Ohio Board Advisory Opinion Op 91-025

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[Former CJC Opinion-provides advice under the former Ohio Code of Judicial Conduct which is superseded by the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.

Op. 91-25 2
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).

Op. 91-25 3
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.