Ain’t Misbehavin: Avoiding Ethical Problems at the USPTO

(970 Ratings)

Produced on: October 28, 2016

Course Format On Demand Audio

Taught by

Categories:

Course Description

Time 90 minutes
Difficulty Intermediate

The last thing any patent or trademark attorney wants to get is a certified letter from the USPTO’s Office of Enrollment and Discipline (OED). Rest assured, the OED—which investigates alleged breaches of the USPTO’s code of ethics—is not writing to congratulate the attorney on a job well done. And while the OED has served as the USPTO’s ethics police for over 30 years, many practitioners lack a fundamental grasp of the scope of the OED’s powers, the substantial resources the OED puts into weeding out what it perceives as unethical behavior, the relative speed at which the OED operates, or the extent to which a suspension or disbarment from the Patent Office can (and often does) lead to imposition of a similar suspension or disbarment from a disciplined practitioner’s State and Federal Bars. Thus, a serious disciplinary sanction from the USPTO can end an attorney’s legal career.     

This program sensitizes practitioners to the types of behavior—or alleged misbehavior—that most likely will pique the interest of the OED Director. The program will also provide practical advice for how practitioners can avoid, or at least limit the chance, that they will be the subject of such unwelcome scrutiny.

The program educates about how, exactly, the OED conducts its ethics investigations. The OED claims to have a wide ability to seek essentially unlimited discovery from the practitioner under investigation. This could include documents relating to the attorney’s clients, other matters being handled by the attorney, bank records, emails, notes, correspondence—the list is seemingly endless. The program explores how practitioners are expected to conduct themselves in the course of an OED investigation, best practices for not making matters worse, and strategies for surviving an investigation.

Most patent and trademark practitioners are members of at least one state bar, and frequently attorneys are members of multiple state and federal bars.  If a practitioner is disbarred, suspended, or otherwise publicly disciplined by the USPTO, the “pain” does not stop at the USPTO.  The practitioner is required to report the USPTO discipline to every state and federal bar to which they belong. The program addresses the interplay between USPTO and the bars of other jurisdictions and how practitioners must be mindful that discipline is not like Vegas—what happens in the USPTO does not stay in the USPTO. As a result of this interplay, an adjudicated ethics violation by the USPTO can have serious career-changing implications for practitioners who wish to preserve their state and federal law licenses.  


Learning Objectives:
  1. Understand the source and scope of the USPTO’s power to regulate the personal and professional conduct of patent and trademark practitioners
  2. Identify how IP attorneys are getting into trouble with the USPTO’s Office of Enrollment and Discipline (OED)
  3. Provide practical advice of best practices for intellectual property attorneys to avoid coming under OED scrutiny
  4. Learn what happens when the OED conducts an ethics investigation
  5. Grasp the interplay between USPTO bar and state/federal bar discipline

Faculty

Michael E. McCabe, Jr.

McCabe Law LLC

Professional Experience

Mr. McCabe is a registered patent attorney with twenty years of experience representing foreign and domestic entities and individuals across a wide array of technologies in patent and trademark matters before the federal courts and the United States Patent and Trademark Office (PTO).  He also represents practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters before the Office of Enrollment and Discipline (OED) of the USPTO and the state bars of Maryland, Virginia and the District of Columbia. 

From 1992 until 1995, Mr. McCabe was a litigation associate at Shapiro & Olander in Baltimore, Maryland, where he represented clients in commercial and insurance litigation matters.

From 1995-1999, Mr. McCabe was associated with the Alexandria, Virginia IP boutique law firm of Lowe, Price, LeBlanc & Becker, where he represented individuals and corporations in patent, trademark and copyright litigation matters.  In 1998, Michael joined the Washington, D.C. office of McDermott, Will & Emery, where he was a partner in the intellectual property litigation department focusing on patent litigation. 

From 1999-2011, Michael was a shareholder in the Alexandria, Virginia IP law firm of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., where he continued representing clients in patent litigation.  He was one of the founding members of the law firm’s Risk Management Committee, and eventually became its Chairman.  In this capacity, Mr. McCabe handled all matters pertaining to ethics issues, malpractice, and professional responsibility for over 100 patent and trademark professionals.  He also was elected to the firm’s Board of Directors.  This experience proved invaluable in helping Michael understand the complex legal and ethical issues associated with running an IP practice. 

In 2011, Michael became a partner in Funk & Bolton, where he founded the law firm’s Attorney Ethics and Discipline group.  At Funk & Bolton, Mr. McCabe focused his practice on representing IP attorneys and patent agents in ethics investigations and disciplinary proceedings before the USPTO. 

In April 2017, Michael founded McCabe Law LLC.  His practice continues to focus on representing attorneys and agents in ethics matters and disciplinary proceedings before the USPTO, providing ethics advice and counseling for IP lawyers and law firms practicing in intellectual property law, and in providing in-house CLE programs for law firms and corporations.

