NYSBA Ethics Opinion 49

By Committee on Professional Ethics

NEW YORK STATE BAR ASSOCIATION
Professional Ethics Committee Opinion

Opinion #49 – 01/26/1967 (7-67)

Topic: Advertising,  Announcement of Patent Specialty
Digest: Patent lawyer may circulate an announcement to other patent lawyers and to members of patent law association who are non-lawyers
Canon: Former Canons 27, 35, 46, 47

QUESTION

A law firm whose letterhead reads:

A and B
Counselors at Law
Patent Trademark and Copyright Law

asks our opinion on whether or not it would be proper to circularize a proposed announcement (a) directly among local patent lawyers; or (b) through the mailing service of a local patent law association that admits lawyers only but which, due to a grandfather clause, has a few patent agent members who are non-lawyers.  The announcement, among other things, reads:A and B specializing in domestic and foreign patent and trademark causes and offering legal advice on international licensing and litigation problems in the field of industrial property.The inquiring attorneys call attention to the fact that in New York City there is a handful of New York City firms which are not law firms, consisting of both lawyers and non-lawyers, without so indicating on their letterheads, and who attempt to circumvent the prohibition against the practice of law by non-legal entities by contending that they are dealing with lawyer-clients only, and that large United States corporation entrust their foreign patent and trademark work to these firms.

OPINION

Both the Chicago Bar Association and the New York County Lawyers’ Association have had extended and troublesome experience with these so-called non-lawyer firms who have been granted permission by the Patent Office to practice before it provided they do not call themselves lawyers but only “patent agents” (unless by reason of a grandfather clause they had described themselves as “patent attorneys” before a certain date).  These two bar associations either brought proceedings or threatened to bring proceedings against a number of these non-lawyer groups, and in New York a stipulation was obtained from them not to deal directly with a client, corporate or otherwise, but only with a lawyer or with the legal department of a corporation.
The Canons involved are:
Canon 35.       Intermediaries.  This canon provides that professional services of a lawyer should not be controlled or exploited by any lay agency, person or corporate, which intervenes between the client and the lawyer and provides that a lawyer’s relation to his client should be personal, and the responsibility should be direct to the client.
Canon 27.       Advertising Direct or Indirect
Canon 46.       Notice of Specialized Legal Service
Canon 47.       Aiding the Unauthorized Practice of Law
Canon 47 prohibits a lawyer from permitting his name to be used in aid of or to make possible the unauthorized practice of law by any lay agency, personal or corporate.
Canon 46 on Notice of Specialized Legal Service reads:Where a lawyer is engaged in rendering a specialized legal service directly and only to other lawyers, a brief, dignified notice of that fact, couched in language indicating that it is addressed to lawyers, inserted in legal periodicals and like publications, when it will afford convenient and beneficial information to lawyers desiring to obtain such service, is not improper.This canon would permit an announcement of services in the patent and trademark field couched in language indicating that it is addressed to lawyers, and it should indicate that the service is to be rendered to lawyers only. The proposed notice should so indicate.  See Drinker, Legal Ethics, page 220.We give no opinion on whether A and B are authorized or competent to advise on foreign patents and trademarks under the laws of other countries and we would disapprove the announcement regarding “offering legal advice on international licensing an if litigation problems in the field of industrial property”, since this field would not be a recognized legal specialty.Neither are we passing on whether or not the non-lawyer organizations referred to by A and B are observing the stipulation which they have previously signed requiring them to deal only directly with lawyers or law departments who take direct responsibility for their corporate clients, as they matter of such violations, if any, would be within the jurisdiction of the Committee on Grievances.A prior opinion of this Committee, Opinion No. 21 – 12/20/65 (10-65), stated that it was not improper for a lawyer who practices one of the recognized specialties of admiralty, patents or trademarks to so indicate on his letterhead.  The Committee gave this opinion notwithstanding that Canon 27, adopted by the State of New York, had omitted the last sentence of Canon 27 of the American Bar Association to the same effect.In response to the specific question asked by A and B, assuming their proposed announcement is modified as indicated, it could properly be circulated directly among local patent lawyers and by the mailing service of a local patent law association which admits lawyers only, except for a few patent agent members who are not lawyers.

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