Can a Texas firm employ a lawyer admitted in another state, but not yet in Texas, to work as a law clerk and to prepare patent applications under his U.S. Patent Office license?

Plain-English summary

X was licensed in Oklahoma and before the U.S. Patent Office and had moved to Texas, planning to join the Texas firm of W and V after admission to the Texas bar. He was already employed by W and V, still rendered legal services to some Oklahoma clients, and could help the firm prepare patent applications. The inquiry asked, in six parts, whether X could represent his Oklahoma clients in his own name or in the firm's name, handle their problems if W or V handled the correspondence, prepare patent applications in his own name or the firm's name for Texas clients, and sign general correspondence under the firm name.

The Committee said the questions largely involved the unauthorized practice of law, which is within the province of the Unauthorized Practice of Law Committee, not the Professional Ethics Committee, so it did not decide that point. It noted that until X is admitted in Texas he is not subject to the Texas Canons, but that Canon 43 raises an ethical problem for W and V, because the canon proscribes aiding the practice of law by a non-member of the Texas Bar. Without deciding the UPL question, the Committee assumed that X is not engaged in unauthorized practice when his work is purely that of a law clerk supervised by and working for a Texas lawyer rather than for a client, and when his work is incident to preparing and prosecuting patent applications within the authority conferred by Patent Office regulations, which are preemptive of state law, citing Sperry v. Florida. On those assumptions, W and V would not violate Canon 43 by aiding X to perform such services. The Committee ruled 9-0.

Currency note

This opinion was issued in 1963, under the former Texas Canons of Ethics, which the Texas Disciplinary Rules of Professional Conduct replaced effective January 1, 1990. Subsequent rule amendments or later opinions may have changed the analysis. Treat this page as historical context, not current guidance. Verify against current rules before relying on any specific rule, deadline, or requirement mentioned here.

Common questions

Q: Can a Texas firm hire a lawyer not yet admitted in Texas?

A: Under this opinion, the firm does not violate Canon 43 by employing such a lawyer to work as a law clerk under a Texas lawyer's supervision and for the Texas lawyer rather than for a client.

Q: Can that lawyer prepare patent applications for the firm's Texas clients?

A: The Committee assumed he is not engaged in unauthorized practice when the work is incident to patent applications within the authority of his Patent Office license, citing Sperry v. Florida for the preemptive force of the federal patent regulations.

Q: Did the Committee decide whether X was engaged in unauthorized practice?

A: No. It said unauthorized-practice questions are within the province of the Unauthorized Practice of Law Committee and proceeded on assumptions rather than deciding that point.

Background and rules framework

The opinion interprets former Texas Canon 43, which proscribed aiding the practice of law by a non-member of the Texas Bar. The modern analog is ABA Model Rule 5.5, governing the unauthorized practice of law and multijurisdictional practice, including a lawyer's assistance to others.

Citations and references

Rules of Professional Conduct:

• MR 5.5 (unauthorized practice of law; multijurisdictional practice), as the modern analog
• Texas Canon 43 (former canon)

Cases:

• Sperry v. Florida, 10 L. Ed. 2d 428 (1963), holding Patent Office regulations preemptive of state law on patent practice

See also

• TX Ethics Op. 289: Registered Patent Attorney's Listing and Specialization in Texas
• TX Ethics Op. 296: Assistant County Attorney's Private Eminent-Domain Practice

Source

• Landing page: https://www.legalethicstexas.com/resources/opinions/opinion-276/
• Original PDF: https://tcle-web.s3.amazonaws.com/public/documents/Opinion_276.pdf

Original opinion text

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

QUESTION PRESENTED

X, licensed to practice in Oklahoma and before the U. S. Patent Office, has moved to Texas. He plans to join the Texas firm of W and V after he is admitted to the Texas bar. X is presently employed by W and V. He is also rendering legal services to some Oklahoma clients. He can be of service to the firm of W and V in preparing patent applications for clients of W and V. Can X: (1) Represent his Oklahoma clients in his own name prior to being admitted to the Texas bar? (2) Represent his Oklahoma clients in the name of W and V prior to being admitted to the Texas bar? (3) Handle the legal problems of his Oklahoma clients if all correspondence is handled by W or by V? (4) Prepare patent applications and other papers for filing in the Patent Office under his own name for a Texas client? (5) Prepare patent applications and other papers for filing in the Patent Office in the name of W and V for a Texas client? (6) Sign general correspondence under the firm name of W and V?

18 Baylor L. Rev. 349 (1966)

UNAUTHORIZED PRACTICE OF LAW - AIDING A LAWYER, NOT ADMITTED IN TEXAS, TO PERFORM SERVICES OF A LAW CLERK AND SERVICES PERMITTED BY HIS LICENSE TO PRACTICE BEFORE THE U. S. PATENT OFFICE
While a Texas firm may not, by employing a lawyer not admitted to practice in Texas, aid him in the unauthorized practice of law, a Texas firm may employ a lawyer, prior to his admission to the Texas bar, as a law clerk and also to perform those services which he is authorized to perform by virtue of his license to practice before the U. S. Patent Office.

Canon 43.

The question largely involves problems of the unauthorized practice of law in Texas. Questions concerning the unauthorized practice of law are within the province of the Unauthorized Practice of Law Committee, and the Professional Ethics Committee has not been delegated the authority to issue advisory opinions of that nature.

Until X is admitted to the Texas Bar, he is not subject to the Texas Canons. There is an ethical problem, however, in regard to the activities of W and V; for Texas Canon 43 proscribes a lawyer's aiding the practice of law by a person not a member of the Texas Bar. Obviously, W and V may not ethically aid X in engaging in activities which constitute the unauthorized practice of law in Texas. Without attempting to decide or to issue an advisory opinion on the point, this committee assumes that X is not engaged in the unauthorized practice of law when his work is purely that of a law clerk working under the supervision of a Texas lawyer and for the Texas lawyer rather than for a client. It is assumed also that X is not engaged in the unauthorized practice of law when his work is incident to the preparation and prosecution of patent applications before the Patent Office and within the authority conferred upon him by virtue of the Patent Office regulations, preemptive of state law; Sperry v. Florida, 10 L.Ed. 2d 428 (1963). If these assumptions are correct, W and V do not violate Canon 43 by aiding X to perform services that, because the services are those of a law clerk or those authorized by his license from the U. S. Patent Office, do not constitute the unauthorized practice of law. (9-0.)

Tex. Comm. On Professional Ethics, Op. 276 (1963)