[Patentpractice] POA and correspondence/maintenance fee address change after issuance
Carl Oppedahl
carl at oppedahl.com
Fri Sep 26 19:27:34 UTC 2025
Yes but over and over again we have all counseled that it is a Big
Mistake to take a Power of Attorney from an inventor if the inventor is
not the same as the client (the company)? What you do not want is an
inventor who might TYFNIL allege that you took some action that was not
in the inventor's best interest?
On 9/26/2025 1:21 PM, David Boundy via Patentpractice wrote:
> 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 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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>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
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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 <mailto:dboundy at potomaclaw.com>_|
> _www.potomaclaw.com <http://www.potomaclaw.com>_
>
> Articles at http://ssrn.com/author=2936470
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> --
>
>
> <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_ __| _www.potomaclaw.com
> <http://www.potomaclaw.com>_
>
> Articles at http://ssrn.com/author=2936470
> <http://ssrn.com/author=2936470>
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