What types of foreign information should be disclosed to the USPTO?

According to MPEP 2001.06(a), the types of information from foreign applications that should be disclosed to the USPTO include:

• Material prior art cited in related foreign applications
• Other information brought to the attention of the applicant in any related foreign application

The MPEP specifically states:

“The inference that such prior art or other information is material is especially strong where it has been used in rejecting the same or similar claims in the foreign application or where it has been identified in some manner as particularly relevant.”

This means that special attention should be given to:

• Prior art used in rejections of similar claims in foreign applications
• Information identified as particularly relevant in foreign prosecution
• Search reports from foreign patent offices
• Office actions or communications from foreign patent examiners

It’s important to err on the side of disclosure when determining materiality, as failing to disclose relevant information can have serious consequences for the validity and enforceability of a U.S. patent.

To learn more:

• duty of disclosure
• foreign applications
• prior art
• material information
• USPTO