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Notice

Patent Prosecution Highway (PPH) Program (Formerly Patent Prosecution Highway (PPH) Pilot Program)

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Information about this document as published in the Federal Register.

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ACTION:

Proposed collection; comment request.

SUMMARY:

The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).

DATES:

Written comments must be submitted on or before August 25, 2008.

ADDRESSES:

You may submit comments by any of the following methods:

  • E-mail: Susan.Fawcett@uspto.gov. Include “0651-0058 comment” in the subject line of the message.
  • Fax: 571-273-0112, marked to the attention of Susan Fawcett.
  • Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
  • Federal Rulemaking Portal: http://www.regulations.gov.
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FOR FURTHER INFORMATION CONTACT:

Requests for additional information should be directed to Robert A. Clarke, Director, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-7735; or by e-mail at Robert.Clarke@uspto.gov.

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SUPPLEMENTARY INFORMATION:

I. Abstract

The Patent Prosecution Highway (PPH) pilot program was originally established between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) on July 3, 2006. 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 USPTO and the JPO agreed at the November 2007 Trilateral Conference to fully implement the PPH program on a permanent basis starting on January 4, 2008.

The USPTO entered into a PPH pilot program with the United Kingdom Intellectual Property Office (UKIPO) on September 4, 2007. Additional PPH pilot programs have also recently been established between the USPTO and the Start Printed Page 35662Canadian Intellectual Property Office (CIPO), the Korean Intellectual Property Office (KIPO), and the Intellectual Property Office of Australia (IPAU).

In addition to the PPH program, the USPTO and the JPO also participate in a work-sharing pilot project called the “New Route.” Under the New Route framework, a filing in one member office of this arrangement would be deemed a filing in all member offices. The first office and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to the second office(s), and the second office(s) would exploit the search and examination results in conducting their own examination. The New Route proposal permits the search and examination results of the first office to be transmitted to the second office(s) according to an internationally coordinated time frame. By allowing the second office to exploit the search and examination results of the first office, the primary benefits of the New Route program would be to reduce overall office workload, minimize duplication of search efforts, and increase examination quality. Because the New Route, as envisioned, would require changes in law in the USPTO and the JPO, the USPTO and the JPO agreed to commence a pilot project to test the New Route concept based on filing scenarios currently available under existing law in both offices. The New Route pilot project began on January 28, 2008, and will end when the number of requests reaches 50 or at the expiration of one year, whichever occurs first.

This information collection previously included two forms, Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10) and Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the (1) JPO or (2) UKIPO and the USPTO (PTO/SB/20), which may be used by applicants to request participation in the programs and to ensure that they meet the program requirements. Since the PPH program with the JPO has been fully implemented, Form PTO/SB/20 has been revised as Form PTO/SB/20JP for use with the JPO and a separate Form PTO/SB/20UK has been created for the ongoing pilot program with the UKIPO. Similar forms have been created for the PPH pilot programs with the CIPO, the KIPO, and the IPAU. These additional PPH pilot program forms are being added to this collection.

II. Method of Collection

Requests to participate in the New Route pilot program must be submitted by fax to the Office of the Commissioner for Patents (571-273-0125) to ensure that the request is processed in a timely manner. Requests to participate in the PPH programs must be submitted online using EFS-Web, the USPTO's web-based electronic filing system.

III. Data

OMB Number: 0651-0058.

Form Number(s): PTO/SB/10, PTO/SB/20AU, PTO/SB/20CA, PTO/SB/20JP, PTO/SB/20KR, PTO/SB/20UK.

Type of Review: Revision of a currently approved collection.

Affected Public: Individuals or households; businesses or other for-profits; and not-for-profit institutions.

Estimated Number of Respondents: 1,250 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 1.5 to 2 hours to gather the necessary information, prepare the form, and submit a completed request to participate in the New Route or PPH program.

Estimated Total Annual Respondent Burden Hours: 2,475 hours per year.

Estimated Total Annual Respondent Cost Burden: $767,250 per year. The USPTO expects that the information in this collection will be prepared by attorneys. Using the professional rate of $310 per hour for associate attorneys in private firms, the USPTO estimates that the total annual respondent cost burden for this collection will be approximately $767,250 per year.

ItemEstimated time for responseEstimated annual responsesEstimated annual burden hours
Request for Participation in the New Route Pilot Program Between the JPO and the USPTO (PTO/SB/10)1.55075
Request for Participation in the Patent Prosecution Highway (PPH) Program Between the JPO and the USPTO (PTO/SB/20JP)25001,000
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the UKIPO and the USPTO (PTO/SB/20UK)2250500
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the CIPO and the USPTO (PTO/SB/20CA)2100200
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the KIPO and the USPTO (PTO/SB/20KR)2250500
Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the IPAU and the USPTO (PTO/SB/20AU)2100200
Totals1,2502,475

Estimated Total Annual Non-hour Respondent Cost Burden: $162,590 per year. There are no capital start-up, maintenance, or postage costs associated with this collection. However, this collection does have annual (non-hour) costs in the form of filing fees and recordkeeping costs.

The filing fee for requests to participate in the New Route or PPH programs is $130 under 37 CFR 1.17(h). Using the $130 fee, the USPTO estimates that the total filing fees for this collection would be $162,500 per year.

There are also recordkeeping costs associated with submitting the PPH forms in this collection online through EFS-Web. When submitting forms through EFS-Web, the USPTO recommends that customers print and retain a copy of the acknowledgment receipt as evidence of the successful submission. The USPTO estimates that it will take 5 seconds (0.001 hours) to print a copy of the acknowledgment receipt and that approximately 1,200 submissions in this collection will be filed online, for a total of approximately 1 hour per year. The USPTO expects that these receipts will be printed by paraprofessionals at an estimated rate of $90 per hour, for a total recordkeeping cost of $90 per year.

The total (non-hour) respondent cost burden for this collection in the form of filing fees and recordkeeping costs is estimated to be $162,590 per year.Start Printed Page 35663

IV. Request for Comments

Comments are invited on: (a) Whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information shall have practical utility; (b) the accuracy of the agency's estimate of the burden (including hours and cost) of the proposed collection of information; (c) ways to enhance the quality, utility, and clarity of the information to be collected; and (d) ways to minimize the burden of the collection of information on respondents, e.g., the use of automated collection techniques or other forms of information technology.

Comments submitted in response to this notice will be summarized or included in the request for OMB approval of this information collection; they also will become a matter of public record.

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Dated: June 17, 2008.

Susan K. Fawcett,

Records Officer, USPTO, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division.

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[FR Doc. E8-14193 Filed 6-23-08; 8:45 am]

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