PTO/437 Petition to Make Special Under the Expanded Collaborativ

Doc Code: PET.CS
Document Description: Petition for expanded collaborative search prior to examination

PTO/437 (X)
Approved for use through xx/xx/xxxx. OMB 0651-0079
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

Choose an item.

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-applicationprocess/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:
1.
2.
3.
4.
5.
6.

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: ___________________________________________________________________
[Page 1 of 3]

A Federal agency may not conduct or sponsor, and a person is not required to respond to, nor shall a person be subject to a penalty for failure
to comply with an information collection subject to the requirements of the Paperwork Reduction Act of 1995, unless the information
collection has a valid OMB Control Number. The OMB Control Number for this information collection is 0651-0079. Public burden for this form
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maintaining the data needed, and completing and reviewing the information collection. Send comments regarding this burden estimate or
any other aspect of this information collection, including suggestions for reducing this burden to the Office of the Chief Administrative
Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450 or email InformationCollection@uspto.gov. DO
NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS.

PTO/437 (X)
Approved for use through xx/xx/xxxx. OMB 0651-0079
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-gettingstarted/international-protection/collaborative-search-pilot-program-csp.html
PART IV – A GRANTABLE REQUEST MUST MEET THE FOLLOWING REQUIREMENTS
1.

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.

2.

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-pilotprogram-csp. The petition (Form PTO/SB/437) includes:
(A) 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;
(B) 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
(C) 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.

3.

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.

4.

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.

5.

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.

6.

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.
[Page 2 of 3]

PTO/437 (X)
Approved for use through xx/xx/xxxx. OMB 0651-0079
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)

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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.
[Page 3 of 3]

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