Justification for Nonsubstantive Change

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Patent Prosecution Highway (PPH) Program
OMB CONTROL NUMBER 0651-0058
(August 2012)

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 proposing to add two forms to this collection, one for a new participant in
the PCT-PPH pilot program and one for a new participant in the PPH pilot program, and
to revise an existing form for a participant in the PPH program that is moving from pilot
status to full implementation.
The USPTO had discussions with the Israeli Patent Office (ILPO) to launch a PPH pilot
program based on Patent Cooperation Treaty (PCT) work products (PCT-PPH pilot
program) similar to other PCT-PPH pilot programs. The USPTO and the ILPO agreed
that consistency between PCT-PPH pilot programs should be maintained to the extent
possible, to avoid creating burdens on applicants and offices, and to ensure maximum
work-sharing potential. The USPTO and the ILPO agreed that a PCT-PPH pilot program
between the two offices will commence on August 1, 2012, for a period of one year
ending on July 31, 2013.
Since July 1, 2011, the USPTO has conducted a PPH pilot program with the ILPO. The
USPTO and the ILPO agreed to fully implement the PPH program on a permanent basis
starting on July 1, 2012.
The USPTO is also launching a PPH pilot program with the Colombian
Superintendence of Industry and Commerce (SIC) on September 1, 2012.
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 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

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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 with the USPTO:
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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
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
Israeli Patent Office and the USPTO, Form PTO/SB/20IL
Mexican Institute of Industrial Property (IMPI) and the USPTO, Form PTO/SB/20MX
State Intellectual Property Office of the P.R.C. (SIPO) and the USPTO, Form
PTO/SB/20CN
Instituto Nacional da Propriedade Industrial (INPI) and the USPTO, Form
PTO/SB/20BR
Taiwan Intellectual Property Office (TIPO) and the USPTO, Form PTO/SB/20TW
Norwegian Industrial Property Office (NIPO) and the USPTO, Form PTO/SB/20NO
Icelandic Patent Office (IPO) and the USPTO, Form PTO/SB/20IS

The USPTO has also implemented 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
Intellectual Property Office of Australia (IPAU), Form PTO/SB/20PCT-AU
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National Board of Patents and Registration of Finland (NBPR), Form
PTO/SB/20PCT-FI
Canadian Intellectual Property Office (CIPO), Form PTO/SB/20PCT-CA
Swedish Patent and Registration Office (PRV), Form PTO/SB/20PCT-SE
Nordic Patent Institute (NPI), Form PTO/SB/20PCT-NPI
State Intellectual Property Office of the P.R.C. (SIPO), Form PTO/SB/20PCT-CN
U.S. Applications Where the USPTO was the ISA or IPEA, Form PTO/SB/20PCTUS

Summary of Changes
The USPTO is proposing to add two forms to this collection for new participants in the
PCT-PPH and PPH pilot programs:
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Request for Participation in the PCT-PPH Pilot Program Between the Israeli Patent
Office (ILPO) and the USPTO (PTO/SB/20PCT-IL)
Request for Participation in the PPH Pilot Program Between the Colombian
Superintendence of Industry and Commerce (SIC) and the USPTO (PTO/SB/20CO)

The USPTO is also revising the existing form, Request for Participation in the PPH Pilot
Program Between the Israeli Patent Office and the USPTO (PTO/SB/20IL), to reflect the
change in status from pilot program to full implementation.
The forms will be available on the PPH area of the USPTO Web site,
http://www.uspto.gov/patents/init_events/pph/index.jsp, when the respective programs
launch.
Changes in Burden
The addition of the two 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
3,900
200
4,100
7,800
400
8,200
$0
$0
$0

The USPTO estimates that it will receive 100 responses per year each for the PCT-PPH
ILPO pilot program and the PPH SIC pilot program, and that it will take the public
approximately 2 hours to prepare and submit the information for each request, for a total
of 400 burden hours per year. Therefore, this collection takes an increase of 200
responses and 400 burden hours as a program change.
There are no changes in burden associated with the revision of the PPH Israel form.

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This collection does not include any annual (non-hour) costs, and there are no annual
(non-hour) costs associated with the proposed changes to this collection.
The USPTO estimates that the proposed changes for this collection will result in the
following total burden changes:
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Increase of 200 responses as a program change
Increase of 400 burden hours as a program change
No change in annual (non-hour) costs

Therefore, this collection would have the following revised total burden:
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4,100 responses
8,200 hours
$0 in annual (non-hour) costs

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