Practice of Patent Law in Virginia By Patent Attorney Not Licensed in Virginia

You have asked the Committee to opine as to whether it is the unauthorized practice of law for a non-Virginia licensed attorney, who is a registered U.S. patent attorney and is a member of a Virginia law firm, to render legal advice and legal opinions in Virginia to clients who may be located anywhere in the world on matters relating only to patent law. The answer is no, this conduct would not be the unauthorized practice of law and the controlling authority is found in Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379 (1963); Virginia Unauthorized Practice of Law Rule 9 (“UPR 9???); Unauthorized Practice Consideration 1-1 (“UPC 1-1???); and Unauthorized Practice of Law Opinions (“UPL Opinions???) 158 and 201.

In Sperry, the U.S. Supreme Court addressed the question of whether a non-lawyer practitioner duly registered and authorized to practice before the United States Patent Office, but not licensed as an attorney in any jurisdiction, could engage in a patent practice in a jurisdiction other than the jurisdiction in which the Patent Office is located, even though the conduct could be considered the practice of law in the other jurisdiction. The Court’s answer was a clear “yes,??? based on the authority granted in the Supremacy Clause of the U.S. Constitution and the authority granted to the Commissioner of Patents in the federal statute, 35 U.S.C. §31, to “prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office.???

The statute [35 U.S.C. § 31] thus expressly permits the Commissioner to authorize practice before the Patent Office by nonlawyers, and the Commissioner has explicitly granted such authority. If the authorization is unqualified, then, by virtue of the Supremacy Clause, Florida may not deny to those failing to meet its own qualifications the right to perform the functions within the scope of the federal authority. A State may not enforce licensing requirements which, though valid in the absence of federal regulation, give “the State's licensing board a virtual power of review over the federal determination??? that a person or agency is qualified and entitled to perform certain functions, or which impose upon the performance of activity sanctioned by federal license additional conditions not contemplated by Congress. “No State law can hinder or obstruct the free use of a license granted under an act of Congress.??? Pennsylvania v. Wheeling & B. Bridge Co., 13 How. 518, 566.

Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379, 385 (1963).

Virginia’s Unauthorized Practice Rule 9 and unauthorized practice of law opinions addressing the scope of practice in Virginia by non-Virginia lawyers adopt the principles which the Court articulated in Sperry. UPR 9, “Administrative Agency Practice,??? allows that a non-lawyer [1] may furnish legal advice or service and may prepare legal instruments for another with regard to practice before a federal or state administrative agency if the non-lawyer is providing such service to his/her regular employer or “as permitted by the rules of such agency??? and “within the scope of practice authorized by such agency.??? UPR 9-102 (A)(2), (B)(2). With regard to representing the interest of another before an administrative tribunal, UPR 9 refers to UPR 1, “Practice Before Tribunals.??? UPC1-1 defines a “tribunal??? before which one must be licensed in Virginia to practice. This definition specifically excludes “a tribunal established by virtue of the Constitution or laws of the United States, to the extent that practice before such tribunal has been preempted by federal law.??? UPC 1-1 (emphasis added). Sperry makes clear that practice before the PTO is preempted by federal law and, under the Supremacy Clause, a state’s UPL rules or laws cannot restrict nor prohibit such practice.

The UPL Committee has also addressed the issue of the limits of a non-Virginia attorney’s practice in UPL Opinions 158 and 201. In UPL Opinion 158, the Committee opined:

that a foreign attorney may advise a Virginia client in Virginia on matters regarding litigation which is pending in a jurisdiction in which the foreign attorney has been admitted to practice law, so long as the attorney remains in good standing in that jurisdiction and is competent to provide such advice, and so long as the matter does not involve issues of Virginia law. Furthermore, the Committee is of the opinion that the foreign attorney who meets those criteria may also prepare legal documents relative to the matter on which he is advising the Virginia client. However, the foreign attorney may continue to provide such advice only until Virginia legal issues arise in the matter.

