What are the Risks of the AIA Foreign Filing Aftershock?

173767650It was over a year ago that we first began reminding people about the days leading up to March 16, 2013. It was a period that many of you may remember, and perhaps not too fondly. The US patent community was in a frenzy as applicants rushed to get as many patent applications as possible filed under the “old rules” before key provisions of the America Invents Act (AIA) came into effect.

As highlighted in our blog post last year Preparing for the AIA’s Foreign Filing Aftershock and during the latest Park IP webinar, Managing Risk from the AIA Foreign Filing Aftershock, another important date is now approaching as a consequence of all those last-minute filings: September 16, 2015. The large spike in applications filed in the days leading up to March 16, 2013 are approaching their 30-month deadline for PCT National Phase Entry and are poised to create a new surge in foreign filings, peaking on September 15, 2015. This introduces potential risks to those who will be seeking to file national phase applications around that time.

We do not have a crystal ball. There are too many variables to forecast with precision what the exact risks and repercussions might be for the potential flood of foreign filings in September. There is no publicly available data that tells us how thousands of firms around the world will behave to this deadline. We also can not precisely predict what proportion of those applications filed in 2013 will require translation for PCT National Phase Entry.  The numbers may be impacted on evolving conditions in the global marketplace, or firm-level budget considerations in the context of this phenomenon might influence foreign filing decisions.

In studying the data, there are certain conclusions about which we do feel confident, and which we feel a responsibility to share. To help our clients and the IP community avoid missing deadlines, compromising the viability of their IP protection, and paying opportunistically inflated rates for translation.

Conclusion #1:  The forthcoming spike in applications due for National Phase Entry may cause a real shock to the supply of qualified patent translators. We see a possibility that if everyone waits until the last minute, there simply may not be not enough qualified human beings in the world to accommodate such a dramatic shock in demand for patent translations.

Conclusion #2: Patent translation is a demanding enterprise that requires both linguistic expertise and a high level of technical and scientific competency. Patent translators must also be qualified and familiar with the particular, nuanced language of patent applications. Translations prepared without the proper knowledge or expertise introduce the risk of complications during prosecution and/or obstacles to enforcement post-grant.

Conclusion #3: It’s important to remember that while the AIA is an American statute affecting American patent law, everyone filing English-originating patent applications abroad is in the same boat. All companies and legal firms around the world who need to get English-originating PCT applications translated are ultimately accessing the same global resources for that purpose. Many European-originating patent applications were filed in March of 2013 for reasons completely unrelated to the AIA’s effective date, but they will nonetheless require the very same resources for translation as the thousands of US-originating applications when they all come due for National Phase Entry at the same time this September.

Conclusion #4: The key to avoiding the potential risks and repercussions from this situation is to plan ahead. By making filing decisions and initiating any required translations in advance, firms will ensure that they get access to the proper, qualified resources, at normal price points, and make the deadline.

Of course, we also have a responsibility on the supply-side to do our part in making sure our clients get all their patents translated and filed on time. At Park IP Translations, we have been proactively engaging our clients over the past several months to eliminate the potential risks created by this peak in demand for foreign filings.

We are actively recruiting additional resources to accommodate the expected increase in workload during the second half of this year. We are also providing extra training to our existing resources and looking at how we can further improve our project management structure to ensure all patent translations are successfully completed and smoothly delivered in time. Plus, we have made sure we have 100% accessibility for 2015 Q2 and Q3, carefully scheduling vacations to ensure the workflow is not impacted by resource limitations at Park IP.

We do understand that law firms can only act as quickly as the client allows. There are always competing priorities and potential limitations on available information, or the need to await new data prior to rendering filing decisions. Our goal is to inform and to educate. We want to help our clients make the best business decisions they can by providing all the information and insight we can in advance of dramatic increase in foreign filings and translation requests.  We will strive to make sure any risks or effects of the AIA foreign filing aftershock are minimized for all Park IP clients.


Based in New York, Matt Sekac is Senior Director at Park IP Translations. msekac@parkip.com

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