Rutgers School of Law, OAL case opin009

95 N.J.L.J. 269
March 30, 1972

COMMITTEE ON THE UNAUTHORIZED PRACTICE OF LAW

Appointed by the New Jersey Supreme Court

OPINION 9

Patent Attorneys and Agents

A group of attorneys, members of the New Jersey Bar specializing in patent law, have requested the advisory opinion of this Committee defining the services which may be performed in New Jersey by patent attorneys and agents who are not members of the New Jersey Bar. Stated conversely, this Committee is asked to advise which of numerous stated acts, if performed in New Jersey by patent attorneys and agents who are not admitted to practice before the courts of this state, constitute the unauthorized practice of law.
Inasmuch as the advisory opinion of this Committee on so broad a subject in so large a field may affect many persons, this Committee has declined to render an advisory opinion upon a presentation by the proponents alone and has requested an exhaustive adversary presentation of the matter upon briefs and oral argument before the entire Committee, not only by the proponents but by opponents who would be expected to argue in opposition to the position of the proponents. For want of a better appellation, we will refer to the two groups as the "proponents" and the "opponents." The briefs submitted to the Committee and the oral arguments made before the Committee by the proponents and the opponents have been enlightening and have been most helpful to the Committee in the determination of the questions presented.

    The opponents have argued that this Committee should not render an advisory opinion herein. The Committee has carefully considered the several reasons argued by the opponents, but has come to the conclusion that the subject matter of the requested advisory opinion is peculiarly within the jurisdiction of this Committee under R. 1:22 and that this Committee should render an advisory opinion.
    As used in this opinion, the term "Patent Attorney" designates a person registered to practice before the United States Patent Office and licensed to practice law in a jurisdiction in the United States other than New Jersey, but not in New Jersey; and the term "Patent Agent" designates a person registered to practice before the United States Patent Office and not licensed to practice law in any jurisdiction in the United States.
    A patent attorney or agent not admitted to practice law in the State of New Jersey may not lawfully engage in any of the following activities within the State of New Jersey:
    (a) He may not advise his client as to the ownership of an invention such as where a question of ownership arises by virtue of employment or other contractual relationship between his client and others.
    (b) He may not advise his client as to what the client's rights may be under forms of legal protection available under federal or state law which are alternate to patent protection, such as trade secrets, unfair competition, trade marks, copyrights, and anti-trust law; provided, however, that he may advise his client that there are alternate forms of legal protection on which he should seek advice from an attorney admitted to practice in this state.
    (c) He may not advise a client on matters concerning the validity of a patent, except incident to the filing and prosecution of a patent application.
    (d) He may not advise a client on matters concerning the infringement of a patent, except incident to the filing and prosecution of a patent application.
    (e) He may not advise a client in matters concerning the scope of the monopoly granted in a patent, except incident to the filing and prosecution of a patent application.
    (f) He may not prepare contracts or licenses dealing with patent rights.
    (g) He may not prepare assignments of patent rights, except such assignments as are filed simultaneously with a patent application.
    (h) He may not advise his client in matters concerning contracts, licenses or assignments dealing with patent rights except as the same may directly affect and be incident to the filing and prosecution of a patent application.
    (i) He may not advise a client respecting litigation in the Courts of the State of New Jersey, including litigation involving issues rising under patent law.
    (j) He may not advise clients concerning rights or liabilities in connection with trade marks nor may he represent clients in the assertion of trade mark rights or in defense of liability under trade mark rules.
    (k) He may not represent clients in the filing and prosecution of applications for registration of trade marks nor the prosecution of oppositions to the registration of trade marks in the United States Patent Office unless and except to the extent that Congress may preempt this field of law. He may not represent clients in the filing and prosecution of applications for registration of trade marks nor in the prosecution of opposition to the registration of trade marks in the Office of the Secretary of State of New Jersey.
