Prior Art Cited in Related Foreign Applications

Applicants and other individuals, as set forth in

37 CFR 1.56

,

have a duty to bring to the attention of the Office any material prior art or other

information cited or brought to their attention in any related foreign application.

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.

See

Gemveto Jewelry Co. v. Lambert Bros., Inc.

, 542 F. Supp. 933,

216 USPQ 976 (S.D. N.Y. 1982) wherein a patent was held invalid or unenforceable

because patentee’s foreign counsel did not disclose to patentee’s United States

counsel or to the Office prior art cited by the Dutch Patent Office in connection

with the patentee’s corresponding Dutch application. The court stated, 542 F. Supp.

at 943, 216 USPQ at 985:

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; a double standard of

accountability would allow foreign attorneys and their clients to escape

responsibility for fraud or inequitable conduct merely by withholding from the

local correspondent information unfavorable to patentability and claiming

ignorance of United States disclosure requirements.