Google's 2024 Patent Disclosure Controversy:

 Omitting Foreign Rejections and Its Consequences

(This article is written by Pratik Kumar, LL.B., 3rd Year, Modern Degree College of Law Duhai Muradnagar Ghaziabad Uttar Pradesh, during his internship at LeDroit India.)

Introduction

The global intellectual property (IP) landscape has grown increasingly complex with the rise of multinational corporations, cross-border patent filings, and rapid technological innovation. Among these complexities, the obligation to disclose relevant prior art and examination outcomes across jurisdictions has emerged as a vital yet often underappreciated requirement in patent law. In 2024, tech giant Google LLC found itself at the center of a major controversy when it was penalized by U.S. authorities for failing to disclose prior foreign patent rejections while prosecuting a U.S. patent. The penalty was not only financial but reputational, raising critical questions about compliance, transparency, and the future of international patent practice.

At the heart of this controversy is the duty of disclosure under 37 CFR § 1.56—a regulatory mandate often referred to as the “duty of candor.” This rule requires applicants to provide the U.S. Patent and Trademark Office (USPTO) with all information known to be material to the patentability of a claimed invention, including foreign examination results such as rejections or objections from counterpart applications. This legal duty forms the backbone of fair and honest prosecution before the USPTO. It ensures that patent rights are not secured on the basis of incomplete or misleading information.

In Google’s case, the company had filed a software-based patent in multiple jurisdictions, including the United States, the European Union, Japan, and Canada. While Google’s application was eventually granted in the U.S., both the European Patent Office (EPO) and the Japan Patent Office (JPO) had previously rejected similar claims based on prior art and lack of inventive step. These adverse decisions were not disclosed to the USPTO, and no Information Disclosure Statement (IDS) included these foreign rejections. Upon discovery, U.S. authorities concluded that Google had breached its disclosure obligations and imposed a penalty, prompting renewed scrutiny on multinational patent practices.

This incident is far from isolated. With the increasing harmonization of patent systems—through mechanisms like the Patent Cooperation Treaty (PCT), the WIPO CASE system, and global examination platforms—patent examiners across jurisdictions are more interconnected than ever before. Information disclosed in one country is often easily accessible in another, making omissions more detectable and their consequences more severe. As such, the Google case underscores the evolving expectations placed on applicants to maintain transparency and consistency across jurisdictions.

From a legal and ethical standpoint, the controversy raises important questions: How should multinational companies manage foreign office actions when pursuing patents in the U.S.? What are the standards for determining materiality and intent in cases of non-disclosure? How does inequitable conduct affect a granted patent’s enforceability? What lessons can patent counsel and in-house IP teams learn from this situation?

Beyond the legal specifics, the case also highlights a broader shift toward increased regulatory enforcement in the IP domain. Authorities around the world are taking a firmer stance against perceived abuses of the patent system, particularly when they involve global inconsistencies or strategic omissions. As a result, patent applicants—especially those operating in fast-moving sectors like software, AI, and telecommunications—must reassess their internal protocols and adopt a more proactive approach to disclosure and compliance.

This article provides a comprehensive analysis of the Google case, the applicable legal framework governing disclosure duties, the global trends in patent harmonization, and the strategic lessons that emerge from this regulatory response. As digital technologies continue to drive innovation and competition, intellectual property will remain a central battlefield—and compliance with global disclosure obligations will be one of its most crucial frontlines.

The Duty of Disclosure in U.S. Patent Law

At the core of U.S. patent prosecution is 37 CFR § 1.56, commonly referred to as the “duty of disclosure.” This rule obligates every individual associated with the preparation or prosecution of a patent application in the U.S. to inform the U.S. Patent and Trademark Office (USPTO) of all information known to be material to the patentability of the claims. This includes not just prior art references but also adverse office actions from foreign patent authorities on corresponding applications.

The Manual of Patent Examining Procedure (MPEP) explicitly clarifies that foreign office actions—such as rejections issued by the European Patent Office (EPO), the Japan Patent Office (JPO), or other national offices—must be disclosed if they relate to the same or a closely analogous invention. Failure to do so is considered “inequitable conduct,” which can render the entire patent unenforceable.

The Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. (2011) narrowed the standard for inequitable conduct, requiring that the omission be both material and committed with intent to deceive. Nonetheless, applicants are cautioned that even unintentional omissions of known rejections from counterpart filings may trigger adverse outcomes, especially if the USPTO later uncovers the information.

