[Federal Register Volume 73, Number 122 (Tuesday, June 24, 2008)]
[Notices]
[Pages 35661-35663]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-14193]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office


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

ACTION: Proposed collection; comment request.

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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: [email protected]. 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.

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 [email protected].

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

[[Page 35662]]

Canadian 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.

----------------------------------------------------------------------------------------------------------------
                                                                                     Estimated       Estimated
                              Item                                Estimated time      annual       annual burden
                                                                   for response      responses         hours
----------------------------------------------------------------------------------------------------------------
Request for Participation in the New Route Pilot Program                     1.5              50              75
 Between the JPO and the USPTO (PTO/SB/10).....................
Request for Participation in the Patent Prosecution Highway                  2               500           1,000
 (PPH) Program Between the JPO and the USPTO (PTO/SB/20JP).....
Request for Participation in the Patent Prosecution Highway                  2               250             500
 (PPH) Pilot Program Between the UKIPO and the USPTO (PTO/SB/
 20UK).........................................................
Request for Participation in the Patent Prosecution Highway                  2               100             200
 (PPH) Pilot Program Between the CIPO and the USPTO (PTO/SB/
 20CA).........................................................
Request for Participation in the Patent Prosecution Highway                  2               250             500
 (PPH) Pilot Program Between the KIPO and the USPTO (PTO/SB/
 20KR).........................................................
Request for Participation in the Patent Prosecution Highway                  2               100             200
 (PPH) Pilot Program Between the IPAU and the USPTO (PTO/SB/
 20AU).........................................................
                                                                ------------------------------------------------
    Totals.....................................................  ...............           1,250           2,475
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    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.

[[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.

    Dated: June 17, 2008.
Susan K. Fawcett,
Records Officer, USPTO, Office of the Chief Information Officer, 
Customer Information Services Group, Public Information Services 
Division.
[FR Doc. E8-14193 Filed 6-23-08; 8:45 am]
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