Can a full-time judge prosecute patent applications before the U.S. Patent and Trademark Office?

Plain-English summary

The Board addressed whether a full-time judge of an Ohio court of record may prosecute patent applications before the U.S. Patent and Trademark Office. Canon 5F states that full-time judges should not practice law, and R.C. 4705.01 prohibits a judge of any court of record from engaging in the practice of law during the term of office. The dispositive question was therefore whether preparing, filing, and prosecuting patent applications is the practice of law.

The Board explained that federal law authorizes both lawyers and registered non-lawyer agents to prosecute patent applications (35 U.S.C. Section 31; 37 C.F.R. Section 1.31), but that those activities can still constitute the practice of law. It cited Sperry v. Florida, in which the U.S. Supreme Court did not question Florida's determination that preparing and prosecuting patent applications is the practice of law but held that, under the Supremacy Clause, Florida could not deny a registered non-lawyer the right to perform functions within the scope of federal authority. The Board also cited Ohio (In re Cowgill), District of Columbia (In re Amalgamated Development Co.), and New York (People v. Lawrence Peska Assoc.) authority treating patent-application work as the practice of law.

The Board concluded that such work is the practice of law, so full-time Ohio judges are prohibited from it under Canon 5F and R.C. 4705.01, while noting that the opinion does not purport to prohibit a non-lawyer registered with the PTO from performing functions within the scope of federal authority.

Currency note

This opinion issued in 1991 under Ohio's former Code of Judicial Conduct (superseded by the current Ohio Code of Judicial Conduct effective March 1, 2009). The Board's status list also notes it is not current due to subsequent rule amendments to Canons 1 through 6 of the former Code of Judicial Conduct, effective May 1, 1997. Subsequent rule amendments or later opinions may have changed the analysis. Treat this page as historical context, not current guidance. Verify against the current Ohio Code of Judicial Conduct before relying on any specific rule mentioned here.

Common questions

Q: Can a full-time Ohio judge prosecute patent applications on the side?

A: Under this opinion, no; the Board concluded that prosecuting patent applications is the practice of law, which Canon 5F and R.C. 4705.01 prohibit for full-time judges.

Q: Doesn't federal law let non-lawyers do patent work?

A: Yes, but the opinion explained that, per Sperry v. Florida, federal authorization for registered non-lawyers does not change the conclusion that the work is the practice of law; it only bars a state from denying federally authorized functions to such a non-lawyer.

Q: Does this opinion restrict registered non-lawyer patent agents?

A: No. The opinion stated it does not purport to prohibit a non-lawyer registered with the PTO from performing functions within the scope of federal authority.

Background and rules framework

The opinion interprets the former Code of Judicial Conduct Canon 5F (full-time judges should not practice law) together with R.C. 4705.01 (a judge of any court of record shall not engage in the practice of law during the term of office). The analysis turns on whether prosecuting patent applications is the practice of law, drawing on federal patent statutes and regulations and state case law.

Citations and references

Rules of Judicial Conduct (Ohio, former):

• Canon 5F, full-time judges should not practice law

Statutes and regulations:

• R.C. 4705.01, judges of courts of record barred from practicing law
• 35 U.S.C. Section 31; 37 C.F.R. Sections 1.31, 10.5-10.10, registration and practice before the PTO

Cases:

• Sperry v. Florida, 373 U.S. 379 (1963), Supremacy Clause and federally authorized patent practice
• In re Cowgill, 37 Ohio App. 2d 121, 307 N.E.2d 919 (Ct. App. 1973), patent practice as the practice of law in Ohio
• In re Amalgamated Development Co., 375 A.2d 494 (D.C. Ct. App. 1977), cert. denied, 434 U.S. 924 (1977)
• People by Lefkowitz v. Lawrence Peska Assoc., 393 N.Y.S.2d 650 (Sup. Ct. 1977)

See also

• Ohio BPC Op. 1988-036: Full-Time Referee Precluded From Practicing Law
• Ohio BPC Op. 1987-029: County Court Judges Practicing Law
• Ohio BPC Op. 1987-014: Part-Time Referees Practicing Law
• Ohio BPC Op. 1988-035: Delinquent Registration Not Unauthorized Practice

Source

• Landing page: https://ohioadvop.org/advisory-opinion-index/
• Original PDF: https://www.ohioadvop.org/wp-content/uploads/2017/04/Op-91-025.pdf

Original opinion text

Reproduced from the official source for research purposes. The linked source is authoritative.

The Supreme Court of Ohio
BOARD OF COMMISSIONERS ON GRIEVANCES AND DISCIPLINE
41 SOUTH HIGH STREET-SUITE 3370, COLUMBUS, OH 43215-6105
(614) 644-5800 FAX: (614) 644-5804

OFFICE OF SECRETARY

OPINION 91-25
Issued December 6, 1991

[Former CJC Opinion-provides advice under the former Ohio Code of Judicial Conduct which is superseded by the Ohio Code of Judicial Conduct, eff. 3/1/2009.]

