Michael E. McCabe Jr.

Latest Articles

The USPTO’s Office of Enrollment and Discipline (OED) exists, in large part, to ensure that patent and trademark practitioner are practicing ethically and in accordance with the Office’s Rules of Professional Conduct.  The OED’s staff includes a dozen attorneys, many of whom have practical experience in the area of IP law.  Whether you have been practicing law for many years or are just starting in the field of IP law, here are five things you…
The co-chair of Willkie Farr, Gordon Caplan, was named today in an unsealed federal indictment. The result of an FBI investigation dubbed “Operation Varsity Blues,” Caplan, as well as dozens of other well-to-do parents, was involved in what the U.S. Attorney’s Office calls a “nationwide conspiracy that facilitated cheating on college entrance exams and the admission of students to elite universities.” Caplan, a lawyer who has practiced for 25 years without any published discipline, was…
I was on a long flight recently and had the misfortune of sitting behind two lawyers for several hours.  For almost the entire duration of the flight, the attorneys were involved in a detailed discussion about what was obvious (to me anyway) to be a client matter.  They were discussing an upcoming deposition, strategical issues, and client communications.  And they had legal documents open on their laptops that I could easily see on their screens…
For decades, regulators and courts have ruled that sex with a client during the course of the professional relationship is unethical. Nonetheless, lawyers continue to flout precedent and are frequently disciplined for engaging in sexual relations with their clients. Some cases of impermissible attorney-client sex are no brainers–such as the attorney who insists on a “legal services-for-sexual services” fee arrangement. Still, many attorneys believe that as long as the relationship is consensual, what happens between…
A federal court in Alabama yesterday disqualified a law firm from representing a new client in a patent infringement case against a current firm client. In Southern Visions, LLP v. Red Diamond, Inc. (N.D. Ala. Feb. 26, 2019), the court held that Bradley Arant Boult Cummings (“Bradley”) was ethically barred from representing one client (Southern Visions) against another client (Red Diamond).  The court found that disqualification was required because the law firm had a present…
If you represent a corporation, do you represent all entities in the corporate family? For example, if you represent a parent company, does that mean you also represent the parent’s subsidiaries? Does it matter if a subsidiary is wholly-owned vs. partially owned? How about if you represent a subsidiary–does that mean you also represent its parent or grandparent entity in the corporate tree? Many corporate entities are parts of families that can include parents, subsidiaries,…
On February 6, 2019, the Colorado Supreme Court shuttered a Colorado business, which once billed itself as an “expert patent law” firm, and its owner, for engaging in the unauthorized practice of law. According to the Court’s order (here), Intelligent Patent Services, LLC (IPS) and its non-lawyer owner, Dak Steiert, are enjoined from engaging in the unauthorized practice of law in the State of Colorado. The Colorado court also ordered IPS and Steiert…
Malpractice in patent prosecution can be an expensive (very expensive) and time-consuming proposition. Defense costs alone can run well into the seven figures. No patent prosecutor or law firm wants to face that kind of exposure. On February 21, 2019, I will be presenting a 90-minute CLE webinar hosted by Strafford on best practices for minimizing the risks of being sued for malpractice arising from patent prosecution. Here is the announcement of our program: This…
I am frequently contacted by patent and trademark practitioners who have been served with a “Request for Information and Evidence Under 37 C.F.R. 11.22(f)” from the Director of the Office of Enrollment and Discipline (OED) of the U.S. Patent and Trademark Office (PTO).   In Fiscal Year 2018, the OED Director issued over 100 such “Requests” (also referred to as “RFIs”).  Some clients come to me after they have already answered an RFI on their own…
What does the Chinese government’s decision to pay its citizens to apply for and register trademarks with the USPTO have to do with IP attorney ethics?   Plenty, as it turns out. As recently reported by the American Bar Association, see article doctored-trademark-specimen, the USPTO is experiencing “a plague of fake, doctored and digitally altered specimens” filed with new Section 1(a) “use based” trademark applications.  Many of these applications originate from international applicants, particularly those…