Breadth Of PTO Ethics Opinion Could Alter How IP Firms Interact With Foreign Associates

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Patent Ethics, PTO Ethics Rules, Unauthorized Practice of LawLeave a Comment

This post is the last of a three-part series reviewing how the USPTO interprets and applies its ethics rules to IP practitioners who represent patent and trademark clients through non-practitioner intermediaries. Where Are We Now: Evolution of PTO Ethics Opinions Thirty years ago, the PTO issued (in 1987 and 1988) ethics opinions regarding very discrete questions concerning two aspects of … Read More

Better Late Than Never: PTO Updates, Expands Ethics Advice On Client Intermediaries

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Invention Promoters, Office of Enrollment and Discipline, Patent Ethics, PTO Ethics Decisions, Unauthorized Practice of LawLeave a Comment

This post is the second in a three-part series reviewing how the USPTO interprets and applies its ethics rules to U.S. patent and trademark practitioners who represent clients by working through non-practitioner client intermediaries. In re Mikhailova and USPTO’s Expanded Ethics Guidance Three decades after the OG Notices, the USPTO published a final order in the matter of In re … Read More

Are Your Firm’s Foreign Associate Practices Ethical?

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, IP Ethics, Office of Enrollment and Discipline, Patent Ethics1 Comment

It is commonplace for IP law firms in the United States to receive referrals for patent and trademark application filing, prosecution, and related services from sources other than the actual client.  In one of the most common scenarios, patent and trademark services are directed to a U.S. IP law firm through an intermediary, such as a non-U.S. law firm or … Read More

Mandatory Ethics Training For Patent Agents Is Long Overdue

Michael E. McCabe, Jr.ABA Model Rule for Minimum Continuing Legal Education, Continuing Legal Education, Patent Ethics, USPTO Rules of Professional Conduct4 Comments

What formal ethics training is required of a U.S. patent agent?  None. What minimal level of competency in ethics must a patent agent demonstrate in order to qualify for a license to practice patent law before the USPTO?  Again, the answer is “None.” For attorneys, ethics training is of considerable importance.  It starts in law school.  Accredited law schools require … Read More

Sue-And-Settle NPE Patent Litigation Tactics May Violate USPTO Ethics Rules

Michael E. McCabe, Jr.Litigation Ethics, Office of Enrollment and Discipline, Patent Ethics, Patent Litigation Ethics, USPTO Ethics Investigation3 Comments

Non-practicing entities who engage in a pattern of filing numerous lawsuits without any intention of testing the merits, solely to extract low ball settlements, should take note that the USPTO’s Office of Enrollment and Discipline (OED) takes a keen interest in such conduct.  A recent “exceptional case” decision in a patent case from federal court in California should give pause … Read More

This Post Could Save Your Patent Law License

Michael E. McCabe, Jr.OED, Office of Enrollment and Discipline, Patent Ethics, USPTO Administrative SuspensionLeave a Comment

Some patent attorneys and agents are under the impression that once they have passed the Patent Bar exam and have earned a PTO registration number, they are essentially registered for life, with no further action required on their part.  If you are one of those people, then you should read on. One of the jobs of the USPTO’s Office of … Read More

Litigators Beware: Bad News Can Trigger USPTO Ethics Investigation

Michael E. McCabe, Jr.IP Litigation Sanctions, Office of Enrollment and Discipline, Patent Ethics, Patent Litigation EthicsLeave a Comment

Bad news sells.  As the author Douglas Adams observed, “Nothing travels faster than the speed of light with the possible exception of bad news, which obeys its own special laws.” Take IP litigation, for example.  The mainstream IP media regularly reports on both allegations and court decisions regarding issues relating to attorney conduct–or alleged misconduct.  Some of the more common … Read More