Author Archives: Brian Chaney

The World’s Strangest Patent Filing Requirements

By Tyler Young

Do you ever wish the process for filing a patent application were a little more uniform from one country to the next? If so, you’re probably not alone. For those who file, the requirements can be confusing and inconsistent across jurisdictions.

We’ve compiled eleven of the world’s strangest translation-related filing requirements. These requirements are certainly unusual, if not challenging. We also provide some helpful strategies for dealing with them.

1) Iceland
Many countries allow patent applications to be filed in any language initially, as long as the application is translated into a country’s official language in short order. (No more than two official languages is the norm for most jurisdictions.)

  • The strange: Although Iceland’s only official language is Icelandic (spoken by 92% of its citizenry), the country’s patent office accepts filing in five different languages, more than in any other country. The full text can be in either Icelandic, English, Danish, Swedish, or Norwegian. But here’s another hitch: The claims and abstract need to be submitted in Icelandic.
  • The strategy: Yes, any of the five languages are accepted at filing; however, an English or Icelandic translation must be submitted at grant. To save filing another translation, you can simplify the process by going with English or Icelandic from the start.

2) Sweden
Filing a patent translation is usually a legally binding exercise. That means an incorrect translation could ultimately change a patent’s scope and diminish enforceability through a priority filing. In this unfortunate scenario, your competitor could obtain a license to perpetually infringe on your pending patent simply because of an incorrect translation.

  • The strange: Sweden has opted out of legally binding translations. In the event that a translation is found to be incorrect, the courts will rule based on the wording of the priority filing. This unusual rule makes translation a mere formality.
  • The strategy: Even if your priority filing wasn’t filed in English, translate and file in English anyway. You’ll have an edge on filing in other countries because it’s much easier to find an English-to-Chinese translator, for example, than a Swedish-to-Chinese one.

3) Switzerland
Virtually all patent offices grant a patent for the geographic area in which they claim jurisdiction, be it a patent for national or regional (like the EPO, GCC, or ARIPO) protection. In other words, national patent offices grant patents just for the corresponding nation, and regional patent offices do the same for their region.

  • The strange: A patent granted at Switzerland’s national patent office also includes a patent grant in Liechtenstein. That’s right, two for the price of one!
  • The strategy: Since it’s impossible to file for a patent in either Switzerland or Liechtenstein separately (as both are inextricably connected, even by annuity), you literally have a buy-one-get-one-free deal you can’t avoid if you tried.

4) Sierra Leone
Patent law is enacted by local government, so filing patent applications can be legally acknowledged and defensible.

  • The strange: Prior to 2012, patents in Sierra Leone could be obtained through the re-registration of patents granted or validated in the United Kingdom. Unfortunately, the Patents and Industrial Designs Act of 2012 ended that practice. While the country’s patent laws remain in place and patent applications are still accepted, no regulations currently exist and no Registrar is appointed to process filed applications. As a result, patent applications can be lodged in Sierra Leone on the basis that they will be dealt with once regulations are in place.
  • The strategy: Use a loophole to receive a patent in Sierra Leone through the African Regional Intellectual Property Organization (ARIPO). As Sierra Leone is a member of the regional body, any patent granted by ARIPO is also covered in Sierra Leone. Section 49 of the Patents and Industrial Designs Act of 2012 provides that the Registrar can communicate a refusal of an ARIPO designation; however, since there is no Registrar for Sierra Leone, the patent is accepted by default.

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Get our International Guide to Patent Application Translation & Filing, which contains important dates and requirements for more than 230 jurisdictions worldwide.

5) United Arab Emirates
Most patent offices either accept patent applications in one language or require applicants to choose from among multiple acceptable languages for filing. At the translation deadline, however, only one final language is usually required.

  • The strange: The United Arab Emirates (UAE) is unique in that it requires both English and Arabic at filing. Most international applicants will already have an English translation of their application; but in the event that the priority filing is in another language, a rare two translations will be due at the UAE filing deadline.
  • The strategy: While you must to include both Arabic and English versions of your application at filing with the UAE, consider instead filing regionally through the Gulf Cooperation Council (GCC). The GCC also requires both Arabic and English, but it expands your protection beyond the UAE to other nearby countries with similar markets, like Saudi Arabia, Oman, Kuwait, Bahrain, and Qatar. Keep in mind, however, that a GCC patent is a direct filing and is therefore due at 12, not at 30 or 31, months.

