Form PTO/437-KR Combined Petition to Make Special Under the Expanded Col

Doc Code: PET.CS

Document Description: Petition for expanded collaborative search prior to examination

PTO/SB/437 (12-17)

Approved for use through xx/xx/xxxx. OMB xxxx-xxxx

U.S. Patent and Trademark Office; U.S DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number

PETITION TO MAKE SPECIAL UNDER THE EXPANDED COLLABORATIVE SEARCH PILOT PROGRAM
Application No.:		First Named Inventor:
Filing Date:		Attorney Docket No.:
Title of the Invention:
Partner IP Office		Additional Partner IP Offices (separate petitions required)
THIS PETITION FOR PARTICIPATION IN THE EXPANDED CSP PROGRAM ALONG WITH THE REQUIRED DOCUMENTS MUST BE SUBMITTED VIA EFS-WEB. INFORMATION REGARDING EFS-WEB IS AVAILABLE AT http://www.uspto.gov/patents-application-process/applying-online/about-efs-web. A separate petition for each different partner IP office is required.
PART I – APPLICANT CERTIFICATIONS Applicant hereby petitions for participation in the Expanded CSP program and petitions to make the above-identified application special under the Expanded CSP program. Applicant hereby certifies they are providing express written consent under 35 U.S.C. 122(c) and authorizes the USPTO to forward to and receive from the identified partner IP office prior art references and comments to be considered during the examination of the above identified application participating in the Expanded CSP program. Applicant hereby authorizes the USPTO to provide the identified partner IP offices access to the participating U.S. application’s bibliographic data and search results in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c). No other consents are provided.
PART II – CORRESPONDING COUNTERPART APPLICATION(S) The above-identified US application and the corresponding counterpart application(s) have the same priority/filing date. The corresponding counterpart application number(s) is/are: _________________________________ Excluding the instant application, list all US applications listed on the counterpart corresponding application(s). The US application number(s) is/are: _____________________________________________________ The application with the common earliest priority or filing date of the pilot applications is (please include application number, country code and filing date): ____________________________________________
PART III – APPLICANT ACKNOWLEDGES AND AGREES TO THE FOLLOWING: The application must contain three (3) or fewer independent claims and twenty (20) or fewer total claims and must not contain any multiple dependent claims Applicant will not request a refund of the search fee and any excess claims fee paid in the application after the mailing or notification of the decision on the petition to join Expanded CSP Applicant will make an election without traverse (express or constructive) if the Office determines that the claims are not directed to a single invention. Applicant will provide a translation of all corresponding claims if the corresponding counterpart application(s) are not published in English. A machine language translation is sufficient. All submissions for the participating application must be filed via EFS-Web. Other attachments: ___________________________________________________________________

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This collection of information is required by 35 U.S.C. 119, 37 CFR 1.55, and 37 CFR 1.102(d). The information is required to obtain or retain a benefit by the public, which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 2 hours to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS.

PTO/SB/437 (12-17)

Approved for use through xx/xx/xxxx. OMB xxxx-xxxx

U.S. Patent and Trademark Office; U.S DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number