    Certain of the proponents' questions on which an advisory opinion of this Committee is requested deal with the matter of appeals taken outside of the United States Patent Office from a decision made in the United States Patent Office. A Patent Attorney, not admitted to the practice of law in New Jersey, may as an incident to the preparation and prosecution of a patent application before the United States Patent Office advise his client as to the availability of appeals which may be taken outside of the United State Patent Office from a decision made in the United States Patent Office and of the nature and effect of such appeals. Whether he may lawfully represent the appellant in such an appeal is a matter peculiarly within the jurisdiction of the appellate court - if he makes known to the appellate court that he is not a member of the Bar of the state in or from which he is practicing and the appellate court with such knowledge permits him to represent the appellant, his conduct certainly will not be deemed by this Committee to constitute the unauthorized practice of law.
    Several of the proponents' questions on which an advisory opinion of this Committee is requested deal with the matter of litigation in the United States District Court. It is clear that a person not admitted to practice law in this state may not engage in the general practice of federal law in this state. See Opinion 7, 94 N.J.L.J. 1077 (1971) of this Committee. In any particular case, however, the question of whether the patent attorney, not admitted to practice law in this state, may lawfully represent a litigant in a patent matter before the United States District Court for the District of New Jersey is particularly within the jurisdiction of that Court - if he makes it known to the Court that he is not a member of the Bar of this state and the Court with such knowledge permits him to represent a litigant therein, his conduct certainly will not be deemed by this Committee to constitute the unauthorized practice of law.
    It has been called to the attention of this Committee that persons admitted to practice law in other states have become employed by corporations and have been assigned or transferred to an office of the respective corporate employer located within the State of New Jersey. As stipulated upon the hearing, this Committee is not making any determination at this time as to the special status (if there be a special status) of the practitioner who is the employee of a corporation and acts only within and on behalf of the corporation. With respect to such corporate employee practitioner acting only on behalf of the corporate employer and in direct relationship to the corporate business of the corporate employer, we do not hold that the following actions are or are not the unauthorized practice of law.
    We proceed now to a consideration of the specific questions upon which the proponents have requested the advisory opinion of this Committee. The formulation of answers to these questions requires an interpretation of the effect of the decision of the United States Supreme Court in Sperry vs. Florida ex rel. The Florida Bar, 373 U.S. 379, 83 S.Ct. 1322 (1962). By reason of the Sperry decision it is clear that the control of the admission of individuals to practice before the United States Patent Office and the regulation of their conduct in such practice has been delegated by Congress to the Commissioner to authorize practice before the Patent Office by lawyers and by non-lawyers, that registration in the United States Patent Office confers a right to practice before the Patent Office without regard to whether the state within which the practice is conducted would otherwise prohibit such conduct, and that the right of the practitioner to practice before the Patent Office includes the performance of such tasks or services as are incident to the preparation and prosecution of patent applications before the Patent Office. It is also clear from the express language of the Sperry decision that "since patent practitioners are authorized to practice only before the Patent Office, 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." The United States Supreme Court in the Sperry decision has 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. Within this area this Committee, in the exercise of its jurisdiction conferred by the Supreme Court of New Jersey, has determined what acts are deemed to be outside of the federal preemption of practice before the United States Patent Office and also are not incident to the preparation and prosecution of patent applications before the Patent Office and therefore constitute the unauthorized practice of law when engaged in New Jersey by a person not admitted to practice law in New Jersey.
    A patent attorney or agent not admitted to practice law in the State of New Jersey may lawfully prepare and prosecute applications before the United States Patent Office and may perform all functions which are reasonably within the scope of the practice authorized by the Patent Office or necessarily incident to the preparation and prosecution of such patent applications. He may, of course, render opinions as to the patentability of the inventions brought before him and as to the procedure and practice of obtaining a United States patent therefore. He may hold himself out as qualified to perform his specialized work, so long as he does not expressly or by implication misrepresent the scope of his license.

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