Michael E. McCabe, Jr.’s article, entitled, “Are Your Firm’s Foreign Associate Practices Ethical?” was featured in a front-page article Vol. 29, Issue 1 of IPLS Proceedings (2018), a quarterly publication of the Intellectual Property Law Section (IPLS) of the State Bar of Michigan. This article first appeared in September 2017 in IPethics & INsights. The article is now being republished as a two-part series in Michigan’s IPLS.
The IPLS article addresses the USPTO ethical issues that face patent firms and patent practitioners who do business with clients through a “foreign associate” or other type of client intermediaries or liaisons. The Patent Office recently published ethical guidance on this issue that could impact the way in which firms communicate with such client middlemen. The article discusses the evolution of USPTO ethics precedent in the context of the IP lawyer-intermediary-client relationship, including the ethics issues that arise when a USPTO practitioner accepts instructions and legal fees from a non-USPTO practitioner intermediary; conflicts of interest and whether those must be disclosed to the client; fee-splitting with the middleman (and is it ethical); aiding the unauthorized practice of law; and other duties set forth in the USPTO’s Rules of Professional Conduct.