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ISBA 2015

Can an out-of-state in-house patent lawyer practice before the USPTO from an Illinois office without an Illinois license?

Short answer: Yes. Under Rule 5.5(d)(2)'s federal-practice exception, a USPTO-registered patent lawyer admitted in another state may do USPTO work from an Illinois office without a Rule 716 limited license, but only within the scope of 37 C.F.R. 11.5(b).

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This page answers the general question as of 2015. Ezel answers yours: whether it's allowed on your facts, under the current Illinois Rules of Professional Conduct, with citations.

Currency note: this opinion is from 2015
Subsequent statutory amendments, court decisions, or later opinions or rule amendments may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.
Disclaimer: Advisory only. Not binding precedent.
About this page: The plain-English summary, reader guidance, and Q&A below were written by Ezel based on the official ethics opinion. The original opinion (linked on this page) is the authoritative source for any reliance.

Plain-English summary

A corporation employs patent attorneys as in-house counsel in its Illinois office. They are licensed in other states, not Illinois, do not appear before Illinois courts, and hold no Rule 716 limited license; they are registered to practice before the USPTO and handle patent prosecution and patent advice for the employer. The committee was asked whether they may do this from a permanent Illinois office without an Illinois license.

The opinion applies Rule 5.5. Rule 5.5(b) bars an unadmitted lawyer from establishing a systematic and continuous presence for the practice of law except as authorized. The committee finds the Rule 5.5(d)(1) in-house exception unavailable: because these lawyers have an Illinois office for the practice of law but no Rule 716 limited license, the in-house safe harbor does not apply. The committee notes the Illinois Supreme Court treats Rule 716 licensure as required for in-house counsel (pointing to the court's 2013 Rule 716 amnesty program), not optional.

The opinion finds the arrangement is instead authorized by Rule 5.5(d)(2), the federal-practice exception. The lawyers are registered before the USPTO, whose authorized scope under 37 C.F.R. 11.5(b) includes presenting matters to the Office and advising clients on matters pending or contemplated there. Under Sperry v. Florida (373 U.S. 379 (1963)), a state may not impose its own bar-membership requirement on federally authorized USPTO practice, because of the Supremacy Clause. So the patent lawyers need not hold a Rule 716 license and avoid its character-and-fitness certification, fees, and CLE requirements.

The committee cautions (as in ISBA Opinion 13-08 on immigration practice) that the lawyers must not stray beyond the USPTO niche; work outside the scope of 37 C.F.R. 11.5(b) would require a Rule 716 license. It also notes that lawyers practicing under Rule 5.5(d) are subject to Illinois disciplinary authority under Rule 8.5(a).

In practice

Under this opinion, an out-of-state, USPTO-registered in-house patent lawyer may prosecute patents and give patent advice to the employer from an Illinois office without a Rule 716 limited license, under Rule 5.5(d)(2). The opinion holds the authorization is limited to work within the scope of 37 C.F.R. 11.5(b); handling matters outside that scope would require a Rule 716 license. The opinion notes such lawyers remain subject to Illinois disciplinary authority under Rule 8.5(a).

Common questions

Q: Can an out-of-state patent lawyer work from an Illinois office without an Illinois license?

A: Yes, for USPTO practice. The opinion concludes Rule 5.5(d)(2)'s federal-practice exception authorizes a USPTO-registered lawyer to do USPTO work from Illinois without a Rule 716 license.

Q: Why doesn't the in-house exception in Rule 5.5(d)(1) apply?

A: The opinion finds that because the lawyers have an Illinois office for the practice of law and hold no Rule 716 limited license, the in-house safe harbor is unavailable; the Illinois Supreme Court treats Rule 716 licensure as required.

Q: What is the scope limit on the federal-practice exception?

A: Per the opinion, the work must stay within the scope of USPTO practice defined by 37 C.F.R. 11.5(b). Matters outside that scope would require a Rule 716 license.

Background and rules framework

The opinion interprets Illinois Rule of Professional Conduct 5.5 (multijurisdictional practice; Model Rule 5.5), particularly the 5.5(d)(2) federal-practice exception, with Rule 8.5(a) (disciplinary authority; Model Rule 8.5). It rests on Illinois Supreme Court Rule 716 (limited admission of house counsel), 37 C.F.R. 11.5(b), and the Supremacy Clause analysis of Sperry v. Florida.

Citations and references

Rules of Professional Conduct:

  • Illinois RPC 5.5 (Model Rule 5.5): multijurisdictional and unauthorized practice; federal-practice exception
  • Illinois RPC 8.5(a) (Model Rule 8.5): disciplinary authority

Statutes and rules:

  • 37 C.F.R. 11.5(b): scope of USPTO practice
  • Illinois Supreme Court Rules 716, 706(f): limited admission of house counsel

Cases:

  • Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379 (1963), Supremacy Clause and federal USPTO authorization

Other opinions cited:

  • ISBA Opinion 13-08 (2013): federal-law exception for out-of-state immigration practice

See also

Source

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