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Federal Register / Vol. 86, No. 22 / Thursday, February 4, 2021 / Notices that the applicant designates. The petition Form PTO/SB/437 includes:
A An express written consent under 35 U.S.C. 122c for the USPTO to accept and consider prior art references and comments from each designated partner IP office during the examination of the U.S. application;
B Written authorization for the USPTO to provide to the designated partner IP office access to the participating U.S. applications bibliographic data and search results in accordance with 35 U.S.C. 122a and 37
CFR 1.14c; and C A statement that the applicant agrees not to file a request for a refund of the search fee and any excess claim fee paid in the application after the mailing of the decision on the petition to join the Expanded CSP. Note: Any petition for express abandonment under 37 CFR 1.138d to obtain a refund of the search fee and excess claim fee filed after the mailing of a decision on the petition will be granted, but the fees will not be refunded.
3 Petitions must be filed before examination has commenced.
Examination may commence at any time after an application has been assigned to an examiner. 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. Therefore, applicants should check the status of the application using the Patent Application Information and Retrieval PAIR system or Patents Center to see if the application has been assigned to an examiner. If the application has been assigned to an examiner, the applicant should contact the examiner to confirm that the application has not been taken up for examination and inform the examiner that a petition to participate in the Expanded CSP is being filed. Following this guidance will minimize delays caused by remedial corrective action when a petition is not recognized before examination commences. Further, examination must not have commenced in the identified corresponding counterpart applications before each designated partner IP office when filing petitions requesting participation in the U.S. application.
4 The petition filed in the USPTO
and any request filed in a designated partner IP office must be filed within 15
days of each other. If the petition and requests are not filed within 15 days of each other, the applicant runs the risk of one of the pending applications being acted upon by an examiner before entry into the pilot program, which will result in the applications being denied entry
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into the Expanded CSP. The request for participation filed in the corresponding counterpart applications for the Expanded CSP must be granted by at least one of the designated partner IP
offices in order to participate in the Expanded CSP.
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 applications filed in the designated partner IP offices. 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 when, after accounting for differences due to claim format requirements, the scope of the corresponding claims in the corresponding counterpart applications would either anticipate or render obvious the subject matter recited under U.S. law. Additionally, claims in the U.S. application that introduce a new/different category of claims than those presented in the corresponding counterpart applications are not considered to substantially correspond. For example, where the corresponding counterpart applications contain only claims relating to a process of manufacturing a product, any product claims in the U.S.
application are not considered to substantially correspond, even if the product claims are dependent on process claims that do substantially correspond to claims in the corresponding counterpart applications. Applicants may file a preliminary amendment, in compliance with 37 CFR 1.121, to amend the claims of the U.S. application to satisfy this requirement when attempting to make the U.S. application eligible for the program. A translated copy of the claims in English for each counterpart application is required if the application in the designated partner IP offices is not publicly available in English. A
machine translation is sufficient. Noncorresponding claims need not be listed.
6 The U.S. application must contain 3 or fewer independent claims and 20
or fewer total claims. The U.S.
application must not contain any multiple dependent claims; the corresponding counterpart application may contain multiple dependent claims, in accordance with the national practice of the partner IP office where it is filed.

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For a U.S. application that contains more than 3 independent claims or 20
total claims, or any multiple dependent claims, applicants may file a preliminary amendment, in compliance with 37 CFR 1.121, to cancel the excess claims and/or the multiple dependent claims to make the application eligible for the Expanded CSP.
IV. Treatment of a Petition As discussed in section III, the number of petitions to make special filed in the U.S. application must equal the number of designated partner IP
offices where a corresponding counterpart application has been filed.
At least one designated partner office must grant the request in order for that application and the counterpart U.S.
application to participate in the Expanded CSP.
If examination commences in either the U.S. application or a given designated corresponding counterpart application before either the petition or request is filed, then that combination of U.S. application and designated corresponding counterpart application cannot participate in the Expanded CSP.
Applicants are advised that, even if they timely file a request with a designated partner office, if the USPTO is not informed by the designated partner office of the filing of the request in the corresponding counterpart application within 20 days of a petition filing with the USPTO, then the USPTO may initially dismiss the petition. In such a situation, the applicant may request reconsideration, as discussed in item B, below.
A. Petition Grant by the USPTO: Once a determination is made that all the requirements of section III of this notice are satisfied, the USPTO petition will be granted and the application will be placed on the examiners special docket until an FAOM is issued. The USPTO
and the designated partner IP offices will then have four months to provide search results. As a result, once the USPTO grants the petition, the applicant will no longer have a right to file a preliminary amendment that amends the claims. Any preliminary amendment filed after the petition is granted and before issuance of an FAOM amending the claims will not be entered unless approved by the examiner. After the petition is granted and before issuance of the FAOM, the applicant may still submit preliminary amendments to the specification that do not affect the claims. All such submissions for the participating U.S.
application must be filed via EFS-Web or Patent Center.

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