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).
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Profile of a Trademark Searcher

Here at the Intellogist Blog, we’ve interviewed a wide range of intellectual property professionals:

Over the past few month, we’ve looked at a number of trademark search tools, but a user can’t conduct a comprehensive trademark search if they lack the necessary search experience and expertise in trademark law.  Professional trademark searchers will also have access to both free and subscription trademark search platforms, which allows them to conduct an extensive search of all available databases. Landon IP provides professional trademark search services, and I recently had the privilege to interview Kimberley Trainor, the trademark search manager at Landon IP.

Read on as Kimberley discusses the different types of trademark searches and what it takes to conduct a professional trademark search!

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Patent Analyst Job Opportunity

We here at Intellogist know all too well the effects this recession has had. Like many (or probably most) of you, we’ve had friends and family lose their jobs at the cruel unflinching hand of what analysts couch as our “economic downturn.” Even what some might call a recovery has not yet yielded a bounce back in employment.

With that being said, we have some good news for you here at Intellogist. Our parent company, Landon IP, is hiring Patent Analysts. It is our pleasure that we have such a vibrant and knowledgeable community over at Intellogist.com and here on the blog. I know that there are qualified people within our community (or that our community members know) that would meet the challenges a Patent Analyst faces every day and that are simply looking for an opportunity to do so.
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