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Bar Admission on Motion Made Easier for Certain Federal Patent or Trademark Attorneys


Charles E. Bruzga
© Charles E. Bruzga

Article previously published in 1990 in IDEA: The Intellectual Property Law Review*

Introduction

Consider the following scenario: Ms. Fisher, admitted as an attorney only in State A, has recently relocated to New York from State B; and wants to be admitted on motion to the New York Bar, i.e. without examination, based on her prior law practice. She practiced law in State A for only six months, and then recently completed in State B five years of full time law practice in Federal patent and trademark law before the U.S. Patent and Trademark Office. While in State B, her employer required as a job condition that she have the status of an attorney, i.e., that she be admitted to practice in the highest court of any state. Her admission in State A met this requirement.

New York and states with similar rules (see Appendix) also require, for the prior law practice alternative to examination, that an applicant have conducted such prior practice in the state of admission – for Ms. Fisher, State A, where her previous six-month practice was too brief to qualify. Ms. Fisher, however, has learned that New York and similar states (see Appendix) give special treatment to specified categories of Federal attorneys, i.e., employees of the U.S. Government who are admitted to the highest court of any state. Specifically, New York and similar states permit specified categories of Federal attorneys to rely on their prior law practice irrespective of where it was conducted. Ms. Fisher notes that, like Federal attorneys, she also has practiced Federal law (i.e., patent and trademark law); and she wishes to know if she should receive the same special treatment as Federal attorneys on equal protection grounds.

This article suggests an affirmative answer based on a comparison of Federal attorneys’ and Ms. Fisher’s roles in light of the Constitutional standard of rational relation to fitness or capacity to practice law required of admission-to-practice rules. (The author, in fact, successfully argued in the New York Court of Appeals that his prior practice before the U.S. Patent and Trademark Office in a state outside his state of admission as an attorney should, like Federal attorney practice, be credited toward New York’s prior law practice alternative to examination.) Practice pointers are then discussed, followed by a caveat concerning the scope of Federally authorized practice before the U.S. Patent and Trademark Office.

The Rational-Relation-to-Fitness-or Capacity-to-Practice-Law Standard

State rules regarding admission to practice as an attorney have been regarded as subject to the overriding Constitutional requirement of being rationally related to an applicant’s fitness or capacity to practice law. As formulated in the prevailing case of Schware v. Board of Bar Examiners of the State of New Mexico, 353 U.S. 232 (1957), the U.S. Supreme Court set forth that:

A State can require high standards of qualification, such as good moral character or proficiency in its law, before it admits an applicant to the bar, but any qualification must have a rational connection with the applicant’s fitness or capacity to practice law. [Emphasis added; 353 U.S. at 239.]

Requirement of “Attorney” Status

The admission-to-practice rules of New York require eligible Federal attorneys to have served in a job requiring admission to the highest court of any state for appointment to the job or for performing job duties. (See Appendix for particular rules of New York and similar states.) Such a requirement of having an attorney status presumably assures some degree of fitness or capacity to practice law.

Ms. Fisher’s employer required that she also have an attorney status as a job condition for her Federal patent and trademark work. For her Federal trademark work since March 8, 1985, Sections 10.14(a) and 10.1(c) of the Code of Federal Regulations, Title 37 (1988), which implement 35 U.S.C. §31, independently required her to have an attorney status for her trademark work before the U.S. Patent and Trademark Office; such sections specifically requiring that she be a member “in good standing of the bar of. . . the highest court of any State.”

Federal attorneys and Ms. Fisher are thus on par with the attorney status requirement.

Practice of Law in a Federal Jurisdiction

Practice of law by Federal attorneys is presumably federal in nature; U.S. District Attorneys, for example, thus enforcing federal laws. Accordingly, a justification exists for dispensing with the practice-in-the-state-of-admission requirement for Federal attorneys relying on a prior-law-practice alternative to examination: federal law is non-localized to the state of admission. Federal attorneys, in other words, practice law in a Federal jurisdiction. So has Ms. Fisher: she has practiced in State B either Federal patent law under 35 U.S.C. §§1 et seq., or Federal trademark law under 15, U.S.C. §§1051 et seq., in connection with representing clients before the U.S. Patent and Trademark Office.

Thus, in the sense of practicing law in a Federal jurisdiction, Federal attorneys and Ms. Fisher are on par.

“Federal” vs. Non-Federal Attorneys

The bar admission rules of New York dispense with the practice-in-the-state-of-admission requirement for specified categories of Federal attorneys relying on the prior-law-practice alternative to examination. The other states mentioned in the Appendix likewise treat specified categories of Federal attorneys with the same benefit. Ms. Fisher was not a Federal attorney (as defined herein). Can this difference alone meet the mentioned rational-relation-to-fitness-or-capacity-to-practice-law standard so as to justify imposing the foregoing requirement on her?

