SUPPORTING STATEMENT
United States Patent and Trademark Office
Patent Prosecution Highway (PPH) Program
OMB CONTROL NUMBER 0651-0058
April 2018
A. JUSTIFICATION
1. Necessity of Information Collection
The Patent Prosecution Highway (PPH) is a framework in which an application whose claims have been determined to be patentable by on an Office of Earlier Examination (OEE) is eligible to go through an accelerated examination in an Office of Later Examination with a simple procedure upon an applicant’s request. By leveraging the search and examination work product of the OEE, PPH programs (1) deliver lower prosecution costs, (2) support applicants in their efforts to obtain stable patent rights efficiently around the world, and (3) reduce the search and examination burden, while improving the examination quality, of participating patent offices.
Originally, the PPH programs were limited to the utilization of search and examination results of national applications between cross filings under the Paris Convention. Later, the potential of the PPH was greatly expanded by PCT-PPH programs, which permit participating patent offices to draw upon the positive results of the PCT work product from another participating office. PCT-PPH programs use international written opinions and international preliminary examination reports developed within the framework of the PCT, thereby making the PPH available to a larger number of applicants. Information collected for the PCT is approved under the USPTO information collection, 0651-0021 (Patent Cooperation Treaty).
More recently, the USPTO and several other offices acted to consolidate and replace existing PPH programs, with the goal of streamlining the PPH process for both offices and applicants. To that end, the USPTO and other offices established the Global PPH pilot program and the IP5 PPH pilot program. Both the Global PPH and the IP5 PPH pilot programs are running concurrently and are substantially identical, differing only with regard to their respective participating offices. The USPTO is participating in both the Global PPH pilot program and the IP5 PPH pilot program. For USPTO applications, the Global PPH and IP5 PPH pilot programs supersede any prior PPH program between the USPTO and each Global PPH and IP5 PPH participating office. Any existing PPH programs between the USPTO and offices that are not participating in either the Global PPH pilot program or the IP5 PPH pilot program remain in effect.
For more complete information on the PPH, including (1) a complete identification of participating countries and offices and the programs under which each country/office is participating, (2) the forms needed to request entry into the PPH, both at the USPTO and other participating offices, and (3) information as to which of the PPH programs remain pilots and which have been made permanent, please visit http://www.uspto.gov/patents/init_events/pph/index.jsp.
The forms in this collection allow participants to file in a U.S. application to make the U.S. application special under either the PPH program or the PCT-PPH program.
Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:
Table 1: Information Requirements
IC #
|
Requirement |
Statute |
Rule |
1 |
Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
2 |
National Institute of Industrial Property of Argentina (INPI-Argentina (PTO/SB/20AR)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
3 |
Instituto Nacional da Propriedade Industrial (Brazil) (INPI) (PTO/SB/20BR)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
4 |
Industrial Property Office of the Czech Republic (IPOCZ) (PTO/SB/20CZ)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
5 |
Eurasian Patent Office of the Eurasian Patent Organization (EAPO) (PTO/SB/20EA)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
6 |
Mexican Institute of Industrial Property (TMPI) (PTO/SB/20MX)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
7 |
Nicaraguan Registry of Intellectual Property (NRIP) (PTO/SB/20NI)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
8 |
Intellectual Property Office of the Philippines (IPOPH) (PTO/SB/20PH)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
9 |
Romanian State Office of Inventions and Trademarks (OSIM) (PTO/SB/20RO)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
10 |
Taiwan Intellectual Property Office (TIPO) (PTO/SB/20TW)
|
35 U.S.C. § 119 |
37 CFR 1.55 and 1.102(a) |
2. Needs and Uses
The public uses this information collection to participate in either the PPH or the PCT-PPH programs between the USPTO and other patent offices in order to receive the benefits of more efficient examination. The USPTO provides forms to assist the public with requesting participating and submitting the required information for each program.
The information collected, maintained, and used in this collection is based on OMB and USPTO guidelines. This includes the basic information quality standards established in the Paperwork Reduction Act (44 U.S.C. 35), in OMB Circular A-130, and in the USPTO information quality guideline.
