0058 CWS 2022 form update

JUSTIFICATION FOR NONMATERIAL/NONSUBSTANTIVE CHANGE

United States Patent and Trademark Office

Patent Prosecution Highway (PPH) Program

OMB CONTROL NUMBER 0651-0058

2022

Background

PPH is a framework in which an application whose claims have been determined to be patentable by 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.

The USPTO participates in PPH via the Global PPH pilot program, the IP5 PPH pilot program, and agreements with various other intellectual property offices from around the world who have not yet joined the Global PPH program. For more complete information on the PPH, including (1) a complete identification of participating countries and offices and the programs under which each country’s patent 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 program remain pilots and which have been made permanent, please visit http://www.uspto.gov/patents/init_events/pph/index.jsp

The forms in this information collection gather information that is integral to the PPH programs that the USPTO participates in by identifying patent applications being filed at multiple intellectual property offices across the globe, including at the USPTO. This includes declaring the OEE with whom the application has been filed, identifying information for the application at the OEE, and providing the necessary supporting documentation for the application. The forms also identify the correspondence between the claims being made at the USPTO with claims filed in the OEE and an explanation for that correspondence. The forms collect similar data; however, there are unique forms depending on the particular program or country.

Summary of Changes

The United States Patent and Trademark Office (USPTO) has modified its forms for requesting participation in the Patent Prosecution Highway (PPH) program to include information pertinent to U.S. national stage applications under 35 U.S.C. 371. The USPTO has determined that in a significant number of national stage applications under 35 U.S.C. 371 in which a PPH request was granted prior to the expiration of thirty months from the earliest priority date, processing could not immediately commence because the applicants failed to make an express request to begin national stage processing under 35 U.S.C. 371(f). Therefore, even though such national stage applications had been accorded special status under the PPH, the benefits of accelerated prosecution could not be realized until the expiration of thirty months from the priority date. Accordingly, the USPTO’s PPH request forms have been modified to include an express request to begin national stage processing under 35 U.S.C. 371(f) and a reminder that specific 35 U.S.C. 371(c) requirements must be provided for such express request to be effective.

This change therefore adds the following information to each form:

Changes in Burden

The changes to these PPH forms will not result in any changes to the burdens associated with this information collection.