0651-0058 Eurasian Form CWS Nov 2017

JUSTIFICATION FOR NONMATERIAL/NONSUBSTATNIVE CHANGE

United States Patent and Trademark Office

Patent Prosecution Highway (PPH) Program

OMB Control Number 0651-0058

(November 2017)

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 a form to this collection for a new participant, the Eurasian Patent Office of the Eurasian Patent Organization (EAPO), in the PPH Program.

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.

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-PPH program. The PPH forms collect similar data; however, there is a unique form for each participant.

Following discussions between the USPTO and the Eurasian Patent Office of the Eurasian Patent Organization (EAPO), the USPTO will implement a PPH pilot program with the EAPO. The EAPO is not currently a Global/IP5 PPH participating office and is partnering with the USPTO in the PPH on a bilateral basis only. However, a PPH request submitted in the USPTO based on EAPO work product will be treated under the published Global/IP5 PPH standards as discussed in Section III below.

Summary of Changes

The USPTO is proposing to add one form to this collection for a new participant in the PPH program: Request for Participation in the PPH Pilot Program between the EAPO and the USPTO (PTO/SB/20EA).

The form will be available on the PPH area of the USPTO Web site:

Changes in Burden

The addition of the form will result in the following burden changes for this information collection

Burden Type	Currently approved	Proposed change	New estimates
Responses	8,230	10	8,240
Hours	16,460	20	16,480
Annual (non-hour Costs)	$0	$0	$0

The USPTO estimates that it will receive 10 responses per year for the PPH Eurasia program and that it will take the public approximately 2 hours to prepare and submit the information for each request, for a total of 20 burden hours each year. Therefore, this collection takes an increase of 10 responses and 20 burden hours as a program change.

The USPTO estimates that the respondents to this collection will be attorneys. The professional rate for attorneys in private firms is $389 per hour, as published in a report by the 2013 Committee on Economics of Legal Practice of the American Intellectual Property Law Association. Therefore, respondents will take a total of 20 burden hours to complete at the $389 rate, which will result in $7,780 in respondent cost for this additional form.

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.