Ethical Considerations for Young Lawyers

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

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 →

Email To Bar Counsel To “Go F*#k Yourself!!!” Surefire Way To Attorney Discipline (Even In New Jersey)

Like voluntarily sticking one’s head into a lion’s den, communicating with Disciplinary Counsel can be a risky proposition.  Whatever the reason for the communication, attorneys should be mindful not only about what they are saying but how they are saying it.  This is not a difficult concept for most to grasp, but the Bar expects attorneys to conduct themselves in... Read more →

Putting Teeth Into The PTAB’s Sanctioning Powers: Is Mohawk A Sign Of Things To Come?

For federal court practitioners, sanctions have long existed as a deterrent to litigation misconduct and a weapon against gamesmanship.  The federal rules of civil procedure provide a range of tools for litigators who believe their opponents are not abiding by their obligations: Rule 11 checks improper pleadings and other court filings; Rules 26, 30 and 37 curb improper discovery and... Read more →

Colorado Man Stole Lawyer’s Identity To Create Fictional Online Law Firm: Criminal Complaint

Prosecutors in Eagle County, Colorado have filed a five-count criminal complaint against Dak Steiert, alleged mastermind behind a fictitious IP law firm.  According to state prosecutors, Steiert stole the identities of a real patent lawyer and two others to create a fake law firm which he used to lure unsuspecting inventor “clients” into paying thousands of dollars for patent applications... Read more →

PTO Excludes Patent Attorney Who Paid Client To Deep-Six Ethics Complaint

Money can buy many things.  When a lawyer and client have a dispute, such as a client’s claim for legal malpractice, money often can buy “peace.”  And when clients and their lawyers settle such a  dispute, it is common for the parties to agree by contract to dismiss—or refrain from filing—a civil complaint. But a lawyer’s ability to buy peace... Read more →

May The LegalForce Be With You: California IP Firm Sues To Stop LegalZoom’s Unauthorized Practice Of Trademark Law

A California IP law firm today filed a lawsuit in federal court seeking to stop LegalZoom for what it alleges are the on-line company’s pervasive and unabated unauthorized practice of trademark law (UPL), in violation of the Rules of Professional Conduct, antitrust law, and state and federal unfair competition law, among other causes of action. LegalForce RAPC Worldwide, P.C. (“LegalForce”),... Read more →

Fake Law Firm Misappropriated Practitioners’ Identities To Deceive Inventors: Complaint

From its website, “Intelligent Patent Services, LLC” (or IPS) appeared to have all of the trappings of a legitimate patent law firm.  The website included lots of content to back its self-proclaimed status as a “Patent Law Firm.”  The website boasted of supposed connections with legitimate organizations, claiming  its co-founders worked for Stanford University’s Office of Technology Licensing. Dak Steiert,... Read more →

Intellectual Ventures Prevails In Capital One Antitrust Suit

On Friday, a Maryland federal judge granted summary judgment in favor of Intellectual Ventures on Capital One’s claims that IV’s acquisition and enforcement of patents relating to banking services violated U.S. antitrust law.  In a 53-page memorandum Opinion, Judge Paul W. Grimm found that IV’s conduct in obtaining and enforcing its patents was immune from antitrust liability based on the... Read more →

OED Launches Diversion Program As Alternative To Traditional Attorney Discipline

In a welcome response to the growing epidemic of drug and alcohol abuse among members of the legal profession, the Office of Enrollment and Discipline (OED) of the USPTO announced today it has initiated a new disciplinary diversion program that focuses on treatment rather than punishment.  The OED’s Diversion Program, which will initially begin as a two-year “pilot program,” aligns... Read more →

So These Two Lawyers Walk Into A Bar . . . .

What sounds like the start of a joke is no laughing matter–at least not for two White House attorneys. As widely reported last week, Don McGahn and Ty Cobb, President Trump’s lawyers, were overheard at a popular D.C. restaurant discussing/arguing about a highly confidential matter concerning their client: namely how cooperative The White House should be with Robert Mueller’s investigation... Read more →

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

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

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?

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 →

Portus Drops Subject Matter Conflict Claim Against Kenyon; Alleges Firm’s Prosecution Malpractice Shortened Patent Term By 3+Years

For the past year, Portus Singapore Pte. Ltd. (“Portus”), a former client of the now-defunct Kenyon & Kenyon (“Kenyon”) law firm, has been trying to get a claim for legal malpractice to stick against its former IP counsel.   So far, Portus’ efforts have been unsuccessful.  On July 28, 2017, Portus took its third bite at the apple and filed another... Read more →

Mandatory Ethics Training For Patent Agents Is Long Overdue

What formal ethics training is required of a U.S. patent agent?  None. What minimal level of competency in ethics must a patent agent demonstrate in order to qualify for a license to practice patent law before the USPTO?  Again, the answer is “None.” For attorneys, ethics training is of considerable importance.  It starts in law school.  Accredited law schools require... Read more →

Law, Drugs, Addiction, Death.

The addiction crisis and its impact on the legal profession are the subjects of two recently published articles. The first is The Lawyer, The Addict, published on July 16 in The New York Times (sub. req.).  It is a powerful story written by the ex-wife of a Silicon Valley-based IP partner.  She recounts her former husband’s painful descent from 20... Read more →

Disciplinary Actions Rise Against Lawyers Who Commit Acts of Domestic Violence: Know The Warning Signs

The statistics of reported cases of domestic violence are stunning.  According to the National Coalition Against Domestic Violence (NCADV), 1 in 3 adult women and 1 in 4 adult men have been victims of some form of physical violence by an intimate partner.  Moreover, 1 in 4 women have been victims of “severe physical violence by an intimate partner” in their... Read more →

Sue-And-Settle NPE Patent Litigation Tactics May Violate USPTO Ethics Rules

Non-practicing entities who engage in a pattern of filing numerous lawsuits without any intention of testing the merits, solely to extract low ball settlements, should take note that the USPTO’s Office of Enrollment and Discipline (OED) takes a keen interest in such conduct.  A recent “exceptional case” decision in a patent case from federal court in California should give pause... Read more →