Q: Is it unwise to put foreign language patents in your prior art list when applying for a US patent? Thanks, Richard
I'm wondering if this would require the examiner to have the cited non-english-language patent(s) translated, thereby making their job more difficult and perhaps annoying them. Or would the examiner require me to have them translated since I put them in there?
A:
If you are aware of the material in the foreign patent (or other foreign language document) and the material is non-duplicative, prior, and material as defined in 37 CFR 1.56, you need to provide it. https://www.law.cornell.edu/cfr/text/37/1.56 Whether it may be marginally annoying to the examiner is irrelevant a duty is a duty.
I frequently look for another member of the patent family of a foreign document to see if I can find one in English. If I can, I swap them out if I think that they cover the same ground.
I have provided Google translations of many foreign patents. Did not cost me anything but a moment of time. If you are fluent in the relevant foreign language of the relevant foreign reference and know that it is particularly relevant, I would pay to have a third party do a translation and submit that. I would be hesitant to use a Google translation that may be imperfect when you are capable of reading the original. I think that you are asking for a challenge in litigation if you submit a translation that you prepared as folks may think that you undersold the relevance by your choice of adjectives or adverbs.
I hope that this helps.
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