6) Belgium
Many countries have more than one official language. Typically, the resident patent office accepts patent applications in those languages. For example, even if you speak French but live in the German-speaking part of a country, a French translation is still acceptable.

  • The strange: If your company is located in Belgium, you must file in the predominant language of that particular region. For example, a company based out of northern Belgium would need to file in Dutch, while a French translation would be required for a company from southern Belgium. There’s even a small German-speaking region bordering Germany in which only a German translation is acceptable.
  • The strategy: Good news: Unless your company is based in Belgium, this statute doesn’t affect you. However, if your company’s Belgian operation writes and files a patent in-country, make sure the patent is written in the region’s “official language” or, oddly enough, you will need a translation for the priority filing.

7) Burundi
Jurisdictional language requirements are usually standard. Patent offices publish a list of languages acceptable at filing along with those accepted later at the translation deadline. If a language is listed by a patent office as acceptable, it’s generally as sufficient as any other.

  • The strange: Although the patent office in Burundi lists Kirundi, French, and English as acceptable languages, the office’s intellectual property department has made clear that its examiners are more comfortable with French.
  • The strategy: Despite the temptation to use English, provide a French translation. True, examiners are expected to be objective in their decisions, but why not help them feel as comfortable as possible when the fate of your requested protection hangs in the balance?

8) Brazil
Patent offices typically ask that a full translation of a patent application be submitted by either the filing or translation deadline (frequently called an “extension”). If you’re going to use an extension, the entire translated application will be due at the later date. If an extension isn’t going to be used or isn’t available, the full translation (where required) is due at the standard filing deadline instead.

  • The strange: Brazil is one of the few countries that requires only a partial translation at filing—namely, the abstract, claims, and title. By making a modest initial investment to obtain the partial translation, the applicant secures a filing date and simply delays the need to file the full translation for up to 60 days.
  • The strategy: If you’re willing to pay the nominal extension fee and—more importantly—the additional time would improve the quality of the translation, take advantage of the additional 60 days. It’s better to get it right the first (or in this case, the second) time.

9) South Africa
Deadline extensions for submitting a patent translation are commonly offered around the world. Principally, the goal is to allow inventors additional time to secure a proper translation, if needed. Depending on the size of the application, a thorough translation consistent with the source patent should only take a few weeks to produce.

  • The strange: South Africa offers a generous three-month extension to filers who need time to improve translation quality. The law is written somewhat ambiguously, however. Some interpret the law to mean that a six-month extension is permitted. It isn’t clearly spelled out.
  • The strategy: Three months is already a very generous amount of time to complete a thorough and accurate translation of your application into one of South Africa’s official languages (English, Afrikaans, Zulu, or Xhosa). So, unless you have an extenuating circumstance in which three months won’t suffice, don’t flirt with risking rejection of your application because an examiner doesn’t interpret the law the same way you do.

10) Taiwan
Traditionally, jurisdictions offer a single translation extension (2-3 months), which almost always costs nothing to take advantage of.

  • The strange: Taiwan prefers to be generous in its translation requirements, perhaps more so than any other jurisdiction in the world. A four-month extension is available to produce a Traditional Chinese translation. Not enough? An additional two months can be tacked on, providing up to six months to complete the job. Both of these extensions are also free!
  • The strategy: While six months of free translation deadline extensions may seem quite generous, Taiwan’s total translation time (from the priority date) in comparison to other jurisdictions tells a different story. In fact, when viewed from that lens, Taiwan’s translation time (including extensions) actually trails that of every other country offering a Patent Cooperation Treaty (PCT) pathway. Taiwan’s filing deadline is 12 months through the World Trade Organization (WTO). The more commonly used PCT solution provides at least 30 months to file and translate. To put this in perspective, the final translation time for Taiwan, including all available extensions, is 18 months from the priority date—a far cry from Germany’s 30 months total with no available extensions.

11) France
Member states of the European Patent Organization traditionally also allow a direct PCT filing to each country’s respective national patent office as an alternative to validation after an European Patent Office (EPO) grant. It usually makes more sense to file a national PCT application if your plan is to file in less than five European countries.

