[Patentpractice] POA and correspondence/maintenance fee address change after issuance
Carl Oppedahl
carl at oppedahl.com
Fri Sep 26 19:20:57 UTC 2025
Folks, the more I think about this the more the USPTO policy seems nuts.
It is not beyond imagining that sometimes, with an issued patent, the
named applicant /*might have ceased to exist*/.
In such a case, it would be unreasonable to require that the attorney
provide a signed POA from that no-longer-existing entity.
It is not beyond imagining that sometimes, with an issued patent, the
named applicant /*might now be an adversary of the patent owner*/.
In such a case, it would be unreasonable to require that the attorney
provide a signed POA from an adversary of one's own client.
Indeed it strikes me that it would be unethical for the attorney to
enter into an attorney-client relationship with an adversary of one's
own client.
It is not beyond imagining that sometimes, with an issued patent, the
named applicant /*might not be the same as patent owner*/. The named
applicant might choose not to cooperate, or might demand a bribe to sign
the POA. In such a case, it would be unreasonable to require that the
attorney provide a signed POA from the uncooperative or bribe-seeking
entity.
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./
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
>
>
> --
>
> Image removed by sender.
> <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 <mailto: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?>
>
>
>
> --
>
> Image removed by sender.
> <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 <mailto: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/20250926/76e574f9/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/20250926/76e574f9/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.jpg
Type: image/jpeg
Size: 823 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250926/76e574f9/attachment.jpg>
More information about the Patentpractice
mailing list