Justification for Nonmaterial/Nonsubstantive Change to 0651-0058

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Patent Prosecution Highway (PPH) Program
OMB CONTROL NUMBER 0651-0058

The United States Patent and Trademark Office (USPTO) is submitting this request to update
information collection 0651-0058 Patent Prosecution Highway (PPH) Program, which was
previously approved by OMB on January 8, 2009.
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 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.
There are unique PPH forms for each participating Office, all of which collect similar data. In
addition to the Japanese Patent Office program, PPH pilot programs have since been established
with the following:
•
•
•
•
•
•

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)

The USPTO is proposing to add three new forms for countries which will participate in the
Patent Prosecution Highway pilot program. The new participants and the related new forms are
as follows:
•
•
•

Singapore (IPOS), form PTO/SB/20SG
Germany (DPMA), form PTO/SB/20DE
Finland (NBPR), form PTO/SB/20FI

The USPTO is proposing to update the existing form PTO/SB/20KR to reflect the change from a
pilot to a permanent program. The updates include the following:
•
•

“Pilot” has been deleted from the title of the form because the program is now
permanent.
A check box has been added under I.a. to allow applicants to indicate that no office
action is attached to the form since the KIPO application was allowed in a first office
action.

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0058
(continued)

Change in Burden
There are no burden changes associated with the revision of Form PTO/SB/20KR.
Changes reflecting the addition of three new forms to 0651-0058 are as follows:
Burden Type

Currently
Approved

Proposed
Addition

New
Estimates

Responses

1,350

300 (100 for each
of the 3 new
participants)

1,650

Hours

2,625

600

3,225

Annual Non-hour costs

$175,600

$39,030

$214,630

Fees

$175,500

$39,000

$214,500

$100

$30

$130

Recordkeeping costs

The USPTO estimates that it will receive 100 responses per year for each of the new participants
of Singapore, Germany, and Finland, and that it will take approximately 2 hours to prepare and
submit the information for those requests. This would be a burden increase of 300 responses and
600 hours as a program change.
There are annual (non-hour) costs in the form of petition fees and recordkeeping costs associated
with the items being added to this collection. The petition fee for requests to participate in the
PPH programs is $130 under 37 CFR 1.17(h). Based on the estimated 300 additional annual
responses, a total of $39,000 in petition fees will be added to this collection as a program change.
There are recordkeeping costs associated with submitting the PPH forms in this collection online
using the USPTO’s web-based electronic filing system. The USPTO recommends that
customers print and retain a copy of the acknowledgment receipt as evidence of the successful
submission. It is estimated to take 5 seconds (0.001 hours) to print a copy of the
acknowledgment receipt. Multiplied by the estimated 300 responses, that equals an estimated
0.3 hours per year. The USPTO estimates that these receipts will be printed by paraprofessionals
at an estimated rate of $100 per hour, for a total increase in recordkeeping costs of $30 per year
as a program change.
The USPTO estimates that the proposed changes for this collection will result in a total burden
increase of 300 responses, 600 hours, and $39,030 in annual (non-hour) costs as a program
change. This collection would have a revised total burden of 1,650 responses, 3,225 hours, and
$214,630 in annual costs.

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