373 U.S. 379 (1963), 322, Sperry v. Florida ex rel. Florida Bar

Docket Nº:No. 322
Citation:373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428
Party Name:Sperry v. Florida ex rel. Florida Bar
Case Date:May 27, 1963
Court:United States Supreme Court
 
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Page 379

373 U.S. 379 (1963)

83 S.Ct. 1322, 10 L.Ed.2d 428

Sperry

v.

Florida ex rel. Florida Bar

No. 322

United States Supreme Court

May 27, 1963

Argued March 25, 1963

CERTIORARI TO THE SUPREME COURT OF FLORIDA

Syllabus

Petitioner is not a lawyer, and has never been admitted to the Bar of any State, but, under regulations issued by the Commissioner of Patents with the approval of the Secretary of Commerce pursuant to 35 U.S.C. § 31, he has been authorized to practice before the United States Patent Office. As part of that practice, he has for many years represented patent applicants, prepared and prosecuted their applications, and advised them in connection with their applications in the State of Florida. The Florida Bar sued in the Supreme Court of Florida to enjoin the performance of these and other specified acts within the State, contending that they constituted unauthorized practice of law.

Held:

1. Florida may not prohibit petitioner from performing within the State tasks which are incident to the preparation and prosecution of patent applications before the Patent Office. Pp. 381-402.

(a) The determination of the Supreme Court of Florida that the preparation and prosecution of patent applications for others constitutes the practice of law, within the meaning of the law of that State, is not questioned. P. 383.

(b) Florida has a substantial interest in regulating the practice of law within the State, and, in the absence of federal legislation on the subject, it could validly prohibit nonlawyers from engaging in this circumscribed form of patent practice. P. 383.

(c) A federal statute, 35 U.S.C. § 31, expressly permits the Commissioner of Patents to authorize practice before the Patent Office by nonlawyers; the Commissioner has explicitly granted such authority; and Florida may not deny to those failing to meet its own qualifications the right to perform acts within the scope of the federal authority. Pp. 384-385.

(d) There cannot be read into the federal statute and regulations a condition that such practice must not be inconsistent with state law, thus leaving registered patent practitioners with the unqualified right to practice only in the physical presence of the

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Patent Office and in the District of Columbia, where that Office is now located. Pp. 385-387.

(e) The legislative history of the statute and its predecessor provisions shows that Congress recognized that registration in the Patent Office confers a right to practice before that Office, without regard to whether the State within which the practice is conducted would otherwise prohibit such conduct. Pp. 387-402.

(f) Since patent practitioners are authorized to practice only before the Patent Office, the State maintains control over the practice of law within its borders except to the limited extent necessary for the accomplishment of the federal objectives. P. 402.

2. As so construed, 35 U.S.C. § 31 is constitutional. Pp. 403-404.

(a) By establishing the Patent Office and authorizing competent persons to assist in the preparation of patent applications, Congress has not exceeded the bounds of what is "necessary and proper" to the operation of the patent system established under Art. I, § 8, Ch 8, of the Constitution. P. 403.

(b) Having acted within the scope of the powers "delegated to the United States by the Constitution," Congress has not exceeded the limits of the Tenth Amendment, despite the concurrent effects of its legislation upon a matter otherwise within the control of the State. P. 403.

(c) In view of the standards prescribed in 35 U.S.C. § 31 to guide the Patent Office in its admissions policy, it cannot be said that Congress has improperly delegated its powers to the administrative agency. Pp. 403-404.

140 So.2d 587, judgment vacated and cause remanded.

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WARREN, J., lead opinion

MR. CHIEF JUSTICE WARREN delivered the opinion of the Court.

