An ethics blog for IP attorneys

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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USPTO Responds to OIG Report – Continues to Blame Attorneys and Foreign Agents

By Emil Ali | August 24, 2021

Last week, we provided commentary regarding a scathing report issued by the Inspector General of the Department of Commerce (“OIG”).  Since that time, the USPTO published a blog post, penned by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, and David Gooder, Commissioner for Trademarks.  […]

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DOC OIG Slams USPTO’s Handling of Foreign Trademark Filings, U.S. Counsel Rule

By Emil Ali | August 16, 2021

On August 11, 2021, the Inspector General of the Department of Commerce (“OIG”), which oversees the USPTO, issued a scathing report on the state of the USPTO’s control over the integrity of the Trademark Register.  The report discussed a number of areas of concern, including the enforcement of the U.S. Counsel rule, as well as […]

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Top Three Things IP Practitioners Must Know When Working With Foreign Associates

By Emil Ali | June 23, 2021
China skyline

As we noted in a prior post, the USPTO has gone on record allowing U.S. practitioners to partner with foreign attorneys by way of ownership of law firms, without violating the USPTO Rules of Professional Conduct.  However, practitioners continue to be surprised when they are told that practitioner relationships with foreign associates and agents outside […]

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