When should an examiner search for foreign patents under pre-AIA 35 U.S.C. 102(d)?

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.

An examiner should conduct a search for foreign patents under pre-AIA 35 U.S.C. 102(d) only under specific circumstances. The MPEP provides guidance on this:

“The examiner should undertake a search for an issued foreign patent for use as pre-AIA 35 U.S.C. 102(d) prior art only if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country.“

The MPEP also notes that such searches are typically unproductive due to the low probability of foreign patents issuing before the U.S. filing date. However, examiners should be aware that average pendency varies significantly between countries.