  • The strange: France opted out of PCT filings nationally, but not internationally. Direct filings are still possible, but in order to take advantage of the generous PCT time table, France requires a PCT filing through the EPO first. Once complete, France grants a post-examination validation automatically.
  • The strategy: If you can wait until after an EPO grant to enforce protection in France, file with the EPO, wait for the grant, and then translate only the claims into French and German (assuming you submitted a European patent application in English). If you plan on venturing outside of France as part of your strategy, validating in additional countries is also a cost effective way to protect your invention throughout Europe.

We’ve shared some of the most bizarre filing requirements we could find, but our list is certainly not exhaustive. What weird requirements have you come across that we’ve overlooked?

Meet us there!

MultiLing is looking forward to meeting you when we’re on the road this quarter. You’ll see us in Vancouver and Copenhagen at IP and patent meetings.

If you would like to meet with a MultiLing representative at an upcoming event in either of these locations, please contact us at request @ multiling.com to make an appointment.We hope to see you soon!

IPO 42nd Annual Meeting | Vancouver, Canada | September 7-9

Global Patent Congress 2014 | Copenhagen, Denmark | September 22-24

Meet MultiLing IP Translation Additionally, July 2-4, we were in Tokyo at Interphex Japan 2014. Asia Regional Director Adam Bigelow presented to attendees on the importance of high quality translations for advanced scientific technologies. Interphex Japan covers the whole process of R&D and manufacturing for pharmaceuticals and is a substantial way to expand business in the Japanese market. The show has been continuing growth for more than 20 years, and Japan has the world’s second largest pharmaceutical market.

Client Relationships Built to Last

Creating successful relationships with clients, relationships that keep them as clients for the long haul, is the basis of a successful company – no matter its size. Keeping clients happy isn’t always easy, but it’s very possible. At MultiLing, for example, many of our clients are now true partners—they learn from us and we learn from them—and have been coming to us for IP translation services for more than a decade.

Michael Sneddon, CEO of MultiLing Corp.Michael Sneddon, MultiLing CEO, recently published an article in Business2Community about the importance of client relationships to successful companies. MultiLing has focused its IP translation business on relationships, rather than transactions, and the strategy has paid.

For example, nearly 15 years ago, MultiLing worked closely with one of the largest companies in the world to pioneer five best practices critical to every patent translation. This collaboration met the client needs in a very custom way and also became the basis of MultiLing’s streamlined model for quality translations, which is a distinct competitive advantage. When client and vendor are partners, both bring ideas to the table and learn from each other.

Sneddon’s fundamentals for building these unique relationships include quality work, integrity, communication, adaptability and partnering.

Read Sneddon’s complete article, 5 Fundamentals for Building Client Relationships that Lasthere or at the MultiLing news room.

Best Practices for Protecting Your IP Overseas

PatentlyBIOJeremy Coombs, MultiLing senior vice president of operations, published an article in BIOtechNOW —  BIO’s blog and show newsletter chronicling “innovations transforming our world” each day of BIO 2014. The article, titled “Protecting Your IP Overseas,” informs readers why working with a partner that employs best practices in people, process and technology is critical when dealing with their company’s most important data. 

According to the World Intellectual Property Organization (WIPO), nearly 100,000 biotechnology and pharmaceutical patent applications are filed worldwide each year. Filing patent applications can be very complex, with different laws, deadlines and languages requiring highly technical translators for most countries in which protection is sought.

bio“By ensuring that your service providers deliver best practices in the areas of people, processes and technology, you will help reduce your risks, increase the value per patent translated and protect your IP throughout the patent filing process – and beyond,” wrote Coombs.

This week in San Diego, MultiLing executives are attending BIO — the world’s largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations. BIO members are involved in the research and development of innovative healthcare, agricultural, industrial and environmental biotechnology products.

Read Coombs’ full article here, or visit the MultiLing news room.

MultiLing ISO 9001:2008 Certified

isoMultiLing is now ISO9001:2008 certified, the internationally recognized set of quality management standards from the International Organization of Standardization. The company also renewed its EN 15038:2006 certification, the European quality standard for translation services.

“Translation is all about trust, as clients really only know how accurate – or inaccurate – their patent translations are when they receive office actions or the patent is facing the risk of invalidation in court,” said Jeremy Coombs, senior vice president of operations, MultiLing.

Holding both the ISO and EN certifications gives these companies another layer of confidence, knowing MultiLing officially adheres to the standard requirements set forth by both respected international organizations. With these quality certifications officially in place, MultiLing is set to further foster the trust and satisfaction Global 500 enterprises require of their technology-enabled service providers, making it easier to build long-term relationships with consistent high quality translations.

