Justification for Nonsubstantive Change - Feb 2013

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE
United States Patent and Trademark Office
Patent Prosecution Highway (PPH) Program
OMB CONTROL NUMBER 0651-0058
(February 2013)

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 for new participants in the
PPH program. The USPTO launched the PPH 2.0 trial programs with the Portugal
National Institute of Industrial Property (INPI-PT) and the Intellectual Property Office of
the Philippines (IPOPH) on January 29, 2013.
The USPTO is also implementing PPH 2.0 with an existing PPH participant, the Korean
Intellectual Property Office (KIPO); extending the PPH 2.0 programs with Australia
(IPAU), Canada (CIPO), the European Patent Office (EPO), Finland (NBPR), Japan
(JPO), Russia (ROSPATENT), Spain (SPTO) and the United Kingdom (UKIPO);
extending a PPH pilot with the Icelandic Patent Office (IPO); and extending PPH and
PCT-PPH pilots with the State Intellectual Property Office of the People’s Republic of
China (SIPO). These extensions do not impact the burden for this collection.
Background
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
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 PCT-

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PPH 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 (ILPO), Form PTO/SB/20IL
Mexican Institute of Industrial Property (IMPI), Form PTO/SB/20MX
State Intellectual Property Office of the P.R.C. (SIPO), Form PTO/SB/20CN
Instituto Nacional da Propriedade Industrial (INPI), Form PTO/SB/20BR
Taiwan Intellectual Property Office (TIPO), Form PTO/SB/20TW
Norwegian Industrial Property Office (NIPO), Form PTO/SB/20NO
Icelandic Patent Office (IPO), Form PTO/SB/20IS
Colombian Superintendence of Industry and Commerce (SIC), Form PTO/SB/20CO
Industrial Property Office of the Czech Republic (IPOCZ), Form PTO/SB/20CZ

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
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
Israeli Patent Office (ILPO), Form PTO/SB/20PCT-IL

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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
PPH program, Request for Participation in the PPH Program Between the Portugal
National Institute of Industrial Property (INPI-PT) and the USPTO (PTO/SB/20PT) and
Request for Participation in the PPH Program Between the Intellectual Property Office
of the Philippines (IPOPH) and the USPTO (PTO/SB/20PH).
The forms will be available on the PPH area of the USPTO Web site,
http://www.uspto.gov/patents/init_events/pph/index.jsp.
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
4,200
200
4,400
8,400
400
8,800
$0
$0
$0

The USPTO estimates that it will receive 100 responses per year for the PPH Portugal
program and for the PPH Philippines 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.
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.

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