0651-0079 Supporting Statement 20220325

SUPPORTING STATEMENT

United States Patent and Trademark Office

International Work Sharing Program

OMB Control Number 0651-0079

2022

1. JUSTIFICATION

1. Explain the circumstances that make the collection of information necessary. Identify any legal or administrative requirements that necessitate the information collection. Attach a copy of the appropriate section of each statute and regulation mandating or authorizing the collection of information.

The United States Patent and Trademark Office (USPTO) established a Work Sharing Pilot 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 Pilot Program, two Collaborative Search Pilot (CSP) programs—USPTO–JPO and USPTO– KIPO—have been implemented.

Through their respective CSP(s), each office concurrently conducts searches on corresponding counterpart applications. The exchange of information and documents between IP offices 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.

This information collection is comprised of four items: The Petition to Make Special Under the Expanded Collaborative Search Pilot Program; Petition for Participation in the CSP Program Between the JPO and the USPTO; the Petition for Participation in the CSP Program Between the KIPO and the USPTO; and the CSP Survey. The Petitions to Make Special and for Participation are used by patent applicants to request participation in the CSP Program. The CSP Survey is used to collect feedback on the program’s value, monitor usage of the program, and to measure the benefits the program provides to participants.

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

Table 1: Information Requirements

Item No.	Requirement	Statute	Regulation
1	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO	35 U.S.C. § 119	37 CFR 1.55 and 1.102(a)
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO	35 U.S.C. § 119	37 CFR 1.55 and 1.102(a)
3	Collaborative Search Pilot (CSP) Survey	N/A	N/A

2. Indicate how, by whom, and for what purpose the information is to be used. Except for a new information collection, indicate the actual use the Agency has made of the information received from the current information collection.

The public who uses this information collection are applicants who file applications to the USPTO, JPO, and KIPO. They do so in order to participate in the International Work Sharing Program. The Program enables its participants to engage in the exchange of IP documents between the United States, Japan, and Korea to facilitate efficient worldwide patent examinations.

The information collected, maintained, and used in this information 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 this collection of information is used by the public and the USPTO.

Table 2: Needs and Uses

Item No.	Form and Function	Form No.	Needs and Uses
1	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO	PTO/437 or PTO/437-JP	Both forms are used by patent applicants to request participation in the CSP Program between JPO and USPTO. Both forms are used by USPTO to process the participation request. PTO/437-JP is multilingual (English and Japanese) and can be accepted at JPO as well as USPTO.
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO	PTO/437 or PTO/437-KR	Both forms are used by patent applicants to request participation in the CSP Program between KIPO and USPTO. Both forms are used by USPTO to process the participation request. PTO/437-KR is multilingual (English and Korean) and can be accepted at KIPO as well as USPTO.
3	Collaborative Search Pilot (CSP) Survey	PTO/461	Used by the program participants to provide feedback on the pilot’s value and use. Used by USPTO to determine the benefits of the pilot program.

3. Describe whether, and to what extent, the collection of information involves the use of automated, electronic, mechanical, or other technological collection techniques or other forms of information technology, e.g., permitting electronic submission of responses, and the basis for the decision for adopting this means of information collection. Also describe any consideration of using information technology to reduce burden.

The application associated with this information collection may be downloaded from the USPTO website in Portable Document Format (PDF) and filled out and uploaded online using EFS-Web or Patent Center, the USPTO’s web-based electronic filing system.

Both EFS-Web and Patent Center 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 or Patent Center interfaces. Both EFS-Web and Patent Center 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.

90 days after the first action is issued, applicants will be sent a voluntary survey to complete via SurveyMonkey.

4. Describe efforts to identify duplication. Show specifically why any similar information already available cannot be used or modified for use for the purposes described in Item 2 above.

The information collected is required to process requests to participate in the International Work Sharing 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. If the collection of information impacts small businesses or other small entities, describe any methods used to minimize burden.

This information collection does not impose a significant economic burden on small entities or small businesses. The information required by this information collection provides the USPTO with the necessary materials for expediting and sharing the examination of applications that are eligible for the program. The same information is required from every applicant.

6. Describe the consequence to Federal program or policy activities if the information collection is not conducted or is conducted less frequently, as well as any technical or legal obstacles to reducing burden.

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 eligible applicants the benefit of a first action based on combined searches.

