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…
Read MoreWho is responsible for disclosing prior art from foreign applications?
According to MPEP 2001.06(a), the responsibility for disclosing prior art from foreign applications extends to “Applicants and other individuals, as set forth in 37 CFR 1.56.” This includes: Inventors Patent attorneys or agents Every person substantively involved in the preparation or prosecution of the application It’s important to note that this responsibility extends to foreign…
Read MoreWhat is the duty of disclosure regarding prior art cited in related foreign applications?
Applicants and other individuals involved in patent prosecution have a duty to bring to the attention of the USPTO any material prior art or other information cited or brought to their attention in any related foreign application. This duty is outlined in MPEP 2001.06(a) and 37 CFR 1.56. The MPEP states: “The inference that such…
Read MoreHow does the duty of disclosure apply to foreign patent attorneys?
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…
Read MoreWhat 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…
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