Form Pto/sb/437 - Petition To Make Special Under The Expanded Collaborative Search Pilot Program Page 2
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4PTO/SB/437 (01-18)
Approved for use through ϬϮͬϮϴͬϮϬϭϵ͘KDϬϲϱϭͲϬϬϳϵ
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:
started/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: started/international-protection/collaborative-search-pilot-
program-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]
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