2018-02988. Patent Prosecution Highway Program

ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3506(c)(2)(A)), invites comments on a proposed extension of an existing information collection: 0651-0058 (Patent Prosecution Highway (PPH) Program).

DATES:

Written comments must be submitted on or before April 16, 2018.

ADDRESSES:

You may submit comments by any of the following methods:

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

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]. Additional information about this collection is also available at http://www.reginfo.gov under “Information Collection Review.”

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 Patent Cooperation Treaty-Patent Prosecution Highway (PCT-PPH) programs, which permitted participating patent offices to draw upon the positive results of the PCT work product from another participating office. The PCT-PPH programs used 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.

In 2014, the USPTO and several other offices acted to consolidate and replace existing PPH and PCT-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. Regardless of the pilot program used, the Global PPH pilot program, the IP5 PPH pilot program, and the other existing PPH programs, all provide pathways for patent applications to receive the benefits of coordinated patent review across intellectual property offices.

The information gathered in this collection is integral to the PPH programs that USPTO participates in by identifying patent applications being filed at multiple intellectual property offices across the globe, including at the USPTO. This includes declaring the OEE with whom the application has been filed, identifying information for the application at the OEE, and providing the necessary supporting documentation for the application. The forms also identify the correspondence between the claims being made at the USPTO with claims filed in the OEE and an explanation for that correspondence.

The ten forms used to gather the information described above are: The Global Form (PTO/SB/20GLBL) and nine individual country forms allowing participants to file in a U.S. application to request to make the U.S. applicants special under a PPH or PCT-PPH program. The thirty-four forms in this collection that previously operated under individual countries' Requests for Participation are being removed as they have been consolidated under the Global Form (PTO/SB/20GLBL).

For more complete information on the PPH, including (1) a complete identification of participating countries and offices and the programs under which each country's patent 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 program remain pilots and which have been made permanent, please visit http://www.uspto.gov/​patents/​init_​events/​pph/​index.jsp.

II. Method of Collection

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

III. Data

OMB Number: 0651-0058.

IC Instruments and Forms: PTO/SB/20GLBL, PTO/SB/20AR, PTO/SB/20BR, PTO/SB/20CZ, PTO/SB/20EA, PTO/SB/20MX, PTO/SB/20NI, PTO/SB/20PH, PTO/SB/20RO, and PTO/SB/20TW.

Type of Review: Revision of a currently approved collection.

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

Estimated Number of Respondents: 8,110 responses per year.

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: 16,200 hours.

Estimated Total Annual Respondent Cost Burden: $7,104,360. The USPTO expects that the information in this collection will be prepared by attorney. The professional hourly rate for attorneys is $438. The rate is established by estimates in the 2017 Report on the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $7,104,360 per year.

IC No.	Item	Response time (hours)	Responses	Burden hours	Rate	Respondent cost burden;
		(a)	(b)	(c) = (a) × (b)	(d)	(e) = (c) × (d)
1	Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)	2 (120 minutes)	8,000	16,000	$438.00	$7,008,000.00
2	National Institute of Industrial Property of Argentina (INPI-Argentina (PTO/SB/20AR)	2 (120 minutes)	10	20	438.00	8,760.00
3	Instituto Nacional da Propriedade Industrial (Brazil) (INPI) (PTO/SB/20BR)	2 (120 minutes)	10	20	438.00	8,760.00
4	Industrial Property Office of the Czech Republic (IPOCZ) (PTO/SB/20CZ)	2 (120 minutes)	10	20	438.00	8,760.00
5	Eurasian Patent Office of the Eurasian Patent Organization (EAPO) (PTO/SB/20EA)	2 (120 minutes)	10	20	438.00	8,760.00
6	Mexican Institute of Industrial Property (TMPI) (PTO/SB/20MX)	2 (120 minutes)	10	20	438.00	8,760.00
7	Nicaraguan Registry of Intellectual Property (NRIP) (PTO/SB/20NI)	2 (120 minutes)	10	20	438.00	8,760.00
8	Intellectual Property Office of the Philippines (IPOPH) (PTO/SB/20PH)	2 (120 minutes)	10	20	438.00	8,760.00
9	Romanian State Office of Inventions and Trademarks (OSIM) (PTO/SB/20RO)	2 (120 minutes)	10	20	438.00	8,760.00
10	Taiwan Intellectual Property Office (TIPO) (PTO/SB/20TW)	2 (120 minutes)	30	60	438.00	26,280.00
Totals			8,110	16,220		7,104,360.00

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 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.

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.

Marcie Lovett,

Records and Information Governance Division Director, OCTO, United States Patent and Trademark Office.