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 Law0 Comments

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 Law0 Comments

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

Top Seven Ethics Risks When Patent Practitioners Work With Invention Marketing Companies

Michael E. McCabe, Jr.Client Funds, Communications, Fee-Splitting, Invention Promoters, IP Ethics3 Comments

Working with invention promotion or marketing companies can be hazardous to your law license.  That is the clear message coming from the USPTO’s Office of Enrollment and Discipline, which is in charge of policing and enforcing the Rules of Professional Conduct governing patent attorneys, patent agents, and others who practice before the Office.   The OED has been coming down … Read More

Failure To Communicate No. 1 Cause Of USPTO Attorney Discipline

Michael E. McCabe, Jr.Communications, Diligence, Discipline, Failure to Communicate, Patent Ethics0 Comments

At the risk of sounding like a broken record, since it is the New Year I thought it would be helpful to remind you all, again, of what is in my opinion the First Commandment of Ethics:  Thou Shalt Communicate With Thy Clients. Seriously.  Clients do not like to be ignored by their attorneys.  This means that when they call … Read More

OED Cracks Down On Patent Practitioners Working With Invention Promoters

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Patent Ethics, PTO Ethics Decisions, PTO Ethics Rules, USPTO Ethics Investigation, USPTO OED1 Comment

George Foreman pitches their services on late night television commercials.  A Google search for “how to sell my invention” turns up scores of them. Many individual inventors believe they have designed the next “better mouse trap” but typically have no clue how to monetize or market their invention. That is where invention marketing or promotion companies step in. Generally speaking, … Read More

ABA’s “Tips For Practicing Law” Provides Valuable Ethics Guidance For USPTO Practitioners

Michael E. McCabe, Jr.Communications, Competence, Diligence, IP Ethics, PTO Ethics Rules, USPTO Ethics Investigation, USPTO OED0 Comments

“Mr. Corleone is a man who insists on hearing bad news at once.” – Tom Hagen, The Godfather In the Summer 2016 issue of Litigation, Steven A. Weiss, Chair of the ABA’s Section of Litigation, authored an article entitled, “Eight More Tips For Practicing Law.”  Although the article focuses on a number of best practices from the perspective of a … Read More

What They Didn’t Teach You In Law School: Representing Client With Diminished Capacity

Michael E. McCabe, Jr.Communications, Competence, Confidentiality0 Comments

In recognition of Mental Health Awareness Week, the focus this month on “What They Didn’t Teach You in Law School” is on representing a client with diminished mental capacity.  According to the leading mental health organization in the country, 1 in 5 adults in the United States suffer from some form of mental health condition or disorder.  Thus, it is … Read More