2014-25866. Patent Prosecution Highway (PPH) Program

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S. C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before December 29, 2014.

ADDRESSES:

You may submit comments by any of the following methods:

• E-Mail: [e-mail]. Include “0651-0058 comment” in the subject line of the message.
• Mail: Marcie Lovett, Records Management Division Director, Office of the Chief Information Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7728; or by email to [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

The Patent Prosecution Highway (PPH) is a framework in which an application whose claims have been determined to be patentable by an Office of Earlier Examination (OEE) is eligible to go through an accelerated examination in an Office of Later Examination with a simple procedure upon an applicant's request. By leveraging the search and examination work product of the OEE, PPH programs (1) deliver lower prosecution costs, (2) support applicants in their efforts to obtain stable patent rights efficiently around the world, and (3) reduce the search and examination burden, while improving the examination quality, of participating patent offices.

Originally, the PPH programs were limited to the utilization of search and examination results of national applications between cross filings under the Paris Convention. Later, the potential of the PPH was greatly expanded by PCT-PPH programs, which permit participating patent offices to draw upon the positive results of the PCT work product from another participating office. PCT-PPH programs use international written opinions and international preliminary examination reports developed within the framework of the PCT, thereby making the PPH available to a larger number of applicants. Information collected for the PCT is approved under OMB control number 0651-0021.

More recently, the USPTO and several other offices acted to consolidate and replace existing PPH programs, with the goal of streamlining the PPH process for both offices and applicants. To that end, the USPTO and other offices established the Global PPH pilot program and the IP5 PPH pilot program. The Global PPH and IP5 PPH pilot programs are running concurrently and are substantially identical, differing only with regard to their respective participating offices. The USPTO is participating in both the Global PPH pilot program and the IP5 PPH pilot program. For USPTO applications, the Global PPH and IP5 PPH pilot programs supersede any prior PPH program between the USPTO and each Global PPH and IP5 PPH participating office. Any existing PPH programs between the USPTO and offices that are not participating in either the Global PPH pilot program or the IP5 PPH pilot program remain in effect.

For more complete information on the PPH, including (1) a complete identification of participating countries and offices and the programs under which each country/office is participating, (2) the forms needed to request entry into the PPH, both at the USPTO and other participating offices, and (3) information as to which of the PPH programs remain pilots and which have been made permanent, please visit http://www.uspto.gov/​patents/​init_​events/​pph/​index.jsp.

The forms in this collection allow participants to file in a U.S. application a request to make the U.S. application special under a PPH or PCT-PPH program.

II. Method of Collection

Requests to participate in the PPH programs must be submitted online using EFS-Web, the USPTO's web-based electronic filing system.

III. Data

OMB Number: 0651-0058.

Form Number(s): PTO/SB/20GLBL/AT/AU/BR/CA/CN/CO/CZ/DE/DK/EP/ES/FI/HU/IL/IS/JP/KR/MX/NI/NO/PH/PL/PT/RU/SG/TW/UK, and PTO/SB/20PCT-AT/PCT-AU/PCT-CA/PCT-CN/PCT-EP/PCT-ES/PCT-FI/PCT-IL/PCT-JP/PCT-KR/PCT-NPI/PCT-RU/PCT-SE/PCT-US.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; and not-for-profit institutions.

Estimated Number of Respondents: 8,210 responses per year. The USPTO estimates that approximately 10% of these responses will be from small entities.

Estimated Time per Response: The USPTO estimates that it will take the public approximately two hours to gather the necessary information, prepare the appropriate form, and submit a completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 16,420 hours.