The Specifics of the Google Case

The patent at the center of the 2024 controversy concerned a software-related innovation involving cross-device messaging management. Google had filed corresponding applications with the EPO, JPO, Canadian Intellectual Property Office (CIPO), and other jurisdictions. While the U.S. and Canadian filings eventually resulted in granted patents, the EPO and, in one case, the JPO issued rejections highlighting prior art and lack of inventive step.

Google’s U.S. application omitted mention of these foreign rejections in its Information Disclosure Statement (IDS). Despite receiving an Information Disclosure Request (IDR) from the USPTO (post-issuance), which asked whether foreign office actions existed, Google initially responded with “none pending” and later did not formally amend its statements.

Upon audit by USPTO enforcement teams—with support from the Department of Justice (DOJ)—it was determined that these omissions were material: the rejections addressed similar claim limitations and novelty concerns. A penalty was issued, and the patent was placed under reexamination. While Google cooperated and eventually updated the record, the USPTO imposed a monetary fine and issued public guidance emphasizing stricter enforcement of foreign office action disclosure.

Why Foreign Rejections Matter

Materiality of Rejections:

Foreign office actions often cite prior art potent enough to undermine novelty or inventive step in equivalent U.S. claims. Because patents operate under similar legal standards globally (e.g., obviousness under 35 U.S.C. § 103 versus inventive step criteria), a rejection from the EPO is often persuasive and relevant to ongoing U.S. examination.

Global Transparency and PCT Integration:

With the Patent Cooperation Treaty (PCT) system and global dossier platforms, foreign patent filings and office actions are increasingly accessible to U.S. examiners. This transparency reduces the likelihood of omitting material information going unnoticed.

Legal Consequences of Non-Disclosure:

Under § 1.56, omission of material information—even without intent—can trigger a rebuttable presumption of inequitable conduct. If intent to deceive is proven, courts may render the patent completely unenforceable.

The Legal Framework Behind the Penalty

37 CFR § 1.56 – Duty of Disclosure:

• Mandates disclosure of prior art and foreign office actions.
• Requires good faith and candor in all submissions.

Manual of Patent Examining Procedure (MPEP) § 2001.06:

• Explicitly lists foreign office actions as disclosable material.
• Guides on how to identify and log such actions appropriately.

Therasense v. Becton, Dickinson & Co. (Fed. Cir. 2011):

• Defined the current standard for inequitable conduct: requires both materiality and intent.
• Modifiable evidence, like email correspondence or internal memos, can show intentional omission.

False Claims Act (Potentially Applicable in Extreme Cases):

• If a patent is obtained through deceptive omissions, enforcement agencies may seek civil penalties for defrauding the U.S. government.

Doctrine of Unclean Hands:

• Courts may deny enforcement or equitable remedies if an applicant has misled the USPTO or filed fraudulent submissions.

Global Trends: Harmonization and Comparative Disclosure Rules

While the U.S. system requires active disclosure under § 1.56, other jurisdictions also impose similar—but not identical—obligations.

India:

Under Section 8 of the Patents Act, 1970 (and amended rules effective 2017), applicants must disclose all related foreign applications, including rejections, provisional statuses, and divisional outcomes. Non-compliance can lead to refusal, revocation, or fines—as seen in the Google India case.

Europe (EPO):

The EPO requires disclosure of prior art known to applicants, but members do not submit foreign office actions by default. However, the global WIPO CASE platform now makes such information accessible to national examiners.

Japan & China:

Both offices encourage voluntary disclosure of correlated foreign examination results, and increasing harmonization via PCT and CASE tools enhances transparency.

Strategic Lessons for Corporations and Law Firms

1. Establish Robust Disclosure Protocols:

• Track all foreign patent applications associated with U.S. filings.
• Automatically flag and submit relevant office actions.

2. Over-Disclose Rather Than Under-Disclose:

• When in doubt, include foreign office action references—even if counsel believes them immaterial.

3. Document Decision-Making:

• Keep internal memos detailing why certain documents were not disclosed.
• Use this documentation to defend against future challenges.

4. Regularly Audit Disclosure Practices:

• Periodic reviews of patent portfolios and disclosure logs help catch omissions before they escalate.

5. Train In-House and External Counsel:

• Ensure everyone understands the gravity of § 1.56 and equivalent rules globally.
• Promote ongoing communication between international prosecution teams.

6. Leverage AI and Automation Tools:

• Adopt docketing systems or AI tools to detect relevant foreign actions and trigger IDS filings.

