Who 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 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.

To learn more:

• duty of disclosure
• foreign applications
• prior art
• patent attorneys
• inventors