[Patentpractice] POA and correspondence/maintenance fee address change after issuance
Carl Oppedahl
carl at oppedahl.com
Fri Sep 26 19:44:11 UTC 2025
Thank you Randall for posting. This is very helpful.
On 9/26/2025 1:38 PM, Randall Svihla via Patentpractice wrote:
>
> Hi, Katherine
>
> 37 CFR 1.32(b) states as follows:
>
> (b) A power of attorney must:
>
> (1) Be in writing;
>
> (2) Name one or more representatives in compliance with paragraph (c)
> of this section;
>
> (3) Give the representative power to act on behalf of the principal; and
>
> (4) Be signed by the applicant for patent (§1.42) or the patent owner.
> _A patent owner who was not the applicant under § 1.46 must appoint
> any power of attorney in compliance with §§ 3.71 and 3.73 of this
> chapter._
>
> It seems to me that you complied with the above requirements, so the
> change of POA was improperly denied.
>
> Randall S. Svihla
>
> NSIP Law
>
> Washington, D.C.
>
> *From:*Katherine Koenig <katherine at koenigipworks.com>
> *Sent:* Friday, September 26, 2025 3:26 PM
> *To:* David Boundy <DavidBoundyEsq at gmail.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.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
>
> David,
>
> In theory that would solve the problem, but I really don’t want a POA
> from the inventor. He’s not my client and I don’t think the USPTO
> should require it.
>
> Carl, I agree with everything you said about how nuts it would be to
> require a POA from the applicant (who no longer owns the patent) and
> not accept a POA from the assignee.
>
> 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:*David Boundy <DavidBoundyEsq at gmail.com>
> *Sent:* Friday, September 26, 2025 3:21 PM
> *To:* Katherine Koenig <katherine at koenigipworks.com>
> *Cc:* Randall Svihla <rsvihla at nsiplaw.com>; For patent practitioners.
> This is not for laypersons to seek legal advice.
> <patentpractice at oppedahl-lists.com>; David Boundy
> <DavidBoundyEsq at gmail.com>
> *Subject:* Re: [Patentpractice] POA and correspondence/maintenance fee
> address change after issuance
>
> 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 àCompany
> * 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
>
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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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> *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>_
>
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