An ethics blog for IP attorneys

Lawyers Who “Dabble” In USPTO Trademark Matters Face Nightmare Of OED Ethics Investigations, Discipline

By Michael E. McCabe, Jr. | July 20, 2022

“A man’s got to know his limitations”  – Clint Eastwood, Magnum Force  (1973) The USPTO’s Office of Enrollment and Discipline has become increasingly active in the last several years, particularly in investigating business or general practice attorneys who dabble in trademark law.  Many have learned the hard way–through an ethics inquiry and possible disciplinary decisions–regarding […]

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Federal District Court dismisses claims against the USPTO by former Patent Examiner refused Registration to Practice

By Emil Ali | June 20, 2022

Co-Authored by Aditi Kulkarni and Emil J. Ali On April 26, 2022, The United States District Court for the Eastern District Court of Virginia dismissed a former patent examiner’s complaint and petition for review of the USPTO’s decision denying an application for registration to practice as a registered patent agent in a reasoned decision. The […]

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Speak No Evil: When Must You Self-Report Your Misconduct To The USPTO

By Michael E. McCabe, Jr. | May 25, 2022

A court rules a patent attorney engaged in inequitable conduct. A client sues its trademark attorney for malpractice. A state bar files ethics charges against a patent practitioner. The police arrest a patent agent for domestic violence. A litigator is sanctioned by the PTAB under Rule 11.18 for making a frivolous argument. These are situations […]

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Trademark Ethics: 5 Things That Might Keep You Up At Night

By Michael E. McCabe, Jr. | May 5, 2022

Emil Ali has been keeping very busy representing trademark practitioners in USPTO ethics investigations and disciplinary proceedings.  Next Thursday, May 12, Emil will be sharing his insights into the perilous ethical landscape faced by trademark counsel, in a live online webinar.  Every trademark practitioner should watch and learn from the mistakes others have made!  This […]

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USPTO Orders Six-Month Suspension For Patent Agent Who Lied To Client About Design App And Failed To Cooperate With OED

By Michael E. McCabe, Jr. | April 25, 2022

The USPTO has ordered a registered patent agent who allowed a patent application to go abandoned, failed to communicate with his client, and failed to cooperate with the Office of Enrollment and Discipline’s ethics investigation to serve a six-month license suspension and one-year probation.  This case presents a cautionary tale for IP practitioners and teaches […]

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Why Did A Business And Personal Injury Lawyer Get Reprimanded By OED?

By Emil Ali | April 18, 2022

The Pape Malick Indiss Djiba case is a fresh reminder to unsuspecting lawyers of the expanding jurisdiction of OED, including the ability of them to engage in reciprocal discipline, and the requirement for practitioners to self-report the imposition of discipline in other jurisdictions.   According to public advertisements, Mr. Djiba is a Texas attorney with […]

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Non-Lawyer Ownership Of IP Firms: What Practitioners Need To Know

By Emil Ali | February 2, 2022

For many years, I have had countless communications with patent and trademark lawyers regarding expanding their law firms through partnering with non-lawyers.  This might include working with patent agents, as well as venture capital firms.  Each of these, though have their own considerations, and are briefly discussed below.  These inquiries for ethics advice have only […]

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OED Announces Delay of Practitioner CLE Certification & Biennial Registration

By Emil Ali | December 15, 2021

On December 16, 2021, the USPTO will officially announce a delay in the implementation of the voluntary CLE certification program for registered practitioners, and those granted limited recognition. This follows a delay in the biennial registration statement, which will be implemented on November 1, 2024.  As these two submissions would work in concert, we understand […]

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Everything You Need to Know About Moral Character for the Patent Bar

By Emil Ali | November 8, 2021

You have passed the patent bar after months of hard work and studying the Manual of Patent Examining Procedure.  “[H]owever, you are not being registered at this time…” The letter goes on to explain that, because of your answers on the PTO FORM-158 (Application for Registration), the Director of the Office of Enrollment and Discipline […]

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Working with Chinese Trademark Agencies – A Dangerous Game, or Delicate Tightrope?

By Emil Ali | October 27, 2021

Following a recent report issued by the Department of Commerce, Office of Inspector General, as well as a plethora of recent disciplinary actions published by the USPTO’s Office of Enrollment and Discipline, many practitioners have done a retrospective analysis of their trademark practices with clients and agencies in China.  But is it time to give […]

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