[Patentpractice] POA and correspondence/maintenance fee address change after issuance
David Boundy
DavidBoundyEsq at gmail.com
Fri Sep 26 19:21:06 UTC 2025
So get one paper that is a Power of Attorney frm both inventor and
company. Two signatures at teh bottom -- inventor as applicant, company as
assignee.
On Fri, Sep 26, 2025 at 2:51 PM Katherine Koenig <
katherine at koenigipworks.com> 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 à I don’t represent the original applicant and they won’t
> accept POA from the owner because the owner isn’t the applicant à can’t
> change applicant after issuance à can’t get POA from applicant à won’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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>
> *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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> *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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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
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