[Patentpractice] POA and correspondence/maintenance fee address change after issuance
Carl Oppedahl
carl at oppedahl.com
Fri Sep 26 19:07:30 UTC 2025
Thank you folks for identifying this issue, which I had never thought
about until now.
Seems to me that the 3.73 statement ought to trump any dopey internal
procedure or unwritten rule within the USPTO.
To the extent that you manage to get this worked out, and can share
about it, I'd be all ears.
On 9/26/2025 12:51 PM, Katherine Koenig via Patentpractice wrote:
>
> Thank you, Randall. I think calling OPLA is a good suggestion.
>
> David, I see your point about who the PTO will take instructions from,
> but it was my understanding – as Randall notes – that you can’t update
> Applicant by corrected ADS after the patent issues.
>
> We did record the assignment before filing the POA, and even submitted
> the POA with the 3.73 statement and a copy of the Assignment Notice of
> Recordation to prove the change in ownership.
>
> I’m stuck: they won’t accept me as attorney unless I have POA from
> the applicant àI don’t represent the original applicant and they won’t
> accept POA from the owner because the owner isn’t the applicant àcan’t
> change applicant after issuance àcan’t get POA from applicant àwon’t
> accept POA I have.
>
> I don’t know why they make it so hard. It seems silly that they would
> still accept a POA from a named applicant, even though that applicant
> no longer owns the patent.
>
> There should be one master form (or document they’d accept) that says,
> “I’m the new owner of the patent/patent application. Here’s the
> reel/frame of the recorded assignment. I am now the
> applicant/patentee (I understand no change will be made to the issued
> patent without certificate of correction). I appoint this attorney,
> please send them documents and accept documents filed by them on my
> behalf.”
>
> Rant over, I’ll post an update if I find out more from OPLA. I hope
> everyone has a nice weekend!
>
> 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./
>
> *From:* Randall Svihla <rsvihla at nsiplaw.com>
> *Sent:* Friday, September 26, 2025 12:21 PM
> *To:* For patent practitioners. This is not for laypersons to seek
> legal advice. <patentpractice at oppedahl-lists.com>; Katherine Koenig
> <katherine at koenigipworks.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; Katherine Koenig
> <katherine at koenigipworks.com>
> *Subject:* RE: [Patentpractice] POA and correspondence/maintenance fee
> address change after issuance
>
> Hi, Katherine
>
> You can't change the applicant after the patent has issued. Changing
> the applicant under 37 CFR 1.46(c)(2) requires you to file a new
> Application Data Sheet listing the new applicant, but you can't file a
> new ADS after the Issue Fee has been paid pursuant to 37 CFR
> 1.46(c)(1), which states as follows:
>
> (c) /Correcting and updating an application data sheet./
>
> (1) Information in a previously submitted application data sheet,
> inventor’s oath or declaration under § 1.63, § 1.64 or § 1.67, or
> otherwise of record, may be corrected or updated _until payment of the
> issue fee_ by a new application data sheet providing corrected or
> updated information, except that inventorship changes must comply with
> the requirements of § 1.48, foreign priority and domestic benefit
> information changes must comply with §§1.55 and 1.78, and
> correspondence address changes are governed by § 1.33(a).
>
> Call the Office of Patent Legal Administration at 571-272-7701 and ask
> them what to do.
>
> 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:* Friday, September 26, 2025 11:55 AM
> *To:* Katherine Koenig <katherine at koenigipworks.com>
> *Cc:* David Boundy <DavidBoundyEsq at gmail.com>; For patent
> practitioners. This is not for laypersons to seek legal advice.
> <patentpractice at oppedahl-lists.com>
> *Subject:* Re: [Patentpractice] POA and correspondence/maintenance fee
> address change after issuance
>
> 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./
>
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>
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>
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>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> _dboundy at potomaclaw.com <mailto:dboundy at potomaclaw.com>_|
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