America-Israel Patent Law Blog

Observations on patents and other IP from a dual-licensed practitioner

A Time I Was Right But Wish I Wasn’t

Exactly one year ago, I wrote about the Israel PTO’s announcement of its plan to issue patent office actions (examination reports) in English for those who wished to receive them in English. And one of my predictions was that certain firms wouldn’t be as forthcoming as they could be with their clients about this.

Last week, I met someone at the AIPLA Annual meeting who confirmed my suspicion. He was already frustrated with his Israel counsel’s habit of translating office actions, and had instructed them to simply send him a copy of the OA, and he would ask them for clarification if Google translate wasn’t clear. But he’d never been told that he could ask for the OAs to be issued in English. Color me shocked…not.

2 responses to “A Time I Was Right But Wish I Wasn’t”

  1. Joe Felber Avatar
    Joe Felber

    “[Someone you met] had instructed them [his Israel counsel] to simply send him a copy of the OA, and he would ask them for clarification [only] if Google translate wasn’t clear.”
    Would you care to expand on this? It strikes me as less-than-ethical to rely on Google translate instead of on his Israeli counsel for Hebrew translations, especially in the specialized context of patent prosecution. Is there something more in this context (such as the client having a basic understanding of the language) that might justify this practice?

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  2. Dan Feigelson Avatar
    Dan Feigelson

    Joe, I have several thoughts on your questions, some of which I’ll share in a future blog post. For now I’ll just say that:
    (a) I think anyone who’s bilingual is aware that Google translate is not perfect; see my post from April 2020 about translations (https://www.iliplaw.com/americaisrael_patent_law/2020/04/who-has-skin-in-the-patent-translation-game.html);
    (b) you assumed that the person with whom I spoke was a patent practitioner, and not e.g. a pros se inventor; your question would be irrelevant if the person was an inventor; and
    (c) the person is in fact in-house counsel, and his company,i.e. his client, has an extremely tight budget, and wants to save money wherever possible.

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I’m Dan Feigelson. I’ve been practicing patent law for over 30 years. I’m also opinionated, as you may discover in reading my writings here.