Particularly in the face of the striking similarity between Federal attorneys’ and Ms. Fisher’s practice of law in a Federal jurisdiction, it is suggested (i) that the Federal attorney versus non-Federal attorney distinction fails to meet the foregoing standard; (ii) that Ms. Fisher and Federal attorneys are, therefore, similarly circumstanced; and (iii) that Constitutional Equal Protection thus requires like treatment (e.g., F.S. Royster Guano Co. v. Commonwealth of Virginia, 253 U.S. 412, 415 [1920] [“all persons similarly circumstanced shall be treated alike”]; compare Shapiro v. Cooke, 552 F. Supp. 581, 585-87 & 586 n.6 [N.D.N.Y. 1982] [equal protection challenge fails by state attorney-employee alleging his being similarly circumstanced to federal attorney-employees as regards a practice-in-the-state-of-admission requirement, aff’d, 702 F.2d 46 [2nd Cir. 1983]).

Now, to change focus and consider the differences between the bar admission requirements for Federal attorneys and for Ms. Fisher:

Direct Disciplinary Review

Direct disciplinary review is present when an attorney practices in the jurisdiction of his or her admission, and has been held as rationally related to fitness or capacity to practice law. See, e.g., Shapiro v. Cooke, 552 F. Supp. 581, 586-87 (N.D.N.Y. 1982) (“[i]t cannot be said that a continuous period of employment in a jurisdiction which has granted a license and is concerned with the policing of its licensees is not some assurance of the character and fitness of those licensees when they apply for admission to another bar”), aff’d, 702 F.2d 46 (2nd Cir. 1983); see Lowrie v. Goldenhersh, 521 F. Supp. 534, 536 (N.D.Ill. 1981), aff’d, 716 F.2d 401 (7th Cir. 1983).

According to the bar admission rules of New York and similar states (see Appendix), the special treatment given to specified categories of Federal attorneys applies whether or not such attorneys were subject to direct disciplinary review in a jurisdiction in which they practiced. The lack of such direct review occurs whenever a Federal attorney practices in a state other than the state of his or her admission.

In contrast, Ms. Fisher was at all times subject to direct disciplinary review by the U.S. Patent and Trademark Office (U.S.P.T.O.) under disciplinary rules that implement 35 U.S.C. §32, and that are now contained in 37 C.F.R. §10.1 et seq. (1988). A violation of such disciplinary rules carries the potential sanction of suspension or exclusion from practice. 35 U.S.C. §32; 37 C.F.R. §10.130 (1988).

The present distinction that Ms. Fisher was subject to direct disciplinary review while Federal attorneys may lack such review works in her favor. Such direct review “shapes” her practice of law to be even more like that of attorneys who have practiced in their state of admission than Federal attorneys; thus more strongly assuring fitness or capacity to practice law.

Practice Pointers

In addition to the foregoing equal protection ground, a further equal protection ground may be available if New York or similar states (see Appendix) customarily admit practitioners before the U.S. Patent and Trademark Office based on prior law practice outside of a state where admitted as an attorney. If so, Ms. Fisher would be similarly circumstanced with such previously admitted practitioners and, under Constitutional Equal Protection, should be treated alike. E.g., F.S. Royster Guano Co. v. Commonwealth of Virginia, 253 U.S. 412, 415 (1920) (“all persons similarly circumstanced shall be treated alike”); compare Shapiro v. Cooke, 552 F. Supp. 581,585-87 & 586 n.6 (N.D.N.Y. 1982) (equal protection challenge fails by state attorney-employee alleging his being similarly circumstanced to federal attorney-employees as regards a practice-in-the-state-of-admission requirement), aff’d, 702 F.2d 46 (2nd Cir. 1983).

If Ms. Fisher has exhausted her state administrative remedies, she may wish to consider filing suit in state or federal court to vindicate her rights. For New York applicants, Shapiro v. Cooke, 552 F. Supp. 581 (N.D.N.Y. 1982), aff’d 702 F.2d 46 (2nd Cir. 1983) sets forth relevant considerations for choosing the federal route. In a federal suit, if Ms. Fisher hires an attorney, she may be able to recoup part of her attorney’s fee. By basing a ground of jurisdiction on 42 U.S.C. §1983 (civil action for deprivation of civil rights), Ms. Fisher can invoke an attorney’s fee statute, 42 U.S.C. §1988. Under §1988 the court may, in its discretion, award a reasonable attorney’s fee to the prevailing party. Reasonable attorney’s fees in a bar admission context, for instance, were awarded to the plaintiffs in Solomon v. Emanuelson, 586 F. Supp. 280 (D. Conn. 1984).

Limits to Federally Authorized Patent or Trademark Practice

The U.S. Patent and Trademark Office (U.S.P.T.O.) can lawfully establish regulations to admit to practice before such office individuals who may not be admitted as attorneys in the states of their practice. Sperry v. Florida, 373 U.S. 379, 384 (1963) (construing 35 U.S.C. §31).