[Not Current- subsequent rule amendments to Canons 1 through 6, Ohio Code of Judicial Conduct, eff. May 1, 1997]

SYLLABUS: The preparation, filing, and prosecution of patent applications before the U.S. Patent and Trademark office is activity which constitutes the practice of law. Full-time judges of any court of record in Ohio are prohibited from such practice of law, under Canon 5F of the Code of Judicial Conduct and Section 4705.01 of the Ohio Revised Code. This opinion does not purport to prohibit a non-lawyer registered to practice before the U.S. Patent and Trademark Office from performing functions within the scope of federal authority.

OPINION: The question presented is whether it is proper for a full-time judge of a court of record in Ohio to prosecute patent applications before the U.S. Patent and Trademark Office.

In Ohio, Canon 5F of the Code of Judicial Conduct succinctly and unequivocally states that "[f]ull-time judges, including those persons designated as Judges in the Compliance section of this Code, should not practice law." Section 4705.01 of the Ohio Revised Code also states, with more detail, that such practice is prohibited.

No judge of any court of record in this state shall engage in the practice of law during his term of office, either by appearing in court, by acting as advisory or consulting counsel for attorneys or others, by accepting employment or acting as an attorney, solicitor, collector, or legal advisor for any bank, corporation, or loan or trust company, or by otherwise engaging in the practice of law in this state, in or out of the courts, except as provided in section 1902.1.1 of the Revised Code.

Ohio Rev. Code Ann. § 4705.01 (Baldwin 1991).

Therefore, at issue in this opinion is whether the preparation, filing, and prosecution of patent applications is the practice of law.

By statute, Congress has given the Commissioner of Patents and Trademarks the authority to "prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent and Trademark Office." 35 U.S.C. § 31 (1988). By regulation, the Commissioner has explicitly authorized the prosecution of patent applications by both lawyers and non-lawyers: "An applicant for patent may file and prosecute his or her own case, or he or she may be represented by a registered attorney, registered agent, or other individual authorized to practice before the Patent and Trademark Office in patent cases." 37 C.F.R. § 1.31 (1990). However, in order to prosecute patent applications of others before the Patent and Trademark office, both attorneys and non-lawyer agents must be registered with the office. See 37 C.P.R. §§ 10.5 through 10.10 (1990).

Even though non-attorneys may be registered as agents and be granted the authority to file and prosecute patent applications, such activities may still be considered activities which constitute the practice of law. For example, in Sperry v. Florida, the U.S. Supreme Court vacated an order of the Florida Supreme Court which prohibited a non-lawyer registered to practice before the U.S. Patent Office from performing tasks incident to the preparation of prosecution of patent applications before the U.S. Patent Office. 373 U.S. 379, 404 (1963). In doing so, the Supreme Court did not question the determination that under Florida law the preparation and prosecution of patent applications for others constitutes the practice of law, but stated that by virtue of the Supremacy Clause, Florida could not deny the right to perform functions within the scope of the federal authority. Id. at 383-85.

In Ohio, the filing and prosecuting of patent applications by a person not licensed to practice before the United States Patent Office, nor licensed as an attorney in Ohio constitutes the practice of law. In re Cowgill, 37 Ohio App. 2d 121,124, 307 N.E. 2d 919, 921 (Ct. App. 1973). In the District of Columbia, advising investors as to patentability, preparing patent applications, advising of action to take after rejection, and preparing and filing amendments are within the realm of practice of law even if person does not sign correspondence with the Patent Office and disclaims that he/she is a patent attorney. In re Amalgamated Development Co., 375 A 2d. 494, 499 (D.C. Ct. App. 1977) cert. denied, 434 U.S. 924 (1977). In New York, patent agents can prepare applications even though it constitutes the practice of law solely because they are authorized to do so by federal law. People by Lefkowitz v. Lawrence Peska Assoc., 393 N.Y.S. 2d 650, 652 (Sup. Ct. 1977).

In accord, this Board advises that the preparation, filing, and prosecution of patent applications before the U.S. Patent and Trademark office is activity which constitutes the practice of law; therefore, full-time judges of any court of record in Ohio are prohibited from such practice of law, under Canon 5F of the Code of Judicial Conduct and Section 4705.01 of the Ohio Revised Code. This opinion does not purport to prohibit a non-lawyer registered to practice before the U.S. Patent and Trademark Office from performing functions within the scope of federal authority.

Advisory Opinions of the Board of Commissioners on Grievances and Discipline are informal, nonbinding opinions in response to prospective or hypothetical questions regarding the application of the Supreme Court Rules for the Government of the Bar of Ohio, the Supreme Court Rules for the Government of the Judiciary, the Code of Professional Responsibility, the Code of Judicial Conduct, and the Attorney's Oath of Office.