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

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

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 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

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