For Your Eyes Only: IP Atty’s Who Misuse Confidential Documents Face Sanctions, Discipline

Patent and other high technology litigation invariably involves the disclosure of highly confidential technical and financial information.  One of the first orders usually entered in such cases is a protective order, which enables parties to designate and disclose to a limited universe of people what the producing party considers to be confidential information.  Typically, protective orders prohibit the receiving party... Read more →

This Post Could Save Your Patent Law License

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 →

Greenberg Traurig Avoids Former Client’s DQ Motion By Consenting To Withdrawal

Greenberg Traurig has apparently decided that discretion is the better part of valor.  The law firm has agreed voluntarily to withdraw as counsel from a litigation rather than face a disqualification motion in which it was charged with a conflict of interest for trying to invalidate patents it helped prosecute.  We previously reported here that Greenberg Traurig had “switched sides”... Read more →

Atty’s Final Act For Porn Film Copyright Shakedown Scheme: Disbarment

Once upon a time, John Steele, the founder of the law firm formally known as Prenda Law, believed he had found the perfect recipe for a successful niche copyright law practice. First, monitor certain file-sharing websites containing porn and obtain the IP addresses of individuals who downloaded or attempted to download said porn. Next, file “John Doe” lawsuits for copyright... Read more →

Litigators Beware: Bad News Can Trigger USPTO Ethics Investigation

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 →

Is Mommy More Ethical Than Daddy?

A former female colleague asked me once why nearly all of my clients are men. Frankly, I had never given the matter any thought.  It took me awhile even to accept my colleague’s conclusion that nearly all of my clients were, in fact, of the male variety.  So I pulled out my list of clients I’d represented over the years,... Read more →

To Encrypt, Or Not To Encrypt, That Is The Question

The ABA has dived head first into the pool of law firm cybersecurity.  On May 11, 2017, the American Bar Association’s Standing Committee on Ethics and Professional Responsibility issued Formal Opinion 477 (here), which addresses a broad range of issues that lawyers must consider to protect client confidential information from “nefarious actors throughout the internet.”  Those “nefarious actors”—also known as... Read more →

New Lawsuit Accuses IP Counsel Of Attacking Same Patents It Prosecuted

It is Ethics 101 that a law firm cannot use its former client’s confidential information in a substantially related matter on behalf of a different client directly adverse to the former client, at least not without the former client’s informed consent.  The reason for this common sense rule, which prohibits “side-switching,” is that a lawyer’s duty of confidentiality extends beyond... Read more →

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

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 →

Untying The IP Ethics Knot

Do you worry about ethics in your IP practice?  If not, you should.  There is way too much going on out there, and not knowing what is happening can leave you exposed to ethics and malpractice risk. If you can spare 90 minutes, tune in tomorrow from 1:00-2:30 pm EST for the ABA-IPL Landslide Webinar Series, entitled “Identifying and Resolving Ethical... Read more →

You Just Received An OED Bar Grievance. Now What?

The only time a patent attorney or agent ever wants to hear from the USPTO’s Office of Enrollment and Discipline is when they are admitted to the Patent Bar and issued a registration number. Other than that, no news is good news. So if an envelope arrives from the OED (certified mail, return receipt requested), don’t expect the Office to... Read more →

CLE: Advice of Counsel Defense and Privilege Waivers In Patent Litigation Post-Halo

CLE courses seem to be popping up left and right about the impact of the Supreme Court’s 2016 Halo v. Pulse decision reversing the prior Seagate willful infringement standard.  The focus of these other CLEs seems to be more on the substantive law of willfulness and how the district courts have responded to the issue and applied the Halo standard.... Read more →

USPTO Suspends Second Ex-Niro IP Attorney For 18 Months

It’s deja vu all over again: a second ex-Niro IP attorney has received an 18-month suspension from practice before the USPTO. Attorney Paul C. Gibbons, one of four attorneys from the now defunct Niro, Haller & Niro who were sanctioned for vexatious litigation arising from the firm’s representation of NPE Intellect Wireless, settled a disciplinary complaint with the USPTO Director... Read more →

USPTO Suspends Former Niro IP Attorney For 18 Months Following Patent Litigation Sanctions

The fallout from the Niro, Haller & Niro law firm’s doomed litigation on behalf of Intellect Wireless continues.  For patent litigator David J. Mahalek, the most junior member of the Niro litigation team, the disciplinary shoe of the USPTO did not just drop–it kicked him in the teeth with an 18-month suspension of his law license. Readers may recall that,... Read more →

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

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 →

“The Trademark Company” Pivots To A Copyright Company

“The Trademark Company,” whose owner Matthew Swyers agreed last month to give up his license to practice before the USPTO, ending a three-year ethics battle, appears to be alive.  While still operating under the old name, logo and URL, The Trademark Company has shifted gears away from offering trademark-related services and is now offering only copyright-related services. According to its... Read more →

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

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 →

The Ethics Of IP Docketing Software

Alt Legal IP Docketing Blog has a nice post on The Ethics of IP Docketing Software (found here).  While I am not advocating for Alt Legal’s docketing software products–there are many customized and off-the-shelf software product vendors who pitch such solutions to IP lawyers–the point of the post is well taken. As the author correctly points out, missing a deadline... Read more →

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

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 →

ABA Recommends Mandatory Substance Abuse and Mental Health CLE

The American Bar Association’s House of Delegates voted on Monday to change the ABA’s Model Rule for Minimum Continuing Legal Education to include a recommended one hour of CLE training every three years focused on substance abuse and mental health issues. Currently, only three jurisdictions–California, North Carolina and Nevada–require such courses.  The decision to amend the Model CLE Rule, which... Read more →