Who is responsible for disclosing prior art from foreign applications?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. 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 patent attorneys as well. As stated in the Gemveto Jewelry Co. v. Lambert Bros., Inc. case cited in the MPEP: “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.” This ruling emphasizes that foreign attorneys cannot escape responsibility by claiming ignorance of U.S. disclosure requirements. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Disclosure of Material Prior Art from Foreign Applications MPEP 2001.06(a) Requirement for Individuals Substantively Involved in Reexamination Proceedings MPEP 2001.01 Material Prior Art Must Be Disclosed MPEP 2001.06(a) Foreign Attorneys Must Adhere to U.S. Standards MPEP 2001.06(a) Required Material Prior Art Disclosure Required MPEP 2001.06(a) Duty of Disclosure Materiality Revised Based on Therasense MPEP 2000 Duty of Disclosure to Adopt But-For Materiality Standard MPEP 2000 Guidance on Compliance with Duty of Disclosure Regardless of Materiality Standard MPEP 2000 Requirement for Individuals Involved in Application Preparation MPEP 2001 Inventors, Attorneys, Agents, and Substantively Involved Individuals Must Disclose Information Material to Patentability MPEP 2001 Other Related FAQs 5 FAQs Collapse ...