[Patentpractice] POA and correspondence/maintenance fee address change after issuance

[Katherine Koenig]

Happy Friday everyone,

I’m hoping someone can give me a checklist of exactly which documents I need to file to have my customer number associated with an issued patent that my client has acquired (after issuance) so it’s visible in my Patent Center workbench and so I receive post-issuance communications.

Patent issued in name of individual --> individual assigned to my client, “Company” (after issuance) --> client asked me handle the case moving forward.  Receiving maintenance fee correspondence is really all I need to accomplish, but I would also like to be listed as the attorney of record.  I want to be able to search for this patent in my Patent Center workbench and have it appear, instead of requiring me to do a general search in Patent Center.

Below is the list of documents I filed, but they were rejected because the person attempting to chance the POA isn’t the applicant of record.

  *   POA (PTO/AIA81A) signed by Company
  *   Copy of the Assignment Notice of Recordation from individual --> Company
  *   3.73 Statement (signed by me as representative)
  *   “Fee Address” Indication Form (PTO/AIA/47) (signed by me as representative)
  *   Change of Correspondence Address (Patent) (PTO/AIA/123) (signed by me as representative)

AAU sent me to the Maintenance Fee Branch, which sent me back to AAU.  AAU first said I needed a Corrected ADS (wrong, patent had already issued) and then said I needed a certificate of correction (wrong, I don’t need to correct anything on the patent).  Maintenance Fee Branch told me I need POA from the applicant (patentee) to change correspondence/maintenance fee addresses.

Was my mistake filing the POA and 3.73?  Should I have just filed the AIA/47 and AIA/123?  Timothy (and others), thank you for your advice about simply refiling the same documents I’d already filed (and maybe that’s what I’ll end up doing).  I’d like to avoid this issue in the future by filing exactly what will be accepted so my clients don’t think I need early retirement 😊

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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