An ethics blog for IP attorneys

How to Calculate Time Limitations in OED Proceedings

By Emil Ali | June 16, 2021

One of the most common questions we receive from practitioners relates to response periods.  As a threshold matter, the OED operates under a strict one-year statute of limitations.  As such, there is a clear reason for why a staff attorney is often reticent to provide an extension of time to respond to OED’s correspondence.  However, […]

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USPTO Delays Patent Practitioner Registration Statements and CLE Certifications Until 2024

By Emil Ali | June 9, 2021

On June 10, 2021, the USPTO’s Office of Enrollment and Discipline will announce its intention  to delay by two years its previously-published requirement for biennial mandatory “registration statements” from all registered patent attorneys and agents. The USPTO’s announcement has no impact on trademark attorneys.  Last year, the USPTO published a final rule stating that the […]

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USPTO Confirms Agency “Practitioners” May Ethically Partner With Foreign Attorneys

By Michael E. McCabe, Jr. | May 27, 2021

On May 26, 2021, the USPTO clarified its position that U.S. “practitioners”—who, by definition, include only United States-barred attorneys and USPTO registered patent attorneys and agents—may form partnerships and co-own law firms with non-U.S. attorneys without violating the USPTO’s Rules of Professional Conduct.  The USPTO guidance was included in the agency’s Final Rulemaking, the purpose […]

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Inequitable Conduct: The Accusation That Could Change Your Life

By Emil Ali | January 11, 2021
Supreme Court

Patent practitioners are keenly aware that inequitable conduct allegations are commonplace in patent litigation.  A finding of inequitable conduct has numerous adverse consequences for patent owners, including the possible loss of patent rights, exposure to antitrust claims, and an award of an accused infringer’s attorneys’ fees.  Because the impact of an inequitable conduct finding is […]

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Trademark Signature Best Practices and OED

By Emil Ali | December 4, 2020

The letter comes in the mail from OED asking you a few questions about a handful of trademark applications, including whether each form was electronically signed by the respective applicant or attorney. The light bulb still has not hit—you ask yourself who is OED, and why are they asking about signatures. You read further into […]

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Balancing Newly Divergent State, USPTO Ethics Rules

By Emil Ali | September 23, 2020

This article appeared in Law360 on September 23, 2020. (Subscription Required) The rules of ethics adopted by each state are often said to be based upon or modeled after the American Bar Association’s Model Rules of Professional Conduct. While the ABA model rules provide a template for states to consider when adopting their own ethics […]

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What To Do When You Receive An OED Grievance.

By Emil Ali | August 27, 2020
USPTO Building

Whether you practice in trademark or patent law, you generally want to avoid receiving communication from the Office of Enrollment and Discipline (OED). But what happens when they send you a certified letter that includes a Request for Information and Evidence Under 37 CFR 11.22(a) (RFI)?​​ Understanding one of OED’s core missions, investigating allegations of […]

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Reducing Stress and Avoiding Mistakes in the Post-COVID-19 Era: A Must Attend Webinar for All Attorneys and Law Students

By Michael E. McCabe, Jr. | June 17, 2020

The Covid-19 pandemic and very recent societal upheaval have caused unprecedented times of stress and fear throughout all ranks of the legal profession. These difficult times have especially hit hard those who are in law school and are in the earliest phases of their professional careers. On June 18, 2020, at 1:00 pm ET, a […]

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New IP Ethics CLE: A Look at the USPTO’s Focus on Declarations

By Michael E. McCabe, Jr. | May 28, 2020

On Monday, June 1, 2020, I will be moderating an ethics webinar panel discussion on behalf of the ABA’s Intellectual Property Law Section (for which I serve as Chair of the Ethics and Professional Responsibility Committee). The webinar is entitled “A Look at the USPTO’s Focus on Declarations” and will focus on ethics issues relating […]

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Attorneys’ Ethical Duties When Representing Clients With Diminished Capacity

By Michael E. McCabe, Jr. | May 14, 2020

These days, it’s good to be a trusts and estates lawyer. While the rest of legal field is scrambling to figure out how to survive the next few weeks and months with little new business coming in and much existing business on hold, attorneys who represent the elderly and infirm report a boom in business. […]

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