Foreign Office Action in an IDS

[cerass84]

A few questions:
1. Is it necessary to submit both the references cited in the foreign OA along with a copy of the foreign OA itself?
2. Does the foreign OA need to be translated?
3. What if the references cited in the foreign OA are duplicates of already cited references? In such an instance, would it be necessary to cite the foreign OA at all?

[khazzah]

There is no bright line "should" or "should not" here. Reasonable minds can differ on whether something is "material" under Rule 56.

That said, the McKesson decision (and its progeny) is generally understood to say that it's important to cite references mentioned in a foreign OA. Most folks changed their practice to do this in the wake of McKesson.

Most practitioners I know also provide the foreign OA. (Does anyone remember if the OA itself was at issue in McKesson ... I'm too lazy to look that up.) I don't think anyone I know actually gets a translation of the foreign OA for the express purpose of citing in an IDS. More like if the OA was already translated, might as well provide it in the IDS.

As for the question of duplicate references, that seems to me to clearly fall into the "cumulative" exception of Rule 56.

[mhgy]

There is no bright line "should" or "should not" here. Reasonable minds can differ on whether something is "material" under Rule 56.

That said, the McKesson decision (and its progeny) is generally understood to say that it's important to cite references mentioned in a foreign OA. Most folks changed their practice to do this in the wake of McKesson.

Most practitioners I know also provide the foreign OA. (Does anyone remember if the OA itself was at issue in McKesson ... I'm too lazy to look that up.) I don't think anyone I know actually gets a translation of the foreign OA for the express purpose of citing in an IDS. More like if the OA was already translated, might as well provide it in the IDS.

As for the question of duplicate references, that seems to me to clearly fall into the "cumulative" exception of Rule 56.

From what I remember, McKesson got dinged for not citing a reference, an OA, and the fact that the prior application was allowed. McKesson needs to be considered in light of Therasense now though, which created a standard of but-for materiality for IC.