Can a New York lawyer form a partnership with a foreign patent professional such as a Japanese benrishi?

Plain-English summary

A New York lawyer wanted to form a partnership with a Japanese benrishi, a professional licensed under Japan's Patent Attorney Act to practice intellectual-property law. The committee described how benrishi qualify (practical training plus a low-pass-rate exam, without a required law degree) and noted they may represent clients in Patent Office procedures and certain court matters (¶¶ 1-12).

The committee started from Rule 5.4(b), which bars lawyer-nonlawyer partnerships where any activity is the practice of law, and Rule 5.8(a), which treats multidisciplinary practice as incompatible with the profession's core values (¶ 14). That prohibition is tempered by Rule 7.5(d), which recognizes partnerships among lawyers licensed in different jurisdictions, including foreign countries, citing N.Y. State 542 (1982) and N.Y. State 658 (1993) (¶ 15). But foreign licensure alone is not enough: prior opinions require an inquiry into whether the foreign country's educational requirements are generally similar to New York's and whether its professional-conduct and discipline standards are essentially compatible with New York's (¶ 16).

On education, the committee drew on N.Y. State 646 (addressing Japanese bengoshi) and concluded the New York lawyer should independently confirm that the benrishi's training is essentially compatible, referencing the foreign-legal-consultant licensing regulation (22 NYCRR 521.1) as a comparison point (¶¶ 17-19). On conduct, the committee emphasized confidentiality: sharing client confidences with a foreign partner could lead to inappropriate disclosure if the partner lacked adequate understanding of the obligation. It noted the Patent Attorney Act bars disclosing client secrets without "justifiable grounds" and that U.S. courts have recognized a privilege for benrishi communications, citing Eisai Ltd. v. Dr. Reddy's Laboratories and related cases, while stressing that whether the standards are equivalent is beyond its jurisdiction (¶¶ 20-22). The lawyer must reach his or her own conclusion, and the partnership must also conform to New York substantive law and Japanese codes (¶¶ 23-26).

In practice

Under the New York rules as they stood at the time of the opinion, the committee held that a cross-border partnership with a foreign IP professional is permissible only if the New York lawyer first satisfies two conditions, and it expressly placed both the educational-equivalence and conduct-compatibility judgments outside its own jurisdiction, leaving them to the lawyer's independent inquiry. The opinion's confidentiality concern is the throughline: the worry is that a foreign partner who does not share New York's confidentiality regime could compromise the New York lawyer's duty.

Common questions

Q: Is a benrishi treated as a "lawyer" for partnership purposes?

A: The committee proceeded on the premise that Rule 7.5(d) can reach foreign-licensed lawyers, but it did not treat foreign licensure as sufficient by itself; the New York lawyer must still confirm educational and ethical compatibility (¶¶ 15-16).

Q: What must the New York lawyer check before partnering?

A: Two things, per the opinion: that the foreign professional's education is essentially compatible with a New York lawyer's, and that the foreign professional's conduct and discipline standards (notably confidentiality) would not compromise the New York lawyer's obligations (¶¶ 16, 24).

Q: Does the committee decide whether the standards are equivalent?

A: No. The committee stated that both the educational-equivalence and conduct-equivalence determinations are beyond its jurisdiction and must be made by the lawyer (¶¶ 22, 26).

Background and rules framework

The opinion interprets New York Rules 5.4(b) (lawyer-nonlawyer partnerships), 5.8(a) (contractual relationships with nonlegal professionals), and 7.5(d) (partnerships among lawyers licensed in different jurisdictions), corresponding to ABA Model Rules 5.4 and 7.5. The analysis turns on whether a foreign IP professional fits within Rule 7.5(d)'s recognition of multi-jurisdiction partnerships and on the confidentiality compatibility the prior opinions require.

Citations and references

Rules of Professional Conduct:

• MR 5.4 / NY RPC 5.4(b) (lawyer-nonlawyer partnerships)
• MR 7.5 / NY RPC 7.5(d) (partnerships among lawyers in different jurisdictions)
• NY RPC 5.8(a) (relationships with nonlegal professionals)

Cases:

• Eisai Ltd. v. Dr. Reddy's Laboratories, Inc., 406 F. Supp. 2d 341 (S.D.N.Y. 2005), recognizing, as a matter of comity, the privilege Japanese law accords benrishi communications

Other opinions cited:

• N.Y. State 542 (1982): Rule 7.5(d) reaches lawyers licensed in foreign countries
• N.Y. State 646 (1993): independent inquiry before partnering with a Japanese bengoshi
• N.Y. State 658 (1993): multi-jurisdiction partnerships under Rule 7.5(d)

See also

• NY State Bar Op. 1093: Dual practice with a foreign nonlawyer partnership
• NY State Bar Op. 1082: Providing legal services through a nonlawyer-owned company

Source

• Landing page: https://nysba.org/ethics-opinion-1072/