Michael E. McCabe, Jr.
9233 Fall River Lane, Potomac, Maryland
mike@ipethicslaw.com; (301) 538-1110

LEGAL EXPERIENCE:

Experienced expert in field of Intellectual Property Law including representation of patent and trademark attorneys, law firms, corporate counsel, and federal government employees involving legal ethics matters. Decades of Intellectual Property and commercial litigation experience for multi-national corporate clients in patent and trademark related cases before federal courts in many jurisdictions. Nationally renowned speaker on legal ethics and regulatory compliance, particularly relating to Intellectual Property law. Credited as a leading attorney in matters involving application of rules of professional conduct regarding patent and trademark law.

INTELLECTUAL PROPERTY, ETHICS & LITIGATION:

McCabe Law LLC, Intellectual Property (IP) Ethics Law, Potomac, MD 2017-Present
Principal and Founder

  • _Founded practice as registered Patent Attorney to better serve IP clients with proactive risk management counsel by ensuring that business and legal affairs are compliant with applicable federal and state Rules of Professional Conduct
  • _Utilize knowledge as prior Director of large IP Law Firm to assist clients in formulating best practices within their organizations regarding avoidance of conflicts of interest and inequitable conduct, proper documentation, and management oversight
  • _Expert in representing clients involved in USPTO Ethics Investigations and commended for research and detailed knowledge in unique and complex niche of ethics within IP law
  • _Represent lawyers and patent agents charged with ethics violations in disciplinary enforcement actions brought by the federal government
  • _Recognized as dynamic speaker, authoritative commentator, and published author on ethical issues in practice of intellectual property law

Funk & Bolton, PA, General Practice Law Firm 2011-2017
Partner & Attorney Ethics Practice Group Founder

  • _Created and initiated practice group in Funk & Bolton focused on representation of patent and trademark lawyers in ethics counseling, government investigations, and formal disciplinary proceedings
  • _Hired by Department of Justice as Special Ethics Counsel to represent a federal government patent attorney accused of unethical conduct
  • _Publicly commended by prominent legal internet sites for launching first-ever niche-focused blog concentrating on intellectual property and legal ethics, which addresses new developments, interpretations, resources, and best practices in informative and user-friendly format
  • _Published chapter by American Bar Association in reference book regarding confidentiality and the attorney-client privilege
  • _Represented institutional clients in patent and other commercial claims before federal courts and administrative agencies

Oblon, Spivak, LLP, Intellectual Property Law, Alexandria, VA 1999-2011
Partner, Director & Risk Management Chair

  • _Represented domestic and foreign clients in patent litigation involving diverse areas of technology, opinions relating to patent validity and infringement, and drafted and prosecuted patent applications before the USPTO
  • _Promoted to Chief Legal Compliance Officer to manage firm’s functions in legal ethics, professional responsibility, risk management, and malpractice avoidance to ensure PTO and state ethics compliance
  • _Served as Arbitrator in binding proceeding to resolve ownership dispute of IP rights between competing clients through review of legal briefs, documentary evidence and witness testimony to reach appropriate decision
  • _Elected to Shareholder and Board of Directors due to trusting reputation for liaison and discretion with strong analytical and communication skills to serve interests of attorneys and firm
  • _Recognized as Intellectual Property expert through IP published works and speaking engagements in legal and academia communities (see below list)

McDermott, Will & Emery, Partner, IP Litigation, Washington, DC 1995-1999
(Merged with Lowe, Price, LeBlanc & Becker)

Shapiro & Olander, Associate, General Practice, Baltimore, MD 1992-1995

  • _Represented corporate and individual clients in litigating patent, trademark, and copyright disputes before federal district courts and the International Trade Commission
  • _Initiated IP Department (at Shapiro) to represent inventors and companies in patent and trademark clearances, opinions, applications, IP licensing rights, and employer contract protocols for ownership of intellectual property

