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

Patent Prosecution Malpractice: Minimizing the Risk of Claims

Michael E. McCabe, Jr.IP Malpractice, Legal Malpractice, Malpractice, Patent Malpractice, Patent Prosecution MalpracticeLeave a Comment

Malpractice in patent prosecution can be an expensive (very expensive) and time-consuming proposition. Defense costs alone can run well into the seven figures. No patent prosecutor or law firm wants to face that kind of exposure. On February 21, 2019, I will be presenting a 90-minute CLE webinar hosted by Strafford on best practices for minimizing the risks of being … Read More

Finnegan Henderson Committed Legal Malpractice By Favoring Marking Blade Inventor Over Corporate Patent Client: Lawsuit

Michael E. McCabe, Jr.Conflicts of Interest, IP Malpractice, Patent Malpractice10 Comments

Who is an IP firm’s patent prosecution client when the firm represents a limited liability company and one of its members is the sole inventor?  Does the answer change if the LLC is never actually formed, and no one ever advises the law firm?  Those are just two questions that appear to be at the center of a malpractice lawsuit … Read More

Alston & Bird Prevails In $10 Million Patent Litigation Malpractice Suit

Michael E. McCabe, Jr.IP Litigation Malpractice, IP Malpractice, Malpractice, Patent Litigation Malpractice, Patent MalpracticeLeave a Comment

On January 26, 2017, a New York state appeals court panel affirmed a lower court’s dismissal of a $10 million malpractice complaint filed against Alston & Bird LLP.  The court held that the complaint filed by Alston’s former client, high-tech fabric maker Brookwood Cos., Inc., failed to state a plausible claim that Brookwood would have avoided millions of dollars in … Read More

IP Firm Tees Up Dismissal Of Subject Matter Conflict, Negligent Patent Prosecution Malpractice Case

Michael E. McCabe, Jr.Conflicts of Interest, District Court Litigation, Patent Ethics, Patent Malpractice, Patent Subject Matter ConflictsLeave a Comment

A recent patent malpractice action filed in federal court in New York against an IP firm raises once again the issue of subject matter conflicts between concurrent clients in prosecuting patent applications in a similar field of technology.  The issue of subject matter conflicts in concurrent patent representation continues to be an area of significant interest–and concern–for IP practitioners who … Read More

Appeals Court Rejects Belated Alice Defense, Affirms $8 Million Patent Malpractice Award

Michael E. McCabe, Jr.Malpractice, Patent Malpractice1 Comment

The United States Court of Appeals for the Second Circuit rejected yesterday a now defunct Virginia IP firm’s attempt to rely on 35 U.S.C. § 101 and the Supreme Court’s Alice decision as a defense to an $8 million damages award arising from the firm’s negligence in handling a client’s patent application. Protostorm, LLC v. Antonelli, Terry, Stout & Kraus … Read More

Texas Court Upholds Baker Botts Patent Malpractice Win

Michael E. McCabe, Jr.Conflicts of Interest, Patent Ethics, Patent MalpracticeLeave a Comment

A Dallas appeals court has upheld a trial court’s ruling in favor of Baker Botts, L.L.P. on its former client’s claim for patent malpractice based on the firm’s simultaneous representation of two clients in the same technical field. See Axcess International, Inc. v. Baker Botts, L.L.P., No. 05-14-01151-CV (Tex. App.–Dallas Mar. 24, 2016) (mem. op.) The case arose from Baker … Read More

Should A U.S. Federal Court Hear A Foreign Patent Malpractice Case Arising Under Foreign Law?

Michael E. McCabe, Jr.Malpractice, Patent MalpracticeLeave a Comment

“What do you mean ‘my patent lapsed?’ You said You Were Going To Pay The Maintenance Fees.” – Anonymous Client The failure to pay a maintenance fee when you agreed to do so can be a lawyer’s worst nightmare.  The nightmare can be made even worse when, according to the patent owner, the patented technology is so valuable that the iPhone and … Read More