Legal professionals are often unsure of how to proceed with a translation of foreign prior art. Ordering a complete expert translation is not always the best option, particularly when budgets are tight. Alternatives to a complete translation include machine translations, partial translations, draft translations, discount translation services, and in-house translations by your own secretaries, paralegals or attorneys. Each of these options has merits, disadvantages, and risks. This page looks at the advantages and disadvantages of each of the options and makes some suggestions about how best to navigate the options.

Contents
Do You Even Need a Translation?
Machine Translations
Using Bilingual In-House Staff
Discount Translation Services
Partial Translations
Draft Translations
What Are the Risks?
Conclusions

Do You Even Need a Translation?
The first step in choosing an option is to determine whether a full or partial translation is actually necessary. It is not uncommon for us to find that that an English language equivalent (such as a published US national phase filing) already exists for a foreign document that we have been asked to translate. If you are working with a translation company other than PTI, or doing a translation in-house, be sure to check for equivalents, which can be found free of charge at the EPO search site (ep.espacenet.com).

Likewise, I recently did a quality follow-up with a client who had spent several thousand dollars on an expert translation."The quality was excellent," she told me, "but it turned out to be something entirely different from what we had thought it was, so we didn't actually use the translation." For our client, that was an expensive way to find out. Somecheaper ways of getting the gist of a foreign document are described below.

Machine Translations
One fast, cheap way to find out what a document is about isto use a machine translation (MT). For French and German,the EPO now offers MT directly from its search site (ep.espacenet.com).Just click on the "Description" or "Claims"tab and then click on the "Translate" link at the top right. The EPO system is new and sometimes malfunctions.If that happens, you can always use a free third-party servicesuch as Babel Fish (world.altavista.com). The JPO also offersmachine translations of all its "A" Publications from 1993 onwards. The JPO interface can be a bit tricky to navigate, so you might want to read through the Patent Translations Inc. guide to the JPO MT service at JPO_tutorial.

A machine translation may not take you very far, but it canhelp you decide if the technology disclosed is actually relatedto the technology that you are concerned with. I have alsobeen told that the USPTO is pretty good about accepting machinetranslations as part of responses to office actions. For moreinformation on how useful machine translations are -- and where their limitations lie -- see Jpo_tutorial

Using Bilingual In-House Staff
Larger law firms and corporations may be able to make use of their own bilingual staff. If you have a secretary, paralegalor attorney on staff who speaks the language in question, you may be able to save considerable time and expense. However,just as most inventors are not very good at drafting patentspecifications, most bilingual people are not very good at translating. It's tempting to assume that translation is justtyping something out in another language, but in reality it is a skill that takes years of study and practice to learn. (For more information, see http://en.wikipedia.org/wiki/Translation#Misconceptions.)

There are, therefore, two risks in asking people who do not normally translate to prepare a translation. One risk is thatthe translation may be inaccurate or misleading. Remember that to produce an accurate translation, the translator must fully understand the content. If the staff member in questionis not completely comfortable with the subject matter, be prepared to treat the translation as a rough indicator, rather than as a definitive text.

Another risk is that it will be more expensive than outsourcingthe translation. If the staff member would otherwise be sittingidle, and the reliability of the translation is not overly important, having them prepare the translation may be cost-effective. On the other hand, if a paralegal who happens to speak French has a billing rate of $75/hour, and that paralegal translates at 250 words per hour (a fairly fast rate for a casual translator with a few years of experience) then the translation willcost 30 cents per word. This is much more than you would typicallypay an agency for the work of an expert translator -- including review by a second translator, editing, proofreading and professionallayout. If you regularly have translations done by in-house staff, it is probably worth calculating your per-word costsand comparing them with those of translation agencies. You may be surprised by what you find.

Despite these risks, in-house staff can be a useful resource.One excellent way to make use of bilingual staff is to explainwhat it is that you are looking for (mention of a particular type of element, or a particular procedure, for example) and then ask them to read the foreign document and tell you whether or not they find it. You can also ask them to simply tell you what the document is about, before you decide whether to pay for an expert translation.

Discount Translation Services
Discount translation services, which are usually based overseasor rely on overseas translators, are increasingly common, and can easily be found on the Web. Companies in China and India may offer rates as low as three or four cents per word.These translations are usually somewhat garbled and are proneto problems such as omissions and hidden errors that result from misunderstanding and guesswork. This means that, while they are somewhat easier to read than machine translations, they carry a much greater risk of being misleading. Nevertheless,in cases where machine translation is not available, theseservices offer an inexpensive way of grasping the general gist of a document.

Partial Translations
Often enough, the relevant disclosure in a specification is only a few lines long, while the rest of the text describes matters that have no bearing on your case. The trouble is that, merely by looking at a foreign publication, it is impossible to guess where these sections are located -- if in fact they exist at all.

However, by using machine translation or by asking a bilingual colleague to look for the subject matter that you are interested in, it is often possible to find the key sections in a document. This can shrink a translation from several thousand words to a hundred or fewer, which means obvious savings in time and cost. If neither a machine translation nor a bilingual colleague is available, you can also ask Patent Translations Inc. to help you identify relevant sections. We would be happy to help.

Draft Translations
Patent Translations Inc. normally subjects all its translations to a four-step review, editing, proofreading and formatting process. However, on request, we can provide the translation as submitted by the expert translator without review or editing. This service supplies you with faster and less-expensive translation option when polished presentation and absolute reliability are less important.

What Are the Risks?
The risks associated with failing to obtain an adequate translation can be considerable and should always be determined by an attorney. One example of translation risks is that, if the translation is to be used for an IDS and the inventor speaks the language in which the foreign document is written, there may be inequitable conduct risks (http://www.wiggin.com/pubs/articles_abstract.asp?ID=13245512002) associated with failing to supply an adequate translation.

If the document is prior art that has come to light during the development of an invention or during litigation, the greatest risk may be that of the attorney being misled as to the scope of the disclosure. This can happen as the result of omissions, or as the result of the translator using narrower language than was used in the original. It is also possible to be misled as to the technical ideas disclosed, as a result of the translator not properly understanding those same ideas. In the case of prosecution, it is easy to imagine such a misunderstanding of the prior art causing the attorney to draft a patent that is vulnerable to future challenges on the grounds of anticipation. In the case of litigation, a possible risk is that of the attorney failing to avail themselves of a strategy that would, in fact, have succeeded, simply because they did not have the confidence to make a necessary argument on the basis of a poorly-executed translation.

In all cases, bad translations result in wasted attorney time. An attorney may be able to read and understand a 5000-word specification in an hour but, if the translation quality is low and the attorney is required to second guess the translator while constantly referring the drawings, that same task could easily take three hours. The cost savings on the low-quality translation would have to be very significant to make up for the two hours of attorney time!

Lastly, if the translation will be presented to an examiner or a jury in support of an argument, a poorly-executed translation may not only fail to convince, but may also create a poor impression and lower general confidence levels with regards to all of the arguments being made. Likewise, law firms risk impacting client satisfaction and confidence by presenting translations that lack professionalism.

Conclusions
Not every foreign document requires a complete expert translation. Before going ahead with a translation, it pays to check for equivalents and to determine the content of the document. You can get a rough idea of the content through machine translations, talking to bilingual colleagues or using discount translation services. In some cases, this will also let you determine the specific sections of the document that require expert translation. Nevertheless, it should be kept in mind that inadequate translations can carry serious risks. In particular, if the translation will be the basis for important decisions, or will impact the way that your overall presentation is seen, it is best to get a reliable expert translation.