GOVERNMENT PROFESSIONAL EXPERIENCE:
NASA / Goddard Space Flight Center, Greenbelt, MD 1985-1989

Engineer

  • _Conducted microgravity testing of new types of heat transfer systems for integration in the NASA Space Station, analyzed performance data, and delivered recommendations to senior management
  • _Served as Goddard representative in collaboration with U.S. Air Force to develop high-power spacecraft thermal management systems, and authored and presented technical paper on project results at international engineering conference

HONORS/AWARDS:

  • _Included multiple times in Washington DC Best Lawyer’s List for patent and intellectual property law, and Super Lawyers for professional liability, 2018
  • _Elected as Baltimore “Patent Lawyer of the Year” in 2015 by Best Lawyers
  • _Awarded “Best Legal Blog of 2016” for niche and specialty area
  • _Co-Vice Chair, ABA-IP Law Section Ethics and Professional Resp. Committee, 2017-18
  • _Named as one of World’s Leading IP Strategists by Intellectual Asset Management, 2018
  • _Rated AV Preeminent Peer Review” for highest level of professional excellence, 2018

EDUCATION / LICENSING:

University of Baltimore School of Law, Baltimore, MD, Juris Doctor, 1992

Magna cum laude

  • _Law Review and National Moot Court Competition (Team Captain)
  • _American Jurisprudence book award for highest grade in Civil Procedure, Torts, Criminal Law and Constitutional Law

University of Maryland, College Park, Bachelor of Science in Mechanical Engineering – 1985

Professional Admitted Bar Licenses:

  • _Maryland (1992), District of Columbia (1993) and Virginia (2009)
  • _U.S. District Courts – Maryland, District of Columbia, E.D. and W.D. Virginia
  • _U.S. Court of Appeals – First, Fourth, D.C. and Federal Circuits
  • _U.S. Supreme Court
  • _USPTO Registered Patent Attorney (No. 37,182, since 1993)

TEACHING / LECTURING EXPERIENCE:

Johns Hopkins University, Baltimore, MD 2014-2018

  • _Guest Lecturer – Patent Law

Antonin Scalia Law School - George Mason University, Arlington, VA 2008-2011

  • _Guest Lecturer – Advanced Patent Law
  • _Adjunct Professor – Design Patent Law

Virginia State Bar Professionalism Course, Arlington, VA 2011-2014

  • _Faculty – Annual all-day ethics course for new Virginia Bar members
  • _Concentrated on ethics issues for new IP lawyers

SPEECHES / PRESENTATIONS:

