District Court Affirms PTO’s Disbarment Of Patent Agent Who Practiced TM Law

Michael E. McCabe, Jr.Patent Agent, Petition to E.D. Va., Unauthorized Practice of LawLeave a Comment

On February 27, 2017, the U.S. District Court for the Eastern District of Virginia affirmed a decision by the USPTO Director excluding a registered patent agent from practice before the USPTO because the agent practiced trademark law. Factual Background Bang-er Shia became a registered patent agent in 2005; she has never been admitted to the bar of any court as … Read More

Top Seven Ethics Risks When Patent Practitioners Work With Invention Marketing Companies

Michael E. McCabe, Jr.Client Funds, Communications, Fee-Splitting, Invention Promoters, IP Ethics3 Comments

Working with invention promotion or marketing companies can be hazardous to your law license.  That is the clear message coming from the USPTO’s Office of Enrollment and Discipline, which is in charge of policing and enforcing the Rules of Professional Conduct governing patent attorneys, patent agents, and others who practice before the Office.   The OED has been coming down … Read More

Epic Ethics Legal Battle By Trademark Company Owner Ends Quietly With Resignation

Michael E. McCabe, Jr.Competence, Constitutional Law, District Court Litigation, Exclusion on Consent, Fee-Splitting, PTO Ethics Decisions, Unauthorized Practice of Law, USPTO Director DecisionsLeave a Comment

The three-year ethics saga between Matthew Swyers, owner of The Trademark Company, and the USPTO’s Office of Enrollment and Discipline (OED), ended with a whisper, with Mr. Swyers agreeing to resign from practicing before the USPTO.  By entering into what is called an “exclusion on consent” agreement, Mr. Swyers voluntarily gives up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years.  A copy of the exclusion … Read More

CAFC Finds Patent Holder’s Position On Standing “Unreasonable” And “Remarkably Weak,” Affirms Atty Fees Award

Michael E. McCabe, Jr.District Court Litigation, IP Litigation Sanctions, Litigation Ethics, Patent Ethics, Patent Litigation Ethics, Patent Litigation SanctionsLeave a Comment

On January 25, 2017, the Federal Circuit ruled a district court did not abuse its discretion when it awarded the prevailing party’s attorneys’ fees under 35 U.S.C. § 285 based upon the losing party’s conduct with respect to responding to one particular issue in discovery. In National Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc., No. 2015-1406, the Federal … Read More

Failure To Communicate No. 1 Cause Of USPTO Attorney Discipline

Michael E. McCabe, Jr.Communications, Diligence, Discipline, Failure to Communicate, Patent Ethics1 Comment

At the risk of sounding like a broken record, since it is the New Year I thought it would be helpful to remind you all, again, of what is in my opinion the First Commandment of Ethics:  Thou Shalt Communicate With Thy Clients. Seriously.  Clients do not like to be ignored by their attorneys.  This means that when they call … Read More

2016 USPTO Disciplinary Decisions – The Year In Review

Michael E. McCabe, Jr.USPTO Decisions, USPTO Director Decisions, USPTO Ethics Investigation, USPTO OEDLeave a Comment

To all of you who have been dying to know what happened in the world of ethics and discipline at the USPTO in the past year, I am pleased to say your wait is finally over.  I have written, “2016 USPTO Disciplinary Decisions — The Year in Review.” Why was The 2016 Year in Review necessary?  I for one have … Read More

USPTO Reciprocal Discipline Case Illustrates Flaw In Rules

Michael E. McCabe, Jr.Continuing Legal Education, Gross Misconduct, Moral turpitide, Office of Enrollment and Discipline, Reciprocal Discipline, USPTO Director DecisionsLeave a Comment

A recent disciplinary decision published by the USPTO Director illustrates a serious flaw in the Office’s rules governing reciprocal discipline.  In re Sanjeev Kumar Dhand, D2016-17 (USPTO Dir. Nov. 16, 2016). California Discipline The factual background of the Dhand case is eerily similar to our post from yesterday (link here).   This matter involves California-based patent attorney Sanjeev Kumar Dhand. Mr. … Read More

Lessons in Ethics: Lying About CLE Attendance Is Just So Wrong

Michael E. McCabe, Jr.Continuing Legal Education, Moral turpitide, Reciprocal Discipline1 Comment

An IP attorney continued his legal education the hard way.  He falsely represented to the California Bar that he had completed the mandatory minimum of 25 hours of continuing legal education.  In truth, he had completed zero hours of CLE.  The result: a one-year suspension. This matter involved California-based patent attorney Jens Edward Hoekendijk.  In order to remain as an … Read More