0079 Supporting Statement Dec Final 2015

SUPPORTING STATEMENT

United States Patent and Trademark Office

International Work Sharing Program

OMB CONTROL NUMBER 0651-0079

December 2015

A. JUSTIFICATION

1. Necessity of Information Collection

The United States Patent and Trademark Office (USPTO) established a Work Sharing Program in conjunction with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) to study how the exchange of search results between offices for corresponding counterpart applications improves patent quality and facilitates the examination of patent applications in both offices. Under this Work Sharing Program a pilot has been implemented, called the Collaborative Search Pilot (CSP). Through the CSP, each office concurrently conducts searches on corresponding counterpart applications. Each office’s search results are exchanged; providing examiners with a comprehensive set of art before them at commencement of examination.

Work Sharing between Intellectual Property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. The exchange of information and documents between IP offices also benefits applicants by promoting compact prosecution, reducing pendency and supporting patent quality by reducing the likelihood of inconsistencies in patentability determinations among IP offices when considering corresponding counterpart applications. The gains in efficiency and quality are achieved through a collaborative work sharing approach to the evaluation of patent claims. As a result of this exchange of search reports, the examiners in both offices may have a more comprehensive set of references before them when making an initial patentability determination.

Table 1 provides the specific statutes and regulations authorizing the USPTO to collect the information discussed above:

Table 1: Information Requirements

IC Number	Requirement	Statute	Rule
1-2	Request for Participation in the Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the USPTO and the JPO and KIPO	35 U.S.C. § 119	37 CFR 1.55 and 1.102(a)
3	CSP Survey	N/A	N/A

2. Needs and Uses

This information collection is necessary so that applicants that file applications in the USPTO, JPO, and KIPO may participate in the International Work Sharing Program. The Program enables its participants to engage in the exchange of IP documents between the said countries to facilitate efficient worldwide patent examinations.

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. Chapter 35), in OMB Circular A-130, and in the USPTO information quality guidelines.

Table 2 outlines how this collection of information is used by the public and the USPTO:

Table 2: Needs and Uses

IC Number	Form and Function	Form #	Needs and Uses
1	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO	PTO/SB/ 437JP	Used by patent applicants to request participation in the CSP Program between JPO and USPTO. Used by USPTO to process the participation request.
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO	PTO/SB/ 437KR	Used by patent applicants to request participation in the CSP Program between KIPO and USPTO. Used by USPTO to process the participation request.
3	CSP Survey	PTO/SB/CSP Survey 1	Used by program participants to provide feedback on the Pilot’s value and use. Used by USPTO to determine the benefits of the Pilot Program.

3. Use of Information Technology

The forms associated with this collection may be downloaded from the USPTO website in Portable Document Format (PDF) and filled out electronically. Requests to participate in the International Work Sharing Program 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 Program. 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 documents were previously filed.

5. Minimizing 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 Program. 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 the International Work Sharing 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 Federal Register Notice was published October 9, 2015 (80 FR 61175). The public comment period ended December 8, 2015. Two public comments were received.

Both commenters provided positive feedback in regards to the creation of the CSP for its practical utility and facilitation in high-quality examinations.

The USPTO has long-standing relationships with groups from whom patent application information is collected, such as the American Intellectual Property Law Association, as well as patent bar associations, independent inventor groups, and users of our public search facilities. Their views are expressed in regularly scheduled meetings and considered in developing proposals for information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning the time to provide the information required under this program.

9. Payments or Gifts to Respondents

This information collection does not involve a payment or gift to any respondent.

10. Assurance of Confidentiality

The confidentiality of international patent applications is governed by PCT Article 30, 35 U.S.C. § 122, and 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. Until international publication (18 months after the priority date), no third party or authority is allowed access to the international patent application unless such access is requested or authorized by the applicant. If the applicant withdraws the application before international publication, such publication does not take place. 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 for 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 900 total responses per year for this collection.

The USPTO estimates that approximately 100% of the annual responses for this collection will be submitted electronically via EFS-Web, which customers may access through the USPTO website.

• Burden Hour Calculation Factors

The USPTO estimates that it will take the public approximately 5-60 minutes (0.083 – 1 hours) to prepare and submit a pilot program request.

• Cost Burden Calculation Factors

The USPTO uses a professional rate of $410 per hour for respondent cost burden calculations, which is the median rate for attorneys in private firms as shown in the 2015 Report of the Economic Survey published by the American Intellectual Property Law Association (AIPLA).

Table 3: Burden Hour/Burden Cost to Respondents

IC Number	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	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO	3	250	750	$410.00	$307,500.00
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO	3	250	750	410.00	$307,500.00
3	CSP Survey	0.08	400	33.33	$410.00	$13,666.67
	TOTAL	- - - -	900	1,533.33	- - - -	$628,666.67

13. Total Annual (Non-hour) Cost Burden

There are no estimated filing fees or postage costs for this collection.

14. Annual Cost to the Federal Government

The USPTO employs a GS-09, step 7 to process submissions and the CSP surveys for this information collection, and a GS-15, step 8 to process an online submission.

The USPTO estimates that the cost for processing the submission by a GS-09, step 7 employee is $39.36 per hour (GS hourly rate of $30.28 with 30% ($9.08) added for benefits, burdening, and overhead). Additionally, cost for a GS-15 step 8 employee is $96.99 per hour (GS hourly rate of $74.61 with $22.38 added for benefits, burdening, and overhead).

The USPTO estimates that it takes an employee 30 minutes (0.5 hours) to process a Petition for Participation and 60 minutes (1 hour) to process an online submission via EFS-Web. It takes about 45 seconds (0.0125 hours) to process a CSP survey.

Table 5 calculates the burden hours and costs to the Federal Government for processing this information collection:

Table 4: Burden Hour/Cost to the Federal Government

IC Number	Item	Hours (a)	Responses (yr) (b)	Burden (hrs/yr) (a) x (b) = (c)	Rate ($/hr) (d)	Total Cost ($/hr) (c) x (d) = (e)
1	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO	0.5 & 1	250	125 & 250	$39.36 & $96.99	$4,920 + $24,247.50 = $29,167.50
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO	0.5 & 1	250	125 & 250	$39.36 & $96.99	$4,920 + $24,247.50 = $29,167.50
3	CSP Survey	0.01	400	5	$39.36	$196.80
	TOTAL	- - - -	900	755	- - - -	$58,531.80

15. Reason for Change in Burden

Changes since the 60-Day Notice Publication

Since the publication of the 60-day notice, the total hourly burden cost to respondents has been increased to reflect more a more accurate calculation of the hourly burden. Previously the 60-day listed the hourly burden as $628,500.00. The new calculation of $628,666.66 reflects an increase of $166.66.

16. Project Schedule

The USPTO does not plan to publish this information for statistical use. However, patent 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.

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