  • _Ethical Considerations for Teleworking and Multijurisdictional Practice for the IP Lawyer, presented at Oregon Patent Law Association (OPLA) – Salishan Patent Law Conference, Gleneden Beach, OR (Apr. 14, 2018)
  • _2018 IP Ethics and Risk Management Update, webinar sponsored by CNA Intellectual Property / Lawyers Professional Liability Webinar Series (Mar. 26, 2018)
  • _Ethics Before the PTAB, presented at 2018 PTAB Bar Association Annual Conference, Washington, DC (Mar. 23, 2018)
  • _Risky Business – Ethical Issues & Professional Considerations for Young Lawyers, webinar sponsored by ABA-Young Lawyers Action Group (YLAG) and ABA-IP Section Ethics and Professional Responsibility Committee (Mar. 9, 2018)
  • _Brave New World: Technology Advances Create Ethical Risks for IP Attorneys, presented at 13th Annual Advanced Patent Law Institute – _The University of Texas School of Law, Alexandria, VA (Mar. 1, 2018)
  • _IP and Technology: Ethical Risks, presented at 2018 Utah IP Summit – Intellectual Property Section of the Utah State Bar, Salt Lake City, UT (Feb. 23, 2018)
  • _Conflicts of Interest in IP Law: Ethical Problems & Their Solutions, in-house ethics seminar presented for Pillsbury Winthrop Shaw Pittman, McLean VA (Feb. 6, 2018)
  • _What Every IP Lawyer Should Know About Conflicts of Interest, in-house ethics seminar presented for Birch Stewart Kolasch Birch, Fairfax, VA (Jan. 31, 2018)
  • _Ethics Issues in PTAB Proceedings, a 90-minute ethics webinar sponsored by the American Intellectual Property Law Association (Dec. 13, 2017)
  • _Keeping the Lights on and the OED off Your Back: Ethical Conduct in the Practice of IP Law, a two-hour ethics presented at 2017 Iowa State Bar Association eCommerce & Intellectual Property Seminar, Des Moines, IA (Dec. 1, 2017)
  • _Outsourcing Patent Work: Avoiding Pitfalls, a webinar sponsored by Intellectual Property Owners Association (IPO) (Nov. 16, 2017)
  • _Tales from the OED Crypt: Scary (and True) Stories About Ethics & Discipline at the PTO and Ethics Issues in Dealing with Foreign Associates and Foreign Clients, two speeches presented at IPRP 2017 Fall Seminar, Washington, D.C. (Nov. 1, 2017)
  • _Advanced Intellectual Property Ethics for the IP Practitioner, broadcast live by Lawline, New York, NY (Oct. 26, 2017)
  • _Ethics in the Practice of Patent and Trademark Law, presented at 2017 American Bar Association IP Law Section IP West Program, Long Beach, CA (Oct. 12, 2017)
  • _An Intellectual Property Ethics Roundtable Discussion, presented to Boston Patent Law Association Ethics Committee, Boston, MA (Oct. 2, 2017)
  • _Conflicts of Interest for the IP Practitioner, presented at 27th All Ohio Annual Institute on Intellectual Property, Cincinnati, OH (Sept. 13, 2017) and Cleveland, OH (Sept. 14, 2017)
  • _Patent Counsel Ethical Engagement and Disengagement Letters, sponsored by Strafford Webinars (July 27, 2017)
  • _The Ethics of Working Remotely: Preventing Problems Before They Happen, a 90-minute webinar sponsored by the American Intellectual Property Law Association (June 21, 2017)
  • _When Good Lawyers Go Bad: Common Ethics Mistakes by IP Practitioners, a webinar sponsored by the Association of Intellectual Property Firms (June 20, 2017)
  • _Identifying and Resolving Ethical Conflicts of Interest in Patent Prosecution, a webinar sponsored by the American Bar Association Landslide Webinar Series (Apr. 18, 2017)
  • _IP Ethics Panel Discussion, presented at the ABA Section of Intellectual Property Law, 32nd Annual Intellectual Property Law Conference, Arlington, VA (Apr. 6, 2017)
  • _Advice of Counsel Defense in Patent Litigation: Protecting Attorney-Client Privilege, sponsored by Strafford Webinars (Mar. 16, 2017)
  • _Surviving the Perfect Protostorm: An Anthology of Recent IP Malpractice Decisions, presented at Washington State Bar Association 22nd Annual IP Institute, Seattle, WA (Mar. 10, 2017)
  • _Bringing Home the Bacon: It’s All About the Clients, presented at Maryland State Bar Association’s Law Office Management Assistance program, Baltimore, MD (Mar. 4, 2017)
  • _Mind Your Manners! Or, Ethics and Inequitable Conduct Before the PTAB, presented at the PTAB Bar Association Inaugural Conference, Washington, DC (Mar. 3, 2017)
  • _Recent Developments in IP Malpractice Litigation, presented at the 2017 Utah IP Summit CLE Symposium, Salt Lake City, UT (Feb. 24, 2017)
  • _So You Want to Live in Timbuktu? Ethical Considerations for the IP Practitioner Working in a Virtual Law Office, presented at the 2017 American Intellectual Property Law Association – Mid-Winter Institute, Ft. Lauderdale, FL (Feb. 4, 2017)
  • _The Dangers of Dabbling: IP Ethics Issues at the USPTO, presented at the 2016 Iowa State Bar Annual Intellectual Property Law Seminar, Des Moines, IA (Dec. 2, 2016)
  • _Ain’t Misbehavin: Avoiding Ethical Problems at the USPTO, live broadcast presented by LawLine, New York, NY (Oct. 28, 2016)
