[Patentpractice] POAs and Liaison Law Firms
Rick Neifeld
richardneifeld at gmail.com
Tue Oct 28 16:04:08 UTC 2025
"*The assignee authorizes..."*
"authorizes" - If you want to the grantor of the POA to direct you to take
instruction from their agent, use the word "directs" instead of
"authorizes".
"assignee" - 37 CFR 1.31, 32, and 45-48 recognize a POA from an "applicant"
and not from an "assignee."
"liaison firm/attorney" - A liaison is not necessarily an entity acting
on behalf of a principle. Many foreign firms employ people that are not
attorneys. An entity acting on behalf of a principle is their "agent."
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;
On Tue, Oct 28, 2025 at 9:40 AM Suzannah K. Sundby <suzannah at canadylortz.com>
wrote:
> Thanks David. Much appreciated.
>
>
>
> 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
>
> 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
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>
>
>
> *From:* David Boundy <DavidBoundyEsq at gmail.com>
> *Sent:* Tuesday, October 28, 2025 9:26 AM
> *To:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Cc:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>; Rick Neifeld <
> richardneifeld at gmail.com>
> *Subject:* Re: [Patentpractice] POAs and Liaison Law Firms
>
>
>
> A Power of Attorney is not exactly a contract, but it's subject to the
> same drafting rules as any other legal instrument. The language must state
> exact boundaries. Get rid of the softening/blurring/intent excess
> veribiage. A Power of Attorney is drafted to allow the appointee freedom
> to act within the fiduciary obligation to the client, but to protect the
> attorney over the client within that scope. So draft it that way.
>
>
>
> On Tue, Oct 28, 2025 at 9:12 AM David Boundy <DavidBoundyEsq at gmail.com>
> wrote:
>
> I'd favor a more active verb, like "appointed, and get rid of intent
> words. As Yoda instructed, "There is no try. Do." The goal of this
> sentence is to place responsibility for clear communication squarely on the
> client.
>
>
>
> On Tue, Oct 28, 2025 at 8:59 AM Suzannah K. Sundby via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
> Better yet:
>
>
>
> The assignee appoints the U.S. attorneys and agents associated with
> Customer Number XXXXX to accept and follow instructions from the liaison
> firm/attorney it designates as being responsible for to communicate its
> instructions to the appointed U.S. attorneys and agents. The assignee
> will notify ensure that the appointed U.S. attorneys and agents will be
> appropriately notified of any change in its designated 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
>
> 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:* Suzannah K. Sundby
> *Sent:* Tuesday, October 28, 2025 8:47 AM
> *To:* Rick Neifeld <richardneifeld at gmail.com>
> *Cc:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Subject:* RE: [Patentpractice] POAs and Liaison Law Firms
>
>
>
> You inferred what I did not imply (I never implied that you were
> responsible).
>
>
>
> In any event, do you think the change below is clear?
>
> *“The assignee authorizes the U.S. attorneys and agents associated with
> Customer Number XXXXX to accept and follow instructions from the liaison
> firm/attorney that is responsible for communicating its instructions to
> said U.S. attorneys and agents. The assignee will ensure that said 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
>
> 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:* Rick Neifeld <richardneifeld at gmail.com>
> *Sent:* Monday, October 27, 2025 7:14 PM
> *To:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Cc:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Subject:* Re: [Patentpractice] POAs and Liaison Law Firms
>
>
>
> Thank you Suzannah. In reading your notes, I see the text:
>
>
>
> "I feel like your “appointment of agent” part for your POA will likely be
> a little confusing for foreign associates and their clients… Specifically,
> the POA is for granting you power, but then it also includes
> appointing/indicating a local agent. Thus, they may become confused as to
> who to communicate certain things to and who is responsible/acts before the
> USPTO, etc."
>
>
>
> The language to which you refer is " 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."*
>
>
>
> Please note that no applicant, and no agent, has ever questioned me about
> that language. So based upon experience, any confusion about that
> language, did not result in any additional burden at my end.
>
>
>
>
>
> 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;
>
>
>
>
>
> On Mon, Oct 27, 2025 at 6:14 PM Suzannah K. Sundby <
> suzannah at canadylortz.com> wrote:
>
> 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
>
> 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:* 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;
>
>
>
>
>
>
>
> On Mon, Oct 27, 2025 at 3:29 PM Orvis via Patentpractice <
> 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>:
>
> 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
>
> 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>
> *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>
> *Cc:* Suzannah K. Sundby <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> 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
>
> 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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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
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>
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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
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>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
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