Can A Patent Attorney Practice Patent Law In A State Where They Are Not Admitted To That State’s Bar?

3 Comments

1. cybersha says:

   February 18, 2010 at 1:23 am

   A license to practice before the USPTO is not a license to practice law. For example, an RPA (registered patent agent) can draw a claim, contest a patent, do other things before the USPTO, but if he or she wants to prepare a license agreement to make money off of practicing the art embodied in a patent, or to transfer the patent or to sue for infringement, he or she needs to get an attorney to sign off on the work. If the person is admitted to practice law in one state and relocates to a different state without getting sworn in, if the practice is limited to PTO stuff–filing claims, contesting issuance–it’s not the practice of law in most places (check with the county bar association’s IP section first, though) but if you engage in the practice of law, you had darned tootin’ well better make sure you hold a license to practice law, because it’s automatically malpractice and you can’t enforce any right to be paid for the work.
2. mikegree says:

   February 18, 2010 at 1:27 am

   No, you are not required but you will be limited in what you can do unless you pass the bar in the second state. For example, if you want to litigate you will not be allowed to go into court in the second state. While you can get admitted “pro hac” (on a case-by-case basis) in the new state, most states limit the number of such admissions because they don’t want attorneys to be effectively practicing in the new state without taking the bar. Most importantly, your new firm will probably not make you a partner unless you are a member of the local bar. So, take the bar in the new state. It makes the most sense on a number of levels.
3. David M says:

   February 18, 2010 at 2:04 am

   Patent law is federal, so you need federal bar admission. You get that if you’re admitted to the bar in any state and pay your federal dues (mine are only $15 per year). Some types of intellectual property law require registration with state agencies, but not patents. If you need to act in a state in which you are not admitted, you can appear pro hac vice, which is permitted on a case-by-case basis. My state has an “integrated bar” which is exactly the opposite of what it sounds like. State bar membership is mandatory. Not all states have that system. If you only do patent law–nothing else–you could do it in most states without state bar admission.