  • _Legal Ethics for the Paraprofessional–What You Don’t Know Can Hurt You, presented at The National Association for Legal Professionals 2016 Education Conference and National Forum, Nashville, TN (Oct. 7, 2016)
  • _Why Me? Ethical Issues in IP Law and Avoiding USPTO Discipline, presented at The Carolina Patent, Trademark & Copyright Law Association Fall Meeting, Kiawah Island, SC (Sept. 23, 2016)
  • _IP Ethics Panel, presented at the American Conference Institute Paragraph IV Master Disputes Symposium, Chicago, IL (Sept. 20, 2016)
  • _Hack This: Cyber Security Practices and Ethical Duties for IP Law Firms and Risky Business: Ethical Challenges Facing IP Law Firm Management, two speeches presented at the Association of Legal Administrators 2016 Intellectual Property Conference for Legal Professionals, Washington, DC (Sept. 15, 2016)
  • _Hot Ethics Topics for the Patent Practitioner, ethics webinar sponsored by Iowa State Bar Association (September 13, 2016)
  • _Recent Developments at the USPTO Office of Enrollment and Discipline, presented at the Attorneys’ Liability Assurance Society Patent Consultation Group Roundtable, Chicago, IL (August 4, 2016)
  • _Legal Ethics and Professional Responsibility: Avoiding Conflicts of Interest, Maintaining Confidentiality, and other Special Concerns for the Biosimilars Space, presented at the American Conference Institute Biosimilars Summit, New York, NY (June 15, 2016)
  • _The Ethics of Outsourcing Legal Services and Functions, presented at the Practicing Law Institute 10th Annual Patent Law Institute, San Francisco, CA (May 5, 2016) and New York, NY (Apr. 14, 2016)
  • _Conflicts and Ethical Issues in IP Practice, a two-hour ethics program presented at the Arizona Bar IP Section Meeting, Second Annual CLE in the Gardens, Phoenix, AZ (Apr. 8, 2016)
  • _Roger Boisjoly and the Ethical Lessons Learned from the Space Shuttle Challenger Disaster, keynote speech presented at the 2016 University of Maryland Order of the Engineer induction ceremony, College Park, MD (Mar. 29, 2016)
  • _Deja Vu All Over Again – Recurring Ethics Issues in IP Law, a two-hour ethics CLE presented at the Washington State Bar Association Spring 2016 IP Institute, Seattle, WA (Mar. 11, 2016)
  • _The Duty of Candor to the Tribunal, a panel discussion moderated by Michael E. McCabe, Jr. at the George Washington University School of Law for the Giles S. Rich American Inns of Court, Washington, DC (Feb. 23, 2016)
  • _Conflicts of Interest in Patent Prosecution after Maling v. Finnegan, a webinar sponsored by the Intellectual Property Owners Association (Feb. 10, 2016)
  • _Gotcha! Fee-Shifting in IP Litigation Can Trigger OED Ethics Investigation and USPTO Discipline, presented at the American Intellectual Property Law Association Mid-Winter Institute, La Quinta, CA (Jan. 30, 2016)
  • _Issues in IP Ethics, presented at a meeting of the Houston Intellectual Property Lawyer’s Association, Houston, TX (Nov. 17, 2015)
  • _IP Ethics and Risk Management, presented at IPRP Fall 2015 Seminar, New York, NY (Nov. 9, 2015)
  • _IP Ethics – Recent Developments, an in-house firm-wide CLE presented to McCarter & English, LLP, Boston, MA (Oct. 16, 2015)
  • _Breaking Good–Essentials for the Ethical IP Attorney, presented at the American Bar Association IP Law Section Annual Meeting, Chicago, IL (July 31, 2015)
  • _Subject Matter Conflicts in IP Practice, presented at the Association of Professional Responsibility Lawyers Annual Meeting, Chicago, IL (July 31, 2015)
  • _Ethics in IP, presented at a meeting of the New Jersey Intellectual Property Law Association (NJIPLA), Iselin, NJ (Dec. 10, 2014)
  • _Ethical Issues in Patent and Trademark Practice: A Practitioner’s Guide to the USPTO’s New Ethics Rules and Responding to OED Disciplinary Investigations, presented live and by video at Virginia CLE, Charlottesville, VA (Apr. 4, 2013)
  • _Recent Developments in Intellectual Property Prosecution and Litigation Ethics, webinar sponsored by the Virginia State Bar Intellectual Property Section (May 10, 2011)
  • _Recent Trends in Inducing Infringement and Divided Infringement, webinar sponsored by Managing Intellectual Property (Dec. 2010)
  • _The Growing Popularity of the International Trade Commission as a Preferred Forum for Enforcing U.S. Patent Rights, presented at Domestic Impact of Intellectual Property in a Global Economy Symposium sponsored by University of Baltimore School of Law (Mar. 26, 2010)
  • _Attorney-Client Privilege in Patent Proceedings - Strategies for Preserving Confidential Communications, webinar sponsored by Insurance Law and Litigation Reporter of Strafford Publications (June 2008)
  • _Navigating the Risks of Inequitable Conduct, keynote speech presented at CNA's Fourth Forum on Addressing the Risks of Intellectual Property Practice (May 2007)
  • _Understanding the Discovery Process in U.S. Patent Litigation, presented at EuroLegal Conference, London, England (Oct. 1, 2002)

