To the best of my knowledge, the duty to disclose information to the USPTO in the form of Information Disclosure Statements (IDSes) is unique in the world. Accordingly, Applicants and their representatives sometimes ask me what they should do with Office Actions received in foreign corresponding applications.
The safest thing is to have a person translate the Office Action and to provide the Office Action and translation to the USPTO. However, the cost of the human translation is high. In addition, IDSes are sometimes filed less than 30 days from the issuance of the foreign Office Action. So, a translator might even charge a rush fee for the rapid turnaround. So, a high cost can be even higher.
On the other hand, some US attorneys do not submit the foreign OAs, even when certifying the OAs’ references under 37 CFR 1.97(e). I have been unable to locate a specific requirement for submitting the OAs.
The MPEP states, “Applicants . . . 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.” MPEP 2001.06(a). In my view, it is dangerous to only submit material prior art cited in a foreign OA, because the MPEP extends the duty to other information brought to Applicants’ attention. An argument can be made that the reasoning in the foreign Office Action itself is such information.
As usual, I prefer a middle ground. On this topic, I prefer submitting an untranslated copy of the foreign OA. In this way, I have complied with the relevant requirements, without incurring a substantial additional cost.