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«DAVID HRICIK Associate Professor of Law Mercer University School of Law 1021 Georgia Ave. Macon, GA 31201 hricik_d State Bar of Texas 20TH ...»

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The Committee held that when a lawyer engaged in a business which is one that would be regarded as the practice of the law when handled by a lawyer, it continues to be the practice of law so far as the lawyer who is engaged in the business is concerned; that if the lawyer member of the proposed partnership rendered any of the services above described, his professional skill and responsibility as a lawyer would be engaged and, consequently, he would be practicing law; that the fact that the law member also is permitted by the rules of the Patent Office to render the same services does not change the conclusion that the business of the proposed partnership would be the practice of law and, accordingly, Canon 33 was violated, as well as Canon 34, which prohibits the division of fees for legal services with a layman.

See generally 40 Fed. Reg. 33790, 33790 (discussing adoption of these provisions).

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This section analyzes whether lawyers may form partnerships with patent agents who, after all, are nonlawyers under state law. The PTO Code expressly permits patent agents to form partnerships with patent lawyers and share fees with them.52

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obviously state rules do not prohibit lawyers from forming partnerships with other lawyers simply because those other lawyers are authorized to prosecute patents.53 Equally certain is that patent lawyers may form partnerships with patent agents so long as the patent lawyer’s practice is limited to patent prosecution. (Obviously, the patent agent’s practice must be so limited.) In that circumstance, the conduct is wholly authorized by federal law, which also expressly permits partnerships between patent lawyers and patent agents. Also clear is that neither a patent lawyer nor patent agent can form a partnership to represent clients before the Patent Office with a person who is neither a lawyer nor a patent agent.54 The difficult questions concern whether lawyers who do not limit their practice to conduct before the Patent Office may form partnerships with patent agents. The PTO Code permits this, since it allows patent agents to form partnerships with lawyers and to share fees with them.55 As a result, and as noted above, patent lawyers can form partnerships with lawyers who are not registered before the Patent Office. The question is: may patent agents do the same thing?

37 C.F.R. § 10.37; 10.48; 10.49 49 Fed. Reg. 10012, 10016 (“An attorney who practices before the PTO and another attorney who does not practice before the PTO could form a partnership to practice law in a state….”) 37 C.F.R. § 10.49.

37 C.F.R. § 10.49.

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Most believe the answer is no.56 The reasoning is simple: state ethics rules preclude formation of partnerships between lawyers and nonlawyers; patent agents are nonlawyers;

therefore state ethics rules preclude formation of partnerships between lawyers and patent agents.

One commentator explained:

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On its face, this reasoning is correct. Patent agents are not lawyers and partnerships among patent agents and lawyers are prohibited. Yet, not too far beneath the surface lay policy reasons that ought to be taken into account in future regulation in this area by states. Patent agents should not be so quickly lumped into auditors, collectors, and most other nonlawyers.

Unlike those nonlawyers, patent agents are subject to essentially the identical ethical obligations as are lawyers. The PTO Code, after all, was based upon and is largely identical to the ABA Model Code, which served as the basis for state ethics rules for many years. The Patent Office is currently revising the PTO Code to become essentially identical to the ABA Model Rules,58 See generally, Thomas K. McBride, Jr., Patent Practice in London – Local Internationalism: How Patent Law Magnifies the Relationship of the United Kingdom with Europe, The United States, and the Rest of the World, 2 Loy. U. Chi. Int’l. L. Rev. 31, 48 (2005) (noting that in many American states there is a prohibition “for sharing partnership revenue with a patent agent registered before the U.S. Patent Office but who is not a lawyer registered with a state bar.”).

Conn. B. Ass’n. Eth. Op. 8 (1988) (quoting Drinker, Legal Ethics 204).

See 68 Fed. Reg. 69442 (Dec. 12 2003).

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which serve as the basis of most state ethics rules.59 Thus, patent agents are, generally, held to precisely the same standards of conduct as are lawyers.

