An ethics blog for IP attorneys

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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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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