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

Get Out Of Town: The Ethical Perils Of Outsourcing IP Services

Michael E. McCabe, Jr.Competence, Confidentiality, IP Ethics, Outsourcing, Patent Ethics0 Comments

Many IP lawyers engage other lawyers or nonlawyers as independent contractors, directly or through intermediaries, to provide various legal and nonlegal support services. The outsourcing market, often referred to as the “legal process outsourcing” market or “professional employer organization” market, is a multi-billion dollar industry. While there is nothing per se unethical about a lawyer outsourcing legal and non-legal services, ethical … Read More

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

Michael E. McCabe, Jr.IP Ethics, OED, Office of Enrollment and Discipline, USPTO OED0 Comments

In this part, we continue to address some of the ethical risks involving delegation of intellectual property legal services to non-lawyer paraprofessionals. Ethical Responsibilities of Practitioners Regarding Paraprofessionals The USPTO ethics rules state the responsibilities of practitioners over non-practitioners as follows: First, a practitioner who is a partner, and a practitioner who individually or together with other practitioners possesses comparable managerial … Read More

After Winning Decade-Long Battle To Fix One-Day Late Filing Error, Pharma Company Sues Former IP Counsel For Patent Malpractice

Michael E. McCabe, Jr.Malpractice, Patent Malpractice2 Comments

What a difference a day made Twenty-four little hours Brought the sun and the flowers Where there used to be rain – Dinah Washington In the world of pharmaceutical patents, every day of exclusive rights can translate into millions of dollars in additional revenue. Global biopharmaceutical company The Medicines Company (MDCO) knows this all too well. Indeed, it fought for … Read More

“Super Lawyer” Resigns From USPTO Bar Following Ethics Complaint

Michael E. McCabe, Jr.Patent Attorney Disciplinary Matters, PTO Ethics Decisions, PTO Ethics Rules, USPTO Director Decisions1 Comment

Warning to all patent and trademark practitioners—allowing a non-practitioner to “ghost sign” your name on papers filed with the USPTO can be hazardous to your law license. So learned the named partner of a large IP boutique firm who routinely allowed a non-attorney assistant to sign his name on documents filed with the Office. In re Druce, No. D2014-13 (Sept. … Read More