7. Explain any special circumstances that would cause an information collection to be conducted in a manner:

• requiring respondents to report information to the agency more often than quarterly;

• requiring respondents to prepare a written response to a collection of information in fewer than 30 days after receipt of it;

• requiring respondents to submit more than an original and two copies of any document;

• requiring respondents to retain records, other than health, medical, government contract, grant-in-aid, or tax records, for more than three years;

• in connection with a statistical survey, that is not designed to produce valid and reliable results that can be generalized to the universe of study;

• requiring the use of a statistical data classification that has not been reviewed and approved by OMB;

• that includes a pledge of confidentiality that is not supported by authority established in statute or regulation, that is not supported by disclosure and data security policies that are consistent with the pledge, or which unnecessarily impedes sharing of data with other agencies for compatible confidential use; or requiring respondents to submit proprietary trade secrets, or other confidential information unless the agency can demonstrate that it has instituted procedures to protect the information's confidentiality to the extent permitted by law.

There are no special circumstances associated with this collection of information.

8. If applicable, provide a copy and identify the date and page number of publication in the Federal Register of the agency's notice, required by 5 CFR 1320.8(d), soliciting comments on the information collection prior to submission to OMB. Summarize public comments received in response to that notice and describe actions taken by the agency in response to these comments. Specifically address comments received on cost and hour burden.

Describe efforts to consult with persons outside the agency to obtain their views on the availability of data, frequency of information collection, the clarity of instructions and recordkeeping, disclosure, or reporting format (if any), and on the data elements to be recorded, disclosed, or reported.

Consultation with representatives of those from whom information is to be obtained or those who must compile records should occur at least once every 3 years - even if the collection of information activity is the same as in prior periods. There may be circumstances that may preclude consultation in a specific situation. These circumstances should be explained.

The 60-Day Notice was published in the Federal Register on December 14, 2021 (86 FR 71045). The comment period ended on February 14, 2022. No comments were received.

The USPTO has long-standing relationships with the Japan Patent Office and Korean Intellectual Property Office, as well as groups from whom patent application information is collected, such as the American Intellectual Property Association (AIPLA), patent bar associations, independent inventor groups, and users of USPTO public search facilities. Their views were expressed in regularly scheduled meetings and considered in developing information collection requirements. There have been no comments or concerns expressed by these or similar organizations concerning the information collected under this program.

9. Explain any decision to provide any payment or gift to respondents, other than remuneration of contractors or grantees.

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

10. Describe any assurance of confidentiality provided to respondents and the basis for the assurance in statute, regulation, or agency policy. If the information collection requires a systems of records notice (SORN) or privacy impact assessment (PIA), those should be cited and described here.

The confidentiality of international patent applications is covered by PCT Articles 30 and 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 publications (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.

USPTO is required by 35 U.S.C. § 131, to maintain the patenting process. Information is collected on petitions and applications for patent products including information regarding representation. These information collection activities are covered under the System of Records Notice (SORN) COMMERCE/PAT-TM-7 Patent Application Files, available at Federal Register /Vol. 78, No. 61 / Friday, March 29, 2013 /Notices 19243. https://www.govinfo.gov/content/pkg/FR-2013-03-29/pdf/2013-07341.pdf ).

This SORN covers the following categories of individuals: applicants for patent, including inventors, legal representatives for inventors, and other persons authorized by law to make applications for patent.

The information obtain is protected from disclosure to third parties in accordance with the Privacy Act. However, routine uses of this information may include disclosure to the following: to law enforcement for investigation in the event that the system of records indicates a violation or potential violation of law; to a Federal, state, local, or international agency, in response to its request; to an agency, organization, or individual for the purpose of performing audit or oversight operations as authorized by law; to non-federal personnel under contract to the Agency; to a court for adjudication and litigation; to the Department of Justice for Freedom of Information Act assistance; to members of Congress working on behalf of an individual; to the Office of Personnel Management for personnel research purposes; to National Archives and Records Administration for records management; and to OMB for legislative coordination and clearance.

11. Provide additional justification for any questions of a sensitive nature, such as sexual behavior and attitudes, religious beliefs, and other matters that are commonly considered private. This justification should include the reasons why the agency considers the questions necessary, the specific uses to be made of the information, the explanation to be given to persons from whom the information is requested, and any steps to be taken to obtain their consent.

None of the information in this information collection is considered to be sensitive.

