E6-7737. 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 take this opportunity to comment on the new 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 July 21, 2006.

ADDRESSES:

You may submit comments by any of the following methods:

E-mail: [e-mail]. Include “0651-00XX PPH Pilot Program comment” in the subject line of the message.

Fax: [phone], marked to the attention of Susan Brown.

Mail: Susan K. Brown, Records Officer, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division, U.S. 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 J. Spar, Director, Office of Patent Legal Administration, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7700; or by e-mail at [e-mail].

SUPPLEMENTARY INFORMATION:

I. Abstract

The Patent Prosecution Highway (PPH) pilot program is being established between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO). This program will allow applicants whose claims are determined to be patentable in the office of first filing to have the corresponding application that is filed in the office of second filing be advanced out of turn for examination. At the same time, this program will allow the office of second filing to exploit the search and examination results of the office of first filing. The one-year pilot program will begin on July 3, 2006.

In order to participate in this program, applicants must meet certain requirements. Some of the requirements are: (1) The U.S. application must validly claim foreign priority to the JPO application; (2) the JPO application must have at least one claim that was determined to be patentable; (3) all the claims in the U.S. application must be amended to sufficiently correspond to the patentable claims in the JPO application; (4) examination of the U.S. application has not begun; (5) applicant must submit copies of the JPO office actions and English translations thereof; and (6) applicant must file a petition to make special along with the required petition fee.

This information collection includes one proposed form, Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the JPO and the USPTO (PTO/SB/20), 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 PPH 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 one-year pilot period is concluded.

III. Data

OMB Number: 0651-00XX.

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

Type of Review: New collection.

Affected Public: Individuals or households; businesses or other for-profits; not-for-profit institutions; farms; the Federal Government; and state, local or tribal governments.

Estimated Number of Respondents: 500 responses per year.

Estimated Time Per Response: The USPTO estimates that it will take the public approximately two hours (2.0 hours) to gather the necessary information, prepare the form, and submit the completed request to the USPTO.

Estimated Total Annual Respondent Burden Hours: 1,000 hours per year.

Estimated Total Annual Respondent Cost Burden: $304,000 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 this collection will be approximately $304,000 per year.

Item	Estimated time for response	Estimated annual responses	Estimated annual burden hours
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the JPO and the USPTO	2.0 hours	500	1,000
Total		500	1,000

Estimated Total Annual Non-hour Respondent Cost Burden: $65,000 per year. There are no capital start-up, maintenance, postage, or recordkeeping costs associated with this collection. However, this collection does have annual (non-hour) costs in the form of filing fees. The filing fee for a request to participate in the PPH pilot program is $130 under 37 CFR 1.17(h), and up to 500 filings are expected per year. Therefore, the total non-hour respondent cost burden for this collection is estimated to be $65,000 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: May 16, 2006.

Susan K. Brown,

Records Officer, USPTO, Office of the Chief Information Officer, Architecture, Engineering and Technical Services, Data Architecture and Services Division.