Table 2 outlines how this collection of information is used by the public and the USPTO:
Table 2: Needs and Uses
IC # |
Form and Function
|
Form # |
Needs and Uses |
1 |
Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)
|
PTO/SB/20GLBL |
|
2 |
National Institute of Industrial Property of Argentina (INPI-Argentina (PTO/SB/20AR)
|
PTO/SB/20AR |
|
3 |
Instituto Nacional da Propriedade Industrial (Brazil) (INPI) (PTO/SB/20BR)
|
PTO/SB/20BR |
|
4 |
Industrial Property Office of the Czech Republic (IPOCZ) (PTO/SB/20CZ)
|
PTO/SB/20CA |
|
5 |
Eurasian Patent Office of the Eurasian Patent Organization (EAPO) (PTO/SB/20EA)
|
PTO/SB/20EA |
|
6 |
Mexican Institute of Industrial Property (TMPI) (PTO/SB/20MX)
|
PTO?SB/20MX |
|
7 |
Nicaraguan Registry of Intellectual Property (NRIP) (PTO/SB/20NI)
|
PTO/SB/20NI |
|
8 |
Intellectual Property Office of the Philippines (IPOPH) (PTO/SB/20PH)
|
PTO/SB/20PH |
|
9 |
Romanian State Office of Inventions and Trademarks (OSIM) (PTO/SB/20RO)
|
PTO/SB/20RO |
|
10 |
Taiwan Intellectual Property Office (TIPO) (PTO/SB/20TW)
|
PTO/SB/20TW |
|
3. Use of Information Technology
The forms associated with this collection may be downloaded from the USPTO Web site in Portable Document Format (PDF) and filled out electronically. The electronic forms may be found here: https://www.uspto.gov/patent/forms/forms. Requests to participate in both the PPH and the PCT-PPH programs must be submitted online using EFS-Web, the USPTO’s Web-based electronic filing system.
EFS-Web allows customers to file patent applications and associated documents electronically through their standard Web browser without downloading special software, changing their document preparation tools, or altering their workflow processes. Typically, the customer will prepare the forms or documents as standard PDF files and then upload them to the USPTO servers using the secure EFS-Web interface. EFS-Web offers many benefits to filers, including immediate notification that a submission has been received by the USPTO, automated processing of requests, and avoidance of postage or other paper delivery costs.
4. Efforts to Identify Duplication
The information collected is required to process requests to participate in the PPH or PCT-PPH programs and enable fast-track examination. This information is not collected elsewhere and does not result in a duplication of effort. If any of the documents required for participation in the programs have already been filed in the U.S. application, the applicant will not need to resubmit those documents and may simply indicate in the request for participation when the document were previously filed.
5. Minimizing the Burden to Small Entities
This collection does not impose a significant economic burden on small entities or small businesses. The information required by this collection provides the USPTO with the necessary materials for expediting the examination of applications that are eligible for the programs. The same information is required from every applicant and is not available from any other source.
6. Consequences of Less Frequent Collection
This information is collected only when the public submits a request to participate in either the PPH or the PCT-PPH program. This information could not be collected less frequently. If this information were not collected, the USPTO would not be able to fulfill its obligations under these programs and provide the ensuing examination benefits to eligible applicants.
7. Special Circumstances in the Conduct of Information Collection
There are no special circumstances associated with this collection of information.
8. Consultation Outside the Agency
The 60-Day Notice was published in the Federal Register on February 14, 2018 (83 CFR 6532). The comment period ended on April 16, 2018. No public comments were received.
The USPTO has long-standing relationships with groups from whom patent application data is collected, such as the American Intellectual Property Law Association (AIPLA), as well as patent bar associations, independent inventor groups, and users of our public facilities. Views expressed by these groups are considered in developing proposals for information collection requirements and during the renewal of an information collection. No views have been expressed regarding the present renewal.
9. Payment or Gifts to Respondents
This information collection does not involve a payment or gift to any respondent.
10. Assurance of Confidentiality
Confidentiality of patent applications is governed by statute (35 U.S.C. § 122) and regulations (37 CFR 1.11 and 1.14). The USPTO has a legal obligation to maintain the confidentiality of the contents of unpublished patent applications and related documents. The USPTO employs digital certificates and Public Key Infrastructure (PKI) technology to permit only authorized individuals to access private patent application information and to maintain the confidentiality and integrity of the information as it is transmitted over the Internet. Upon publication of an application or issuance of a patent, the patent application file is made available to the public, subject to the provisions for providing only a redacted copy of the file contents.
11. Justification of Sensitive Questions
None of the required information in this collection is considered to be sensitive.
12. Estimate of Hour and Cost Burden to Respondents
Table 3 calculates the burden hours and costs of this information collection to the public, based on the following factors:
Respondent Calculation Factors
The USPTO estimates that it will receive approximately 8,110 total responses per year for this collection. All requests for participation in either the PPH or the PCT-PPH program, which account for 100% of the total responses for this collection, will be submitted electronically via EFS-Web.
Burden Hour Calculation Factors
The USPTO estimates that it will take the public approximately 120 minutes (2 hours) to gather the necessary information, prepare the appropriate form, and submit a completed request to the USPTO.