The Committee further opines that a foreign attorney, although admitted to and in good standing in the bar of his home jurisdiction, may not advise or prepare legal documents for a Virginia client in Virginia on matters involving Virginia law.

As to matters involving federal law, the Committee is of the opinion that a foreign attorney may advise and prepare legal documents for a Virginia client in Virginia on such matters, assuming that the foreign attorney is admitted to practice before a federal court. Such advice and document preparation may be provided only to the extent that the federal matter is not impacted by state law and if state law issues are not involved.

Furthermore, the Committee believes that it would constitute the unauthorized practice of law for a foreign attorney to advise any client in Virginia on matters that involve law which is neither federal law nor the law of a jurisdiction in which the foreign attorney is authorized to practice law.

UPL Opinion 158 (1996). The Committee later affirmed these conclusions in UPL Opinion 201 and added:

A non-Virginia licensed attorney may also be authorized by federal law to represent persons before a federal administrative agency and may therefore give advice to and prepare legal instruments for such clients in the regular course and within the scope of practice authorized by such federal agency. UPR 9-102. The committee has previously opined that it is not the unauthorized practice of law for an attorney, not licensed in the Commonwealth of Virginia, to maintain an office in Virginia for a practice limited exclusively to matters before the United States Immigration and Naturalization Service. UPL Op. 55 (1983). . . . Therefore, an attorney in your multi-jurisdictional law firm need not be admitted to the Virginia State Bar to represent clients in Virginia on matters involving federal law as described above.

UPL Opinion 201 (2001).

Based on this authority, an attorney who is licensed other than in Virginia, who is registered and authorized to practice before the U.S. Patent Office and who is a member of a Virginia law firm can provide all legal services and representation related to a patent law practice to all clients needing such services and representation regardless of where the clients are located. These services and representation may include rendering legal advice and/or written opinions for clients on issues such as patent infringement, patent claim construction, patent validity, or enforceability of a patent. The patent attorney may provide such advice and opinions to a client whether related to a matter the patent attorney is actually handling for the client before the USPTO or not. [2] The patent attorney can conduct this practice and provide these services while physically in Virginia and without the supervision or association of a Virginia licensed attorney, so long as the patent attorney limits his/her activity to the practice of patent law and is not in any manner attempting to practice Virginia law. Provided the patent attorney’s practice is limited as described herein, he or she may also maintain an office in Virginia to conduct that limited practice. If the patent attorney is a member of a law firm with offices in Virginia and elsewhere, the extent to which the patent attorney can conduct his/her practice outside of Virginia will depend upon the unauthorized practice rules and/or rules of professional conduct in those other jurisdictions. If the patent attorney provides advice and counsel regarding patent law to a Virginia client from a location outside of Virginia, this would not be the unauthorized practice of law in Virginia because the attorney is not physically in Virginia and because he/she is otherwise authorized to practice patent law.

While the non-Virginia patent attorney can fully engage in a patent law practice while a member of a law firm located in Virginia, UPL Opinion 196, interpreting UPR 1-101, sets out a requirement that any non-Virginia attorney practicing in Virginia must indicate on letterhead, business cards, etc. his/her limitations of practice. This can be accomplished either by denoting the jurisdiction(s) where the attorney is licensed, or by stating that the attorney is “not licensed in Virginia??? or by indicating that the attorney’s practice is limited to an “area of federal law that by rule, regulation or statute [does] not require Virginia State Bar membership.???

Committee Opinion

August 8, 2006

[1] The term “non-lawyer??? is defined as “any person, firm, association or corporation not duly licensed or authorized to practice law in the Commonwealth of Virginia.??? Part 6, §I (C) Rules of the Supreme Court of Virginia.

[2] This advice and opinion is subject, of course, to any restriction as a result of any conflicts between clients or potential clients in doing so.

Updated: Oct 26, 2006