PETITION TO MAKE SPECIAL UNDER THE EXPANDED COLLABORATIVE SEARCH PILOT PROGRAM (continued)
Application No.:		First Named Inventor:
PART IV IS A SUMMARY OF THE REQUIREMENTS (FOR MORE INFORMATION SEE THE FEDERAL REGISTER NOTICE FOR THE PROGRAM AVAILABLE ON THE USPTO WEB SITE AT: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp.html
PART IV – A GRANTABLE REQUEST MUST MEET THE FOLLOWING REQUIREMENTS The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111(a); or an international application that has entered the national stage in compliance with 35 U.S.C. 371, with an effective filing date of no earlier than March 16, 2013. For corresponding counterpart applications filed in accordance with the agreement between the USPTO and KIPO only, applications filed under 35 U.S.C. 161 are also eligible. The U.S. application and all corresponding counterpart applications must have a common earliest priority date that is no earlier than March 16, 2013. A completed petition form PTO/SB/437 must be filed in the application via EFS-Web. Form PTO/SB/437 is available at: http://www.uspto.gov/patents-getting-started/international-protection/collaborative-search-pilot-program-csp. The petition (Form PTO/SB/437) includes: An express written consent under 35 U.S.C. 122(c) for the USPTO to accept and consider prior art references and comments from each designated partner IP office; Written authorization for the USPTO to provide to the designated partner IP office access to the participating U.S. application’s bibliographic data and search results in accordance with 35 U.S.C. 122(a) and 37 CFR 1.14(c); and A statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing of the decision on the petition to join Expanded CSP. Petitions must be filed before examination has commenced. Petitions should preferably be filed before the application has been assigned to an examiner to ensure that the USPTO does not examine the application before recognizing the petition. Examination must not have commenced in the identified corresponding counterpart application(s) before each designated partner IP office when filing the petition in the U.S. application. The petition and any request in a designated partner IP office must be filed within fifteen days of each other. If the petition and request(s) are not filed within fifteen days of each other, applicant runs the risk of one of the pending applications being acted upon before entry into the pilot program, which will result in the applications being denied. The request for participation filed in the corresponding counterpart application(s) must be grantable in at least one of the designated partner IP offices. The petition submission must include a claims correspondence table, which at a minimum must establish “substantial corresponding scope” between all independent claims present in the U.S. application and the corresponding counterpart application(s) filed in the designated partner IP office(s). The claims correspondence table must individually list the claims of the instant U.S. application, and correlate them to the claims of the corresponding counterpart application having a substantially corresponding scope. Claims are considered to have a “substantially corresponding scope” where, after accounting for differences due to claim format requirements, the scope of the corresponding claims in the corresponding counterpart application(s) would either anticipate or render obvious the subject matter recited under U.S. law. Applicants may file a preliminary amendment in compliance with 37 CFR 1.121 to amend or cancel claims to satisfy this requirement. A translated copy of the claims in English for each counterpart application is required if the application is not publicly available in English. A machine translation is sufficient. Non-corresponding claims need not be listed. The U.S. application must contain three or fewer independent claims and twenty or fewer total claims. The U.S. application must not contain any multiple dependent claims. A preliminary amendment maybe filed in compliance with 37 CFR 1.121 to amend or cancel claims.

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PTO/SB/437 (12-17)

Approved for use through xx/xx/xxxx. OMB xxxx-xxxx

U.S. Patent and Trademark Office; U.S DEPARTMENT OF COMMERCE

Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number

PETITION TO MAKE SPECIAL UNDER THE EXPANDED COLLABORATIVE SEARCH PILOT PROGRAM (continued)
Application No.:						First Named Inventor:
PART V – CLAIMS CORRESPONDENCE TABLE (each independent claim must have correspondence with the independent claims of the identified corresponding counterpart application(s)). Corresponding dependent claims should also be listed. List each corresponding claim in the US application separately and check the box for any independent claims.
Claims in U.S. application (check if Independent)				Corresponding Application No.	Claims in Corresponding Application		Claims in U.S. application (check if Independent)		Corresponding Application No.	Claims in Corresponding Application
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
☐							☐
		Explanation Regarding the Correspondence:
☐ An English language translation of the claims from the corresponding application(s) listed in this section are attached. ☐ An English language translation of the claims from the corresponding application(s) is available at _____________________________________________________. ☐ An English language translation of the claims from the corresponding application(s) listed in this section is not required. PART VI – CERTIFICATION All the independent claims in the U.S. application sufficiently correspond to the listed claims in the corresponding application(s)
Signature								Date
Name (Print/Typed)								Reg. No.
Telephone number								e-mail
Note: This form must be signed in accordance with 37 CFR 1.33. Please see 37 CFR 1.4(d) for signature requirements and certifications. Submit multiple forms if more than one signature is required, see below*. * Total of _______________ forms are submitted.

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Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent.

The information provided by you in this form will be subject to the following routine uses:

1. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.

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6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).

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8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application, an application open to public inspection or an issued patent.

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