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Do I need to disclose prior art to the patent examiner?

I have a national patent application in Uzbekistan which stems from a PCT patent application, and a divisional Uzbek patent application from that Uzbek patent application.

The Uzbek examiner has already suggested claims which he regards as patentable we need to ask you the following question for the sake of good order:

In a parallel regional phase EP application of the same patent family, the European examiner has regarded exactly these claims as not novel over a prior art document "XYZ et al.".

If we now proceed to grant with the claims suggested by the examiner, will we create a possibly invalid patent? There are similar situations in the US or in Singapore, where not mentioning a potentially relevant known prior art document can be seen as a grant by false pretenses: the patent proprietor has maliciously withheld from the patent office documents or prior uses that would have resulted in the application being rejected.

This is where we are coming from:

Upon receiving this objection, we limited the claims in that EP patent application obtained a granted EP patent. Furthermore, we have also filed an EP divisional application with much broader claims than the granted claims in the granted EP patent. We have successfully argued against the examiner in the European divisional EP application with respect to his view of the document "XYZ", and this divisional patent will be granted soon.

The document "XYZ" was also cited in our parallel Uzbek patent application before the same Uzbek patent office, which is very similar to the present Uzbek patent application. We do not yet have a search report for the present application from the Uzbek patent office, so we do not know whether the examiner has considered that document "XYZ" in the present patent application. It may be necessary that we somehow appreciate the document "Zimmermann et al.", and maybe even highlight it to the Uzbek examiner.

We have the same situation in Saudia Arabia.

I do not know the patent law in Uzbekistan and in Saudi Arabia, but I can tell you how this is seen in Germany. In Germany, a future infringer of your patent could try to bring such a matter up in pat ... [read more]