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
(September 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 five forms to this collection for new participants in the PPH and
PCT-PPH pilot programs: PPH Austria, PCT-PPH Austria, PCT-PPH Russia, PCT-PPH
Spain, and PCT-PPH United States. The USPTO plans to launch the PCT-PPH pilot
programs with Austria, Russia, and Spain on October 1, 2010.
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
Danish Patent and Trademark Office (DKPTO), Form PTO/SB/20DK

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

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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
Hungarian Patent Office (HPO), Form PTO/SB/20HU
Spanish Patent and Trademark Office (SPTO), Form PTO/SB/20ES

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
Korean Intellectual Property Office (KIPO), Form PTO/SB/20PCT-KR

Summary of Changes
The USPTO is proposing to add five forms to this collection for new participants in the
PPH and PCT-PPH pilot programs:
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Request for Participation in the PPH Pilot Program Between the Austrian Patent
Office (APO) and the USPTO, Form PTO/SB/20AT
Request for Participation in the PCT-PPH Pilot Program Between the Austrian
Patent Office (APO) and the USPTO, Form PTO/SB/20PCT-AT
Request for Participation in the PCT-PPH Pilot Program Between the Russian
Patent Office (ROSPATENT) and the USPTO, Form PTO/SB/20PCT-RU
Request for Participation in the PCT-PPH Pilot Program Between the Spanish
Patent and Trademark Office (SPTO) and the USPTO (PTO/SB/20PCT-ES)
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)

Changes in Burden
The addition of the PPH Austria, PCT-PPH Austria, PCT-PPH Russia, PCT-PPH Spain,
and PCT-PPH United States pilot forms will result in the following burden changes for
this information collection:
Burden Type
Responses
Hours
Annual (non-hour) costs

Currently approved Proposed change New estimates
2,100
500
2,600
4,200
1,000
5,200
$6,300
$1,500
$7,800

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

The USPTO estimates that it will receive 100 responses per year for each of the pilot
programs for PPH Austria, PCT-PPH Austria, PCT-PPH Russia, PCT-PPH Spain, and
PCT-PPH United States, and that it will take the public approximately 2 hours to prepare
and submit the information for each request, for a total of 500 responses and 1,000
burden hours per year. Therefore, this collection takes an increase of 500
responses and 1,000 burden hours as a program change.
This collection was previously approved with a total of $6,300 in annual (non-hour)
costs for recordkeeping associated with printing and retaining a copy of the
acknowledgment receipt for electronic submissions. The USPTO estimates that it will
take 2 minutes (0.03 hours) per response to print and retain a copy of this receipt as
evidence of the successful transaction. The proposed changes will add 500 responses
to this collection, resulting in a total of approximately 15 hours per year for printing the
receipts for these submissions. Using the paraprofessional rate of $100 per hour, the
USPTO estimates that the changes to this collection will add $1,500 per year in
recordkeeping costs. Therefore, this collection takes an increase of $1,500 in
annual (non-hour) costs as a program change.
The USPTO estimates that the proposed changes for this collection will result in the
following total burden changes:
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Increase of 500 responses as a program change
Increase of 1,000 burden hours as a program change
Increase of $1,500 in annual (non-hour) costs as a program change

Therefore, this collection would have the following revised total burden:
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2,600 responses
5,200 hours
$7,800 in annual (non-hour) costs

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