[Patentpractice] Modifying PTO forms - must I remove the OMB notice

Wed Mar 12 16:31:11 UTC 2025

You should review Rule 1.4(d)(5) if you modify the USPTO forms.
Tim Ackermann
The Ackermann Law Firm

   - (5) *Forms.* The Office provides forms for the public to use in
   certain situations to assist in the filing of correspondence for a certain
   purpose and to meet certain requirements for patent applications and
   proceedings. Use of the forms for purposes for which they were not designed
   is prohibited. No changes to certification statements on the Office forms (
   *e.g.,* oath or declaration forms, terminal disclaimer forms, petition
   forms, and nonpublication request forms) may be made.* The existing text
   of a form, other than a certification statement, may be modified, deleted,
   or added to, if all text identifying the form as an Office form is
removed.* *The
   presentation to the Office (whether by signing, filing, submitting, or
   later advocating) of any Office form with text identifying the form as an
   Office form by a party, whether a practitioner or non-practitioner,
   constitutes a certification under § 11.18(b)
   <https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e351236.html>  of this
   chapter that the existing text and any certification statements on the form
   have not been altered other than permitted by EFS-Web customization.*

E:  tim at ackermannlaw.com
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F:  214.453.0810
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On Wed, Mar 12, 2025 at 10:52 AM Suzannah K. Sundby via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> My understanding from a CLE w on OED person long ago is YES, must remove
> the info even if you make a form that looks exactly lie the USPTO form.
>
>
>
> That is, you must remove the portion at the top, e.g.
>
>
>
> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>
> *canady + lortz** LLP* <http://www.canadylortz.com/>
>
> 1050 30th Street, NW
>
> Washington, DC 20007
>
> T: 202.486.8020
>
> F: 202.540.8020
>
> suzannah at canadylortz.com
>
> www.canadylortz.com
>
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> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Jeffrey Semprebon via Patentpractice
> *Sent:* Wednesday, March 12, 2025 11:46 AM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Jeffrey Semprebon <jesemprebon at gmail.com>
> *Subject:* Re: [Patentpractice] Modifying PTO forms - must I remove the
> OMB notice
>
>
>
> Not that it answers your question on the OMB number, but in this case I'd
> be tempted to leave both boxes unchecked and just list the copy of the
> published application under "other items or information" in the box for
> item #20.
>
>
>
> -Jeff
>
>
> Jeffrey E. Semprebon
> Registered Patent Agent (mechanical) looking for remote work
>
> jesemprebon at gmail.com
> 72 Myrtle Street
> Claremont, New Hampshire 03743
>
>
>
> On Wed, Mar 12, 2025 at 11:36 AM Patent Lawyer via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> If I modify a PTO form, must I remove the OMB approval notice?
>
>
>
> Why am I modifying a form? Short answer: because it is crap!
>
>
>
> I am filing a national phase entry.  Even though the application was
> published, I like to provide a copy of the published internatinal
> applicaiton with the filing.
>
>
>
> The old form PTO-1390 [PTO-1390 (12-22) Approved for use through
> 11/30/2025. OMB 0651-0021] had this option:
>
>
>
>
>
>
>
> The current form PTO-1390 [PTO-1390 (01-25) Approved for use through
> 11/30/2025 OMB 0651-0021] has the following:
>
>
>
>
>
> I cannot select option "a" because the application is attached.  And I
> cannot select option "b" because it is not true.
>
>
>
> So I will modify the form (by editing the PDF).  Or maybe use the old one.
>
>
>
>
> So, back to my question: if I modify the current form, must I remove the
> OMB approval notice?
>
>
>
> Another question (maybe for DB only): these forms have the same OMB
> number.  Can the PTO do that even though the forms are different?
>
>
>
> --
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