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(Message started by: suzani on Dec 13th, 2007, 4:54pm)

Title: can patent atty practice pat law in any state?
Post by suzani on Dec 13th, 2007, 4:54pm
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!

Title: Re: can patent atty practice pat law in any state?
Post by Wiscagent on Dec 14th, 2007, 9:46pm
Patentability opinions are within the purview of a patent agent, so that shouldn't be a problem.

Title: Re: can patent atty practice pat law in any state?
Post by ethical PA on Dec 24th, 2007, 8:46am
:(

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.

Title: Re: can patent atty practice pat law in any state?
Post by Wiscagent on Dec 25th, 2007, 11:08am
"... 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.

Title: Re: can patent atty practice pat law in any state?
Post by Isaac on Dec 26th, 2007, 7:14am
"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.


Title: Re: can patent atty practice pat law in any state?
Post by prosdog on Dec 27th, 2007, 11:38am
I would think that running a law office still involves compliance with state bar rules, even if your practice is  federally licensed.  IOLTA, ethics, CLE requirements all have to be complied with to keep your state license, which is a prereq for being a patent attorney.

Title: Re: can patent atty practice pat law in any state?
Post by Isaac on Dec 27th, 2007, 12:27pm

on 12/27/07 at 11:38:32, prosdog wrote:
I would think that running a law office still involves compliance with state bar rules, even if your practice is federally licensed. IOLTA, ethics, CLE requirements all have to be complied with to keep your state license, which is a prereq for being a patent attorney.


I think this is a tiny bit overstated.  Sometimes a state has bar rules and UPL laws setting policies that overstep the state's authority.   In Sperry v. Florida, Sperry had to get a ruling from the Supreme court before he was allowed to practice as a patent agent in Florida.  States sometimes attempt to interfere in the practice of immigration law by out of state attorneys despite federal law to the contrary.




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