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   can patent atty practice pat law in any state?
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   Author  Topic: can patent atty practice pat law in any state?  (Read 5959 times)
suzani
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can patent atty practice pat law in any state?
« on: Dec 13th, 2007, 4:54pm »
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HI,
 
I am a member of the patent bar and a single state bar.
 
Can I practice patent law (not just patent prosecution) in any state without becoming a member of that state's bar since patent law is federal law?
 
Would I be able to render opinions on patent issues (patentability, infringement, FTO, etc)?
 
Any input appreciated!
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Wiscagent
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Re: can patent atty practice pat law in any state?
« Reply #1 on: Dec 14th, 2007, 9:46pm »
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Patentability opinions are within the purview of a patent agent, so that shouldn't be a problem.
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Richard Tanzer
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ethical PA
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Re: can patent atty practice pat law in any state?
« Reply #2 on: Dec 24th, 2007, 8:46am »
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Sad
 
Unfortunately, I strongly suggest that you check with the ethics department of the State bar to which you are referring.  There are certain states that are vicious when it comes to practicing law in their state.  While being a patent attorney allows you to practice before the USPTO from any state, opinion work is work done by attorneys only.  Now, some states will realize that the opinion work is associated with Federal law and not associated with State law, thus not a problem, but others can be vicious.  To be safe, check with the State Bar in the state of concern.  On another note, if you plan to obtain reciprocity in the state of concern, you better figure this out now, because later when you apply, the State Bar application will require you to disclose this.  If the Ethics department in the State of concern feels that by providing a legal opinion you are practicing law in their State without a license, they could report you to the State bar of the State in which you are a member.  With a little bad luck, you could be disbarred.
 
Please be careful and good luck.
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Wiscagent
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Re: can patent atty practice pat law in any state?
« Reply #3 on: Dec 25th, 2007, 11:08am »
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"...  opinion work is work done by attorneys only ..."
 
That's an overly broad statement.  What kinds of "opinion work"?  In-house or for a firm?  Some patent-related opinions should only be provided by an attorney; others do not require that the person providing the opinion be an attorney.
 
There are many kinds of "opinion work" for which the typical attorney is not qualified, e.g. medical, engineering.
 
There are many kinds of more-or-less legal "opinion work" for which many non-attorneys are qualified, e.g. much accounting-related work, patentability opinions.
« Last Edit: Dec 25th, 2007, 3:53pm by Wiscagent » IP Logged

Richard Tanzer
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Isaac
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Re: can patent atty practice pat law in any state?
« Reply #4 on: Dec 26th, 2007, 7:14am »
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"Opinion work" is a euphemism for opinions assessing infringement, validity and non-infringement of issued patents in a litigation or litigation avoidance context.   As such it doesn't refer to patentability opinions or to non-legal opinions that don't involve the practice of law.
 
With that limited interpretation, I think Ethical's answer concerning "opinion work" was pretty much dead on.   The only thing I'd add is that the fact an area involves only questions of federal law doesn't prevent states from regulating who can practice in that area within their borders.   In the case of patent prosecution, not only is federal law involved, but there is also a federal regulation designating who can practice before the patent office.  State law cannot override that.   But in the absence of a regulation or law designating who can practice, states can, and sometimes do regulate the practice of federal only law.  
 
« Last Edit: Dec 26th, 2007, 7:50am by Isaac » IP Logged

Isaac
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