Boisselle, Armand P.

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Case Western Reserve University School of Law

Case Western Reserve Law ReviewVolume 14 | Issue 21963Unauthorized Practice of Law--Practice before theUnited States Patent OfficeArmand P. BoisselleFollow this and additional works at: https://scholarlycommons.law.case.edu/caselrevPart of the Law CommonsThis Recent Decisions is brought to you for free and open access by the Student Journals at Case Western Reserve University School of Law ScholarlyCommons. It has been accepted for inclusion in Case Western Reserve Law Review by an authorized administrator of Case Western Reserve UniversitySchool of Law Scholarly Commons.Recommended CitationArmand P. Boisselle, Unauthorized Practice of Law--Practice before the United States Patent Office, 14 W. Res. L. Rev. 373 (1963)Available at: https://scholarlycommons.law.case.edu/caselrev/vol14/iss2/24Unauthorized Practice of LawUNAUTHORIZED PRACTICE OF LAW - PRACTICE BEFORE THEUNITED STATES PATENT OFFICEState ex rel. Florida Bar v. Sperry, 140 So. 2d 587(Fla. 1962), cert. granted, 83 Sup. Ct. 148 (1962) (No. 322)*Respondent, Alexander Sperry, was admitted to practice before theUnited States Patent Office in 1928. Although not a member of theFlorida Bar, he maintained a Tampa office on the door of which ap-peared the words, "Patent Attorney."' From this office he representedFlorida clients before the Patent Office, performing such functions asthe drafting of applications and amendments to applications for patentsfiled in the Patent Office in Washington, D.C. Petitioner sought aninjunction to prevent Sperry from further performance of these func-tions. Respondent asserted in defense that he acted within the authorityconferred upon him by the Patent Office and that the acts performedby him did not constitute the unauthorized practice of law. The FloridaSupreme Court granted the petition enjoining Sperry from practicingbefore the Patent Office in Florida.The most significant question raised by the Sperry case is whetherthe respondent, by virtue of his admission to practice before the PatentOffice, has the right to perform such functions in Florida without beingadmitted to the Florida Bar.Before answering this question, the court had to determine whetherthe acts of the respondent constituted the practice of law. This was anissue of first impression in Florida. If, of course, practice before thePatent Office, a federal administrative agency, is not the practice of law,the court has no basis for granting the petition.Generally, a state acting pursuant to its police power has the rightto define the practice of law and to determine who is qualified to practicewithin its borders.2 This power has been extended to prevent the prac-0 The petition for writ of certiorari was filed in Sperry's behalf by a group of Californiaattorneys, and was supported by amicus curiae briefs of the American Association of RegisteredPatent Attorneys and Agents and of the Committee for Southern California Patent Practition-ers, Not Members of the California Bar (filed Sept. 6, 1962), and the Association of InterstateCommerce Commission Practitioners (filed Sept. 5, 1962).1. Use of the title "patent attorney" by Sperry is authorized by 37 C.F.R. § 1.341(b)(1960) which provides: 'Any citizen of the United States not an attorney at law who ful-fills the requirements and complies with the provisions of these rules may be admitted topractice before the Patent Office and have his name entered on the register of agents. Note:All persons registered prior to November 15, 1938, were registered as attorneys, whether theywere attorneys at law or not, and such registrations have not been changed."2. Petition of Florida State Bar Ass'n, 134 Fla. 851, 186 So. 280 (1938); Chicago BarAss'n v. Kellogg, 338 Ill. App. 618, 88 N.E.2d 519 (1949); Clark v. Austin, 340 Mo. 467,101 S.W.2d 977 (1937); In re Baker, 8 N.J. 321, 85 A.2d 505 (1951); West Virginia StateBar v. Barley, 109 S.E.2d 420 (W. Va. 1959).1963]WESTERN RESERVE LAW REVIEWtice of law by those who are not admitted to the state bar since the useful-ness of licensed attorneys would be otherwise destroyed.'In the Sperry case, the court agreed that federal agencies, such asthe Patent Office, are authorized to determine who shall be permitted topractice before them. However, the court did not agree that this authoritygives these agencies the power to determine that those licensed by ithave the right to practice law, in the particular field involved, in Florida.The Florida Supreme Court had previously held that practice before theTax Court and the Treasury Department "may constitute the practiceof law which may be enjoined if attempted by one not admitted topractice."4In the Sperry case, the court concluded that respondent's activitiesconstituted the practice of law,5 and the fact that the activities were car-ried out before a federal administrative agency rather than a court didnot change the character of the acts from legal to non-egal.8Ohio has taken a different view. The Franklin County Court ofAppeals reversed and dismissed two lower court decisions7 which heldthat the preparation, filing, and prosecution of patent applications inthe Patent Office constituted the unauthorized practice of law.' It ruledthat the federal government has "pre-empted" the regulation of PatentOffice practice, leaving the states no power to superimpose their ownrequirements.'3. People ex rel. Chicago Bar Ass'n v. Goodman, 366 Ill. 346, 8 N.E.2d 941 (1937); Rich-mond Ass'n of Credit Men, Inc. v. Bar Ass'n of City of Richmond, 167 Va. 327, 189 S.E. 153(1937); West Virginia State Bar v. Earley, 109 S.E.2d 420 (W. Va. 1959).In the Sperry case, the Florida Supreme Court adopted the words of the West Virginiacourt: "It would indeed be an anomaly if the power of the courts to protect the public fromthe improper or unlawful practice of law were limited to licensed attorneys and did not extendor apply to incompetent and unqualified laymen and lay