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 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. Additional PPH pilot programs have recently been established between the USPTO and the United Kingdom Intellectual Property Office (UKIPO), the Canadian Intellectual Property Office (CIPO), the Danish Patent and Trademark Office (DKPTO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), and the Intellectual Property Office of Australia (IPAU).
The USPTO and the JPO also participate in a work-sharing pilot project called the "New Route." Under the New Route framework, 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.
This information collection previously included two forms, Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10) and Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the (1) JPO or (2) UKIPO and the USPTO (PTO/SB/20), which may be used by applicants to request participation in the programs and to ensure that they meet the program requirements. Since the PPH program with the JPO has been fully implemented, Form PTO/SB/20 has been revised as Form PTO/SB/20JP for use with the JPO and a separate Form PTO/SB/20UK has been created for the ongoing pilot program with the UKIPO. Similar forms have been created for the PPH pilot programs with the CIPO, the DKPTO, the EPO, the KIPO, and the IPAU. These additional PPH pilot program forms are being added to this collection.
The USPTO is undertaking another worksharing program with the EPO and the JPO called the "Triway" program. Under the Triway framework, each Office will conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results will then be shared among the Offices in order to reduce the search and examination workload. To support this program, the USPTO is adding the Request for Participation in Triway Pilot Program Among the USPTO, the EPO and the JPO (PTO/SB/12) to this collection.
The changes in burden for this collection are due to program changes from the addition of new forms into the collection for the Triway pilot program and for additional PPH pilot programs. The changes in annual cost burden are due to program changes from the addition of the fees associated with the new forms and recordkeeping costs associated with submitting the PPH request forms online.
On behalf of this Federal agency, I certify that the collection of information encompassed by this request complies with 5 CFR 1320.9 and the related provisions of 5 CFR 1320.8(b)(3).
The following is a summary of the topics, regarding the proposed collection of information, that the certification covers:
(i) Why the information is being collected;
(ii) Use of information;
(iii) Burden estimate;
(iv) Nature of response (voluntary, required for a benefit, or mandatory);
(v) Nature and extent of confidentiality; and
(vi) Need to display currently valid OMB control number;
If you are unable to certify compliance with any of these provisions, identify the item by leaving the box unchecked and explain the reason in the Supporting Statement.
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the JPO and the USPTO