Should foreign Office Actions or foreign prior art references be cited in an IDS?

Duty to Disclose Known Information Material to Patentability

U.S. patent law places an obligation on applicants to notify the USPTO of known information that is material to the patentability of a pending patent application. In other words, if the applicant knows of prior art that relates to the patentability of its application, then the applicant must disclose that information to the Patent Office in the form of an Information Disclosure Statement (IDS).

This duty to disclose under 37 CFR 1.56 comprises three elements:

  1. information
  2. known to applicant
  3. material to patentability.

Notice that this duty does not require the applicant to search for prior art, but would require the applicant to disclose any prior art references found as a result of a patent search.

Foreign Prior Art Documents

Applicants may have foreign counterpart applications corresponding to a pending U.S. application. In such cases, the duty to disclose would require the applicant to submit:

  1. a concise explanation of the relevance of the foreign prior art references pursuant to 37 CFR 1.98(a)(3); and
  2. an English translation of the foreign document if the English translation is within the possession, custody, or control of, or is ready available to the applicant or its agents.

One way to satisfy the requirement of a concise explanation of relevance is to submit an English translation of the foreign prior art document. If only certain portions such as the abstract are translated, make sure that English abstract contains a concise explanation of the relevance. If not, then you may need to submit additional translated portions that provide the relevance.

If the non-English prior art reference was cited in a search report or other official action by a foreign patent office in a counterpart foreign application, then the explanation of relevance requirement can be satisfied by submitting an English-language version of the search report or official action which indicates the degree of relevance found by the foreign patent office [see MPEP 609.04(a), subsection III].

Should Foreign Office Actions be cited in an IDS?

But, what about foreign Office Actions? There is no absolute requirement to disclose Office Actions by foreign IP offices. Applying Rule 56, a foreign Office Action would constitute information known to the applicant, thus meeting at least two of the three conditions for filing an IDS. The issue is materiality. For example, does the foreign patent examiner’s interpretation of a prior art reference differ from that of the U.S. patent examiner in the corresponding application?

Keep in mind that invalidating a patent on the grounds of inequitable conduct still requires, among other things, an intent to deceive. This intent requirement has been heightened by recent case law (e.g., Therasense). Under Therasense, the Federal Circuit tried to pare down the overdose of information submitted in an IDS by making the following significant changes to inequitable conduct claims that challenge the enforceability of a patent:

  1. There must be a specific intent to deceive proven by clear and convincing evidence (not gross negligence or “should have known” standard); and
  2. But-for materiality (USPTO would not have allowed the claim if it was aware of the undisclosed prior art)

Specific intent to deceive may be proven by showing the applicant:

  1. knew of the prior art reference;
  2. knew it was material; and
  3. made a deliberate decision to withhold the known material prior art reference from the USPTO.

One would have to argue and prove that a patentee had the requisite intent to deceive by failing to disclose a foreign Office Action even though the applicant had already disclosed the foreign prior art references.

If you decide to file a copy of the foreign Office Action in an IDS, an English concise explanation of the relevance of the foreign Office Action must be included [37 CFR 1.98(a)(3)].  Also, the applicant would need to file a full English translation within its possession, custody or control.

Practical Considerations for Filing English Translation of Foreign Office Action

A more practical reason to submit an English translation of a foreign Office Action is simply efficiency. An English translation of a foreign action avoids the requirement to submit English versions of each foreign prior art reference if such English versions are not readily available to the applicant. This saves the applicant and its foreign counsel from having to obtain an English translation or abstract of each foreign reference.

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