2016 USPTO Disciplinary Decisions – The Year In Review

Michael E. McCabe, Jr.USPTO Decisions, USPTO Director Decisions, USPTO Ethics Investigation, USPTO OED0 Comments

To all of you who have been dying to know what happened in the world of ethics and discipline at the USPTO in the past year, I am pleased to say your wait is finally over.  I have written, “2016 USPTO Disciplinary Decisions — The Year in Review.” Why was The 2016 Year in Review necessary?  I for one have … 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



District Court Tells IP Firm “Don’t Ask Alice,”Confirms $8 Million Malpractice Award For Bungling Patent Application

Michael E. McCabe, Jr.District Court Litigation, Malpractice, Patent Malpractice1 Comment

A federal judge in New York rejected an intellectual property firm’s attempt to rely on the Supreme Court’s 2014 Alice decision as grounds to set aside a jury’s multi-million dollar verdict for mishandling a client’s patent application.  In denying post-trial motions, U.S. District Judge Pamela Chen ruled that Virginia law firm Antonelli Terry Sout & Kraus LLP forfeited its Section 101 defense because … Read More



USPTO Suspends Patent Attorney For Neglect, UPL And Failure To Cooperate

Michael E. McCabe, Jr.Discipline, IP Ethics, OED, Office of Enrollment and Discipline0 Comments

On May 15, 2015, the USPTO Director issued an Order suspending Seattle, Washington-based patent and trademark attorney Nam D. Dao for six months for allowing multiple patent and trademark applications to go abandoned without client knowledge or consent, engaging in the unauthorized practice of law, and failing to cooperate with the Office of Enrollment and Discipline’s ethics investigation.  In re Nam D. … Read More



USPTO Suspends Ethically-Challenged Patent Attorney

Michael E. McCabe, Jr.Client Funds, Communications, Competence, USPTO Director Decisions0 Comments

On August 19, 2014, the USPTO Director issued a final order suspending a patent attorney for 20-months based on three separate suspensions issued by the Supreme Court of California. The USPTO added an additional six-month period to the suspension—for a total suspension of 26 months—based on the attorney’s failure to cooperate with the OED’s disciplinary investigation. In re Donrad, No. … Read More



Former Client Publicly Blasts Attorney Suspended by USPTO for Failure to Communicate

Michael E. McCabe, Jr.Communications, Competence, Discipline, PTO Ethics Decisions5 Comments

The USPTO recently settled a disciplinary action filed against an IP attorney by suspending him from practice before the Office for five (5) months for failing to communicate and allowing his clients’ trademark applications to become abandoned without their knowledge or consent.  In re Shaffer, No. D2014-18. This disciplinary matter arose from an attorney’s representation of two trademark clients. The USPTO’s public … Read More



USPTO Excludes Attorney For Practicing Trademark Law With Suspended License

Michael E. McCabe, Jr.Competence, Discipline, PTO Ethics Decisions, Unauthorized Practice of Law0 Comments

The USPTO Deputy Director has accepted the resignation of a suspended practitioner who was caught prosecuting trademark matters while his USPTO bar license was suspended. The action means the attorney, Leonard Tachner, is excluded from practice before the Office in patent, trademark, and other non-patent matters. In re Tachner, No. D2014-22. The saga of Mr. Tachner’s ethical troubles began ten years ago. At that time, Mr. Tachner worked as a sole … Read More



Alj Fernández Issues Initial Decision Excluding Patent Attorney Who Kept Fees After Failing To Provide Services

Michael E. McCabe, Jr.Client Funds, Communications, Discipline, PTO Ethics Decisions0 Comments

Administrative Law Judge Alexander Fernández issued an initial decision excluding a patent attorney from practice before the USPTO because the attorney accepted fees from a client to prepare a patent application, failed to provide any legal services, and failed to return any of the client’s fee even after the client was awarded a money judgment against the attorney in state court.  In … Read More