[Patentpractice] POAs and Liaison Law Firms

Mon Oct 27 22:14:05 UTC 2025

Ah, yes thanks Rick.

I looked back at when I changed my POAs and found some listserv posts I saved for reference… (attached)

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<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Rick Neifeld via Patentpractice
Sent: Monday, October 27, 2025 5:35 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Rick Neifeld <richardneifeld at gmail.com>
Subject: Re: [Patentpractice] POAs and Liaison Law Firms

I believe that I first initiated this discussion a few years ago on this listserve, and I initiated the discussion about fees  for the following reason. .

Circa 2000, the USPTO published an OG explaining the duties of a practitioner in dealing with a foreign agent on behalf of the entity to whom the practitioner had a power of attorney, including issues relating to fee sharing. Based upon my current recollection, the USPTO OG noticed that working at the instruction of a foreign agent on behalf of the one to whom you had a duty (aka the assignee or inventor, now under AIA generally the applicant) resulted in your you being responsible for the fee practices of the foreign agent. And the USPTO specifically noted that a foreign agent padding or your bill, such as adding to their bill a percentage of your charges, was ethically improper for which you could be sanctioned by the PTO's OED.

And I had also long considered the issue of privity of contract, wherein a foreign agent could refuse to pay my firm's invoices, claiming that the client had not paid the foreign law firm and therefore they were not liable for my firm's invoices. That happened occasionally during my 30 years of practice and was always concerning.  I did not like paying my attorneys for their work and then having the foreign agent not pay my firm back for our work, leaving me, as the majority owner, holding the bag, paying out real money and not getting paid back.  Having thought through those issues long ago I came up with language which I include in the same form as all of my firm's POAs, and I separated confirm in writing my firm's privity counter party.

I have posted this before on this list serve, but I will do so again.  Here is the language in my firm's 37 CFR 1.32 POA form, and I bold the relevant language.
______________________________
37 CFR 1.32 POWER OF ATTORNEY FROM APPLICANT, APPOINTMENT OF AGENT, AND 37 CFR 1.33 SPECIFICATION OF CORRESPONDENCE ADDRESS

I represent the Applicant. The Applicant is the Assignor(s) if Assignor(s) exist. Otherwise, the Applicant is the Inventor(s).

APPOINTMENT OF AGENT: I appoint, as my local agent, to provide instructions on my behalf to Neifeld IP Law, for any and all action to be taken in the United States Patent and Trademark Office:  [NAME]
Local agent named: [NAME]

In the event I replace my local agent with a new agent, I agree to notify Neifeld IP Law of the change and identify the new agent, and instruct Neifeld IP Law to take instructions from that new agent. I have discussed with my local agent my representation by Neifeld IP Law. This discussion included the fees to be charged and the services to be rendered by Neifeld IP Law. My agent confirmed that they would not impose a surcharge on fees for services of Neifeld IP Law, but would bill me for my agent’s services and the actual fees billed by Neifeld IP Law.
POWER OF ATTORNEY: I hereby revoke all previous powers of attorney given in this application. I hereby appoint as my/our attorney(s) or agent(s), and to transact all business in the United States Patent and Trademark Office connected therewith for the application identified above, to be the Patent Practitioner(s) associated with: Customer Number 31518.
SPECIFICATION OF CORRESPONDENCE ADDRESS: Please recognize or change the correspondence address for the application identified above to be the address associated with: Customer Number 31518.
SIGNATURE of Applicant for Patent
The Applicant is named:

The undersigned (whose Title is supplied below) is authorized to act on behalf of the Applicant.
SIGNATURE AND DATE
NAME
TITLE

__________________________

Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com<mailto:RichardNeifeld at gmail.com>;

On Mon, Oct 27, 2025 at 3:29 PM Orvis via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
I certainly do not recall. I thought this type of language would be appropriate for the engagement letter.

But maybe this is the answer: That language is included in the power of attorney because you can be certain that the applicant will sign the power of attorney, whereas they might not sign the engagement letter.

Oct 27, 2025 2:22:33 PM Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>:
I know that… but I’m trying to figure out what prompted some of us to discuss on this Listserv… did the USPTO indicate it was cracking down on POAs and representation or something?

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<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: David Boundy <DavidBoundyEsq at gmail.com<mailto:DavidBoundyEsq at gmail.com>>
Sent: Monday, October 27, 2025 2:05 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>>
Subject: Re: [Patentpractice] POAs and Liaison Law Firms

That says you can take instructions from your foreign instructing counsel, and that instructions don't have to come direct from the ultimate client.   Keeps you from getting whipsawed / stuck with liability if the client changes his/her mind.

On Mon, Oct 27, 2025 at 1:39 PM Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Can someone please remind me why we collectively thought it best to include language in our POAs that indicates the applicant/assignee who uses another [e.g., foreign] law firm/agent as a go-between to send instructions to us?

What did the USPTO do or say that made us decide to include something like the following in our POAs?

“The assignee authorizes its U.S. attorneys and agents to accept and follow instructions from the liaison firm/attorney that is responsible for communicating its instructions to the U.S. attorneys and agents. The assignee will ensure that its U.S. attorneys and agents will be appropriately notified of any change in the responsible liaison firm/attorney.”

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<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

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