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
(July 2010)

Background
The United States Patent and Trademark Office (USPTO) is submitting this request to
update information collection 0651-0058 Patent Prosecution Highway (PPH) Program.
The USPTO is adding three forms to this collection for new participants in the
existing/upcoming PPH and PCT-PPH programs. The USPTO is also proposing to
update this collection to delete two items that are no longer being collected, remove
fees that have recently been eliminated, and revise the time estimates related to
recordkeeping costs.
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 search
reports, 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 PCTPPH program. The PPH forms collect similar data; however, there is a unique form for
each participant. This collection currently includes forms for the following PPH
programs:
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Japan Patent Office (JPO), Form PTO/SB/20JP
United Kingdom Intellectual Property Office (UKIPO), Form PTO/SB/20UK
Canadian Intellectual Property Office (CIPO), Form PTO/SB/20CA

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

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Danish Patent and Trademark Office (DKPTO), Form PTO/SB/20DK
European Patent Office (EPO), Form PTO/SB/20EP
Korean Intellectual Property Office (KIPO), Form PTO/SB/20KR
Intellectual Property Office of Australia (IPAU), Form PTO/SB/20AU
Intellectual Property Office of Singapore (IPOS), Form PTO/SB/20SG
German Patent and Trade Mark Office (DPMA), Form PTO/SB/20DE
National Board of Patents and Registration of Finland (NBPR), Form PTO/SB/20FI
Russian Patent Office (ROSPATENT), Form PTO/SB/20RU (program will start on
Sept. 1, 2010)

This collection also includes forms for the following PCT-PPH pilot programs:
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European Patent Office (EPO), Form PTO/SB/20PCT-EP
Japan Patent Office (JPO), Form PTO/SB/20PCT-JP

Summary of Changes
The USPTO is proposing to make the following changes to this collection:


The USPTO is adding three forms to this collection for new participants in the
existing/upcoming PPH and PCT-PPH programs: Request for Participation in the
PPH Pilot Program Between the Hungarian Patent Office (HPO) and the USPTO
(PTO/SB/20HU), Request for Participation in the PPH Pilot Program Between the
Spanish Patent and Trademark Office (SPTO) and the USPTO (PTO/SB/20ES)
(program will start on Sept. 1, 2010), and Request for Participation in the PCT-PPH
Pilot Program Between the KIPO and the USPTO (PTO/SB/20PCT-KR).



The USPTO is deleting two forms from this collection because the information is no
longer being collected: Request for Participation in the New Route Pilot Program
Between the JPO and the USPTO (PTO/SB/10) and Request for Participation in the
Triway Pilot Program Among the USPTO, the EPO and the JPO (PTO/SB/12).



The USPTO is removing the petition fees from this collection because they have
been eliminated as of May 25, 2010 (75 Fed. Reg. 29312).



The USPTO is revising the estimated recordkeeping costs associated with
submitting the information in this collection online.

Changes in Burden
The addition of the PPH HPO, PPH SPTO, and the PCT-PPH KIPO pilot forms; the
deletion of the New Route and Triway pilot forms; the removal of the petition fees; and
the revision of the estimated recordkeeping costs will result in the following burden
changes for this information collection:
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JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE TO 0651-0058
(continued)

Burden Type
Responses
Hours
Fees
Recordkeeping costs
Annual (non-hour) costs

Currently approved Proposed change New estimates
1,950
150
2,100
3,825
375
4,200
$253,500
-$253,500
$0
$160
$6,140
$6,300
$253,660
-$247,360
$6,300

The USPTO estimates that it will receive 100 responses per year for each of the pilot
programs for PPH HPO, PPH SPTO, and PCT-PPH KIPO, and that it will take the public
approximately 2 hours to prepare and submit the information for each request, for a total
of 300 responses and 600 burden hours per year. The removal of the New Route and
Triway programs results in a decrease of 150 responses and 225 burden hours per
year. Therefore, this collection takes a net increase of 150 responses and 375
burden hours as a program change.
The USPTO has eliminated the $130 petition fee under 37 CFR 1.17(h) that was
previously associated with the items in this collection. Therefore, this collection takes
a decrease of $253,500 in annual (non-hour) costs as a program change.
The USPTO has revised the estimated time for recordkeeping from 5 seconds (0.001
hours) to 2 minutes (0.03 hours) per response for printing and retaining a copy of the
acknowledgment receipt as evidence of the successful electronic submission. This
collection was previously approved with a total of $160 in recordkeeping costs. The
proposed changes in this collection result in a total of 2,100 responses, all submitted
electronically, for a revised total of 63 hours of recordkeeping per year. The USPTO
expects that the receipts will be printed by paraprofessionals at an estimated rate of
$100 per hour, for a total revised recordkeeping cost of $6,300 per year. The three new
forms being added into this collection account for $900 of these costs. Therefore, this
collection takes an increase of $6,140 in annual (non-hour) costs, with $900 as a
program change and $5,240 as an administrative adjustment.
The USPTO estimates that the proposed changes for this collection will result in the
following total burden changes:
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Net increase of 150 responses as a program change
Net increase of 375 burden hours as a program change
Net decrease of $247,360 in annual (non-hour) costs, with a net decrease of
$252,600 as a program change partially offset by an increase of $5,240 as an
administrative adjustment

Therefore, this collection would have the following revised total burden:
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2,100 responses
4,200 hours
$6,300 in annual (non-hour) costs

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