Publications

A longstanding issue in patent law concerns the adequacy of the teachings of an English abstract of a prior art document that is in a foreign language vis-à-vis the full teachings contained in the original document. Assuming that an abstract is by its very nature an inadequate instrument for reflecting the spectrum of teachings afforded by the underlying reference, where does the obligation lie in providing a fuller disclosure to the Patent Office? More specifically, does the provision of an English abstract of a foreign language prior art document to the Patent Office satisfy the applicant’s duty of disclosure requirement to the Office with respect to the underlying document, or is there a translation obligation on the part of the applicant? If there is such as obligation, can the applicant properly shift the burden for obtaining a true translation, and the significant expense associated therewith, to the Patent Office. This paper explores these questions in light of recent guidance provided by the Federal Circuit and the PTO’s Board of Appeals.