2011-17077. 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 the 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 September 6, 2011.

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: Susan K. Fawcett, Records Officer, 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 Magdalen Greenlief, Office of the Associate Commissioner for Patent Examination Policy, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-8850; or by e-mail 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) pilot program was originally established between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) on July 3, 2006. The USPTO and the JPO agreed at the November 2007 Trilateral Conference to fully implement the PPH program on a permanent basis starting on January 4, 2008.

The USPTO entered into a PPH pilot program with the United Kingdom Intellectual Property Office (UKIPO) on September 4, 2007. Since then, additional PPH pilot programs have been established between the USPTO and the intellectual property offices of several other countries. Some of the pilot programs, such as those with Japan, Canada, and South Korea, have become permanent.

The PPH program allows 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, the PPH program allows the office of second filing to exploit the search and examination results of the office of first filing, which increases examination efficiency and improves patent quality. The PCT-PPH pilot program is an expansion to the PPH program based on the framework of the Patent Cooperation Treaty (PCT). Information collected for the PCT is approved under OMB control number 0651-0021.

PPH agreements streamline the patent system by allowing patent examiners to avail themselves of the work product from other participating patent offices. Originally, the PPH program was limited to the utilization of search and examination results of national applications between cross filings under the Paris Convention. The newer PCT-PPH agreements have greatly expanded the potential of the PPH program by permitting participating patent offices to draw upon the positive results of the PCT work product from another participating office. The PCT-PPH pilot program uses international written opinions and international preliminary examination reports developed within the framework of the PCT, thereby making the PPH program available to a larger number of applicants.

The forms in this collection allow participants to file a request in a corresponding U.S. application and petition to make the U.S. application special under the PPH or PCT-PPH program. The PPH forms collect similar data; however, there is a unique form for each participant. This collection includes forms for these current PPH programs with the USPTO: Japan Patent Office (JPO), United Kingdom Intellectual Property Office (UKIPO), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), European Patent Office (EPO), Korean Intellectual Property Office (KIPO), Intellectual Property Office of Australia (IPAU), Intellectual Property Office of Singapore (IPOS), German Patent and Trade Mark Office (DPMA), National Board of Patents and Registration of Finland (NBPR), Russian Patent Office (ROSPATENT), Hungarian Patent Office (HPO), Spanish Patent and Trademark Office (SPTO), Austrian Patent Office (APO), and the Mexican Institute of Industrial Property (IMPI). This collection also includes forms for these upcoming PPH programs that are being planned with the USPTO: Israeli Patent Office, State Intellectual Property Office of the P.R.C. (SIPO), Instituto Nacional da Propriedade Industrial (INPI), and the Taiwan Intellectual Property Office (TIPO).

This collection includes forms for these current PCT-PPH pilot programs with the USPTO: EPO, JPO, KIPO, APO, ROSPATENT, SPTO, IPAU, NBPR, the Swedish Patent and Registration Office (PRV), and in U.S. applications where the USPTO was the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). This collection also includes forms for these upcoming PCT-PPH pilot programs that are being planned with the USPTO: CIPO, SIPO, and the Nordic Patent Institute (NPI).

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/20AT/AU/BR/CA/CN/DE/DK, PTO/SB/20EP/ES/FI/HU/IL/JP/KR/MX/RU/SG/TW/UK, and PTO/SB/20PCT-AT/PCT-AU/PCT-CA/PCT-CN/PCT-EP/PCT-ES/PCT-FI/PCT-JP/PCT-KR/PCT-RU/PCT-SE/PCT-US/PCT-XN.

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: 3,700 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: 7,400 hours.

Estimated Total Annual Respondent Cost Burden: $2,405,000. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $325 per hour for attorneys in private firms, the USPTO estimates that the total annual respondent cost burden for this collection will be approximately $2,405,000 per year.

Item	Estimated time for response (hours)	Estimated annual responses	Estimated annual burden hours
Request for Participation in the PPH Program Between the JPO and the USPTO (PTO/SB/20JP)	2	500	1,000
Request for Participation in the PPH Pilot Program Between the UKIPO and the USPTO (PTO/SB/20UK)	2	100	200
Request for Participation in the PPH Program Between the CIPO and the USPTO (PTO/SB/20CA)	2	100	200
Request for Participation in the PPH Program Between the KIPO and the USPTO (PTO/SB/20KR)	2	200	400
Request for Participation in the PPH Pilot Program Between the IPAU and the USPTO (PTO/SB/20AU)	2	100	200
Request for Participation in the PPH Pilot Program Between the EPO and the USPTO (PTO/SB/20EP)	2	100	200
Request for Participation in the PPH Pilot Program Between the DKPTO and the USPTO (PTO/SB/20DK)	2	100	200
Request for Participation in the PPH Pilot Program Between the IPOS and the USPTO (PTO/SB/20SG)	2	100	200
Request for Participation in the PPH Pilot Program Between the DPMA and the USPTO (PTO/SB/20DE)	2	100	200
Request for Participation in the PPH Pilot Program Between the NBFR and the USPTO (PTO/SB/20FI)	2	100	200
Request for Participation in the PPH Pilot Program Between ROSPATENT and the USPTO (PTO/SB/20RU)	2	100	200
Request for Participation in the PPH Pilot Program Between the HPO and the USPTO (PTO/SB/20HU)	2	100	200
Request for Participation in the PPH Pilot Program Between the SPTO and the USPTO (PTO/SB/20ES)	2	100	200
Request for Participation in the PPH Pilot Program Between the APO and the USPTO (PTO/SB/20AT)	2	100	200
Request for Participation in the PPH Pilot Program Between the Israeli Patent Office and the USPTO (PTO/SB/20IL)	2	100	200
Request for Participation in the PPH Pilot Program Between the IMPI and the USPTO (PTO/SB/20MX)	2	100	200
Request for Participation in the PPH Pilot Program Between the SIPO and the USPTO (PTO/SB/20CN)	2	100	200
Request for Participation in the PPH Pilot Program Between the INPI and the USPTO (PTO/SB/20BR)	2	100	200
Request for Participation in the PPH Pilot Program Between the TIPO and the USPTO (PTO/SB/20TW)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the EPO and the USPTO (PTO/SB/20PCT-EP)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the JPO and the USPTO (PTO/SB/20PCT-JP)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the KIPO and the USPTO (PTO/SB/20PCT-KR)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the APO and the USPTO (PTO/SB/20PCT-AT)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the ROSPATENT and the USPTO (PTO/SB/20PCT-RU)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the SPTO and the USPTO (PTO/SB/20PCT-ES)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the IPAU and the USPTO (PTO/SB/20PCT-AU)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the CIPO and the USPTO (PTO/SB/20PCT-CA)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the NBPR and the USPTO (PTO/SB/20PCT-FI)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the PRV and the USPTO (PTO/SB/20PCT-SE)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the NPI and the USPTO (PTO/SB/20PCT-XN)	2	100	200
Request for Participation in the PCT-PPH Pilot Program Between the SIPO and the USPTO (PTO/SB/20PCT-CN)	2	100	200
Request for Participation in the PCT-PPH Pilot Program in a U.S. Application Where the USPTO was the ISA or IPEA (PTO/SB/20PCT-US)	2	100	200
Totals		3,700	7,400

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: July 1, 2011.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer.