[Patentpractice] POA and correspondence/maintenance fee address change after issuance
David Boundy
DavidBoundyEsq at gmail.com
Fri Sep 26 15:55:21 UTC 2025
Did you record the inventor -> company assignment first?
Once you've done that, THEN you need --
-- change of applicant (that's the thing that's missing from your list
above)
-- the other things in your list (you probably don't need "change of
correspondence address" -- presumably the Power of Attorney is in favor of
a customer number and the CN has a correspondence address)
Remember what "applicant" is under post-AIA law -- the one and only person
that the PTO is to take orders from. The PTO's CYA has to be "we don't pay
no attention to nobody else, just 'applicant.'". If you didn't change
"applicant" then a Power of Attorney from the company looks like
instructions from the far side of the moon.
I know the patent is issued, so "applicant" ceases to have any meaning.
The party that matters is "assignee." But you're dealing with clerks.
Just play the game under the clerks' rules. This is a case to just let the
law go -- the stupidity has a zero-down-side work around.
On Fri, Sep 26, 2025 at 11:50 AM David Boundy <DavidBoundyEsq at gmail.com>
wrote:
> Did you record the inventor -> company assignment first?
>
> Once you've done that, THEN you need --
> -- change of applicant (that's the thing that's missing from your
> list above)
> -- the other things in your list (you probably don't need "change of
> correspondence address" -- presumably the Power of Attorney is in favor of
> a customer number and the CN has a correspondence address)
>
> Remember what "applicant" is under post-AIA law -- the one and only person
> that the PTO is to take orders from. The PTO's CYA has to be "we don't pay
> no attention to nobody else, just 'applicant.'". If you didn't change
> "applicant" then a Power of Attorney from the company looks like
> instructions from the far side of the moon.
>
> On Fri, Sep 26, 2025 at 11:35 AM Katherine Koenig via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> 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 à individual assigned to my client,
>> “Company” (after issuance) à 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 à
>> 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
>>
>>
>>
>> *Targeted Intellectual Property Strategy*
>>
>>
>>
>> *The information contained in this communication, including any
>> attachments, is privileged and confidential information intended only for
>> the use of the individual or entity named above. If **you are not the
>> intended recipient, or the employee or agent responsible to deliver it to
>> the intended recipient, you are hereby notified that any review,
>> dissemination, distribution, or copying of this communication is strictly
>> prohibited. If you have received this communication in error, do not read
>> it. Please immediately reply to the sender that you have received this
>> communication in error and then destroy all paper and electronic copies.
>> Thank you.*
>>
>>
>> --
>> Patentpractice mailing list
>> Patentpractice at oppedahl-lists.com
>>
>> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>>
>
>
> --
>
>
> <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>*
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
>
--
<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>*
Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250926/95f940eb/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250926/95f940eb/attachment.png>
More information about the Patentpractice
mailing list