable region. The overwhelming majority of the ’775 patent describes the A2 mouse anti-body and the single chimeric antibody that Centocor made based on A2’s mouse variable region.

At bottom, the asserted claims constitute a wish list of properties that a fully-human, therapeutic TNF-α antibody should have: high affinity, neutralizing activity, and the ability to bind in the same place as the mouse A2 antibody. The specification at best describes a plan for making fully-human antibodies and then identifying those that satisfy the claim limitations. But a “mere wish or plan” for obtaining the claimed invention is not sufficient. See id. at 1566. At the time the 1994 CIP applications were filed, it was entirely possible that that no fully-human antibody existed that satisfied the claims. Because Centocor had not invented a fully-human, high affinity, neutralizing, A2 specific antibody in 1994, a reasonable jury could not conclude that it possessed one.

While our precedent suggests that written description for certain antibody claims can be satisfied by disclosing a well-characterized antigen, that reasoning applies to disclosure of newly characterized antigens where creation of the claimed antibodies is routine.

Claiming antibodies with specific properties, e.g., an antibody that binds to human TNF-α with A2 specificity, can result in a claim that does not meet written description even if the human TNF-α protein is disclosed because antibodies with those properties have not been adequately described.

Indeed, we have repeatedly indicated that the written description requirement does not demand either examples or an actual reduction to practice. Ariad, 598 F.3d at 1352. What it does demand is that one of skill in the art can “visualize or recognize” the claimed antibodies based on the specification’s disclosure. Eli Lilly, 119 F.3d at 1568.

  Print This Post   Email This Post

Article 229-C of the Brazilian IP Law establishes the need of a “prior approval” by the Agência Nacional de Vigilância Sanitária – ANVISA (the Brazilian regulatory agency responsible for the approval of drugs) – for the issuance of a patent in the pharmaceutical area. This requirement was introduced by the Brazilian Law No. 10.196 of February 14, 2001.

“Article 229-C – The grant of patents for pharmaceutical products and processes depend on prior consent from the National Agency of Sanitary Surveillance (Agência Nacional de Vigilância Sanitária – ANVISA).”

This modification caused several disputes, in the last 10 years, between ANVISA and the Brazilian PTO (INPI), which considered this change as an intervention in its sphere of competence.

Taking into account the absence of definite regulations and, as long as its prior consent was still necessary, ANVISA conducted full patent reexaminations, including the verification of the legal requirements of novelty and inventiveness.

On January 24, 2011, however, the Federal Counsel-General of Brazil (Advocacia-Geral da União – AGU) published a final legal opinion on the matter, which limits the power of ANVISA on the analysis of patent applications in the pharmaceutical sector, putting an end to the conflict with the Brazilian PTO. The Federal Counsel-General is the highest body of assistance of the Executive Power and represents the Federal Government, both judicially and off courts.

According to that final legal opinion, the responsibilities of ANVISA will be limited to the analysis of safety (e.g. the existence of possible health risks) and efficacy of drugs. The fulfillment of legal requirements for patentability will be exclusively verified by the Brazilian PTO. The final opinion of the Federal Counsel-General is not subject to appeal.

The real impact of this final legal opinion is still not clear. In the short term we may hope for a certain reduction of bureaucracy, which could accelerate the patent granting process in the pharmaceutical area.

via Pedro Bhering at Bhering Advogados in Rio de Janeiro – Brazil.

  Print This Post   Email This Post

Recently, Vaughan Barlow details the ramifications of the Patent Amendment (Human Genes and Biological Materials) Bill (2010), currently being debated before the Australian parliament.

The Bill seeks to ban the patenting of all biological material that is “identical or substantially identical to such materials as they exist in nature”. If passed, this legislation may significantly jeopardize the biotechnology, pharmaceutical, medical and agricultural industries in Australia.

Among other proposed changes, the Bill seeks to amend section 18 of the Patents Act (1990) as follows:

(1)        Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

(a)       is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and

(b)       when compared with the prior art base as it existed before the priority date of that claim:

(i)         is novel; and

(ii)        involves an inventive step; and

(c)        is useful;

…………

(2)        Human beings, and the biological processes for their generation, are not patentable inventions.