Estimated Total Annual Respondent Cost Burden: $6,387,380. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $389 per hour for attorneys in private firms, the USPTO estimates that the total annual respondent cost burden for this collection will be approximately $6,387,380 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)	2 hours	5000	10,000
Intellectual Property Office of Australia (IPAU), Form PTO/SB/20AU	2 hours	30	60
Austrian Patent Office (APO), Form PTO/SB/20AT	2 hours	10	20
Instituto Nacional da Propriedade Industrial (Brazil)(INPI), Form PTO/SB/20BR	2 hours	10	20
Canadian Intellectual Property Office (CIPO), Form PTO/SB/20CA	2 hours	30	60
State Intellectual Property Office of the P.R.C. (SIPO), Form PTO/SB/20CN	2 hours	80	160
Colombian Superintendence of Industry and Commerce (SIC), Form PTO/SB/20CO	2 hours	10	20
Industrial Property Office of the Czech Republic (IPOCZ), Form PTO/SB/20CZ	2 hours	10	20
Danish Patent and Trademark Office (DKPTO), Form PTO/SB/20DK	2 hours	20	40
European Patent Office (EPO), Form PTO/SB/20EP	2 hours	150	300
National Board of Patents and Registration of Finland (NBPR), Form PTO/SB/20FI	2 hours	10	20
German Patent and Trade Mark Office (DPMA), Form PTO/SB/20DE	2 hours	40	80
Hungarian Patent Office (HPO), Form PTO/SB/20HU	2 hours	10	20
Icelandic Patent Office (IPO), Form PTO/SB/20IS	2 hours	10	20
Israeli Patent Office (ILPO), Form PTO/SB/20IL	2 hours	10	20
Japan Patent Office (JPO), Form PTO/SB/20JP	2 hours	850	1700
Korean Intellectual Property Office (KIPO), Form PTO/SB/20KR	2 hours	150	300
Mexican Institute of Industrial Property (IMPI), Form PTO/SB/20MX	2 hours	10	20
Nicaraguan Registry of Intellectual Property (NRIP), Form PTO/SB/20NI	2 hours	10	20
Norwegian Industrial Property Office (NIPO), Form PTO/SB/20NO	2 hours	10	20
Intellectual Property Office of the Philippines (IPOPH), Form PTO/SB/PH	2 hours	10	20
Intellectual Property Office of the Republic of Poland (UPRP) Form PTO/SB/20PL	2 hours	10	20
Portuguese Institute of Industrial Property (INPI-PT), Form PTO/SB/PT	2 hours	10	20
Russian Federal Service for Intellectual Property (ROSPATENT), Form PTO/SB/20RU	2 hours	10	20
Intellectual Property Office of Singapore (IPOS), Form PTO/SB/20SG	2 hours	10	20
Spanish Patent and Trademark Office (SPTO), Form PTO/SB/20ES	2 hours	10	20
Taiwan Intellectual Property Office (TIPO), Form PTO/SB/20TW	2 hours	10	20
United Kingdom Intellectual Property Office (UKIPO), Form PTO/SB/20UK	2 hours	40	80
U.S. Applications Where the USPTO was the ISA or IPEA, Form PTO/SB/20PCT-US	2 hours	200	400
Intellectual Property Office of Australia (IPAU), Form PTO/SB/20PCT-AU	2 hours	30	60
Austrian Patent Office (APO), Form PTO/SB/20PCT-AT	2 hours	10	20
Canadian Intellectual Property Office (CIPO), Form PTO/SB/20PCT-CA	2 hours	10	20
State Intellectual Property Office of the P.R.C. (SIPO), Form PTO/SB/20PCT-CN	2 hours	80	160
European Patent Office (EPO), Form PTO/SB/20PCT-EP	2 hours	550	1100
National Board of Patents and Registration of Finland (NBPR), Form PTO/SB/20PCT-FI	2 hours	10	20
Israeli Patent Office (ILPO), Form PTO/SB/20PCT-IL	2 hours	10	20
Japan Patent Office (JPO), Form PTO/SB/20PCT-JP	2 hours	150	300
Korean Intellectual Property Office (KIPO), Form PTO/SB/20PCT-KR	2 hours	550	1100
Nordic Patent Institute (NPI), Form PTO/SB/20PCT-NPI	2 hours	10	20
Russian Federal Service for Intellectual Property (ROSPATENT), Form PTO/SB/20PCT-RU	2 hours	10	20
Spanish Patent and Trademark Office (SPTO), Form PTO/SB/20PCT-ES	2 hours	10	20
Swedish Patent and Registration Office (PRV), Form PTO/SB/20PCT-SE	2 hours	10	20
Totals		8,210	16,420

Estimated Total Annual Non-hour Respondent Cost Burden: $0. There are no capital start-up, maintenance, or postage costs associated with this collection. This collection also has no filing fees or recordkeeping costs.

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.

Dated: October 23, 2014.

Marcie Lovett,

Records Management Division Director, USPTO, Office of the Chief Information Officer.