By Roxanne Le, Vice President of Global Operations and Martin Fessenmaier, PhD, Patent Agent, Umberg Zipser
In the case of IBSA Institut Biochimique SA v. Teva Pharmaceuticals USA, Inc., a single poorly defined term had enormous consequences. Interpreted as “half liquid,” the wording at the center of the dispute was ruled indefinite by both the District and Federal Court. As a result, IBSA was unable to defend its patent for Tirosint soft gel capsules, costing the company billions of dollars and its unique position in the market.
The issue traced back to translation. The original Italian patent application used the word semiliquido, which was rendered in English as “half liquid” rather than “semi-liquid.” That distinction proved critical. In its 2020 appeal decision, the Federal Circuit agreed with Teva that a person of ordinary skill in the art (or POSITA) would not find “half liquid” sufficiently clear. The court also found that “half” suggested a different meaning than “semi,” creating fatal ambiguity in the patent language.
According to senior patent agent Martin Fessenmaier, Ph.D., of Umberg Zipser LLP, the discrepancy may have resulted from machine translation or a lack of review by a technical expert. While automated translation can save time, patent language demands more than speed. It requires subject matter expertise, legal awareness, and human review to ensure the intended concept is expressed accurately.
“You can have the best product around, but if your translation is inaccurate or ambiguous, your rights to that discovery will always run the risk of being challenged,” he said.
Why Patent Translation Errors Are So Costly
The case has become a cautionary tale for companies filing patents across languages and jurisdictions. Translation may seem like an easy place to cut costs when R&D budgets are high, but the opposite is true. Precise, expert translation helps protect the value of the innovation itself.
The IBSA-Teva dispute represents a worst-case scenario, but unclear or inaccurate translations often create problems long before litigation. They can trigger office actions, delays, revisions, and add legal expenses. In many cases, companies must pay to redo translations and spend additional attorney time responding to patent office concerns.
Dr. Fessenmaier notes that translation errors in patents and official correspondence are common, and sometimes severe enough to make proper interpretation impossible. “A poorly translated word, as we’ve seen, can cost a company millions, and ultimately the rights to their product,” he said. “It’s not a good strategy to try to limit words in an application to save money on translations and assume knowledge of common terms in one country will be understood in another. Every jurisdiction is different. Starting out with a good translation saves money, time, and extraordinary headaches down the road because it keeps your patents from being vulnerable.”
To withstand challenges from competitors and infringers, patent translations must reflect accurate grammar, syntax, technical meaning, and cultural nuance. Ambiguity creates risk, and in patent law, risk is expensive.
How BIG Helps Protect Patent Value
At BIG, expert translators with advanced degrees in fields such as biochemistry and mechanical engineering work on patent translations to ensure both technical accuracy and readability for patent examiners. A local patent attorney is involved in every patent translation to confirm terminology is correct and consistent with jurisdictional standards and prior filings. BIG’s global network also supports urgent filings and patent office requests worldwide.
Protect Your Patents from the Start
Although reviewing patent portfolios for weaknesses is always worthwhile, translation issues are far harder to fix after filing. The best time to protect intellectual property is at the beginning of the process. Evaluating the qualifications of translation partners, requiring strong quality control, and demanding transparency are all essential steps in safeguarding valuable patents.
Our patent translation process includes four levels of quality assurance.
Find out how it helps protect your patents and reduce costly risk. Contact us now.