(2)        The following are not patentable inventions:

(a)       human beings, and the biological processes for their generation; and

(b)       biological materials including their components and derivatives, whether isolated or purified or not and however made, which are identical or substantially identical to such materials as they exist in nature.

…………

(5)        In this section:

biological materials, in section 18, includes DNA, RNA, proteins, cells and fluids.


The proposed ban on patenting of biological materials under section 18(2) is therefore far broader than the current ban, which is limited to “human beings and the biological processes for their generation”.  Proposed section 18(2)(b) bans from patentability all biological materials that are “identical or substantially identical” to those existing in nature.

According to Barlow:

In addition to Australia’s potential contravention of its obligations under TRIPS, the commercial reality of banning from patentability all biological material that exists in nature could result in the biotechnology, pharmaceutical, medical and agricultural industries withdrawing investment in Australia. As a consequence, there is the potential for future difficulty in accessing medicines and associated problems in the provision of healthcare. This possible lack of investment could arise not only because of diminished returns on investments through a lack of patent rights, but also because of the remaining significant costs in obtaining regulatory approval.

Patent applicants seeking to claim biological materials in Australia should watch the progress of the Patent Amendment (Human Genes and Biological Materials) Bill (2010).

See:  Mumbo jumbo: The patentability of biological materials in Australia

Vaughan Barlow is a patent and trademark attorney with Pizzeys Patent and Trade Mark Attorneys in Australia.

  Print This Post   Email This Post

It looks like The Patent Reform Act of 2011 (not to be confused with the the Patent Reform Act of 2010, 2009, 2008, 2007 …) will be on the Senate floor for an up-or-down vote in the next week or so.

So, is it good for American inventors or bad?  It depends on whose interest is at stake.  Some have argued that it is unfavorable to  small businesses, start-up entrepreneurs, independent inventors, and those companies’ employees in the U.S.

In a letter to Senate Majority Leader Harry Reid — signed by various groups including American Innovators for Patent Reform, IEEE-USA, IP Advocate, National Association of Patent Practitioners, National Congress of Inventor Organizations, National Small Business Association, Professional Inventors Alliance USA and the U.S. Business and Industry Council — the groups urge changes to the Act.

They argue that:

The “first inventor to file” section of the bill has unique adverse effects on small business, start­up entrepreneurs, independent inventors, and U.S.-based technical professionals. It disrupts the unique American start-up ecosystem that has led to America’s standing as the global innovation leader—the ecosystem that is vital to our businesses, but with which large firms have less expertise. Within the “first to file” section, the change to the filing grace period disadvantages small companies and independent inventors in favor of larger firms—the bill disadvantages companies that must seek outside financing and strategic partners, in favor of firms that can arrange all of their investment, testing, manufacturing, and marketing internally.

The bill favors multinational and foreign firms over start-up firms seeking an initial foothold in U.S. domestic markets, and favors market incumbents over new entrants with disruptive new technologies. Because S. 23 removes the option to delay patent expenses, the bill advantages established companies, and disadvantages start-ups that must seek and carefully shepherd their capital. S. 23 reduces current advantages for U.S. inventors and employees, and thus increases incentives for off-shoring jobs. S. 23 changes the rules to favor global companies, against the start-up business model that utilizes the American grace period.

They ask that you find your senators, and call them and ask for three things:

  1. support an amendment to strike the “first to file” provision, and
  2. replace the whole bill with one that ends fee diversion, and gives the PTO fee setting authority with strong checks and balances.
  3. if either amendment fails, oppose the bill—without these two amendments, the improvements are trivial, and the harms are substantial.

If you want your voice to be heard on this matter, call today.

See the whole letter to Sen. Harry Reid here.

  Print This Post   Email This Post

In a paper published by the Washington Legal Foundation, entitled Supreme Court To Address Standard For Induced Patent Infringement, Brian Pandya of Wiley Rein LLP present an examination of Global-Tech Appliances Inc. v. SEB, S.A. The U.S. Supreme Court will hold oral argument in the case today.