ISO 9001:2008 Certification While MultiLing has long implemented quality assurance processes that closely adhere to ISO 9001:2008, it began working two years ago to define and document these processes to receive the official certification. In April, TUV SUD America conducted a thorough audit of MultiLing’s practices, documenting the following:

  • Is MultiLing following processes?
  • If something goes wrong, how does MultiLing deal with it?
  • How does MultiLing capture customer feedback?
  • How is MultiLing qualifying and training vendors and employees?

After making just a few minor modifications, MultiLing received the ISO 9001:2008 certification on May 14, along with the renewal of its EN 15038:2006 certification, first received in 2011.

EN 15038:2006 Certification In 2006, the European Committee for Standardization defined the EN 15038 quality standard specifically for translation service providers, ensuring consistent translation quality. To renew the certification, TUV SUD assessed MultiLing on the following factors:

  • personnel and technical resources
  • quality control
  • project management
  • client contract parameters
  • management methods for providing service

To maintain both certifications, MultiLing will perform regular audits to ensure compliance and continual improvement within its eight offices worldwide.

“As a result of certifying both our translation process and our quality management system, clients can be confident that MultiLing will always provide the high quality service they have come to expect now and in the future,” Coombs added.

Read the full press release in the MultiLing news room.

4 Fundamental Technologies for Foreign Patent Filing

The strength of an international patent application, in part, relies on the quality of the patent translation services, and universal translation technology is significantly aiding human translations for more efficient foreign patent filing.

While some form of technology has been used for translations since the 1940s – beginning with electronic files rather than paper documents – there are four major technologies that have had tremendous impact on patent translation services.

IP Frontline highlighted these technologies in its lead story on Tuesday, June 17, authored by Kevin Nelson, MultiLing senior vice president of strategy and technology:

1. Terminology Management. Creating glossaries or databases of terms standard to a specific industry or brand helps create consistency across translations.

2. Translation Memory. Translation memory software allows translators to leverage past translation efforts in their current translations.

3. Machine-Assisted Translation. This is simply the process of taking existing technologies, such as glossaries and translation memory, and training a server to use contextual matching for an initial translation prior to human post-editing.

4. Project Management Software. This software can help manage workflows that allow team members to collaborate across languages, which is an important best practice in creating transparency in schedules, budgets and client reports.

The outcome? Maintaining quality standards and document integrity across multiple translators and languages, while creating efficiencies in time and cost.

Read the complete article here or visit the MultiLing news room.

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MultiLing in the News: Best in Translation – Speed Up IP Protection While Reducing Risks

Screen Shot 2014-06-16 at 4.27.18 PMMichael Degn, vice president of global sales at MultiLing, highlights how an IP translation services provider can competitively provide patent filing services for inventors and enterprises seeking patent protection around the world. The IPPro Life Sciences article titled “Best in Translation” uses the example of a small pharma company that worked with a patent law firm to seek patent validation in 10 European countries. The initial quote from a foreign agent was significantly higher than the patentee felt comfortable investing.

Enter MultiLing.

Screen Shot 2014-03-23 at 8.25.06 PMAn effective IP translation service provider can leverage its resources and best practices in more jurisdictions than possible with one foreign agent, in part enabling patent rights in more geographic cases for the same cost, or significantly less.

Some of the best practices that life sciences companies should look for in a service provider include MultiLing’s core advantages of people, process and technology. These pillars ensure quality translations that help increase the number of patent filings within your budget, speed time to grant and reduce office actions and the risk of invalidation

The pharma company went on to engage with MultiLing instead of a foreign agent and was able to validate its patent in 15 European countries, five more than originally planned. The validation process was also more consistent across all jurisdictions, less costly and faster.

Read the full article at the MultiLing news room.

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MultiLing in the News: Managing Risk in Foreign Patent Filings

TGC_logo450x75The world’s largest multinational enterprises file thousands of foreign patents every year to protect their intellectual property. However, as many general counsel know well, even the successful filing and issuance of a patent doesn’t ensure the safety of a company’s intellectual property. 

