PTO Suspends PTAB Atty Who Filed Multiple TM Apps For Cannabis Client

Michael E. McCabe, Jr.Conflicts of Interest, Unauthorized Practice of Law, USPTO Director Decisions, USPTO Ethics Investigation0 Comments

The USPTO has suspended a PTO-employed attorney for thirty (30) days for practicing trademark law before the Office for private clients, in violation of federal conflicts of interest laws.  See In re Tara K. Laux, Proc. No. D2016-39 (USPTO Dir. Mar. 9, 2017).  According to a settlement agreement reached with the OED Director, attorney Tara Laux, who has worked at … Read More



District Court Affirms PTO’s Disbarment Of Patent Agent Who Practiced TM Law

Michael E. McCabe, Jr.Patent Agent, Petition to E.D. Va., Unauthorized Practice of Law0 Comments

On February 27, 2017, the U.S. District Court for the Eastern District of Virginia affirmed a decision by the USPTO Director excluding a registered patent agent from practice before the USPTO because the agent practiced trademark law. Factual Background Bang-er Shia became a registered patent agent in 2005; she has never been admitted to the bar of any court as … Read More



Epic Ethics Legal Battle By Trademark Company Owner Ends Quietly With Resignation

Michael E. McCabe, Jr.Competence, Constitutional Law, District Court Litigation, Exclusion on Consent, Fee-Splitting, PTO Ethics Decisions, Unauthorized Practice of Law, USPTO Director Decisions0 Comments

The three-year ethics saga between Matthew Swyers, owner of The Trademark Company, and the USPTO’s Office of Enrollment and Discipline (OED), ended with a whisper, with Mr. Swyers agreeing to resign from practicing before the USPTO.  By entering into what is called an “exclusion on consent” agreement, Mr. Swyers voluntarily gives up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years.  A copy of the exclusion … Read More



Is Working From Home Unethical? Telecommuting And Unauthorized Practice Of Law

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, Patent Ethics, Unauthorized Practice of Law0 Comments

I have lived and worked in the Washington, D.C. metro area my entire adult life.  Washington is notorious for its traffic. The math for my office commute is simple.  Ten hours per week.  500 hours per year.  For 30 years.  That’s 15,000 hours–or 1.71 years of my life–just going to and from the office. I know I am not alone. … Read More



Five Strikes And You’re Out At The USPTO

Michael E. McCabe, Jr.Exclusion on Consent, Failure to Communicate, Misrepresentations, Neglect, Unauthorized Practice of Law0 Comments

The USPTO Director excluded a patent attorney on consent following a disciplinary investigation arising from numerous alleged violations of the USPTO’s ethics rules.  See In the Matter of Edward Etkin, Proc. No. D2016-05 (USPTO Dir. Jan. 8, 2016). The OED conducted a disciplinary investigation into the conduct of patent attorney Edward Etkin of Brooklyn, New York. The OED found that … Read More



Narrow Scope of “Patent Agent Privilege” Creates Ethical Traps for the Unwary

Michael E. McCabe, Jr.IP Ethics, Office of Enrollment and Discipline, Patent Agent, Patent Ethics, Unauthorized Practice of Law0 Comments

The Federal Circuit’s 2-1 decision yesterday in In re Queen’s University at Kingston resolved a split in the district courts over whether a “patent agent”-client privilege exists independent from the attorney-client privilege. The majority held it does. While the court’s holding provides clarification in this case of first impression, patent agents, their law firm employers, and their clients should not … Read More



The Ethical Risks of Paraprofessionals Providing IP Legal Services (Part 1 of 2)

Michael E. McCabe, Jr.IP Ethics, OED, Office of Enrollment and Discipline, Unauthorized Practice of Law0 Comments

“Individual commitment to a group effort–that is what makes a team work, a company work, a society work, a civilization work.” –Vince Lombardi Every successful IP lawyer, whether a solo practitioner or a senior partner in a mega-firm, has one thing in common: a great support team of secretaries, legal assistants, technical advisors, and paralegals. A great paraprofessional is worth … Read More



IP Counsel Who Blindly Follow Client “Instructions” Risk Loss Of Law License

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, Competence, Office of Enrollment and Discipline, Patent Attorney Disciplinary Matters, Supreme Court Ethics, Unauthorized Practice of Law0 Comments

Intellectual Property law firms often receive substantive documents, including original applications and amendments, with “instructions” from their client to file the paper in the USPTO, essentially as is. And just as often, IP counsel dutifully follow their clients’ orders and simply have a non-lawyer “clean up” the document so it “looks” right and, without any substantive review by counsel, sign and … Read More