Implications for Enforcement, Litigation & Patent Valuation

• Inequitable Conduct Defenses: Opponents in infringement suits may argue patents are unenforceable if omissions occurred.
• Patent Reexamination and Invalidity Challenges: Missing foreign rejections can lead to broader reexaminations or invalidation.
• Investor and M&A Risk: Patent portfolios are central to valuations; flawed disclosure may devalue IP assets.
• Regulatory Scrutiny: Future enforcement may intensify, including monetary fines and potential criminal referrals.

Broader Impact and Future Policy Outlook

Automatic Disclosure Mechanisms:

Global patent offices may explore systems to auto-share office actions, reducing reliance on manual filings.

Emerging Technologies & AI:

Tools that scan patent databases and automate relevance flags will reduce human error.

Expanded Sanctions:

Authorities may raise penalties for non-disclosure, including institutional denial of patent rights or term reductions.

Legislative Reforms:

Reform agendas may integrate global disclosure standards into national laws and enforce collaborative enforcement across jurisdictions.

Ethical and Compliance Culture:

Promoting transparency and integrity within patent organizations is no longer optional—it is both good practice and legal necessity.

Conclusion

A Turning Point in Global Patent Compliance

The penalty imposed on Google in 2024 for omitting prior foreign patent rejections stands as a critical moment in the global intellectual property (IP) landscape. It demonstrates how rapidly evolving patent regulations are holding even the most powerful technology companies accountable. This case signals a clear message: transparency in patent prosecution is no longer optional—it is fundamental. Multinational corporations must ensure that their patent applications are both factually accurate and legally complete, especially when operating across multiple jurisdictions.

The Growing Importance of Disclosure Obligations

At the heart of the controversy lies the obligation of disclosure, particularly the duty to inform patent offices of foreign rejections and office actions. This requirement is rooted in the foundational principle of good faith and candor toward patent examiners, who rely on the full context of an invention’s prosecution history to determine its novelty and inventiveness. Omitting prior art—especially knowingly—undermines the integrity of the examination process and may constitute “inequitable conduct,” leading to penalties, fines, or even invalidation of the granted patent.

The Role of Patent Offices and International Cooperation

The Google case also highlights the increasing collaboration between international patent offices through mechanisms like the Global Dossier, WIPO CASE, and the Patent Prosecution Highway (PPH). These systems enable cross-border data sharing, which in turn increases examiner scrutiny of applicants’ histories in other jurisdictions. While these tools enhance examination efficiency, they also increase the responsibility on applicants to be vigilant and consistent in their global filings.

Lessons for Corporations and Legal Teams

For corporate IP departments and legal counsel, the takeaway is clear: robust compliance protocols are no longer a choice—they are a necessity. Companies must implement comprehensive internal tracking systems to monitor foreign office actions and ensure timely submission of Information Disclosure Statements (IDS) or equivalent documentation. Moreover, clear communication between in-house teams and outside counsel is essential for minimizing risk and avoiding costly oversights.

Reputation, Risk, and Ethical Patent Strategy

In the long term, cases like Google’s may reshape how companies view the value of procedural integrity. A patent is not merely a legal asset—it is a representation of innovation credibility. If enforcement of that asset is jeopardized by a lack of transparency, its value diminishes considerably. Regulatory penalties may be just one consequence; reputational damage can be far more enduring, especially for public-facing technology firms.

Strengthening Future IP Governance Models

As the digital and technological ecosystem continues to expand, patent law will be under increasing pressure to ensure fairness and global harmonization. The Google disclosure issue is likely to influence future reforms, such as mandatory integration of foreign office action histories in domestic filings. Patent offices may also adopt stricter review protocols or automated compliance checks to mitigate the risk of omission.

References

Legal and Official Sources

1. USPTO – MPEP § 2016: On inequitable conduct affecting patent claims.

2. USPTO – MPEP § 2010: Office procedures on duty of disclosure.

3. Kingsland v. Dorsey (1949): U.S. Supreme Court case highlighting patent integrity.

4. Therasense, Inc. v. Becton, Dickinson (Fed. Cir. 2011): Milestone ruling redefining inequitable conduct standards.

Articles and Reports

5. “Inequitable Conduct in Patent Law” – UNC JOLT: On abuse of the doctrine.

6. Winston & Strawn LLP – Analysis of Inequitable Conduct: Post-Therasense update.

7. The Thornton Firm – Guide on Rule 1.56:

Books and Scholarly Sources

8. Eugenio Hoss, Deceptive Conducts before the Patent Office – IP and competition law overlap.

9. Alf K. Berle, Inventions and Their Management – Includes international patent strategy and disclosure.