Patents: the importance of translations in international litigation

Patent litigation translations

Anyone with a modicum of international patent experience knows that economising on patent translations is not at all advisable.

Patents play a crucial role in monetising the results of a company’s research and development by protecting its exclusive right to produce, use or sell the protected invention for a limited period of time. Yet acquiring the rights to a patent and extending them into global markets is notoriously a costly undertaking, which can lead outside consultants and IP practitioners within companies and organisations to economise on costs such as translations, relying on suppliers with no particular qualifications, relevant experience or true knowledge of the field. Depending on the technical area, a single national patent can cost a few thousand euros, taking into account the costs for the prior art search, prosecution and opposition management, advice and drafting of the lawyer. The extension of the right in the different target markets of a company, either through the international patent (PCT – Patent Cooperation Treaty) or European patent (EP- European Patent) systems, or through the separate acquisition of national rights, then requires other costs, increasing the necessary budget considerably.

The high costs of international patents

Indispensable skills for patent translation

For international patents, however, law firms and in-house legal departments should always be able to rely on a reliable Language Service Provider that brings together deep expertise both in patent translation, in the technical field to which the patent relates, and in the local procedures specific to the target legal system in which the patent is to be protected.

As is the case with all translations of a regulatory nature, the translation of a patent is in fact more specialized than it may seem, because it requires the use of terminology relevant to the source and target jurisdictions, while it cannot disregard knowledge of the technical-scientific discipline related to the innovation (pharmaceutical, chemical, technological, engineering, etc.) that the company is providing protection for.

In complex and competitive industries, a company’s ability to compete may in fact depend on often imperceptible improvements in existing products or technologies, and it is precisely in these contexts that granted patents ensure the return on investment needed to sustain research and development (R&D) expenditures and market share. The choice of vocabulary and vocabulary used must be closely related to how an innovation fits within the “state of the art” of the relevant technical field, including the “known art” transposed by existing patent rights and in the public domain. The importance of unassailable quality in the drafting of documents may reveal itself belatedly and at a time when it proves most necessary, that is, when a company finds itself having to rely on it to claim enforcement or for litigation: only then does it become apparent how shortcomings in patent drafting or translation mistakes can undermine the patent holder’s entire legal case.

A vindication case lost because of a single translation error

In patent validity disputes, large sums of money can depend on the exact wording used by the translators, even of a single word, as evidenced by a recent 2020 claim case referred to the United States: the IBSA Pharma v. Teva Pharmaceuticals USA case.

But let’s take a step back: as everyone in the industry knows, of the three parts that routinely complete a patent, namely:

  1. description
  2. claims
  3. summary

Claims represent the most important part, as they determine what, concretely, should form the subject matter of the patent. Great care must therefore be taken when drafting the claims, since as Article 52 IPC clearly states, the limits of protection are determined precisely by the claims, while Article 21 Reg. att. c.p.i. specifies that the claims must be clear, concise and find complete support in the description. In the most important technical fields in particular, patent claims are definitely difficult to draft, as they require knowledge of the examination process and a whole range of other aspects, such as the relevant prior art, the invention that the patent is intended to protect, the relevant industrial and technical field, and existing national and international laws, regulations and treaties.

On the merits of the patent infringement claim

The competing drug patent infringement claim at issue in the litigation to which we refer, had centered on the interpretation of a single word: the difference in meaning between “half-liquid” (as mistranslated in the U.S. application) and “semiliquid” (in the original Italian) in the description of a thyroid drug formulation.

Attorneys for the Swiss pharmaceutical company IBSA tried in vain to argue that the two terms were synonymous, but the U.S. courts’ ruling did not agree with them, finding that the English term chosen in the translation was too vague and generic for the disputed claims to be valid and enforceable. A single mistranslated word thus opened the door for IBSA’s competitor and prevented the company from enforcing its patent rights. A translation error that with proper expertise and controls could have been easily avoided, just as all U.S. Patent and Trademark Office (USPTO) patent procedures could have been properly followed, which were in part disregarded at the application filing stage by the use of a different and lower quality English translation than the original certified translation of the Italian application.

When a variation in text can make a difference

This case demonstrates if ever there was a need that a translator’s expertise and knowledge are critical to the success of a patent application and that translations of inadequate quality can have potentially catastrophic effects on otherwise admittedly valid patent rights. In a field where the slightest variation in meaning can make a real difference, companies and law firms must be assured of the support of a qualified and reliable provider. In other words, rely on a translation agency that offers a level of expertise and knowledge equal to that of the legal counsel who drafted the patent application.

Mercury Translations

A key legal tool for exporting innovation to foreign markets, patent translations have been our real core business for more than 25 years: we can translate patents in more than 50 language combinations.

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