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Written by: Olena Yakobchuk, CEO of Intectica Group

An elementary mistake in the translation can easily destroy all your dreams of getting your own patent for an invention.

You probably know a feeling of slight shock of the translation costs for a patent application when trying to get protection of the invention in other countries. And, it could be fine regarding a translation from Russian into English. But, what about the one from Russian to Georgian, Uzbek or another “exotic” language. The costs are terrible to imagine.

Why is the price of this particular service fundamentally higher than the average market price in an ordinary translation agency? Because typical interpreters lack technical knowledge, qualification, as well as awareness of the specific requirements for the patent application texts. This allow your competitors to challenge patent grant or cancel a patent at a blink of an eye. Actually, the same happened to the IBSA Institut Biochimique company.

Essentially, it is pretty simple. First, IBSA Institut Biochimique filed an application for an invention in Italian in Italy. Further, the company filed an English translation of the Italian application, as the very application, in the United States, and claimed priority of the Italian one. Subsequently, patent US 7,723,390 was granted, and FDA approval for Tirosint® medication was obtained. But, monitoring of the competitors revealed that Teva Pharmaceuticals was in violated US Patent 7,723,390, and legal action began between two pharmaceutical leaders. Not wishing to delve into all the legal twists and turns, IBSA Institut Biochimique lost the court, first of all, because of the inaccurately translated Italian term “semiliquido”, which in the English translation turned into “half-liquid” instead of pharmaceutically acceptable “semi-liquid”. Thus, IBSA Institut Biochimique lost its patent in the USA, as well as its investments and part of the potential profit, mostly, because of one word.

What conclusion follows from this incident? It is better to turn to professionals to patent your idea. BUT! In any situation, there are always two ways out. The first is harder and longer, and includes studying the rules for preparation and submission of the US application, as well as taking advantage of our easy checklist for filing an application in the United States with a priority of a foreign application. This method will help you to save a lot on obtaining a patent and protect yourself from problems associated with translation into another language.

To avoid the “Lost in Translation” faced by IBSA Institut Biochimique you may select one of the following options or use all together:

1) Make a reference to the priority application in the Application Clause “Related Applications”, “Prior Art” or “Summary of Invention”.     

  • In the event of litigation, the priority application will be taken into account, and a court will consider an original application, and not a translation.

2) Provide definitions of all terms used in the application claims. Even if you think that the term is obvious, understandable and generally acceptable for specialists in the art, it is better to define it in the application description. And, if you suppose that the term is not obvious, understandable and generally acceptable, then its definition is simply necessary.     

  • If the court considers any term as incomprehensible, they it will be guided by your own definition of the term in the description.

3) File a US application in the original language, and later, within the legally permitted time period, file an English translation of the application. If errors are found in the English translation later, they can be easily corrected.     

  • In the event of litigation, the application in the original language will have legal status and the translation will be considered as a translation only.

However, today, time is a luxury. Therefore, we offer you the second way, namely, not to waste a lot of time and not delve into the intricacies of patent law, but to visit the territory of patenting professionals – INTECTICA. Our scientific and patent department will help you to plan the protection of your ideas and will carry out your protection in all countries of the world. We bring new products to the market of all world countries, and also carry out direct prosecution in the countries of the European Union, Bulgaria, Ukraine, Russia, Azerbaijan, Armenia, Belarus, Uzbekistan, Georgia, Kazakhstan. For more details please visit our website.

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