PUBLICATIONS REGARDING INTELLECTUAL PROPERTY / ETHICS:

  • _Are Your Firm’s Foreign Associate Practice’s Ethical?, Vol. 29, Issue 1, Michigan IPLS Proceedings, a quarterly journal published by the Intellectual Property Law Section of the Michigan State Bar (Feb. 2018)
  • _Maryland Conflict of Interest Law, Vol. 27, Issue 2, DRI Happenings – The Newsletter of the Life, Health and Disability Committee (June 7, 2016)
  • _Representing Clients with Diminished Capacity, published in Wealth Management.com (Oct. 19, 2015)
  • _The Rat Rule in IP Litigation—A Threat to Report Another’s Unethical Conduct for Strategic Advantage is Unethical and May be Illegal, Vol. 21, No. 5, IP Litigator (Sept./Oct. 2015)
  • _USPTO No Safe Haven for Suspended or Disbarred Attorneys, Vol. 21, No. 4, IP Litigator (July/Aug. 2015)
  • _Ethics are Not Just for Lawyers – The Legal Duties of Law Firm Paraprofessionals, published in @Law, the NALS Magazine for Legal Professionals (Summer 2015)
  • _USPTO is on the Lookout for Ethical Misconduct, published in Law360 (May 26, 2015)
  • _IP Counsel Who Blindly Follow Client “Instructions” Risk Losing Law License, published in Vol. 21, No. 3, IP Litigator (May/June 2015)
  • _USPTO’s New Ethics Rocket Docket for Attorney Discipline, published in Law360 (Oct. 30, 2013)
  • _Attorney-Client Privilege and Work-Product Immunity in Patent Litigation, chapter 17 in The Attorney-Client Privilege in Civil Litigation – Protecting and Defending Confidentiality (5th ed., 2012; 4th ed. 2008) (American Bar Association)
  • _Recent Developments in Patent Law and their Impact on the Pharmaceutical and Biotechnology Industries, Vol. 19, No. 2 University of Baltimore Intellectual Property Law Journal (Spring 2011) and speech (March 2011)
  • _Richardson v. Stanley Works, Inc., Maryland State Bar Association, Intellectual Property Section (June 2010 Annual Meeting)
  • _Egyptian Goddess Puts Teeth Back in US Industrial Design Rights, Intellectual Property Watch (Nov. 12, 2008)
  • _A Renewed Interest by the Supreme Court in the Field of Patent Law: eBay v. MercExchange and KSR v. Teleflex, Vol. 44, No. 1 Computer Law Reporter (Sept. 2006) and Vol. 7 Internet Law & Business (Sept. 2006)
  • _Look Again! Capitalizing on IP Assets, Trademark World: The Price of IP (May 2006) (published in Europe)
  • _May a Practitioner Both Act as a Counsel in an Interference and Testify as to His or Her Diligence In Preparing an Application?, Vol. 13, No. 3 Intellectual Property Today (Mar. 2006)
  • _Back in the Box - Retiring the Adverse Inference Rule, Issue 168 Patent World (Dec. 2004/Jan. 2005) (published in Europe)
  • _Impact of the CAFC's Knorr-Bremse Decision and Answers to Japanese Companies' Most Important Questions About Opinions of Counsel in U.S. Patent Litigation, Vol. 54, No. 13 Intellectual Property Management (Dec. 2004) (translated into Japanese/published in Japan)
  • _Understanding Discovery in U.S. Patent Litigation, Patent World, a three-part series No. 147 (Nov. 2002); No. 148 (Dec. 2002/Jan. 2003); No. 149 (Feb. 2003/Mar. 2003)
  • _Attorney-Client Privilege and Work Product Immunity in Patent Litigation, book chapter published in Anthony B. Askew and Elizabeth C. Jacobs 2001 Intellectual Property Law Update (Aspen Law & Business) (Jun. 2001)
  • _Ethical and Local Rule Restrictions on Investigations of Potential Jurors and Post-Trial Contact with Jurors, ABA-IP Law Section (Dec. 1995)     