The Supreme Court has ruled in nine patent challenges since 2005. The nine decisions are more than double the number of patent rulings by the justices in the five years prior to 2005.

The Global-Tech case involves the standard for holding a company liable if it has induced its customers to infringe another’s patent. The Federal Circuit, ruling for SEB, said the intent needed to establish liability for inducement to infringe is “deliberate indifference to potential patent rights.”  Global-Tech is arguing for a higher standard. It urges the Court to require evidence of a purposeful, culpable expression and conduct by the defendant encouraging infringement.

Issue:

Whether the legal standard for the “state of mind” element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is “deliberate indifference of a known risk” that an infringement may occur or instead “purposeful, culpable expression and conduct” to encourage an infringement.

The plaintiff is SEB, a large French appliance manufacturer that holds a patent on a design for a deep-fat fryer that has a cool external surface.  The defendants (petitioner Global-Tech and a variety of affiliates) are a group of companies that design and manufacture appliances, largely in China.   After Sunbeam requested that Global-Tech manufacture a deep-fat fryer, Global-Tech purchased several deep-fat fryers in Hong Kong, studied them, and developed a proposal that incorporated some of the most desirable features of those fryers, as well as a few new features of its own.  SEB’s fryer was one of those that Global-Tech examined.

After settling on a design for a fryer, Global-Tech obtained a patent opinion from its US attorney indicating that the proposed fryer would not infringe any United States patents.  Of special note is that Global-Tech did not disclose to the attorney the specific manufacturers whose fryers it had examined, and the attorney did not locate SEB’s patent.

Pandya believes that the Supreme Court is likely to affirm the lower judgment:

This case presents a challenging set of facts.  On one hand, Global-Tech can credibly argue that it was not aware of SEB’s patent before being placed on actual notice of alleged infringement, therefore it could not have specifically intended SEB’s patent to be infringed. On the other hand, Global-Tech appears to have acted in a willfully blind manner, if not in bad faith, by copying SEB’s design and then commissioning a freedom to operate search without notifying its patent attorney of the product copying.

Although it is plausible that the Supreme Court could impose a requirement of actual knowledge of a patent and reverse the decision below in its entirety, it seems more likely that that the Supreme Court will affirm the judgment that Global-Tech induced infringement of the ‘312 patent, but reject the Federal Circuit’s deliberate indifference standard as inconsistent with Grokster.  Such a decision would raise the bar for proving induced infringement, but would leave unanswered questions, such as under which circumstances intent to infringe a patent can be inferred when the accused infringer had no notice of patent infringement.

See the entire article here:  Supreme Court To Address Standard For Induced Patent Infringement

Merits briefs

  Print This Post   Email This Post

Protecting your intellectual property from the slimy fingers of social media.

I recall one particular Monday morning at the beginning of the 7th grade being sat down by our year adviser in the largest science lab to be told it was finally time to pick a topic for my individual project. Almost immediately, from nowhere, an idea popped into my head. And so it began, the next 3 months of pretending either I hadn’t thought of an idea yet, or that my idea sucked (even though secretly I knew I was onto a winner). Why wouldn’t I share? For the same reason as KFC has yet to reveal their 11 secret herbs and spices, I knew if someone else heard my idea they’d copy me, and maybe do it better. In short, I was scared someone might steal my idea.

The truth is, I’m not alone. We as a society have always valued secrecy to some degree. Well, perhaps I’d be more correct in saying we have always valued the creation of new ideas. In turn, we have generally wanted the actual creators of those ideas to get the credit they deserve. And in that scenario we see outlined the concept of intellectual property.

IP.

More than just a funny acronym, IP covers areas including (but not limited to) copyright, patents, trade secrets, designs, trademarks and passing off (please wipe that smirk off your face, it is a legitimate area of law…) So what do all these areas have in common? They each attempt to give the creator some level of protection over (and reward to) their idea. However, this whole landscape becomes tricky when we venture online, into our brave new world that is social media.

