What are the consequences of failing to disclose foreign prior art?

Failing to disclose material prior art from foreign applications can have serious consequences for a U.S. patent. The MPEP 2001.06(a) cites the case of Gemveto Jewelry Co. v. Lambert Bros., Inc. to illustrate this point:

“A patent was held invalid or unenforceable because patentee’s foreign counsel did not disclose to patentee’s United States counsel or to the Office prior art cited by the Dutch Patent Office in connection with the patentee’s corresponding Dutch application.”

The consequences of such failure can include:

• The patent being held invalid
• The patent being deemed unenforceable due to inequitable conduct
• Potential legal and financial repercussions for the patent holder

This underscores the importance of thorough disclosure of all material prior art, regardless of its origin, to maintain the validity and enforceability of a U.S. patent.

To learn more:

• duty of disclosure
• foreign applications
• prior art
• patent invalidity
• inequitable conduct