QUOTED AS LEGAL EXPERT IN MEDIA:

  • _Lawyers Have an Ethical Duty to Safeguard Confidential Information in the Cloud, ABA Journal (April 2018)
  • _Legal Combat – When Companies Sue Their Outside Counsel, It Can Be One Brouhaha, Corporate Counsel (Mar. 2018)
  • _USPTO Trying Out Diversion for Struggling Practitioners, Bloomberg BNA (Nov. 15, 2017)
  • _Patent Office Unveils Program for Attorneys with Addiction Issues, Reuters Legal (Nov. 5, 2017)
  • _Did McKool Smith Violate Prosecution Bar in High-Profile Patent Case?, The Recorder (Sept. 15, 2017)
  • _Ex L’Oreal Atty Faces Tough Road in Wrongful Firing Case, IP Law360 and Legal Ethics 360 (July 31, 2017)
  • _Greenberg Traurig Agrees to Withdraw from Case in Which it was Faced with Conflict of Interest, The American Lawyer Daily Business Review (May 24, 2017)
  • _USPTO Suspends Former Niro Junior IP Attorney for 18 Months, The American Lawyer (Mar. 6, 2017)
  • _Dispute Between USPTO and Controversial Trademark Filer Ends, World Trademark Review (Feb. 21, 2017)
  • _IP Atty-Client Privilege Faces Challenges After Halo, Law360 (Jan. 20, 2017)
  • _A New Front in the IP Wars, The American Lawyer (Dec. 2016)
  • _Is It Disrespectful to Send an Associate to Court? Maybe Not, Law.Com (Sept. 27, 2016)
  • _Order Disqualifying Dentons is Vacated, Leaving Verein Conflicts Issue Unresolved, Vol. 21, No. 8 ABA/BNA Lawyers’ Manual on Professional Conduct (Apr. 20, 2016)
  • _Texas Ruling Sets High Bar for Patent Malpractice Claims, Law360 (Mar. 30, 2016)
  • _5 Tips to Avoid IP Malpractice Suits, Law360 (Nov. 20, 2015)