Remember that piece we wrote on being bound by the terms? Well, these terms become particularly relevant when we consider their impact on your Intellectual Property rights. Let’s take Facebook as an example.

By agreeing to Facebook’s “Statement of Rights & Responsibility”, you have granted them a “non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook”. Confused?Basically you have given them the right to do whatever they want with any content (or ideas) that you post on their site. This includes any music you have composed, any poetry you have written, any scientific discoveries you have made, any secret recipes you may have for fried chicken… basically any idea over which you hold intellectual property rights.

Now, Mark Zuckerburg is quick to reassure us that we retain the actual copyright over any self-created content (see Zuck’s response here: http://on.fb.me/dFkeRj).Unfortunately, his reassurances mean very little.

Let’s go back to our 7th grade example:

I settled on a particular project, and did quite well. So well, in fact, that my teacher came to me and suggested I properly report my findings, in book form. So (imagine) I wrote that book. Let’s fast-forward a decade or two, to this online world of ours. Suppose before I had the chance to publish the book myself, I decided to upload each chapter to Facebook for my friends across the country to read. Now, suppose Zuck’s army in their cruising and perusing of profiles came across my page. For some reason, they saw promise in my chapters, and decided to publish them, in their own book. I’d already given them my “approval” (see above), so as long as they attribute me as the author they don’t need to give me anything further[i]. I’ve got no say over the pictures that are put with my writing or any commentary that they may attach. And how much money am I entitled to? None. Nada. Nil. ZILCH. And they don’t have to. I have already given them that right. And so have you.

But they wouldn’t do that…… Would they? Welcome to the law, my friend. As a private individual you have no say over when someone will enforce his or her legal rights. You don’t know what someone will do with the rights they hold. Legally they may choose to enforce their rights, or they may not, that’s part of the fun! The fact is, they can enforce that right, and therein we find the problem, if they choose to you can’t stop.

So what am I trying to say? BE CAREFUL what you post on social networking sites. If you compose a song, think carefully before uploading it to your band’s Facebook page. If you write poetry, consider whether there is a better place to publish that poetry than as a note on your page. If you take photos, consider using a ‘watermark’ so that even if your photo is reused it will be obvious to whom the artistic work belongs. While you may retain the official copyright after uploading, if you have given away an unrestricted, royalty-free right in the world of social media, you can very quickly limit any benefit that your copyright gives you. The power is in your hands. Now that you know, please be careful.

By the way, in case you were wondering, I aced my individual science project… and if anyone happens to know the Colonel’s recipe, you can tweet it to me @sociallylegal ;) .


[i] Under section 193 of the Australian Copyright Act 1968 (Cth), an author will always maintain a moral right (or‘droit morale’) of attribution, that is, the right to be known as the author. This cannot be assigned to another, at least not under Australian law.  In the US it is a more complicated situation, but is covered under 17 U.S.C. §106A among other areas (see http://bit.ly/i2ypYj ;or http://bit.ly/g5zlEZ).

  Print This Post   Email This Post

Translation has traditionally been one of the more over-looked aspects of the patent and intellectual property business, but with the IP landscape continuing to grow and expand across international borders, it has become a vital part of the overall “IP workflow.” Whether it’s translating a patent application for filing in another country, patent examiners at the U.S. Patent & Trademark Office (USPTO) researching an application’s “patentability,” or supporting patent litigation, if you’ve never had to procure a high-quality, cost-effective translation before, know that it is not always an easy task.

As a buyer of translation services, whether you are a patent attorney, paralegal , patent agent, researcher at an IP services firm or even an inventor, there are a few tips to help you get the most for your money when it comes to translations!

Translation Agency, Freelance Translator, or Machine Translation?

There are three main options when it comes to obtaining a translation, with each having its own set of advantages and disadvantages. First of all is going with a translation agency. The advantages of using a translation agency are typically an integrated, comprehensive quality control process (usually based on the industry standard of “TEP” – Translation, Editing & Proofreading, all done by separate linguists), the ability to provide “certified” translations, and the capacity to handle larger volumes in multiple languages and across a wider spectrum of subject matter expertise.

