[Author’s note: this is the latest in a continuing series of commentary on practice-area-specific applications of the Hague Service Convention and other doctrines of international law governing service abroad– not only service of process, but other notices and orders as well.]

It happens all the time.  I’ll give a lecture or mention what I do at a bar association event, and the colleague I just met will express appreciation for what I do, tell me it’s a really neat niche, and then try to convince himself that our practice areas don’t overlap.  I’m here to tell you that, yes, they do.  The conversation usually goes something like this:

Sorry, Aaron.  I’m a patent lawyer– I don’t do immigration.  But thanks for doing that CLE.  You’re a funny guy.  (Funny how?  I’m a clown?  I amuse you?)  No, I mean I really like how you got that picture of Ned Stark into your slide deck!

This is Boromir, from the Fellowship of the Ring. It is not Ned Stark.

Wait a sec, there, pal.  First of all… immigration?  You’re kidding, right?  You did just sit through my lecture on international law, right?  Those are not the same concepts.  (He’s not kidding, sadly.*)

Second of all (setting my incredulity aside), let’s say you do handle patents exclusively, no visa applications ever.  What if some offshore bad guy (let’s call him “OBG” for short) decides that “all your base are belong to us” and starts making your client’s widgets with his own name on them?  Your client, who sacrificed an incredible amount of blood, sweat, and tears** to invent– or an incredible amount of money to buy the rights to– the widget, wants to sue.  Now.

Well, don’t you think you might have to serve the offshore bad guy?  (Yes.) And just how are you going to go about doing that?  (Hmmmm.  I never thought about that.)

Well, for most of the world, start off by looking up the Hague Service Convention.  It’s mandatory doctrine if you need to serve OBG in his homeland.

In all likelihood, you’ll have to set up a translation of the documents– and that’s a big deal with patent cases, so here’s a handy guide on how to keep those costs down.

Then, you’ll have to determine what alternative methods are available.

Then, if you go the Article 5 route, ask the appropriate foreign Central Authority for help.

Last, pray that you’ve filled out your USM-94 correctly.  That’s a big one.  Very important, the USM-94.

If you don’t get him served…

This is Ned Stark.

You’ll have a tough time making the patent-holder whole.

* A huge segment of the practicing bar thinks that international law is immigration law, and immigration law is international law.  My local bar association even conflates the two ideas in its committee structure.  This is so baffling that both the international lawyers and the immigration lawyers in town have given up trying to convince everybody else.

** Apologies to a certain Mr. C of Blenheim, Oxfordshire.  The original quote included “blood, tears, toil, and sweat” but a 1970s fusion band morphed it a bit for brevity.

Wright FlyerFor the entire life of my firm, I’ve had a recurring theme in just about every blog I’ve posted:  yes, counsel, you do have to translate that thing.  Translation is almost always unavoidable if you want a realistic chance of collecting a judgment.  But last summer, I offered some tips to limit the cost of translation of documents that have to be served abroad.  The first two bits of advice: keep brevity in mind (easy as pie for lawyers!), and avoid exhibits wherever possible.  Within the past month, these ideas have become particularly important to two separate clients in the very same practice area:  patent infringement.  Problem is, those clients hadn’t heard the advice prior to filing their claims, and it has cost them dearly.  Six figures dearly.

Patent infringement suits frequently involve foreign defendants.  Routinely.  In any sort of lawsuit, when just one defendant has to be served in a non-English-speaking country, especially one that is a member of the Hague Service Convention, the documents to be served must be translated.  Every word, every page, including exhibits, which are naturally part of the complaint they’re attached to.  The defendant may be quite competent in English—he may even be a U.S. citizen or it may be presumed competent simply because it does business in the United States.*

None of that matters, because it’s not about the defendant.  It’s about the foreign officials handling the documents… and those officials don’t sprechen-sie Englisch or parlez-vous anglais.

When even a seemingly short patent is included in the exhibits, the cost to translate goes up considerably.  When two or three patents are involved, the cost is astronomical.  So how do you get around the cost?  Just reference the patents— don’t attach them as exhibits.  They’re a matter of public record, so if your defendant wants to know what a particular paragraph says in a specific patent, it isn’t that hard to look up.

Take the Wright Brothers’ patent for the aeroplane (yes, it’s spelled that way in the filing).  It’s just shy of seven thousand words.  Translate that thing into Chinese, and you’re looking at a $2,000 project, with formatting and editing and proofreading.  The Wright patent is a mere seven pages, omitting drawings.  Today, hundred-page patents are routine.  Extrapolate that into dollars and you see the horror of serving in three different countries, all of whom require a different language other than English.

But if the complaint just says “reference U.S. Patent No. 821,393, page three, line ten”, a whole bunch of resources are saved.

Unfortunately, if you’ve already filed the complaint with the full text, it’s probably too late.  But a bit of forethought prior to drafting can save literally tens of thousands of dollars in costs to serve.

Tens. Of. Thousands.

Who doesn’t want to do that?

* Ahem, “it” being an entity.  Yes, if an entity does business in the United States, it is presumed to be competent in English.  But that isn’t the end of the analysis.  When serving such defendants, their home countries’ declarations to the Hague Service Convention control language issues—not the presumptions of U.S. law.