Practice Areas

IP Ethics & USPTO Discipline

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The Premiere Ethics Counsel to IP Practitioners

McCabe//Ali represents clients nationwide in all aspects of intellectual property attorney ethics, discipline, and professional responsibility. Our experience ranges from representing law students and sole practitioners to senior partners of some of the largest and most respected law firms in the country. Michael McCabe and Emil Ali have years of experience in the regulation of the legal profession.

Michael and Emil are uniquely qualified to represent IP professionals in investigations and enforcement actions initiated by the USPTO's Office of Enrollment and Discipline (OED). Registered Patent Attorneys Michael McCabe and Emil Ali have decades of experience, including working within OED. Together, they have defended a combined total of over 200 practitioners in OED matters—more than any other lawyer or law firm. The team at McCabe//Ali has successfully served as lead counsel in defending clients in countless investigations and litigations. As ethics counsel to IP attorneys, we are retained to protect our clients’ greatest assets—their license and good name. The breadth and depth of our practice mean we have confronted almost every type of claim against or affecting a lawyer or law firm, and over the years Michael & Emil have been lauded for their professionalism and skill.

Ethics Defense

  • Defense of State Bar Ethics Inquiries
  • Defense of USPTO Office of Enrollment & Discipline (OED) investigations, including responding to Requests for Information and Evidence (RFI)
  • Settlement Agreements under 37 CFR 11.26
  • USPTO Disciplinary Hearings and Appeals
  • Reciprocal Discipline under 37 CFR 11.24
  • Exclusion on Consent under 37 CFR 11.27
  • Reinstatement Petitions
  • Advice and counsel regarding compliance with suspension orders and application for reinstatement
  • State and federal bar attorney investigations and defense services before the attorney regulators and courts in California, the District of Columbia, Maryland, Oregon, and Virginia
  • Expert witness services for the standard of conduct

Malpractice Defense and Repair

Michael and Emil are also available to help lawyers work through mistakes. To that end, McCabe//Ali is available to act as repair counsel, and defend malpractice claims, fee disputes, and insurance coverage issues surrounding the same.

Law Firm Risk Management

Often the best way to avoid the risk of attorney ethics inquiries or discipline, as well as the risk of malpractice, is through proper education and training. McCabe//Ali helps law firms large and small understand, detect, and mitigate the risk associated with running complex legal practices, including intellectual property law firms.
 
We help intellectual property law firms understand best practices by creating compliance policies to mitigate risk including subject matter conflicts, lateral hiring, and docketing review. McCabe//Ali also helps law firms work through transitions including the formation of multi-state complex law firms, partnership admission, dissolution, and compensation structures. We also provide custom legal education seminars and advice regarding malpractice insurance strategies, including best practices to mitigate civil claims, bar complaints, and officer & director liability.
  • Drafting of conflicts procedures
  • Auditing of law firm policies and procedures
  • Lateral hiring
  • Docketing review
  • Formation of multi-state complex law firms
  • Partnership disputes
  • Attorney compensation structures
  • Custom CLE programs
  • Malpractice insurance strategies
  • Engagement letter drafting

Moral Character and Admissions

Michael and Emil routinely help lawyers and applicants obtain admission to the "Patent Bar." Whether the applicant has a disqualifying past or has questions regarding their residency or citizen, we can help applicants embarking on their IP journey in applying for Registration to Practice in Patent Matters before the USPTO. We help law firms work understand limited recognition in ensuring top talent is properly authorized to represent clients of the law firm while on nonimmigrant visas.

  • Assistance with applications for admission to a state bar and registration to practice before the USPTO
  • Assistance with applications for limited recognition

Government Employees

McCabe//Ali represents current and former government employees in understanding agency ethics rules. Our experience includes counseling clients regarding matters involving prior employment with the USPTO and other federal agencies, counseling practitioners on outside activities while employed with the USPTO, and helping private practitioners transition to government service. We represent current and former government employees regarding 37 CFR § 11.111, 18 USC § 207, and understanding guidance from the Office of Government Ethics.

Fee Disputes

When a practitioners spends time and energy zealously representing a client, they deserve proper renumeration through prompt payment of invoices. McCabe//Ali can assist practitioners in understanding best practices for collections, including deciding whether to "sue a client," engaging in fee arbitration and taking other actions, including an attorney's lien (where permitted). Our firm also is available to defend attorneys when their fees are called into question.

Questions to Ask

As our attorney clients know, the relationship between counsel and client is sacrosanct and must be built on mutual trust and understanding. To that end, McCabe//Ali encourages potential clients to interview multiple attorneys to find the best one for the job. Here are potential questions to ask an attorney about your IP Ethics issue:
 
1. Are you registered to practice in patent matters before the USPTO?
2. What is your experience in IP matters?
3. How many matters have you handled before OED or involving IP Ethics matters?
4. Have you litigated a matter before OED?
5. Have you ever acted as an expert consultant or giving lectures regarding IP Ethics or OED procedure?
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