Petitioner is a practitioner registered to practice before the United States Patent Office. He has not been admitted to practice law before the Florida or any other bar. Alleging, among other things, that petitioner

is engaged in the unauthorized practice of law, in that, although he is not a member of The Florida Bar, he nevertheless maintains an office . . . in Tampa, Florida, . . . holds himself out to the public as a Patent Attorney . . . represents Florida clients before the United States Patent Office, . . . has rendered opinions as to patentability, and . . . has prepared various legal instruments, including . . . applications and amendments to applications for letters patent, and filed same in the United States Patent Office in Washington, D.C.,

the Florida Bar instituted these proceedings in the Supreme Court of Florida to enjoin the performance of these and other specified acts within the State. Petitioner filed an answer in which he admitted the above allegations, but pleaded as a defense

that the work performed by him for Florida citizens is solely that work which is presented to the United States Patent Office, and that he charges fees solely for his work

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of preparing and prosecuting patent applications and patent assignments and determinations incident to preparing and prosecuting patent applications and assignments.

Thereupon, the court granted the Bar's motion for a summary decree and permanently enjoined the petitioner from pursuing the following activities in Florida until and unless he became a member of the State Bar:

1. using the term "patent attorney" or holding himself out to be an attorney at law in this state in any field or phase of the law (we recognize that the respondent, according to the record before us, has already voluntarily ceased the use of the word "attorney");

2. rendering legal opinions, including opinions as to patentability or infringement on patent rights;

3. preparing, drafting and construing legal documents;

4. holding himself out, in this state, as qualified to prepare and prosecute applications for letters patent, and amendments thereto;

5. preparation and prosecution of applications for letters patent, and amendments thereto, in this state; and

6. otherwise engaging in the practice of law.

The Supreme Court of Florida concluded that petitioner's conduct constituted the unauthorized practice of law which the State, acting under its police power, could properly prohibit, and that neither federal statute nor the Constitution of the United States empowered any federal body to authorize such conduct in Florida. 140 So.2d 587.

In his petition for certiorari, petitioner attacked the injunction

only insofar as it prohibits him from engaging in the specific activities . . . [referred to above], covered by his federal license to practice before the Patent Office. He does not claim that he has any right otherwise to

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engage in activities that would be regarded as the practice of law.1

We granted certiorari, 371 U.S. 875, to consider the significant, but narrow, questions thus presented.

[83 S.Ct. 1325] We do not question the determination that, under Florida law, the preparation and prosecution of patent applications for others constitutes the practice of law. Greenough v. Tax Assessors, 331 U.S. 486; Murdock v. Memphis, 20 Wall. 590. Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U.S.C. §§ 101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under statute law. It also involves his participation in the drafting of the specification and claims of the patent application, 35 U.S.C. § 112, which this Court long ago noted "constitute[s] one of the most difficult legal instruments to draw with accuracy," Topliff v. Topliff, 145 U.S. 156, 171. And, upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR §§ 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art. 37 CFR § 1.119. Nor do we doubt that Florida has a substantial interest in regulating the practice of law within the State, and that, in the absence of federal legislation, it could validly prohibit nonlawyers from engaging in this circumscribed form of patent practice.2

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But "the law of the State, though enacted in the exercise of powers not controverted, must yield" when incompatible with federal legislation. Gibbons v. Ogden, 9 Wheat. 1, 211. Congress has provided that the Commissioner of Patents

may prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office,

35 U.S.C. § 31,3 and the Commissioner, pursuant to § 31, has provided by regulation that

[a]n applicant for patent . . . may be represented by an attorney or agent authorized to practice before the Patent Office in patent cases.

37 CFR § 1.31. (Emphasis added.) The current regulations establish two separate registers

on which are entered the names of all persons recognized as entitled to represent applicants before the Patent Office in the preparation and prosecution of applications for patent.

37 CFR § 1.341. (Emphasis added.) One register is for attorneys at law, 37 CFR § 1.341(a), and the other is for nonlawyer "agents." 37 CFR § 1.341(b). A person may be admitted under either category only by establishing

that he is of good moral character and of good repute and possessed of the legal and scientific and technical...

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