Foreign Patent File History is Prior Art

In Mark Bruckelmyer v. Ground Heaters, (Fed. Cir., April 20, 2006), the court held that figures 3 and 4 of Canadian Patent 1,158,119 application were "printed publications" under 35 U.S.C. § 102(b) even though the application was not actually disseminated during the relevant prior art time frame and the figures were withdrawn before issuance of the patent. According to Judge Lourie,

Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were
"removed" from the application during prosecution, and thus a person of skill in
the art would not have looked past the ’119 patent in searching for the subject
matter of the patents in suit. As a matter of undisputed fact, the ’119 patentee
did not physically remove figures 3 and 4 from the file wrapper, but merely
cancelled the subject matter figures from the patent during prosecution. The
figures were thus still in the file, although they did not appear in the issued
patent. The declaration from Bruckelmyer’s Canadian patent law practitioner
explains that when subject matter is cancelled during prosecution a replacement
page may be put in front of the page containing the cancelled matter, but the
page containing the cancelled original matter still remains in the file wrapper.
Moreover, for the reasons that we articulated above, it does not matter that
figures 3 and 4 do not appear in the ’119 patent because no reasonable trier of
fact could find that there was not sufficient disclosure in the patent to allow
one skilled in the art to locate the figures contained in the application.

In his dissent, Circuit Judge Linn noted that

It is not entirely sound to view the issued [Canadian] patent as a roadmap to
the underlying file history. . . . While it is commonplace for parties to
examine patent file histories for guidance on matters of claim interpretation,
surrender, estoppel, disclaimer, or disavowal, researchers normally expect the
text of printed patents to correspond to and be coextensive with the
applications from which they have been issued. In that sense, the text of an
issued patent does not generally serve to guide researchers to the file history
for a more expansive disclosure of the described invention, and it certainly
does not lead researchers to the file history for disclosure of subject matter
not described in the issued text.”

Australian patent law may be moving in the opposite direction. According to a recent APLF casenote by Chris Owens (cowens@fbrice.com.au) and Marcus Caulfield (mcaulfield@fbrice.com.au) FB Rice & Co. on The Emperor Sports Decision, the Australian Patent Office's assumption that a person skilled in the art would routinely would be expected to ascertain any prior art patent specification has now been put into question:

the Commissioner's contention that the person skilled in the art would have
ascertained the US patent specifications was held to be unreasonable, and indeed
the Full Court held that it would have been "fanciful". The use of such strong
language casts some doubt on the Patent Office's practice of assuming that any
patent specification of major countries would reasonably be expected to be
ascertained. In our opinion, this decision is not the sea-change that some
practitioners may have thought it might be, but a reminder of what is required
by the Patents Act 1990.