FAQs For IP Practitioners Who Receive A Request For Information and Evidence Under 37 CFR 11.22(f) From USPTO/OED

Michael E. McCabe, Jr.Patent EthicsLeave a Comment

I am frequently contacted by patent and trademark practitioners who have been served with a “Request for Information and Evidence Under 37 C.F.R. 11.22(f)” from the Director of the Office of Enrollment and Discipline (OED) of the U.S. Patent and Trademark Office (PTO).   In Fiscal Year 2018, the OED Director issued over 100 such “Requests” (also referred to as “RFIs”).  … Read More

OED Investigates TM Attys Who File Altered Or Fake Specimens: The China Syndrome

Michael E. McCabe, Jr.Communications, Competence, Legal Ethics, Office of Enrollment and Discipline, Trademark ethicsLeave a Comment

What does the Chinese government’s decision to pay its citizens to apply for and register trademarks with the USPTO have to do with IP attorney ethics?   Plenty, as it turns out. As recently reported by the American Bar Association, see article doctored-trademark-specimen, the USPTO is experiencing “a plague of fake, doctored and digitally altered specimens” filed with new Section 1(a) … Read More

Leaving South Tahoe: Will Your Advance Conflict Waiver Survive Sheppard Mullin v. J-M Manufacturing?

Michael E. McCabe, Jr.Advanced Waivers, Conflicts of Interest, Fee Dispute, IP Ethics, Legal EthicsLeave a Comment

On Friday, August 30, 2018, the California Supreme Court ruled that a blanket advanced conflict waiver signed by two current clients, which purported to authorize lawyers from Sheppard Mullin to accept an unrelated representation of one client adverse to another, was void against public policy because the firm failed to obtain informed consent.  Even though the engagement agreement was legally … Read More

ABA Approves Changes To Attorney Advertising Ethics Rules

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, Advertising, Legal Ethics, Social Media Ethics, SolicitationLeave a Comment

The American Bar Association’s House of Delegates approved on Monday an overhaul to its ethics rules governing attorney advertising and solicitation.  The ABA vote on Monday capped a four-year effort to modernize ethics rules promulgated in the 1980s–long before the Internet forever changed how lawyers market their services and communicate with prospective clients. The ABA’s vote was spurred on by … Read More

Seeking National Uniformity, California (Finally) Adopts New Ethics Rules

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, Multijurisdictional Practice1 Comment

California is an outlier no more–at least when it comes to its ethics rules. On May 10, 2018, the California Supreme Court issued an order approving the adoption of a new set of Rules of Professional Conduct patterned after the ABA Model Rules, which were first published in 1983.  The court’s ruling means that California will finally be joining the … Read More

Don’t Let The Screen Door Hit You: The Ethics Of Switching Firms

Michael E. McCabe, Jr.Confidentiality, Deceit, IP Ethics, Law Firm Breakups, Patent EthicsLeave a Comment

You are sitting at your desk when the phone rings.  It’s a head hunter. The caller tells you about an amazing opportunity with another firm across town.  That call starts a series of calls and meetings.  Eventually, the new firm offers you a position.  There are, however, two strings attached.  First, the new firm expects you to generate a certain … Read More

Ethical Considerations for Young Lawyers

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, IP Ethics CLE, Legal EthicsLeave a Comment

Many situations arise in the work place where young lawyers find themselves facing real ethical dilemmas. For example, your supervisor has asked you to do something that you believe may violate the Rules of Professional Conduct.   Or you become aware that another lawyer has engaged in conduct already that may be unethical.  Or a close friend or family member has … Read More

Practitioner Beware: Outsourcing Patent Applications May Be Illegal

Michael E. McCabe, Jr.Outsourcing, Patent Ethics1 Comment

I am solicited on an almost daily basis by overseas organizations offering deeply-discounted patent application drafting services.  It may very well be that such services, which typically originate from countries where there is an abundant supply of technically-skilled labor, can offer a competitive product at significant cost savings compared to fees charged by U.S. patent practitioners for equivalent services.  Thus, … Read More