Translation foreign Office Action IDS

[novobarro]

we want to submit an IDS listing a foreign office action that is not in English.  The foreign OA cites reference which we have previously submitted in an IDS.  Do we need to provide a translation or concise explanation of the foreign office Action?

[lazyexaminer]

You will need something to satisfy 37 CFR 1.98(a)(3). Can you make a concise explanation of relevance?

[novobarro]

You will need something to satisfy 37 CFR 1.98(a)(3). Can you make a concise explanation of relevance?

Can this be smiply to list in form SB/08 the title as, for example, "Japanese Office Action for related JP Application no. xxxx-xxxxxx."

[lazyexaminer]

Oddly enough I can't recall having this situation. Usually it is at least partially translated, which is generally good enough.

The relevant MPEP section is 609.04(a) III. I would probably accept what you said as that section seems pretty permissive but YMMV. You should probably add that you already cited the references--if I saw a cited office action with no translation and you didn't cite any references with it I'd wonder why.

[Robert K S]

I would have to consider well the relevance of a foreign Office action.  An Office action necessarily comes after the established date of invention and therefore isn't prior art.  Any references it cites to may be prior art, but those should be submitted and considered separately.  I'm not sure how close putting some other examiner's rejection reasoning on the record as a "material reference" comes to an unnecessary admission.  ("Hey, here's what some other person thought were some reasons for unpatentability, I'm just gonna leave that there.")  I have seen it done and there may be the occasional good reason for doing it but I am skeptical that it is good practice, to say nothing of being a requirement under the disclosure rules.

[Robert K S]

After having gone back and read MPEP 609.04(a)(III), I don't think I would generally submit a translation or summary of a foreign office action as a matter of routine practice unless the foreign office action relied upon foreign-language cited art for which I could not easily provide an English-language counterpart or translation.

Maybe I'm missing something.

[snapshot]

I would have to consider well the relevance of a foreign Office action.  An Office action necessarily comes after the established date of invention and therefore isn't prior art.  Any references it cites to may be prior art, but those should be submitted and considered separately.  I'm not sure how close putting some other examiner's rejection reasoning on the record as a "material reference" comes to an unnecessary admission.  ("Hey, here's what some other person thought were some reasons for unpatentability, I'm just gonna leave that there.")  I have seen it done and there may be the occasional good reason for doing it but I am skeptical that it is good practice, to say nothing of being a requirement under the disclosure rules.

I see it happen quite often.

[Robert K S]

Yes, but for the (understandable) reason set forth in MPEP 609.04(a)(III), or out of paranoiac caution?

[snapshot]

That's a good question.  I'm certain with some applicants/attorneys (given what else they file in their IDSes) it's paranoiac caution.

[cheesepep]

Translation of the abstract (computer generated) is usually sufficient.