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
(December 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 PCT-PPH
pilot program: PCT-PPH Australia, PCT-PPH Canada, and PCT-PPH Finland. The
USPTO plans to launch the PCT-PPH pilot programs with Australia and Finland on
January 24, 2011, and with Canada in early 2011.
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
Austrian Patent Office (APO), Form PTO/SB/20AT

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
Austrian Patent Office (APO), Form PTO/SB/20PCT-AT
Russian Patent Office (ROSPATENT), Form PTO/SB/20PCT-RU
Spanish Patent and Trademark Office (SPTO), Form PTO/SB/20PCT-ES
U.S. Applications Where the USPTO was the ISA or IPEA, Form PTO/SB/20PCTUS

Summary of Changes
The USPTO is proposing to add three forms to this collection for new participants in the
PCT-PPH pilot program:
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Request for Participation in the PCT-PPH Pilot Program Between the Intellectual
Property Office of Australia (IPAU) and the USPTO, Form PTO/SB/20PCT-AU
Request for Participation in the PCT-PPH Pilot Program Between the Canadian
Intellectual Property Office (CIPO) and the USPTO, Form PTO/SB/20PCT-CA
Request for Participation in the PCT-PPH Pilot Program Between the National Board
of Patents and Registration of Finland (NBPR) and the USPTO, Form
PTO/SB/20PCT-FI

Changes in Burden
The addition of the PCT-PPH Australia, PCT-PPH Canada, and PCT-PPH Finland pilot
forms 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
Annual (non-hour) costs

Currently approved Proposed change New estimates
2,600
300
2,900
5,200
600
5,800
$7,800
-$7,800
$0

The USPTO estimates that it will receive 100 responses per year for each of the pilot
programs for PCT-PPH Australia, PCT-PPH Canada, and PCT-PPH Finland, 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. Therefore,
this collection takes an increase of 300 responses and 600 burden hours as a
program change.
This collection was previously approved with a total of $7,800 in annual (non-hour)
costs for recordkeeping associated with printing and retaining a copy of the
acknowledgment receipt for electronic submissions. The USPTO is removing these
recordkeeping costs from this collection because keeping a copy of the
acknowledgment receipt is a suggestion for customers and not a requirement.
Therefore, this collection takes a decrease of $7,800 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 300 responses as a program change
Increase of 600 burden hours as a program change
Decrease of $7,800 in annual (non-hour) costs as a program change

Therefore, this collection would have the following revised total burden:
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2,900 responses
5,800 hours
$0 in annual (non-hour) costs

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