12. Provide estimates of the hour burden of the collection of information. The statement should:

• Indicate the number of respondents, frequency of response, annual hour burden, and an explanation of how the burden was estimated. Unless directed to do so, agencies should not conduct special surveys to obtain information on which to base hour burden estimates. Consultation with a sample (fewer than 10) of potential respondents is desirable. If the hour burden on respondents is expected to vary widely because of differences in activity, size, or complexity, show the range of estimated hour burden, and explain the reasons for the variance. Generally, estimates should not include burden hours for customary and usual business practices.

• If this request for approval covers more than one form, provide separate hour burden estimates for each form and aggregate the hour burdens.

• Provide estimates of annualized cost to respondents for the hour burdens for collections of information, identifying and using appropriate wage rate categories. The cost of contracting out or paying outside parties for information collection activities should not be included here. Instead, this cost should be included under ‘Annual Cost to Federal Government’.

Tables 3 and 4 calculate the burden hours and costs of this information collection to the public, based on the following factors:

• Respondent Calculation Factors

USPTO estimates that it will receive approximately 190 responses from 96 respondents per year for this information collection.

• Burden Calculation Factors

USPTO estimates that it will take the public approximately between 5 minutes (0.08 hours) and 3 hours to complete the information in this information collection, including the time gather the necessary information, prepare the forms or documents, and submit the completed request to the USPTO. Using these burden factors, USPTO estimates that the total respondent hourly burden for this information collection is 445 hours per year.

• Cost Burden Calculation Factors

USPTO uses a professional rate of $435 per hour for the respondent cost burden calculations, which is the mean rate of intellectual property attorneys in private firms as shown in the 2021 Report of the Economic Survey published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association (AIPLA). Using this hourly rate, USPTO estimates that the total respondent cost burden for this information collection is $193,575 per year.

Table 3: Total Burden Hours and Hourly Costs to Private Sector Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b) = (c)	Estimated Time for Response (hours) (d)	Estimated Burden (hour/year) (c) x (d) = (e)	Rate ($/hour) (f)	Estimated Annual Respondent Cost Burden (e) x (f) = (g)
1	Petition for Participation in the Collaboration Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO (using forms PTO/437 or PTO/437-JP)	15	3	45	3	135	$435	$58,725
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO (using forms PTO/437 or PTO/437-KR)	32	3	96	3	288	$435	$125,280
3	Collaboration Search Pilot (CSP) Stakeholder Survey (PTO/461)	37	1	37	0.08 (5 minutes)	3	$435	$1,305
	Total	84		178		426		$185,310

Table 4: Total Burden Hours and Hourly Costs to Individual or Household Respondents

Item No.	Item	Estimated Annual Respondents (a)	Responses per Respondent (b)	Estimated Annual Responses (a) x (b) = (c)	Estimated Time for Response (hours) (d)	Estimated Burden (hour/year) (c) x (d) = (e)	Rate ($/hour) (f)	Estimated Annual Respondent Cost Burden (e) x (f) = (g)
1	Petition for Participation in the Collaboration Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO (using forms PTO/437 or PTO/437-JP)	2	1	2	3	6	$435	$2,610
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO (using forms PTO/437 or PTO/437-KR)	4	1	4	3	12	$435	$5,220
3	Collaboration Search Pilot (CSP) Stakeholder Survey (PTO/461)	6	1	6	0.08 (5 minutes)	1	$435	$435
	Total	12		12		19		$8,265

13. Provide an estimate for the total annual cost burden to respondents or record keepers resulting from the collection of information. (Do not include the cost of any hour burden already reflected on the burden worksheet).

• The cost estimate should be split into two components: (a) a total capital and start-up cost component (annualized over its expected useful life) and (b) a total operation and maintenance and purchase of services component. The estimates should take into account costs associated with generating, maintaining, and disclosing or providing the information. Include descriptions of methods used to estimate major cost factors including system and technology acquisition, expected useful life of capital equipment, the discount rate(s), and the time period over which costs will be incurred. Capital and start-up costs include, among other items, preparations for collecting information such as purchasing computers and software; monitoring, sampling, drilling and testing equipment; and record storage facilities.

• If cost estimates are expected to vary widely, agencies should present ranges of cost burdens and explain the reasons for the variance. The cost of purchasing or contracting out information collections services should be a part of this cost burden estimate. In developing cost burden estimates, agencies may consult with a sample of respondents (fewer than 10), utilize the 60-day pre-OMB submission public comment process and use existing economic or regulatory impact analysis associated with the rulemaking containing the information collection, as appropriate.

