Mixing Inventor And Patent Prosecutor Intent To Deceive: CleanTech Muddies Inequitable Conduct Law

Michael E. McCabe, Jr.Duty of Candor, Inequitable Conduct, IP Ethics, Patent EthicsLeave a Comment

Inequitable conduct is supposed to be personal to each individual who owes a duty of disclosure to the USPTO. Thus, just because an inventor may have knowingly and intentionally lied to the USPTO does not mean that prosecution counsel did so as well. Indeed, most prosecutors are in a position where they must rely upon the apparent veracity of their … Read More

USPTO Requires Patent Bar Applicants To Disclose Expunged Or Diverted Criminal Records

Michael E. McCabe, Jr.Patent EthicsLeave a Comment

While in college, Joe Varsity is arrested for public intoxication. Joe pleads no contest, and the charge is dismissed after he completes an alcohol education class. Joe’s conviction is later expunged (or erased). Under the laws where Joe’s arrest occurred, “any person who shall have been the subject of such an erasure shall be deemed to have never been arrested … Read More

Loose Lips Sink Attorney Secrets

Michael E. McCabe, Jr.Confidentiality, Patent EthicsLeave a Comment

I was on a long flight recently and had the misfortune of sitting behind two lawyers for several hours.  For almost the entire duration of the flight, the attorneys were involved in a detailed discussion about what was obvious (to me anyway) to be a client matter.  They were discussing an upcoming deposition, strategical issues, and client communications.  And they … Read More

Federal Court DQs Law Firm in Patent Infringement Case, Rejecting Advance Conflict Waiver

Michael E. McCabe, Jr.Conflicts of Interest, IP Ethics, Legal Ethics, Litigation Ethics, Patent Ethics, Patent Litigation EthicsLeave a Comment

A federal court in Alabama yesterday disqualified a law firm from representing a new client in a patent infringement case against a current firm client. In Southern Visions, LLP v. Red Diamond, Inc. (N.D. Ala. Feb. 26, 2019), the court held that Bradley Arant Boult Cummings (“Bradley”) was ethically barred from representing one client (Southern Visions) against another client (Red … Read More

Colorado Supreme Court Shuts Down Sham “Expert” Patent Law Firm

Michael E. McCabe, Jr.IP Ethics, Lawyer Identity Theft, Legal Ethics, Patent Ethics, Unauthorized Practice of Law1 Comment

On February 6, 2019, the Colorado Supreme Court shuttered a Colorado business, which once billed itself as an “expert patent law” firm, and its owner, for engaging in the unauthorized practice of law. According to the Court’s order (here), Intelligent Patent Services, LLC (IPS) and its non-lawyer owner, Dak Steiert, are enjoined from engaging in the unauthorized practice of law … Read More

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

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

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