Cost Burden Calculation Factors
The USPTO uses a professional rate of $438 per hour for respondent cost burden calculations, which is the media rate for intellectual property attorneys in private firms as shown in the 2017 Report of the Economic Survey published by the American Intellectual Property Association (AIPLA).
Table 3: Burden Hour/Burden Cost to Respondents
IC # |
Item |
Hours
(a) |
Estimated Annual Responses (b) |
Burden (hrs/yr)
(a) x (b) = (c) |
Rate ($/hr)
(d) |
Total Cost ($/hr)
(c) x (d) = (e) |
1 |
Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)
|
2 (120 minutes) |
8,000 |
16,000 |
$438.00 |
$7,008,000.00 |
2 |
National Institute of Industrial Property of Argentina (INPI-Argentina (PTO/SB/20AR)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
3 |
Instituto Nacional da Propriedade Industrial (Brazil) (INPI) (PTO/SB/20BR)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
4 |
Industrial Property Office of the Czech Republic (IPOCZ) (PTO/SB/20CZ)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
5 |
Eurasian Patent Office of the Eurasian Patent Organization (EAPO) (PTO/SB/20EA)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
6 |
Mexican Institute of Industrial Property (TMPI) (PTO/SB/20MX)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
7 |
Nicaraguan Registry of Intellectual Property (NRIP) (PTO/SB/20NI)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
8 |
Intellectual Property Office of the Philippines (IPOPH) (PTO/SB/20PH)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
9 |
Romanian State Office of Inventions and Trademarks (OSIM) (PTO/SB/20RO)
|
2 (120 minutes) |
10 |
20 |
$438.00 |
$8,760.00 |
10 |
Taiwan Intellectual Property Office (TIPO) (PTO/SB/20TW)
|
2 (120 minutes) |
30 |
60 |
$438.00 |
$26,280.00 |
|
Total |
- - - - |
8,110 |
16,220 |
- - - - |
$7,104,360.00 |
13. Total Annual (Non-hour) Cost Burden
There are no annual (non-hour) costs associated with this information collection.
14. Annual Cost to the Federal Government
The USPTO employs a GS-15 employee to process submissions for this information collection.
The USPTO estimates that the cost of a GS-15, step 1 employee is $83.97 per hours (GS-hourly rate of $64.59 with 30% ($19.38) added for benefits and overhead).
The USPTO estimates that it takes an employee 60 minutes (1 hour) to process a request for participation in either the PPH or the PCT-PPH program.
Table 4 calculates the burden hours and costs to the Federal Government for processing this information collection:
Table 5: Burden Hour/Cost to the Federal Government
IC # |
Item |
Hours
(a) |
Responses (yr)
(b) |
Burden (hrs/yr) (a) x (b) (c) |
Rate ($/hr)
(d) |
Total Cost ($/hr) (c) x (d) (e) |
1 |
Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO (PTO/SB/20GLBL)
|
1 (60 minutes) |
8,000 |
8,000 |
$83.97 |
$671,760.00 |
2 |
National Institute of Industrial Property of Argentina (INPI-Argentina (PTO/SB/20AR)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
3 |
Instituto Nacional da Propriedade Industrial (Brazil) (INPI) (PTO/SB/20BR)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
4 |
Industrial Property Office of the Czech Republic (IPOCZ) (PTO/SB/20CZ)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
5 |
Eurasian Patent Office of the Eurasian Patent Organization (EAPO) (PTO/SB/20EA)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
6 |
Mexican Institute of Industrial Property (TMPI) (PTO/SB/20MX)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
7 |
Nicaraguan Registry of Intellectual Property (NRIP) (PTO/SB/20NI)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
8 |
Intellectual Property Office of the Philippines (IPOPH) (PTO/SB/20PH)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
9 |
Romanian State Office of Inventions and Trademarks (OSIM) (PTO/SB/20RO)
|
1 (60 minutes) |
10 |
10 |
$83.97 |
$839.70 |
10 |
Taiwan Intellectual Property Office (TIPO) (PTO/SB/20TW)
|
1 (60 minutes) |
30 |
30 |
$83.97 |
$2,519.10 |
|
Total |
- - - - |
8,110 |
8,110 |
- - - - - |
$680,996.70 |
15. Reason for Change in Burden
A. Changes in Collection since previous OMB approval in 2015.
OMB previously approved the renewal of this information collection in April 2015. The current collection contains:
8,210 response
16,420 burden hours
$5,387,380 in respondent hourly cost burden
$0 in annual (non-hour) costs
Changes due to the implementation of new forms or pilots
Three change worksheets have been submitted to add new forms to this collection since this collection was last renewed.