In the patent context, the Sperry v. Florida Court held that practitioners before the U.S.P.T.O. are authorized under 35 U.S.C. §31 to prepare and prosecute patent applications, and only those “tasks which are incident to [such] preparation and prosecution of patent applications” (373 U.S. at 404); such incidental tasks including preparing patent applications and rendering opinions as to patentability of inventions (373 U.S. at 402 n.47).

With regard to the scope of permissible trademark practice before the U.S.P.T.O., one can now reason from the scope of permissible patent practice set forth in Sperry v. Florida, supra, that the scope of trademark practice might be similar. This is in view of a 1985 rule change wherein the U.S.P.T.O. has declared that the authority of each state to regulate the practice of law is limited “to the extent necessary for the Patent and Trademark Office to accomplish its federal objectives” (37 C.F.R. §10.1); which language substantially tracks the Supreme Court’s language in Sperry v. Florida, supra at 402. The effective date of the foregoing authorizing rule, 37 C.F.R. §10.1, was March 8, 1985 (50 Fed. Reg. 5158 [1985]). The Sperry Court had discussed the more limited trademark rule then in effect, 37 C.F.R. §2.12(d) (1963), which at that time failed to limit state authority to regulate the practice of trademark law.

Those admitted to practice before the U.S.P.T.O. should limit the scope of legal services they provide to that authorized before the U.S.P.T.O. unless (a) they are concurrently admitted to practice law in the state or other jurisdiction of their practice, or (b), as in a small number of jurisdictions, they are employed by a legal entity where a statute or other law permits non-lawyer-employees of such legal entity to represent such entity – e.g. Georgia, regarding corporations (Knickerbocker Tax Systems, Inc. v. Texaco, Inc., 130 Ga. App. 383,203 S.E. 2d 290 [Ct. App. Ga. 1973]). The latter circumstance (b) is rare. See generally, 19 ALR3d 1073 §3(a) (1968); 19 Am. Jur.2d §2172 (1986).

Conclusion

In the scenario presented above, Ms. Fisher seeks admission without examination as an attorney in New York based on her prior five year’s practice before the U.S. Patent and Trademark Office (U.S.P.T.O.). Such practice, however, was not in her state of admission as an attorney, as is required by New York and the similar states mentioned in the Appendix. Such states, however, dispense with the practice-in-the-state-of-admission requirement for specified categories of Federal attorneys. Since, considering New York law, (a) Ms. Fisher’s prior job required her to have an attorney status (a factor that may be peculiar to New York) and (b) her prior practice was in a Federal jurisdiction – both factors (a) and (b) also existing for Federal attorneys -, the mere distinction (c) that she was a non-Federal, versus a Federal, attorney appears to fall short of the Constitutional standard of being rationally related to her fitness or capacity to practice law. As such, Ms. Fisher would have an equal protection ground vis-a-vis Federal attorneys to have her prior five year’s practice before the U.S.P.T.O. qualify for the prior law practice alternative to examination.

Ms. Fisher may also have an alternative equal protection ground for being admitted without examination if she can show that prior U.S.P.T.O. practitioners have been admitted without examination in reliance on their prior practice outside a state where admitted as an attorney.

*31 IDEA 59 (1990)

Appendix

The following states permitted the following categories of Federal attorney practice to qualify for a prior law practice alternative to examination, as of the indicated dates:

Iowa: The “discharg[ing of] actual legal duties as a member of one of the armed services of the United States.” Rule 114(b)(2) (1987).
Michigan: “[A]ctive duty. . . in the United States armed forces as a judge advocate, legal specialist, or legal officer.” Rule 5(A)(6)(c) (Sept. 9, 1988).
Missouri: “[Service] full-time as a lawyer with the United States Government or its armed forces.” Rule 8.10(c) (Aug. 1, 1980).
New York: “Federal military or civilian legal service in a position which requires admission to the bar for the appointment thereto or for the performance of the duties thereof. ” 22 NYCRR 520.9(2)(b) (June 30, 1987).
North Carolina: “Service as a member of a Judge Advocate General’s Department of one of the military branches of the United States. ” Section 0.502(3)(e) (Feb. 3, 1988).
Oklahoma: “Service … as an Armed Forces legal officer. ” Rule 2, Section 2 (Dec. 8, 1986).
Pennsylvania: “[Service] on active duty in the United States military service, as a judge advocate or law specialist. ” Rule 204(2)(iii) (Aug. 1986). Additionally, the following state permits the following category of Federal attorney practice to qualify as a prior law practice alternative to the Multistate bar examination (but a one-day essay exam must still be taken):
Utah: “[S]ervice in the armed forces in the Judge Advocate Department in a legal capacity. ” Rule 4-1(3) (Jan. 1, 1988).