Therefore, although it is literally correct to say that a rule which prevents the formation of partnerships between patent agents and lawyers violates state ethics rules, is that necessarily the correct result? Should states interpret rules that prohibit sharing fees or forming partnerships with nonlawyers to apply to nonlawyers who must comply with the same standards as attorneys;

who are subject to discipline under the same standards; and who can, no doubt, be sued for breaching those same standards?

The argument exists that, since patent agents and lawyers are subject to essentially the same set of ethical rules, that the purpose behind the prohibition against fee splitting is not implicated by fee sharing among them. This is so because the purpose of rules prohibiting fee sharing or forming of partnerships is to prevent interference with the independent professional judgment of the lawyer in acting on the client’s behalf.60 The ethical obligations of the lawyer, and patent agent, are the same, and so the interference which the rule seeks to prevent does not appear to exist when the sharing arrangement is with a patent agent. Indeed, the fact that the Patent Office permits patent agents and attorneys to share fees would suggest that, to it at least, splitting does not implicate the purpose of the rule.

On the other hand, however, there are several reasons why the prohibition is likely to remain in place. One is the obvious syllogism set forth above: lawyers may not share fees with nonlawyers; patent agents are nonlawyers; therefore, lawyers may not share fees with patent See Anno. Model Rules of Prof. Conduct viii (5th ed. 2003) (noting that as of the time of its publication, all but eight jurisdictions had adopted the Model Rules).

See Model Rule 5.4, cmt. 1 (“These limitations are to protect the lawyer’s professional independence of judgment.”); ABA Formal Eth. OP. 95-392 (1995) (same); ABA Formal Ethics Op. 87-355 (1987) (prohibition avoids interference with lawyer’s professional judgment and ensures fees will remain reasonable); ABA Informal Eth. Op. 86-1519 (1986) (rule protects exercise of lawyer’s independent professional judgment and deters the unauthorized practice of law).

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agents. Beyond that, however, lies the fact that patent agents are not required by the Patent Office to have formal ethics training or to satisfy continuing legal education requirements that, typically, include professionalism or ethics training. For that reason, there remains a substantive reason for bar associations to continue to enforce the prohibition against fee splitting.61 Whether a court would hold that the prohibition as applied to patent agents is constitutional remains an open question, however.

Thus, until and unless bar associations start treating patent agents like “lawyers” for purposes of the fee splitting rule, or until the rule as applied to them is held infirm, lawyers should avoid entering into arrangements with patent agents that constitute the formation of partnerships or the sharing of fees with patent agents where the practice is not limited to matters before the Patent Office.

5. The Fact that Patent Agents Practice Law, But are Not Lawyers, Creates Odd Dichotomies It has been more than forty years since the Supreme Court held that the "preparation and prosecution of patent applications for others constitutes the practice of law."62 But, patent agents

The District of Columbia has eliminated the prohibition where the partnership is to practice law:

(b) A lawyer may practice law in a partnership or other form of organization in which a financial interest is held or managerial authority is exercised by an individual nonlawyer who performs professional services which assist the organization in providing legal services to clients,

but only if:

(1) The partnership or organization has as its sole purpose providing legal services to clients;

(2) All persons having such managerial authority or holding a financial interest undertake to abide by these Rules of Professional Conduct;

(3) The lawyers who have a financial interest or managerial authority in the partnership or organization undertake to be responsible for the nonlawyer participants to the same extent as if nonlawyer participants were lawyers under Rule 5.1;

(4) The foregoing conditions are set forth in writing.

D.C. Rule 5.4(b). “No other U.S. jurisdiction permits lawyers and nonlawyers to practice together in this fashion. In fact, a member of the Virginia bar, who practices in a District of Columbia law firm that includes a nonlawyer as a partner, apparently may not engage in the practice of law in Virginia.” D.C. Eth. Op. 322 (2004).

