Litigators Beware: Bad News Can Trigger USPTO Ethics Investigation

Michael E. McCabe, Jr.IP Litigation Sanctions, Office of Enrollment and Discipline, Patent Ethics, Patent Litigation EthicsLeave a Comment

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

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 LawLeave a Comment

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

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

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 OEDLeave a Comment

“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

5 Myths About USPTO Ethics Investigations and Disciplinary Complaints

Michael E. McCabe, Jr.Patent Ethics, USPTO Ethics Investigation, USPTO OEDLeave a Comment

Many IP practitioners are misinformed about the function of the USPTO’s Office of Enrollment and Discipline (OED). Here are the top 5 myths about OED ethics investigations and attorney discipline at the USPTO. Myth #1 – The OED Only Cares About Practice Before the USPTO There is a perception that the USPTO only cares about enforcing its ethics rules in … Read More

TM Lawyer’s Attack on Constitutionality of OED Investigation Dismissed–For Now

Michael E. McCabe, Jr.IP Ethics, OED, Office of Enrollment and Discipline, USPTO Ethics Investigation, USPTO OED2 Comments

A federal district judge has dismissed a trademark lawyer’s complaint alleging that the USPTO’s Office of Enrollment and Discipline’s (“OED’s) investigation of him violated his rights under the Fourth and Fifth Amendments of the U.S. Constitution.  The Court held that dismissal of his federal complaint was appropriate because the matters raised in the complaint are currently being adjudicated by the … Read More

PTAB And District Court Litigators Risk USPTO Ethical Discipline For Protective Order Violations

Michael E. McCabe, Jr.Patent Ethics, PTAB Discipline, PTO Ethics Decisions, USPTO OED2 Comments

In patent litigation, one of the first orders of business is entry of a protective order protecting the participant’s confidential information. While protective orders come in all shapes and sizes, such orders uniformly prohibit a receiving party from disclosing a producing party’s confidential information except to a limited universe of defined individuals. In addition, a standard provision in protective orders … Read More

CAFC Muzzles Attorneys’ Appeal From Terminating Sanctions In Patent Case

Michael E. McCabe, Jr.District Court Litigation, IP Litigation SanctionsLeave a Comment

In a 2-1 decision, a panel of the Court of Appeals for the Federal Circuit ruled it lacked jurisdiction to hear an appeal of an order imposing terminating sanctions in a patent case based upon trial counsels’ conduct in misleading the court about evidence of an on-sale bar.  The Federal Circuit ruled that because the parties in the underlying action settled, … Read More