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The U.S. PTO's War Against the Unauthorized Practice of Patent and Trademark Law by Foreign Associates: Ethical Considerations and Best Practices for Protecting Yourself and Your Clients from Sanctions and Discipline

Michael Edward McCabe Jr, THOMAS J. Kowalski, William Park, and Kyle J Choi

In international IP matters, non-U.S. law firms are frequently involved as intermediaries between their local clients and U.S. patent and trademark counsel.  In recent years, the USPTO has become more aggressive in policing the behavior of non-U.S. lawyers who assist their non-U.S. clients with drafting patent and trademark applications and other documents that are considered the “practice of law” under U.S. law.  Certain practices by foreign intermediaries involved with patent or trademark representations before the USPTO have led to claims that the intermediary engages in the unauthorized practice of law, in violation of federal regulations.  Those violations have led to the cancellation of thousands of trademark applications and other adverse consequences.  Our panel will provide informative and timely guidance on this development, including best practices for how U.S. and foreign associates and intermediaries can work cooperatively to serve their IP clients while avoiding claims of improper conduct.

This panel was presented at the Fall 2023 Asia/Pacific Conference on “Law and Technology in a Changing World” in Seoul, South Korea.