agencies. Such a limitation of thepower of the courts would . . . substantially impair and disrupt the orderly and effective ad-ministration of justice by the judicial department of the government; and this the law will notrecognize or permit." West Virginia State Bar v. Earley, 109 S.E.2d 420, 440 (W. Va. 1959).4. Petition of Kearney, 63 So. 2d 630, 630 (Fla. 1953). The court also ruled that one whoholds himself out to the practice "in any phase of law" must be a member of the Florida Bar.Id. at 631.5. The court followed the rule that "if the giving of such advice and performance of suchservices affect important rights of a person under the law, and if the reasonable protection ofthe rights and property of those advised and served requires that the persons giving such advicepossess legal skill and a knowledge of the law greater than that possessed by the average citi-zen, then the giving of such advice and the performance of such services . . . constitute thepractice of law." 140 So. 2d 587, 591 (Fla. 1962).6. Id. at 591.7. In re Battelle Memorial Institute, 172 N.E.2d 917 (Ohio C.P. 1960); Battelle MemorialInstitute v. Green, 172 N.E.2d 201 (Ohio C.P. 1960).Another decision which was, in effect, overruled by the court of appeals was Marshall v.New Inventors Club, Inc., 117 N.E.2d 737 (Ohio C.P. 1953).8. Battelle Memorial Institute v. Green, 133 U.S.P.Q. 49 (Ohio Ct. App. 1962).9. "For the reasons set forth, we conclude that control of practice before the U.S. PatentOffice is a superior right vested exclusively by the United States Constitution and by acts ofCongress in the Commissioner of Patents, subject to appeal to the federal courts, and the state[Vol. 14:21963] Unauthorized Practice of LawIn some jurisdictions, the practice of "patent law" is not the "practiceof law."'1  Courts in other jurisdictions have adopted the Ohio approach,holding that where a federal agency licenses a layman to practice be-fore it, a state may not prevent the layman from engaging in such prac-tice within the state."The control of admissions to the practice of law, the discipline ofthose who are admitted, and the prohibition from practice of those whohave not been examined and admitted by the courts is acknowledged tobe for the protection of the public.'2 The decision in the Sperry caseindicates that the court was motivated by this "public service" theory.While it is true that the preparation and prosecution of a patentapplication requires legal knowledge and skill in excess of that -possessedby the layman," it is also true that these activities may require scientificknowledge and skill in excess of that possessed by the majority of theattorneys who are members of the Bar." It is submitted that member-courts, by virtue of Article VI of the United States Constitution, are bound thereby and pre-cluded from interfering." Id. at 54.10. In Zenith Radio Corp. v. Radio Corp. of Am., 121 F. Supp. 792 (D. Del. 1954),the court held that corporate patent department attorneys do not act as lawyers when involvedin activities such as those carried out by Sperry. Accord, Application of Platamura, 22 Conn.Supp. 213, 166 A.2d 859 (Super. Ct. 1960).11. In DePass v. B. Harris Wool Co., 346 Mo. 1038, 144 S.W.2d 146 (1940),-the courtstated that the federal government has the constitutional power to regulate commerce amongthe several states, that an Act of Congress created the Interstate Commerce Commission and gaveit the right to prescribe rules of practice before it (49 U.S.C.A. S 17 (1)), that the commis-sioner adopted rules whereby persons other than attorneys-at-law may be admitted to practicebefore it, and that since these rules have the force and effect of law, plaintiff must be allowedto make a contract for such practice in Missouri. "To hold otherwise would put us in theuntenable position of denying to our own citizens privileges enjoyed by citizens of other statesunder a valid law of the United States." Id. at 1042, 144 S.W.2d at 148.In Auerbacher v. Wood, 139 N.J. Eq. 599, 53 A.2d 800 (Ch. 1947), the court permitted anon-lawyer to do whatever the National Labor Relations Board allowed, even argue primarilylegal questions.However, in Chicago Bar Ass'n v. Kellogg, 338 Ill. App. 618, 88 N.E.2d 519 (1949),the court enjoined a registered patent attorney, not a member of the Illinois Bar and not anattorney-at-law, from the unauthorized practice of law without prejudice to defendant's rightsto advise and assist applicants for patents in presentation and prosecution of applications be-fore the Patent Office.The court also ruled that defendant had no right to collect fees for legal services whereverrendered.12. Chicago Bar Ass'n v. United Taxpayers of America, 312 Ill. App. 243, 38 NXE.2d 349(1941); Lowell Bar Ass'n v. Loeb, 315 Mass. 176, 52 N.E.2d 27 (1943); Auerbacher v.Wood, 139 N.J. Eq. 599, 53 A.2d 800 (1947).13. State ex rel. Florida Bar v. Sperry, 140 So. 2d 587, 592 (Fla. 1962), cert. granted, 83Sup. Ct. 148 (1962) (No. 322).14. "[I]t may well be time for the lawyer to recognize that non-lawyers who are competentlytrained in their profession by education and experience (such as C.P.A. in tax field) may bebetter able to advise on matters concerning rights and obligations under the law than the or-dinary attorney who is not a specialist in the field.... However, it may be time for the lawyerto recognize that the high degree of specialization in the law today will require either an increasein the number of qualified legal specialists in particular fields or the acceptance of the necessityof permitting non-lawyer specialists to give advice in their fields even if by so doing they arecrossing into the lawyers' domain." Schafer, Attorneys At Law, 1960 Survey of Ohio Law,12 W. RlEs. L. REv. 451, 455 (1961).

Unauthorized Practice of Law--Practice before the United States Patent Office

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Unauthorized Practice of Law--Practice before the United States Patent Office

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