Translation and the Growing Trend of Patent Filings in Latin America

Filing patent applications internationally is expensive and translation represents a significant proportion of that expense. Every organization with an international patent strategy can benefit from gaining visibility into their patent translation expenditures and working with capable partners to consolidate that spend and take control.  The benefits include lower costs, more efficiency and higher patent quality. Latin America offers a great example of how those benefits are realized.

Welocalize Life Sciences recently interviewed Matthew Sekac, Senior Director of Sales Strategy at Park IP Translations, a Welocalize company, to discuss translation requirements in Latin America and why they matter.

Q: Why does translating patents into Spanish multiple times waste money and increase risk?

MS: For a start the official language of most Latin American countries is Spanish.  Unfortunately, many organizations are routinely paying to translate patent applications into Spanish multiple times when filing in multiple Latin American countries.  It is simple enough to see why. If translation is seen as a non-severable component of filing an application in each country, and a different local patent firm in each country is engaged to execute the whole process, then each firm will prepare its own translation as part of its usual duties.

In Latin America that means understanding that while there are sometimes slight variations in formal requirements, only one Spanish translation of an application text is necessary. Paying for more than one translation needlessly multiplies filing expenses.  In addition, it potentially introduces risk; by commissioning separate Spanish translations prepared by separate translators according to separate processes, the result is very likely to be separate issued texts in the same language with substantive disparities that could be raised in the event of litigation.

Avoiding this sort of redundant expenditure isn’t completely straightforward.  Many Latin American countries are not members of the Patent Cooperation Treaty.  This means that applicants seeking protection in Argentina and Mexico, for example, must first file a Spanish application in Argentina within 12 months of the priority date, and then file a separate Spanish application in Mexico 18 months later, assuming the applicant is filing a PCT National Phase application.

To manage the whole process efficiently, there needs to be a system in place for ensuring that a Spanish translation is properly stored, the opportunity to leverage that translation is easily identified, and the delivery of that translation to the appropriate agent(s) at a later point is streamlined.

Several Latin American countries also have some of the most complex and costly translation requirements in the world.  Argentina, Venezuela, and Uruguay, for example, require translations of all priority documents to be submitted in the form of locally “sworn” hard copies.  To some extent this is an unavoidable expense, but a savvy provider with the right resources can minimize these costs by leveraging shared text between the priority and main application and channeling the process through a lean production infrastructure.

Q: Why is the length and word count of a patent application an important consideration?

MS: A disproportionate share of non-resident applications filed in Latin American countries are filed by life science companies, and life science applications tend to be considerably larger than the applications filed by organizations in any other industry. Not only do life science companies file the most applications in Latin America, they spend the most money on translation for each one.

Park IP Translations conducted an analysis over 220,000 patent applications filed at the USPTO between October 2011 and June of 2012 in an effort to better understand the relative translation costs faced by organizations from various industries when pursuing international patent protection.  We started by separating the applications into six major categories using each application’s US classification code and the categorization methodology developed in a 2001 paper from the National Bureau of Economic Research (Hall, B. H., A. B. Jaffe, and M. Trajtenberg (2001). “The NBER Patent Citation Data File: Lessons, Insights and Methodological Tools.” NBER Working Paper 8498). We then looked at the word count distribution of applications in each category.

Most in the patent industry are probably generally aware that pharmaceutical and biotechnology applications tend to be the longest. This data helps bring the extent of that phenomenon into stark relief.  Applications in the “Drugs & Medical” category, (sub-classed “Biotechnology”, “Drugs”, “Miscellaneous Drgs&Med” and “Surgery & Med Inst.”) are more than 54% larger on average than the sample as a whole, and nearly 44% larger than the next largest category of “Computers & Communications”.  Since translation costs are virtually always driven by the amount of text in the source document, this means that applicants in the “Drugs & Medical” category face by far the highest costs when filing for patent protection abroad.

Moreover, applications from the “Drugs & Medical” category are also much more likely to be extremely large. What this means for applicants in this category is that any given application has a far greater likelihood of carrying a massive price tag for international filing.  Industry giants might not flinch at $250,000 to translate a single patent without any guarantee of protection; however, for smaller organizations it can be a major challenge.

Given that, and given the expenses faced by those organizations, it is extremely to be proactively engaged in managing the translation component of your international portfolio strategy, especially in Latin America. Doing so leads to lower costs, lower risk, higher quality and more control.

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