Avoiding USPTO Discipline: Five Recommendations for IP Practitioners

Michael E. McCabe, Jr.Competence, Conflicts of Interest, IP Ethics, Malpractice, OED, Office of Enrollment and Discipline, Patent Malpractice, Patent Prosecution Malpractice, Patent Subject Matter Conflicts, USPTO Ethics Investigation, USPTO OED, USPTO Rules of Professional ConductLeave a Comment

The USPTO’s Office of Enrollment and Discipline (OED) exists, in large part, to ensure that patent and trademark practitioner are practicing ethically and in accordance with the Office’s Rules of Professional Conduct.  The OED’s staff includes a dozen attorneys, many of whom have practical experience in the area of IP law.  Whether you have been practicing law for many years … Read More

Attorney-Client Sex: A Bad Idea That’s Also Unethical

Michael E. McCabe, Jr.ABA Model Rules of Professional Conduct, Conflicts of Interest, Legal Ethics, Moral turpitide1 Comment

For decades, regulators and courts have ruled that sex with a client during the course of the professional relationship is unethical. Nonetheless, lawyers continue to flout precedent and are frequently disciplined for engaging in sexual relations with their clients. Some cases of impermissible attorney-client sex are no brainers–such as the attorney who insists on a “legal services-for-sexual services” fee arrangement. … 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

All In The Family: The Tricky Ethics Of Corporate Affiliate Conflicts

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

If you represent a corporation, do you represent all entities in the corporate family? For example, if you represent a parent company, does that mean you also represent the parent’s subsidiaries? Does it matter if a subsidiary is wholly-owned vs. partially owned? How about if you represent a subsidiary–does that mean you also represent its parent or grandparent entity in … 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

Breadth Of PTO Ethics Opinion Could Alter How IP Firms Interact With Foreign Associates

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Patent Ethics, PTO Ethics Rules, Unauthorized Practice of LawLeave a Comment

This post is the last of a three-part series reviewing how the USPTO interprets and applies its ethics rules to IP practitioners who represent patent and trademark clients through non-practitioner intermediaries. Where Are We Now: Evolution of PTO Ethics Opinions Thirty years ago, the PTO issued (in 1987 and 1988) ethics opinions regarding very discrete questions concerning two aspects of … Read More

Better Late Than Never: PTO Updates, Expands Ethics Advice On Client Intermediaries

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, Invention Promoters, Office of Enrollment and Discipline, Patent Ethics, PTO Ethics Decisions, Unauthorized Practice of LawLeave a Comment

This post is the second in a three-part series reviewing how the USPTO interprets and applies its ethics rules to U.S. patent and trademark practitioners who represent clients by working through non-practitioner client intermediaries. In re Mikhailova and USPTO’s Expanded Ethics Guidance Three decades after the OG Notices, the USPTO published a final order in the matter of In re … Read More

Are Your Firm’s Foreign Associate Practices Ethical?

Michael E. McCabe, Jr.Communications, Competence, Conflicts of Interest, IP Ethics, Office of Enrollment and Discipline, Patent Ethics1 Comment

It is commonplace for IP law firms in the United States to receive referrals for patent and trademark application filing, prosecution, and related services from sources other than the actual client.  In one of the most common scenarios, patent and trademark services are directed to a U.S. IP law firm through an intermediary, such as a non-U.S. law firm or … Read More