Don’t Fall Prey to “Awkward” Patent Claim Translations

Applying for patent protection in a foreign jurisdiction can be fraught with difficulties every step of the way. If not handled properly, translating the patent application from its original language to that of the target jurisdiction can lead to huge problems that could come back to bite you down the road, sometimes to the tune of millions of dollars in lost intellectual property protection.

Recent news out of the Northern District of Georgia provides even more evidence of the fact that shoddy patent claim translation can result in reduced intellectual property rights. According to an article on Lexology:

In a case between KEG Kanalreinigungstechnik GmbH and KEG Technologies, Inc. (“KEG”) and Reinhart Laimer, Sewer Equipment Corporation, USB-Sewer Equipment Corporation, Ulrich Simpfendörfer, USB-Duesen, USB-Sewer Equipment International GmbH, Patrick Savio, Daniel Long and Elke Krantz (“Laimer”) over patents drawn to “hydrodynamic nozzles” for cleaning the inside surface of underground sewer pipes, Chief Judge Julie Carnes appointed Special Master Gale R. Peterson of San Antonio, Texas to preside over the Markman claim construction hearing and submit a report and recommendation on claim construction to the Court.

The patent applications in question were originally filed in Germany and then translated to English and filed in the United States. The Special Master concluded in his report that:

some of the claim language is “awkward” as a result of the translation.

Furthermore:

Laimer contended that some of the claim terms and phrases are beyond “awkward,” and instead are “unintelligible” and render the claims indefinite and invalid under 35 U.S.C. § 112(2).

The report stated:

although the master finds the claims amenable to construction, that does not necessarily mean that the claim passes muster under § 112(2). That is a question for another day.

Although the parties agreed on constructions for some of the terms and phrases of the asserted claims, the Special Master recommended constructions for the other disputed claim language as well. This is yet another example of a poor translation preventing an applicant from getting the exact protection they were seeking.

One bad document translation can cost a company dearly, and this has been clearly demonstrated again by Special Master Peterson. Gale R. Peterson is also a faculty member of Patent Resources Group, the leading provider of U.S. patent bar review and advanced U.S. patent law education, and a fully-owned subsidiary of Landon IP.

How can you avoid a bad patent translation ruining your business?
Customers should only consider professional technical translators who possess an in-depth knowledge of the patent process and the relevant technical art when choosing who will translate the patent documents they intend to use to file an international patent application. Landon IP is a leading provider of patent translation services and other patent-related services, including patent search, and advanced patent law training (Patent Resources Group).

We know how important every word is in a patent application because we live and breathe patents as searchers, attorneys, former examiners, and patent law educators.

Customers who use Landon IP translation services receive highly accurate patent translations due to a process that employs native-language patent translators exclusively and includes technical review by in-house multilingual technologists who cross-check the translation for technical accuracy and readability.

Lower-cost vendors and general translation providers may save you a few dollars, but they are more likely to produce a translation containing errors because they don’t know patents. One mis-translated word can narrow the claims of the patent, as in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co; or render it unenforceable, as in Semiconductor Energy Laboratory Co. v. Samsung. Poor translations can also be rejected by courts, as in On Demand Machine Corporation v. Ingram Industries Inc., Lightning Source Inc., and Amazon.com, Inc.

Be sure to obtain only the highest quality patent application translations by using the professional translation services of Landon IP.

Technical Translations from Landon IP

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8 Responses

  1. This is such a recurrent problem that it make translators like me despair !
    Rule 1:Use a translator to translate to thir native language (Not your best buddy next door who did a PhD at Harvard).
    Rule 2: If you want assurance that the translation is good, have it translated back to the original language by another translator. If that sounds costly, then supply both the original and translation to a third party compentent in the languages and tech field; cost should be minimal, but the assurance and detail would be great.

    • Michael,
      Couldn’t agree more on the native language part. To add to that, I would say they need to be proficient in that technology field–for all the tricky jargon.

  2. The case you cited demonstrates the importance for an English speaking, registered U.S. patent attorney to review the claims prior to submission to the USPTO and modify the claims to conform to US practice rather than retain claims that may conform to practice of a foreign country..In this process, even the best of translators are not trained in U.S. patent law, particularly the requirements of claims under 35 USC 112, to insure compliance. Having a good translator does make the attorney’s job easier, but the translator will never replace the knowledge and skill of a well trained US attorney registered to practice before the U.S.Patent and Trademark Office.

    • I agree, that’s why it helps to have a dedicated support system in place for situations like these.

    • I would never recommend that even a good translation be filed, as is. The translator should translate, the attorney should draft, but without a good clear understanding of what the priority doc said, neither the attorney nor the examiner can judge what the patent is about. It seems to me that there are hi-volume, low cost attorney shops who spend ‘minutes’ on ‘translated’ patents before filing, and they continue to exist because manufactures think that the patent filing process is suceptible to mass production type cost cutting and commoditization.

  3. [...] in question were originally filed in Germany and then translated to English and filed in …read more Source: Patents – [...]

  4. [...] who use Landon IP translation services receive highly accurate patent translations …read more Source: [...]

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