• Generally, estimates should not include purchases of equipment or services, or portions thereof, made: (1) prior to October 1, 1995, (2) to achieve regulatory compliance with requirements not associated with the information collection, (3) for reasons other than to provide information or keep records for the government, or (4) as part of customary and usual business or private practices.

There are no capital start-up, maintenance costs, recordkeeping costs, filing fees, or

postage costs associated with this information collection.

14. Provide estimates of annualized costs to the Federal government. Also, provide a description of the method used to estimate cost, which should include quantification of hours, operational expenses (such as equipment, overhead, printing, and support staff), and any other expense that would not have been incurred without this collection of information. Agencies may also aggregate cost estimates from Items 12, 13, and 14 in a single table.

USPTO estimates the annualized cost to the Federal Government to process and administer the items in the information collection to be $3,450.

USPTO estimates that it takes an employee approximately between 1 minute (0.02 hours) and 1 hour to process and administer the items in this information collection. USPTO estimates that the cost of a GS-9, step 7 employee is $ 46 per hour¹ (GS hourly rate of $35.62 with 30% ($10.68) added for benefits and overhead).

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

Table 5: Burden Hour/Cost to the Federal Government

Item No.	Item	Estimated Annual Responses (a)	Estimated Time for Response (hour) (d)	Estimated Burden (hour/year) (a) x (b) = (c)	Rate ($/hour) (d)	Estimated Annual Federal Government Cost Burden (c) x (d) = (e)
1	Petition for Participation in the Collaboration Search Pilot (CSP) Program Between the Japan Patent Office (JPO) and the USPTO (using forms PTO/437 or PTO/437-JP)	47	0.50 (30 minutes)	24	$46	$1,104
2	Petition for Participation in the Collaborative Search Pilot (CSP) Program Between the Korean Intellectual Property Office (KIPO) and the USPTO (using forms PTO/437 or PTO/437-KR)	100	0.50 (30 minutes)	50	$46	$2,300
3	Collaboration Search Pilot (CSP) Survey (PTO/461)	43	0.02 (1 minute)	1	$46	$46
	Total					$3,450

15. Explain the reasons for any program changes or adjustments reported on the burden worksheet.

ICR Summary of Burden:
		Requested	Program Change Due to New Statute	Program Change Due to Agency Discretion	Change Due to Adjustment in Agency Estimate	Change Due to Potential Violation of the PRA	Previously Approved
	Annual Number of Responses	190	0	0	-110	0	300
	Annual Time Burden (Hr)	445	0	0	-25	0	470
	Annual Cost Burden ($)	0	0	0	0	0	0

Change Due to Adjustment in Agency Estimate in Annual Number of Responses and Annual Time Burden

Decreases in the annual number of responses (-110) and annual burden hours (-25) are due to the estimated change in number of respondents and the number of responses per respondent. This adjustment reflects the fact that many respondents under the CSP file multiple petitions which led to a corresponding reduction in the estimated number of surveys.

Note: Updates since the publication of the 60-Day Notice in the Federal Register

There have been some updates to this information collection since the publication of the 60-Day Notice in the Federal Register on December 14, 2021. First, the CSP has introduced new petition form options for filing for a patent under the CSP, PTO/437-JP and PTO/437-KR, which are unique to the respective (Japan and Korea) intellectual property offices. These forms can be used in lieu of PTO/437 (Petition to Make Special Under the Expanded Collaborative Search Pilot Program).

Additionally, some of the burden figures were updated to reflect a more accurate estimate of the number of respondents and number of responses per respondent. This update reflects the fact that many respondents under the CSP file multiple petitions. This led to a corresponding reduction in the estimated number of surveys that will be sent to respondents.

16. For collections of information whose results will be published, outline plans for tabulation and publication. Address any complex analytical techniques that will be used. Provide the time schedule for the entire project, including beginning and ending dates of the collection of information, completion of report, publication dates, and other actions.

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. If seeking approval to not display the expiration date for OMB approval of the information collection, explain the reasons that display would be inappropriate.

The forms in this information collection will display the OMB Control Number and the expiration date of OMB approval.

18. Explain each exception to the topics of the certification statement identified in “Certification for Paperwork Reduction Act Submissions.”

This collection of information does not include any exceptions to the certificate statement.

2. COLLECTIONS OF INFORMATION EMPLOYING STATISTICAL METHODS

This collection of information contains one item that employs statistical methods. These methods are outlined in more detail in Part B.

1 https://www.opm.gov/policy-data-oversight/pay-leave/salaries-wages/salary-tables/pdf/2022/DCB_h.pdf

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