Michael E. McCabe, Jr.’s article, entitled, “Are Your Firm’s Foreign Associate Practices Ethical?” was featured in a front-page article Vol. 29, Issue 1 of IPLS Proceedings (2018), a quarterly publication of the Intellectual Property Law Section (IPLS) of the State Bar of Michigan. This article first appeared in September 2017 in IPethics & INsights. The article is now being republished as a two-part series in Michigan’s IPLS.
The IPLS article addresses the USPTO ethical issues that face patent firms and patent practitioners who do business with clients through a “foreign associate” or other type of client intermediaries or liaisons. The Patent Office recently published ethical guidance on this issue that could impact the way in which firms communicate with such client middlemen. The article discusses the evolution of USPTO ethics precedent in the context of the IP lawyer-intermediary-client relationship, including the ethics issues that arise when a USPTO practitioner accepts instructions and legal fees from a non-USPTO practitioner intermediary; conflicts of interest and whether those must be disclosed to the client; fee-splitting with the middleman (and is it ethical); aiding the unauthorized practice of law; and other duties set forth in the USPTO’s Rules of Professional Conduct.
DRI’s article discussed Michael’s rare victory in a litigated USPTO disciplinary proceeding that lasted over three years. The Office of Enrollment and Discipline (OED ) prosecuted Michael’s client, a patent attorney, for violating three ethics rules. The OED Director sought Michael’s client’s disbarment or an indefinite suspension. After a trial, an administrative law judge found in favor of the OED Director and ordered Michael’s client suspended from practice before the USPTO for 18 months.
On appeal, the USPTO Director reversed, finding that the Agency violated its own Rules of Disciplinary Procedure, in violation of the Accardi Doctrine, a rule of administrative law which holds that administrative agencies are required to follow their own rules. The USPTO Director also denied the OED Director’s post-appeal efforts to correct the errors that resulted in the reversal and rejected a request for a new trial, sealing a complete victory for Michael’s patent attorney client.
Michael E. McCabe, Jr. authored Maryland Conflict-of-Interest Law
Published in Vol. 27 Issue 2 DRI Happenings – The Newsletter of the Life, Health and Disability Committee (June 7, 2016)
Michael E. McCabe, Jr. authored Representing Clients with Diminished Capacity
Published in Wealth Management.com (Oct. 19, 2015)
Michael E. McCabe, Jr. authored The “Rat” Rule in IP Litigation–A Threat to Report Another’s Unethical Conduct for Strategic Advantage is Unethical and May Be Illegal
Published in Vol. 21 No. 5, IP Litigator (Sept./Oct. 2015)
Michael E. McCabe, Jr. authored USPTO No Safe Haven for Suspended or Disbarred Attorneys
Published in Vol. 21 No. 4, IP Litigator (July/Aug. 2015)
Michael E. McCabe, Jr.and Marianna Jasiukaitis authored Ethics are Not Just for Lawyers – The Legal Duties of Law Firm Paraprofessionals
Published in @Law, the NALS Magazine for Legal Professionals (Summer 2015)
Michael E. McCabe, Jr. authored USPTO Is On the Lookout for Ethical Misconduct
Published in Law360 (May 26, 2015)
Michael E. McCabe, Jr. authored IP Counsel Who Blindly Follow Client “Instructions” Risk Losing Law License
Published in Vol. 21 No. 3, IP Litigator (May/June 2015)
Michael E. McCabe, Jr. authored
Published in IPWatchdog (Sept. 22, 2014)
Michael E. McCabe, Jr. authored
Published in Law360 (Oct. 30, 2013)