Madison, NJ asked in Patents (Intellectual Property) for New Jersey

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?

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

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. 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.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.