ETHICS OPINION 345-1938

NUMBER 345 1938

Question. A lawyer’s practice deals almost exclusively with matters relating to patents, trade-marks, copyrights, and unfair competition, which he prosecutes in the U.S. Patent Office and in the Federal courts. He desires to secure competent and conscientious assistance in matters before the Patent Office, for which he is not able to guarantee adequate compensation on a salary basis.

With the stated object as his sole one, would it be professionally proper for him to enter into partnership with a registered patent attorney who is not a member of the Bar, such partner’s services to be rendered exclusively in matters before the Patent Office and his compensation to be a share in the profits of such practice?

All matters other than those before the Patent Office would be handled exclusively by the lawyer or assistants who are members of the Bar, and the proposed partner in the patent soliciting practice would benefit in no way from such other matters.

Answer. The problem raised by this question, that in Opinion 344, and similar problems in relation to customs and other matters have a common source—performance of the same functions and concurrent practice before certain governmental bodies by lawyers and by non-lawyers.

Where lawyers and non-lawyers possess equal skill in a nonlegal field, the client may well feel entitled to employ either. It is paradoxical and unjust, however, and eventually contrary to public interest, to maintain high standards for admission to the practice of law and continuance therein, while permitting such practice in part by persons who are subject to no such restrictions. The difficulty lies largely in determining what is comprised in the practice of law.

The Committee is informed that in Great Britain and throughout Europe the persons who procure patents are not lawyers, but engineers; whereas in the United States, although there have been eminent patent attorneys who were not lawyers, most of the patents now being issued are taken out by or through lawyers. Whether or not the solicitation of patents is in se the practice of law, certain phases of the work seem clearly to come within the definition thereof which prevails under the statutes and in the courts of New York, e.g., interpretation of the patent statute; determination of legal questions as to what constitutes invention, aggregation, double patenting, etc.; the citation of legal precedents; and the advocacy of contested cases in the Patent Office such as interference proceedings.

Recognition of laymen by the Commissioner of Patents as “agents . . , or other persons representing applicants or other parties before his office” does not for ail purposes determine whether or not their activities constitute the practice of law, any more than similar recognition, license or permission granted to laymen by the Treasury Department, the Board of Tax Appeals, or the U.S. Customs Court.

Laws and rules for the regulation of practice which under such regulations may be engaged in by both lawyers and non-lawyers do not relax the standards of conduct imposed on the former. The Committee on Professional Ethics and Grievances of the American Bar Association held in Opinion 152 (February 15, 1936) that the Act of February 18, 1922, U.S.C. Tit. 35, Section 11, containing a clause which, by inference at least, suggests that advertising by patent attorneys may be sanctioned, “cannot be construed to permit the solicitation of professional employment by advertisement or otherwise by one who is bound by the ethics of the legal profession.” The opinion cites Canon 45, which provides: “The canons of the American Bar Association apply to all branches of the legal profession; specialists in particular branches are not to be considered as exempt from the application of these principles.”

The same Committee, in Opinion 48, held that under Canon 34 it is improper for a lawyer to divide with a layman fees for patent searches, although he may properly employ the layman and charge payment for his services to the client as a disbursement.

This Committee has similarly held that if a lawyer engages in business while in active practice, he must conduct his business with due observance of the standards of conduct required of him as a lawyer; that the business must not be inconsistent with his duties as a member of the legal profession; and that it is improper to make the business a means for the solicitation of professional employment. (Opinions 1 14. 179, 295.) These qualifications, in addition to the fact that many services before the Patent Office are indisputably legal services when rendered by a lawyer, limit the application to the present question of prior answers in which the Committee has not disapproved a lawyer’s entry into the real estate business or other commercial pursuit not directly related to the practice of law.

In its Opinion 32, the American Bar Association committee held that an attorney may not properly be associated with a firm of lay patent agents who refer to themselves as “Counselors in Patent Causes”; on the ground, among others, that such association would be in violation of the spirit of Canon 33.

This Committee, in its answer in Opinion 209, said; “In the opinion of the Committee the office of an attorney admitted to the practice of the law is of such nature, personal in qualifications and responsibilities, that it cannot properly be made the subject of a partnership between one who is admitted to its privileges, and charged with its responsibilities, and subject to its discipline, and one who is not.”

A majority of the Committee disapproved the formation of. the partnership therein considered between a lawyer and a layman, both registered patent attorneys admitted to practice before the United States Patent Office. (See also Opinion 214.)

 

In the opinion of the Committee, therefore, it would not be professionally proper for a lawyer to enter into the partnership here proposed.