Tag Archives: patent filing

Stop Making These Three Patent Filing Mistakes, Says Our Jeremy Coombs

In an article on today’s IPFrontline.com, senior VP of operations at MultiLing, Jeremy Coombs, outlined what he sees as the three biggest patent filing mistakes companies are making when drafting and filing their patent applications domestically and worldwide. While his suggestions on how to combat them won’t guarantee zero risk, they will decrease the chance of unnecessary litigation when patent filing and better prepare you to fight the litigation if it arises.

While the full article can be read at http://ipfrontline.com/2016/01/three-biggest-gaffes-that-increase-the-risk-of-patent-litigation/, here are some points that will paint the picture:

  1. Be aware of what’s on the market so you’ll be more aware of the uniqueness of your product.
  2. Make sure your original patent application is accurate and clear, which, according to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee, give patent owners “a clear notice of the boundaries of their patent rights.” It also helps ensure subsequent applications in other languages begin with accurate and clear content.
  3. Ensure your patent translation service providers employs true experts – in-country, native speakers intimately familiar with the cultural nuances critical to how words are used or phrased, as well as experts in the science of your invention and patent law in the countries in which you’re seeking protection.

Are you already doing the above, or have you suffered from mistakes you – or your company – have made when filing for patent protection? We’d love to speak with you about how MultiLing’s team of native linguists, scientists, engineers and legal specialists can help you decrease the risk of litigation.

3 Essentials for Reducing Litigation Risk When Protecting IP

by Jeremy Coombs, PMP, MultiLing Senior Vice President of Operations

The world’s largest biotechnology companies file thousands of domestic and foreign patents each year to protect their valuable intellectual property. Unfortunately, the successful filing and issuance of a patent doesn’t ensure its safety. In fact, a poorly drafted patent—one with inaccurate or incomplete details and terminology from the start, before any translation begins—may result in patents being challenged in court by competition and ultimately invalidated.

To reduce the possibility of litigation long before it happens, companies must repeatedly implement best practices with a focus on quality from the start, including:

  • The quality of the patent itself;
  • The quality of the legal counsel; and
  • The quality of the translations that facilitate foreign patent filings aimed at protecting IP on a global scale.

Let’s look at these a little more closely:

Ensure Quality Patent Applications from the Start. Quality patent applications—with precise and specific terminology—ensure that the specific invention is covered accurately in the original language so subsequent translations begin from quality documents. Those drafting patent applications must know the market, the subject matter and the relevant inventions that have been patented previously and those that are in public domain.

Contract with Quality Legal Teams Familiar with Filing Processes. In addition to subject matter experts, only work with knowledgeable legal practitioners that are up to date with the current laws, rules and procedures in the jurisdictions in which you are seeking protection. Companies or inventors that understand the significance of inadvertent disclosure, for example, ensure that their legal team works closely with their R&D and marketing teams before making any information about the invention public. For example, an enterprise working with a large IP law firm learned this the hard way. The firm received an urgent call from the client just 24 hours before a presentation in Japan. Due to a lack of communication among product, legal and marketing teams, the enterprise needed a patent application translated and filed before disclosure to avoid losing its patent rights in various countries. Under great stress and at significant added costs, the firm completed the request, but this fire drill was a costly misstep for the enterprise.

Hire Expert Translators with Streamlined Quality Processes. Patent terminology plays a huge role in litigation, regardless of where the litigation originates. This is why all patent filings should be carefully and precisely drafted and then translated by specialized teams that include in-country native linguists, scientists and legal specialists who are familiar with the applicable technology. Ensure your patent translation service provider uses terminology management systems that will keep track of terms that may be less common, or that need to remain precise, and that are consistent across multiple languages in a streamlined database.

Even one misused word can leave a patent vulnerable to litigation, as well as create costly delays during the review of the patent application. For example, while European translations of chemical names can look very similar to English speakers, only an experienced chemist could employ the proper Chinese equivalent.
The difference of a single letter in English (e.g., “methyl” and “ethyl” in a long chemical name) changes the entire name of the chemical in Chinese. Having the wrong chemical in the translation can render that portion of the patent unenforceable.

Although the only way to eliminate the risk of litigation completely is to stop doing business altogether, this leaves the world with an obvious undesirable impact on growth, prosperity and continual change in commerce. Ensuring that quality documents are created by quality people, processes and technologies will go a long way in reducing overall risk and minimizing negative impact on enterprising business across the globe. This is especially critical as biotechnology companies continue to produce more and more IP that needs to be protected worldwide.

MultiLing Leaders in the News

Have you noticed MultiLing in the media lately? In addition to articles in Risk Management Magazine and MultiLingual Magazine, Intellectual Property Magazine has recently published two articles bylined by MultiLing COO Lyle Ball.

IPM_October_2013_CoverIn the September issue, Lyle identified how one mistranslated word in a patent application can result in millions of dollars in lost revenue. He makes the case that when it comes to patent translations, investing more upfront helps avoid costly delays and mistakes down the road. Read the entire article here.

In the October issue of IP Magazine, Lyle and Tyler Young, MultiLing patent project manager, authored an article titled Translation pitfalls mirror the Asian IP boom. While patent applications from Asian countries are on the rise, so are the errors in translation to and from these languages. The article outlines several common translation traps, as well as proposes a new standard of quality that is measured by results such as lower filing costs, faster time to grant and increased revenue through commercialization and licensing, rather than measuring technical accuracy alone. Read the entire article here.

IP Magazine is based in the UK and is published 10 times each year. The magazine targets a global audience to explore and debate the latest IP trends. To see all the latest news coverage for MultiLing visit our website at http://www.multiling.com/News/PressCoverage.aspx.