Risks of a Patent Translator Shortage

IPPro Life Sciences_issue_42_may2015_mattsekac_Page_1In the following abridged article, Matt Sekac from Park IP Translation looks at how the AIA will soon disrupt patent practice again, potentially creating a shortage of professional patent translators when firms need them most. The article first appeared in IPPro Life Sciences Magazine, issue 42. To view the article in full, click on the following link: Is the possibility of a patent translator shortage a risk to you?.

On September 16, 2011, US President Barack Obama signed the Leahy-Smith America Invents Act (AIA) into law.  Collectively, the statute’s provisions constitute the most significant reform of the US patent system in almost fifty years.  One of the main provisions switches the US patent system from “first-to-invent” to a “first inventor-to-file” system, more consistent with the rest of the developed world.

The effective date for the switch was March 16, 2013. Any application filed before the effective date would be subject to the “old rules.”  Many American firms viewed the old rules as more favorable to patent applicants than the new ones. As a result, many organizations scrambled to get as many applications on file ahead of the AIA’s effective date as possible.

Many of these organizations and firms waited until the last the minute.  The data on US provisional and non-provisional filings show an unprecedented spike in new applications filed with the USPTO in the days the leading up to March 16, 2013.

An important consequence of this phenomenon is an extraordinary number of US-originating patent applications that all share roughly the same priority date.  To the extent those applications were subsequently filed as PCT applications, they also share roughly the same 30-month deadline for PCT National Phase Entry.  This precipitates a foreign filing “aftershock” of sorts—a dramatic spike in US-originating patent applications all coming due for National Phase Entry at the same time.

Word Gets Around

Word has spread throughout the IP community over the past several months of the potential impact of the AIA aftershock, as patent practitioners and IP service providers have become increasingly aware of the circumstances. Organizations and legal professionals have gradually begun contemplating action plans to avoid risk.  The messaging around this subject is often fairly basic; something to the effect of act now before it is too late!

That’s good advice. Competent patent translators are a scarce resource and organizations should absolutely take proactive steps to ensure access to those resources in advance.  Institutional inertia can encumber efforts to speed-up existing processes and decisions that require the consensus of multiple stakeholders often face bottlenecks. Of course, procrastination is a weakness shared by many of us–after all, while the AIA was enacted 18-months before it actually went into effect. The historic surge in new filings with the USPTO took place almost entirely within the last few days!

The extent to which organizations actually face a risk come September depends on a number of factors. It’s impossible for us to forecast with any certainty how tens of thousands of patent applicants worldwide are going to behave when the deadline fast approaches.  The situation will be more manageable if it turns out that an unusually high proportion of PCT applications due this September are abandoned, or filed in fewer countries than average.  Firms that move proactively to initiate filing procedures in advance will not only do themselves a benefit; they will also have the effect of easing the strain on those who wait.

However firms decide to proceed, they should seek a comprehensive understanding of their position given the circumstances and soberly assess their exposure to risk.  To aid in that understanding and to help establish a basis for taking action where appropriate, we have provided some insight into the patent translation marketplace and how the AIA’s foreign filing aftershock may impact the availability of resources.

Highly Trained, Really Valuable Professionals

In 2012, the USPTO published a report, International Patent Protections For Small Businesses, that contains testimony from a number of US patent professionals about the expense associated with patent translations.  In discussing the costs that small and medium-sized enterprises (SMEs) face when filing abroad, one individual testified:

The cost of the lawyer is actually less than the cost of the translation in certain cases. So what you would think, the highly trained, really valuable patent lawyer guy that says, that’s going to cost me a fortune, but when I add up my translation cost, that actually flips the equation, I am spending more to get the translation than I am on the attorney.

This highlights an important and often overlooked aspect of patent translation.  That “highly trained, really valuable patent lawyer guy” is highly trained at providing legal counsel and he has his part to play and his value to add as a patent lawyer.  It must be noted, the translation also requires a highly trained, really valuable patent translator—and ideally more than one.  These “highly trained, really valuable” professionals are valuable—and thus expensive—because individuals with that level of training and specialized expertise do not exist in great abundance.  As a resource, they are scarce.

Understand Your Own Needs

This all boils down to the worldwide availability of an important, high-value resource, and an unusual set of circumstances that may limit the ability of some firms to access that resource later this year.  The first thing firms can do to avoid damaging consequences is to evaluate their need for that resource by gaining visibility into their patent translation spend and determine how much of it they are going to need in 2015.

Many organizations pay patent translation very little attention.  There is a long list of reasons why firms benefit from a comprehensive, granular understanding of their patent translation needs.  In this case, it allows patent professionals to engage with their partners, agents, and service providers in an informed conversation about what is coming down the pipe.  First, figure out what you are going to need from your providers, and what your providers need to make sure it all gets done. You will then know if you need to act now.

ARTICLE: “Is the possibility of a patent translator shortage a risk to you?” is available to read in full here: IPPro Life Sciences_issue_42_May 2015_by Matt Sekac.

Matt Sekac is Senior Director at Park IP Translations in New York and can be reached at matthew.sekac@parkip.com.

Further Reading on AIA:

Park IP Translations Prepares Clients for Record PCT Application Filings Due to AIA Aftershock

What are the Risks of the AIA Foreign Filing Aftershock?

Ten Important Facts about AIA and Foreign Filing

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