Michael Sneddon, MultiLing founder and CEO, and Suart Hinckley, MultiLing general counsel, co-authored an article published in the June/July 2014 issue of Today’s General Counsel. “Managing Risk in Foreign Patent Filings” covers how skillful patenting and management of IP can add significant value, protect competitive advantage and provide a powerful tool to negotiate licensing agreements.

To help minimize the possibility of litigation and patent invalidation, focus on three things from the start: the quality of the patent, the quality of the legal counsel, and the quality of the translations that facilitate foreign patent filings aimed at global protection.

Read the full article in Today’s General Counsel, and visit MultiLing’s news room to see more articles.

MultiLing in the News: Protecting IP in China, Part II with Adam Bigelow

B2C_LogoPart II of Michael Sneddon’s interview with Adam Bigelow, director of MultiLing’s business in the Asia region, was published in Business 2 Community and reveals some interesting practices for filing patents in China and Taiwan. 

As mentioned in Part I of Sneddon’s interview of Bigelow, China looks to be taking another leap forward in innovation, recently overtaking other countries – including the United States – for the largest number of applications received by any single IP office (652,777), according to the World Intellectual Property Indicators 2013.

Here is more information on IP translations and patent filings in China and Taiwan, according to Bigelow.

How do you go about filing for patents in China?

AdamBigelow

As in other countries, foreign entities can file for patent protection in China through either the Patent Cooperation Treaty (PCT) or Paris Convention. To get a patent approved more quickly, the applicant should consider filing directly in China via the Paris Convention.

If patents have been previously validated in other countries, the Patent Prosecution Highway (PPH) between SIPO and the European Patent Office (EPO) – and other important patent offices – will significantly expedite prosecution in China. SIPO recognizes the result of the EPO examination and may grant a patent directly on the claims that EPO allowed. Thus, if the inventor files an application with EPO first and then files the same application in China, inventors should consider filing a PPH request to expedite the examination and decrease overall costs of obtaining a patent in China.

How do the patent laws differ in China?

In China, patent claims may be submitted in Chinese or in English with a Chinese translation included. There is no allowance to amend errors due to mistranslations. Additionally, while China does allow a six-month grace period for public disclosures, this only applies if the invention was shown in international exhibitions sponsored or recognized by the Chinese government or published at certain predetermined academic or technological conferences.

So what can companies do to ensure their patents are properly translated into Chinese?

Ensure that anyone who touches your patent applications is a native speaker intimately familiar with the Chinese language and culture, and legal systems, as well as being an experienced, technical expert for the industry and technologies specific to the innovations for which you seek patent protection.

South Korea (otherwise known as the Republic of Korea) is another Asian country that is experiencing an increase in patent filings – both to and from the country. Watch for Part III of Sneddon’s interview with Bigelow for insights on the legal and translation issues associated with filing patents there, and visit the MultiLing news room to see more instances of MultiLing in the news.

Michael Sneddon, CEO of MultiLing Corp.Michael Sneddon is the president & CEO of MultiLing, an innovative leader in IP translations and related services for foreign patent filings by Global 500 legal teams. Sneddon, who started the company in 1988, is an attorney and member of the American Intellectual Property and Law Association (AIPLA).

Come Join Our Team

Lyle Ball, COO

One of our main goals in 2014 is to invest in the best people, processes and technologies. To date, we have moved forward with announcements of key hires in technology, sales and financial operations, as well as investments in our physical resources with a more than 270 percent increase in office space in Asia. As the number of U.S., European and Asian enterprises spending millions of dollars per year on patent translations continues to fuel the strongest growth in global patent filings in nearly two decades, MultiLing is strongly positioned to capitalize on this market.

In fact, our hiring is just beginning and continues to grow. Currently, we have open positions for more than 10 percent of our workforce! We are looking for people with skills in translation, account management, sales, administrative support and more, in each of our eight offices around the world. If you know someone who is intelligent, productive, vibrant and happy, with the talents we are looking for, we’d love to meet them.

While MultiLing has 26 years of industry experience and reputation, two years ago we infused the company with an entrepreneurial spirit that is accelerating our growth and improving both our client results and internal culture. Most importantly, as we grow our workforce, we are focused on making this company a place where you can find joy in your contributions and results. Having a cohesive, collegial environment helps everyone produce great work at the office, and build great lives outside the office. We believe both are important.

Are you ready for a new look at the world? Start by keeping an eye on our job postings atwww.multiling.com/aboutus/careers.

I hope to hear from you soon,

Lyle Ball