Sperry v. Florida, 373 U.S. 379, 393 (1963). See, e.g., In re Lefkowitz, 393 N.Y.S. 2d 650, 652 (Sup. Ct.

N.Y. 1977) (“Respondent’s contentions that [patent prosecution] does not constitute ‘legal work’ since non-lawyers

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are not licensed to practice law and so by definition are not “lawyers.” Instead, they are nonlawyers who are authorized by federal law to practice law, but authorized only to prosecute patents.63

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At the outset, it clearly does not prevent patent agents from providing services that are not “legal services” even though they are used in connection with patent prosecution. For example, preparing drawings for an application, conducting a patentability search, or obtaining documents from the Patent Office can be performed by laymen,64 and so can be performed by patent agents.

It is not the right to practice law broadly. It is clear from Sperry that “registration in the Patent Office does not authorized the general practice of patent law, but sanctions only the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications.”65 Thus, the “State maintains control over the practice of law within its borders except to the limited extent necessary for the accomplishment of the federal objectives.”66 Instead of a broad, unbounded grant of authority to practice law, courts have characterized the federal grant as allowing for practice of “[a]ll aspects of patent prosecution;

that is, from patentability determinations to drafting patent applications to amending patent are permitted to do it is without merit.”). For an earlier case reaching the same result as Sperry, see Chicago B.

Ass’n. v. Kellogg, 88 N.E.2d 519 (Ill. Ct. App. 1949).

E.g., In re Lefkowitz, 393 N.Y.S. 2d 650, 652 (Sup. Ct. N.Y. 1977) (“Patent agents are permitted to prepare applications even though this constitutes the practice of law, solely because they are authorized to do so by federally supreme law.”) 40 Fed. Reg. 33790, 33797 (explaining that such services are not legal services).

Sperry, 379 U.S. at 393.

Sperry, 373 U.S. at 402.

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applications….”67 While the dividing line is often not well-marked, the problem is that even typical prosecutions involve application of state law in activities that constitute the practice of law in most states. Patent agents, therefore, must be careful not to drift outside the safe harbor of Sperry and onto the rocks of unauthorized practice of law.68 Precisely where the calm waters end and the shallows begin is not well-charted territory: the courts have “not seen fit to draw a line clearly defining these services or tasks which are incidental to the preparation and prosecution of patent applications before the Patent Office and those services or tasks which the respective states may proscribe as constituting the unauthorized practice of law.”69 On the one hand, some conduct that is authorized and other conduct plainly is not.70 The Supreme Court decided that much in Sperry, which provided only a safe harbor, not an unfettered license to engage in conduct that is not authorized by the Patent Office, but that constitutes the “practice of law” under state law.71 Both before and after Sperry, the Patent Office and the courts have mapped out certain safe harbors for patent agents by identifying those activities which are authorized by federal law, and so which a state cannot prevent a licensed patent agent from performing. Most of these boundaries are pretty obvious, since they either involve activities that are required for patent prosecution, or do not.

Sanofi-Synthelabo v. Apotex Inc., 299 F.Supp.2d 303, 307 (S.D.N.Y. 2004).

See In re Matter of Wells, 2005 WL 3293313 (Cal. St. B. Rev. Dept. March 7, 2006) (while recognizing it could not regulate federal practice of an attorney, it had jurisdiction because she had resolved state court claims against clients, not just federal claims). See generally, Ill. St. B. Ass’n. Adv. Op. 92-6 (Oct. 23 1992) (recognizing that as a factual matter a lawyer authorized to provide federal advice may stray into matters of state law).

N.J. Comm. on the Unauthorized Practice of Law Op. 9 (March 30, 1972). That 35 year old observation remains true.

Falling into the former category, patent agents are obviously authorized to prosecute applications before the Patent Office, and to advertise that they are able to do so.

Sperry v. Florida, 373 U.S. 379, 402 (1963).

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