In April 2015, the USPTO added a form that is connected to PPH Program relationship between the USPTO and the Romanian State Office for Inventions and Trademarks (OSIM) to the PPH Program. The form, PTO/SB/20RO, is titled “Request for Participation in the PPH Pilot Program between the OSIM and the USPTO.”
In January 2017, the USPTO added a form that is connected to the PPH Program relationship between the USPTO and the National Institute of Industrial Property of Argentina (INPI-Argentina). The form, PTO/SB/20AR, is titled “Request for Participation in the PPH Pilot Program between the INPI-Argentina and the USPTO.”
In December 2017, the USPTO added a form that is connected to the PPH Program relationship between the USPTO and the Eurasian Patent Office of the Eurasian Patent Organization (EAPO). The form, PTO/SB/20EA, is titled “Request for Participation in the PPH Pilot Program between the EAPO and the USPTO.”
B. Changes proposed in this request to OMB
The proposed collection, as outlined in the tables above, seeks to modify the existing collection. The proposed collection contains an estimated:
8,110 responses
16,220 burden hours
$7,104,360 in respondent hourly cost burden
$0 in annual (non-hour) costs
Change in Respondent Cost Burden
The total respondent cost burden for this collection has increased by $716,980 (from $6,387,680 to $7,104,360) from the previous renewal of this collection in April 2015:
Increase in estimated hourly rates. The 2015 renewal used an estimated rate of $389 per hour for respondent to this collection, which was an average of the estimated attorney rate. For the current renewal, the USPTO is using an updated hourly rate of $438 for attorneys.
Decrease in estimated burden hours. The total estimated burden hours have decreased from 16,420 in the 2015 renewal to 16,220 for the current renewal due to overall decreases in the estimated annual responses to this collection.
Changes in Responses and Burden Hours
For this renewal, the USPTO estimates that the annual responses will decrease by 100 (from 8,210 to 8,110) and the total burden hours will decrease by 200 (from 16,420 to 16,220) from the currently approved burden for this collection. These changes are due to the following administrative adjustments:
The removal of thirty-five forms from this collection occurred due to the information collected by these forms has been consolidated and is being collected by the PPH Global Form (PTO/SB/20GLBL). This process resulted in the decrease of the respondent numbers. The thirty-fiveforms that are being removed from the collection in this renewal are:
PTO/SB/20AU (Australia)
PTO/SB/20AT (Austria)
PTO/SB/20CN (China)
PTO/SB/20CO (Colombia)
PTO/SB/20CZ (Czech Republic)
PTO/SB/20DE (German)
PTO/SB/20DK (Denmark)
PTO/SB/20EP (European Patent Office)
PTO/SB/20ES (Spain)
PTO/SB/20FI (Finland)
PTO/SB/20HU (Hungary)
PTO/SB/20IL (Israel)
PTO/SB/20IS (Iceland)
PTO/SB/20JP (Japan)
PTO/SB/20KR (Korea)
PTO/SB/20NO (Norway)
PTO/SB/20PL (Poland)
PTO/SB/20PT (Portugal)
PTO/SB/20RU (Russia)
PTO/SB/20SG (Singapore)
PTO/SB/20UK (United Kingdom)
PTO/SB/20PCT-US (U.S Applications)
PTO/SB/20PCT-AT (Austria)
PTO/SB/20PCT-AU (Australia)
PTO/SB/20PCT-CA (Canada)
PTO/SB/20PCT-CN (China)
PTO/SB/20PCT-EP (European Patent Office)
PTO/SB/20PCT-ES (Spain)
PTO/SB/20PCT-FI (Finland)
PTO/SB/20PCT-IL (Israel)
PTO/SB/20PCT-JP (Japan
PTO/SB/20PCT-KR (Korea)
PTO/SB/20PCT-NPI (Nordic Patent Office)
PTO/SB/20PCT-RU (Russia)
PTO/SB/20PCT-SE (Sweden)
Changes in Annual (Non-hour) Costs
For this renewal, the USPTO estimates that there will be no changes in the total annual (non-hour) costs. There are no annual (non-hour) costs associated with this information collection.
16. Project Schedule
The USPTO does not plan to publish this information for statistical use. However, patent and trademark assignment records are available to the public at the USPTO Public Search Facilities and on the USPTO Web site.
17. Display of Expiration Date of OMB Approval
The forms in this information collection will display the OMB Control Number and the expiration date of OMB approval.
18. Exception to the Certificate Statement
This collection of information does not include any exceptions to the certificate statement.
B. COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS
This collection of information does not employ statistical methods.
| File Type | application/vnd.openxmlformats-officedocument.wordprocessingml.document |
| Author | Gunther, Sarah (AMBIT) |
| File Modified | 0000-00-00 |
| File Created | 2021-01-21 |