Agency Information Collection Activities; Submission to the Office of Management and Budget (OMB) for Review and Approval; Comment Request; Patent Prosecution Highway (PPH) Program

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of information collection; request for comment.

SUMMARY:

The United States Patent and Trademark Office (USPTO), in accordance with the Paperwork Reduction Act of 1995, invites comments on the extension and revision of an existing information collection: 0651-0058 (Patent Prosecution Highway (PPH) Program). The purpose of this notice is to allow 60 days for public comment preceding submission of the information collection to OMB.

DATES:

To ensure consideration, comments regarding this information collection must be received on or before June 15, 2021.

ADDRESSES:

Interested persons are invited to submit written comments by any of the following methods. Do not submit Confidential Business Information or otherwise sensitive or protected information:

• Email: InformationCollection@uspto.gov. Include “0651-0058 comment” in the subject line of the message.
• Federal Rulemaking Portal: http://www.regulations.gov.
• Mail: Kimberly Hardy, Office of the Chief Administrative Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

FOR FURTHER INFORMATION CONTACT:

Request for additional information should be directed to Parikha Mehta, Patent Examination Policy Advisor, Office of Patent Legal Administration, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450; by telephone at 571-272-3248; or by email to Parikha.Mehta@USPTO.GOV. Additional information about this information collection is also available at http://www.reginfo.gov under “Information Collection Review.”

SUPPLEMENTARY INFORMATION:

I. Abstract

The Patent Prosecution Highway (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 (OLE) 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 Patent Cooperation Treaty (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.

This information collection covers data gathered through the Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program, which the public uses to request an accelerated examination within the PPH provisions.

II. Method of Collection

Items in this information collection must be submitted electronically.

III. Data

OMB Control Number: 0651-0058.

Form Numbers: (SB = Specimen Book)

• PTO/SB/20GLBL (Request for Participation in the Global/IP5 PPH Pilot Program in the USPTO)
• PTO/SB/20BR (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Brazilian National Institute of Industrial Property (INPI) and the USPTO)
• PTO/SB/20CA (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Industrial Property Office of the Czech Republic (IPOCZ) and the USPTO)
• PTO/SB/20MX (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Mexican Institute of Industrial Property (TMPI) and the USPTO)
• PTO/SB/20NI (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Nicaraguan Registry of Intellectual Property (NRIP) and the USPTO)
• PTO/SB/20PH (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Intellectual Property Office of the Philippines (IPOPH) and the USPTO)
• PTO/SB/20RO (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Romanian State Office of Inventions and Trademarks (OSIM) and the USPTO)
• PTO/SB/20SA (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program between the Saudi Authority for Intellectual Property of the Kingdom of Saudi Arabia (SAIP) and the USPTO)
• PTO/SB/20TW (Request for Participation in the Patent Prosecution Highway (PPH) Pilot Program Between the Taiwan Intellectual Property Office (TIPO) and the USPTO)

Type of Review: Extension and revision of a currently approved information collection.

Affected Public: Private sector; individuals or households.

Estimated Number of Respondents: 3,567 respondents per year.

Estimated Number of Responses: 7,090 responses per year.

Estimated Time per Response: The USPTO estimates that it will take the public approximately 2 hours to complete a response. This includes the time to gather the necessary information, create the documents, and submit the completed item to the USPTO.

Estimated Total Annual Respondent Burden Hours: 14,180 hours.

Estimated Total Annual Respondent Hourly Cost Burden: $5,672,000.

Estimated Total Annual (Non-hour) Respondent Cost Burden: $0.00. There are no filing fees or start-up, maintenance, recordkeeping, or postage costs associated with this information collection.

Respondent's Obligation: Required to obtain or retain benefits.

IV. Request for Comments

The USPTO is soliciting public comments to:

(a) Evaluate whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information will have practical utility;

(b) Evaluate the accuracy of the Agency's estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used;

(c) Enhance the quality, utility, and clarity of the information to be collected; and

(d) Minimize the burden of the collection of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses.

All comments submitted in response to this notice are a matter of public record. USPTO will include or summarize each comment in the request to OMB to approve this information collection. Before including an address, phone number, email address, or other personal identifying information in a comment, be aware that the entire comment— including personal identifying information—may be made publicly available at any time. While you may ask in your comment to withhold personal identifying information from public view, USPTO cannot guarantee that it will be able to do so.