How to Disclose Foreign Patent References and English Abstracts Under 37 CFR § 1.98

Foreign patent documents are common IDS references—and a common source of filing friction. The document may be in another language, the publication number may use unfamiliar formatting, and the prosecution team may need an English abstract or a concise explanation of relevance.

This article describes the workflow at a practical level. It does not determine whether a particular reference is material or whether a translation is legally required in a specific case.

What 37 CFR § 1.98 requires

An IDS generally includes a list of the information, a legible copy of each foreign patent or relevant publication, and identifying details. Under 37 CFR § 1.98, a foreign patent or published foreign application must be identified by the issuing country or patent office, document number, and publication date.

For information that is not in English, the rule also calls for a concise explanation of relevance as presently understood by the most knowledgeable covered individual. If a written English translation is within the possession, custody, or control of—or readily available to—an individual covered by 37 CFR § 1.56(c), the translation must also be provided.

Is an English abstract enough?

Sometimes an English abstract is the most useful and efficient part of a foreign publication to provide, but “abstract” and “translation” are not automatically interchangeable. The answer depends on what information is being submitted, what portion caused the document to be listed, what translations are available, and the applicable IDS requirements.

An English abstract can help in at least three ways:

• It can provide an English-language summary for the examiner.
• It can be the relevant portion of a larger publication when the submission is properly limited and supported.
• It can help the prosecution team prepare the concise explanation of relevance.

The abstract should not be used as a shortcut to omit a required legible copy or an available written translation. Review the document and the current MPEP § 609 guidance before filing.

What a concise explanation should do

The explanation should be short, accurate, and tied to the information being submitted. It can identify the technical feature, figure, claim, or passage that makes the reference relevant. It should not overstate what the foreign document teaches, and it should not turn the IDS into an argumentative claim chart unless that is strategically appropriate.

For example:

The English abstract describes a sensor array that calibrates individual sensing elements using a stored reference value. Figure 3 and paragraphs 24–29 further describe the calibration sequence.

That kind of explanation gives the examiner a useful orientation while leaving the patentability analysis for the proper prosecution papers.

A foreign-reference workflow

1. Normalize the country code, publication number, kind code, and publication date.
2. Confirm that the identifier resolves to the intended document.
3. Retrieve the official publication PDF and available English abstract.
4. Check whether a written translation is available to the prosecution team.
5. Record the relevant portion and prepare a concise explanation where required.
6. Check whether the reference was previously submitted in the application or a properly identified relied-on earlier application.
7. Generate and review the foreign-document portion of the SB/08 package.

IDS Generator automates much of this administrative work. It can retrieve foreign patent PDFs and English-language abstracts from available patent-office sources, normalize identifiers, and place foreign references into the appropriate IDS workflow. The practitioner still reviews the source document, relevance, translation status, and filing requirements.

Common mistakes to avoid

Listing the wrong publication

A family can contain an international publication, a national publication, a grant, and later amended documents. Confirm the exact document that was cited or that the team intends to submit.

Omitting the issuing office

A foreign reference should be identifiable without forcing the examiner to guess which country’s numbering system was used.

Treating an abstract as a complete translation

An abstract is a summary. It may not disclose every passage relevant to patentability and may not satisfy every copy or translation requirement.

Forgetting the filing-stage requirements

Even a perfectly formatted foreign citation can fail to receive consideration if the IDS is filed outside the applicable timing window without the required statement or fee.

Bottom line

The safest foreign-reference workflow combines accurate identification, a legible copy, an appropriate English explanation, and a deliberate translation check. Automation reduces retrieval and formatting errors; professional review determines what should be disclosed and how.

This article is general educational information, not legal advice. Verify the current USPTO rules, forms, and fee schedule before filing.