The main disadvantage of a translation company is usually price – of the three options presented here this will usually be the highest cost option, though as described the risks associated with the other options can mean that the higher initial cost is well worth it. , Contracting with individual freelance translators is another option, and usually less costly than working with a translation company. If you pursue this route, however, be prepared for the need to commit a significant amount of time to project management, as you will not only need to field any queries from the linguist, but often times coordinate with one translator and one separate editor per translation project.

Also, if you frequently handle patents in a wide variety of technical fields and languages, you would need to recruit and develop a fairly large pool of qualified linguists in order to meet your needs. Not to mention, most freelance translators have numerous clients, so when your urgent translation need arises, their time may already be booked. In the end, the amount of time necessary to manage all of these factors and contingencies can yield a hefty cost. Lastly, many freelance translators prefer to work through translation companies, as it affords them a degree of anonymity as well as relieves them of all of the associated administrative burdens, including invoicing and payment collection. If you do choose to explore this option, though, there are a number of resources online to find translators, such as the American Translators Association (ATA) website directory.The last option is the cheapest of the three, but also carries the most risk – machine translation. Machine translation technology, or translation software, has improved significantly in recent years, and does have some applicability to patent translations. Within the last couple of months, there have been a number of reports about the EU Patent Office submitting content to Google to feed into its “Google Translate” program to help boost its accuracy, and while some of the better machine translation programs can give you a fairly reasonable idea of the content of a foreign-language document, they still don’t come close to a professional, certified translation, which is often required for patent application filings, litigation, etc. If, however, you only need to get the gist of the meaning, machine translation may be a viable option.

How to pick the right translation vendor!

So, working with a translation company is probably your best bet. If you do decide to move forward with one, you want to make sure you select the best one to fit your needs, which usually involve cost, turnaround time, communication & customer care, and quality.

The translation industry is a rapidly growing one, and competition is often fierce. With a low barrier to entry, there are literally tens of thousands of language service providers worldwide. You want to make sure you choose one that is reputable, which you can determine based on the number of years they have been in the business, a listing of past clients and even references. You should also make sure that they have specific experience in the highly-specialized field of patents. Different companies tend to specialize in a few specific areas, and you really wouldn’t want to deal with a company who normally handles health insurance applications to translate your patent for an advanced radiological imaging device!

You also want to make sure you understand their quality control process, how they recruit and evaluate their linguists, that they are following the industry standard of “TEP” on all of their translations, that they carry professional liability insurance, and that they are affiliated with a recognized organization, such as the American Translators Association (ATA) or Association of Language Companies (ALC).

Also, remember the old adage of “you get what you pay for!” If the price they’re quoting seems too good to be true, it just may be! Technical document translations can be expensive, but when a bad translation can jeopardize your litigation or patent application, which could end up costing you and your client much more in the end, it is usually worth it to pay a little more to guarantee that you are getting the best possible quality. Most translation companies do offer volume discounts based on frequent or large requests, so be sure to inquire about those up front if you expect to have many translation projects over time.

Furthermore, make sure that you allow substantial time for the translation process. A general rule of thumb is about 2,000 words per day, plus additional time for editing and proofreading. While most translation providers do offer expedited services, and can usually integrate multiple linguists into a large, quick turnaround time project when needed, this may not allow for enough time for thorough quality control, and if multiple translators are working on the same document in order to meet a tight deadline, you will likely end up with some inconsistencies in terminology choice and style throughout the entire document.

Finally, make sure you provide any reference materials, previous related translations you may have had done, as well as any supporting documentation, such as graphs, charts and especially drawings, which go a long way in assisting the translator in conveying the intent of the inventor in describing his/her invention.

In the end, translation is a crucial, albeit often over-looked part of the patent business. It can be especially daunting when you have no familiarity with the language(s) in question, which is why it is important to make sure you find a service provider with whom you can develop a long-term relationship.

Today’s post is by Guest Barista David Evseeff

  Print This Post   Email This Post