E7-22541. Patent Prosecution Highway (PPH) Pilot 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 comment on the proposed addition to this 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 January 18, 2008.

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.
• Fax: [phone], marked to the attention of Susan Fawcett.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
• Federal e-Rulemaking Portal: http://www.regulations.gov.

FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

A work-sharing pilot program is being established between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO). This work-sharing program is called the “New Route.” Under the New Route, a filing in one member office of this arrangement would be deemed a filing in all member offices. The first office and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to the second office(s), and the second office(s) would exploit the search and examination results in conducting their own examination. The New Route proposal permits the search and examination results of the first office to be transmitted to the second office(s) according to an internationally coordinated time frame. By allowing the second office to exploit the search and examination results of the first office, the primary benefits of the New Route program would be to reduce overall office workload, minimize duplication of search efforts, and increase examination quality.

Because the New Route, as envisioned, would require changes in law in both the USPTO and JPO, the USPTO and JPO agreed to commence a pilot program to test the New Route concept based on the two filing scenarios currently available under existing law in both offices. The two filing scenarios eligible to participate in the New Route pilot program are: (1) A priority application is filed in the first office and a Patent Cooperation Treaty (PCT) application claiming priority to that application is filed with the same office as the PCT Receiving Office; if the priority application is examined within about 24 months and the corresponding PCT application enters the national stage in the second office, that national stage application would be eligible to participate in the New Route pilot program based on the priority application; and (2) a PCT application is filed at the first office as the PCT Receiving Office (no priority application), the PCT application enters the national stage early in the first office so that search and examination results on the national stage application are available by about the 24th month, and the PCT application enters national stage in the second office at the 30th month. That national stage application in the second office would be eligible to participate in the New Route pilot program based on the national stage application in the first office.

In order to participate in the New Route pilot program, applicants must submit the following at the time of entry into the national stage of the PCT application in the USPTO: (a) A copy of the first office action by the JPO and English translation thereof; (b) a copy of the claims searched and examined by the JPO and English translation thereof; (c) a statement that the translations are accurate; and (d) a request to participate in the New Route pilot program along with a petition to make special and the required petition fee.

The pilot program will begin on January 28, 2008, and will end when the number of requests reaches 50 or the expiration of one year, whichever occurs first. The information collection includes one proposed form, Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10), which may be used by applicants to request participation in the pilot program and to ensure that they meet the program requirements.

II. Method of Collection

Requests to participate in the New Route pilot program must be submitted by fax to the Office of the Commissioner for Patents (571-273-0125) to ensure that the request is processed in a timely manner. The USPTO will consider alternative methods of submission under this program after the pilot period is concluded.

III. Data

OMB Number: 0651-0058.

Form Number(s): PTO/SB/10, PTO/SB/20.

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: 800 responses per year, including 50 responses per year using the Request for Participation in the New Route Pilot Program.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 1.5 hours to gather the necessary information, prepare the form, and submit the completed Request for Participation in the New Route Pilot Program to the USPTO.

Estimated Total Annual Respondent Burden Hours: 1,575 hours per year, including 75 hours for using the Request for Participation in the New Route Pilot Program.

Estimated Total Annual Respondent Cost Burden: $478,800 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $304 per hour for associate attorneys in private firms, the USPTO estimates that the respondent cost burden for submitting the Request for Participation in the New Route Pilot Program will be approximately $22,800 per year, which would result in a total annual respondent cost burden of $478,800 for this collection.

Item	Estimated time for response (hours)	Estimated annual responses	Estimated annual burden hours
Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10)	1.5	50	75
Total		50	75

Estimated Total Annual Non-hour Respondent Cost Burden: $104,000 per year. There are no capital start-up, maintenance, postage, or recordkeeping costs associated with this collection. However, there are additional filing fees associated with the proposed Requests for Participation in the New Route Pilot Program.

The filing fee for a Request for Participation in the New Route Pilot Program is $130 under 37 CFR 1.17(h), and up to 50 filings are expected per year, for a total of $6,500 in filing fees due to these requests. When added to the previously approved burden for this collection, the total annual (non-hour) cost burden for this collection is estimated to be $104,000 per year.

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: November 8, 2007.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.