How does the duty of disclosure apply to foreign patent attorneys?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The duty of disclosure applies equally to foreign patent attorneys representing applicants for U.S. patents. This is clearly stated in MPEP 2001.06(a), which cites the Gemveto Jewelry Co. v. Lambert Bros., Inc. case:

“Foreign patent attorneys representing applicants for U.S. patents through local correspondent firms surely must be held to the same standards of conduct which apply to their American counterparts; a double standard of accountability would allow foreign attorneys and their clients to escape responsibility for fraud or inequitable conduct merely by withholding from the local correspondent information unfavorable to patentability and claiming ignorance of United States disclosure requirements.”

This means that:

• Foreign patent attorneys are held to the same disclosure standards as U.S. attorneys
• They cannot claim ignorance of U.S. disclosure requirements as an excuse for non-disclosure
• They have a responsibility to inform U.S. counsel or the USPTO of relevant prior art or information from foreign applications

Failure to meet these obligations can result in the same consequences as if a U.S. attorney had failed to disclose material information, potentially leading to patent invalidity or unenforceability.