Engineering Work Experience

From 1985-1989, Mr. McCabe worked as an engineer at the National Aeronautics and Space Administration (NASA), Goddard Space Flight Center (GSFC), in Greenbelt, Maryland.  While employed at NASA/GSFC, Mr. McCabe was a member of the Advanced Development and Flight Experiments Section of the Thermal Engineering Branch, where his group focused on designing, developing and testing of two-phase heat transfer systems for the International Space Station. 

Educational Background

Mr. McCabe received his J.D. magna cum laude in 1992 from the University of Baltimore School of Law, where he was a member of the Law Review and the National Moot Court team.

In 1985, he earned a Bachelor of Science degree in Mechanical Engineering from the University of Maryland College Park. 

Bar Admissions

  • State Courts – Maryland, District of Columbia and Virginia
  • United States District Courts – Maryland, District of Columbia, and Eastern and Western Districts of Virginia
  • United States Courts of Appeal – Fourth, Eleventh, District of Columbia, and Federal Circuits
  • Supreme Court of the United States
  • United States Patent and Trademark Office (Reg. No. 37,182)

Teaching and Bar Service

  • From 2007-2010, Mr. McCabe was an adjunct professor of law at George Mason University School of Law.
  • In 2011, Mr. McCabe was elected by the Virginia Supreme Court to serve a three-year term on the Virginia Bar Fourth District Committee on Lawyer Discipline. 
  • From 2011-2014, Mr. McCabe served as a faculty member for the Virginia State Bar’s Harry L. Carrico Professionalism Course 
  • From 2012-Present, Mr. McCabe has served as a Guest Lecturer at The Johns Hopkins University

Activities/Organizations

  • Association of Professional Responsibility Lawyers (2013-Present)
  • ABA Business Law Section Professional Responsibility Committee member (2010 – Present)
  • Giles S. Rich American Inn of Court (Member since 2008; Treasurer/Secretary since 2012)
  • Defense Research Institute – Ethics and Professionalism Committee (2014-Present)


Reviews

RR
Richard R.

very informative; and professional Thank you

DM
david m.

Outstanding

SR
Scott R.

Many thanks!

TM
thomas m.

enjoyed the case holding explanations.

MC
Michael C.

Excellent presentation!

EL
Eduardo L.

Excellent delivery and information outlined just right

DR
Dane R.

Methodical, clear, comprehensive. Great for all lawyers, not just patent lawyers.

DH
David H.

Very well presented.

EK
Edward K.

Excellent

SK
Stewart K.

Thank you!

JM
John M.

Very good presentation, I learned a lot, thanks!

GL
Gary L.

One of the best I've seen.

JH
Jayme H.

Good summary and exactly the information that I need in my practice. Very practical.

MC
Melanie C.

Excellent course. Very clearly presented. Good slides. Learned a lot

MJ
Michael J.

good course

MG
Melanie G.

Excellent course.

WB
William B.

An excellent presentation.

RZ
Rebecca Z.

Terrific presenter! Thanks!

RL
Rebecca L.

I appreciated the presenter's knowledge and delivery

CF
Christopher Jason F.

Very informative.

CM
Celeste M.

Excellent material, and presentation.

ME
Maudine E.

Very Good!

RH
Richard E H.

Mr. McCabe was knowledgeable, thorough, clear-spoken, and presented materials useful not only for IP attorneys but for other attorneys regarding basic attorney ethics matters.

PF
Pam F.

Great job!

JR
John R.

Excellent presentation!

BF
Barbara F.

Interesting topic.

PH
Paula H.

Excellent for all areas of practice!

KU
Kristina U.

Interesting topic

PC
Pamela C.

Good coverage of OED issues.

KX
Kevin X.

very informative

KL
Kirk L.

Mike McCabe did a great job with this lecture. He made a very dry topic actually interesting and instructive. Will see if he has other lectures with Lawline.

NF
Nicholas F.

A knowledgeable presentation of a complex subject.

SS
Steven S.

Good info to ensure as PTO issues can have long range impacts.

RC
Robertah C.

Lecturer was well organized. He presented the information well. Very interesting.

RP
Rovee Vanderbilt P.

Instructor was excellent. Very informative course.

HL
Herbert L.

ethics here can apply to other agency practice

LO
Lisabeth O.

I really enjoyed this. Thank you, Mr. McCabe.

RM
Retha M.

Good information which addressed the scope of the topic very well. Used case law which was on point.

PP
Paula P.

Most informative of all the ethics CLE's I have particpated in. Thank you

KS
Karl S.

Particularly well done presentation.

KW
Kimberly W.

Thank you very much.

LE
Linda E.

Very good. Good integration of cases, experience and law.

KD
Kelly D.

Nice job by presenter!

JW
Jay W.

Excellent presentation.

GW
Gaston W.

Never thought I would get so much about a topic as to which I knew so little. Great Job!!! Gaston

JB
Jessica B.

Good coverage of the topic

RH
Roman H.

Well done.

MM
Maria M.

Great comprehensive program.

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