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

Wed Mar 12 17:38:49 UTC 2025

FWIW, 37 CFR 1.4(d)(6) states as follows:

(6) 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) 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.

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Wednesday, March 12, 2025 1:16 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] Modifying PTO forms - must I remove the OMB notice

No.  You do not need to remove the OMB notice.  The "approval" is for the agency to collect it, not for you to submit it.  44 U.S.C. 3506, 3507, 3512.   See, for example, https://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=202410-0651-019

But if you are using a home-grown form, there's no reason to include it either.

Sundby> 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.

My point exactly.  There are not three neurons' knowledge of the Paperwork Reduction Act on Dulaney St, except for the three people most committed to breaking it.

On Wed, Mar 12, 2025 at 11:35 AM Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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:

[cid:image001.png at 01DB9354.15002AB0]

The current form PTO-1390 [PTO-1390 (01-25) Approved for use through 11/30/2025 OMB 0651-0021] has the following:

[cid:image002.png at 01DB9354.15002AB0]

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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