Chi. Bar Ass'n v. Kellogg

• Decision Date: 31 October 1949
• Docket Number: Gen. No. 44716.
• Citation: 88 N.E.2d 519
• Parties: CHICAGO BAR ASS'N et al. v. KELLOGG.
• Court: United States Appellate Court of Illinois

88 N.E.2d 519

CHICAGO BAR ASS'N et al.

v.KELLOGG.

Gen. No. 44716.

Appellate Court of Illinois, First District, First Division.

Oct. 31, 1949.

Cloyes & Cavender, Chicago, for appellant.

Charles Leviton, Chicago (Casper W. Ooms, Werner W. Schroeder, Albin C. Ahlberg, Clarence E. Fox and Theodore C. Diller, Chicago, of counsel), for appellees.

TUOHY, Presiding Justice.

Plaintiffs, The Chicago Bar Association, and sixteen attorneys, members of the committee on unauthorized practice, filed their complaint in the Superior Court of Cook County against defendant seeking to restrain him from the unauthorized practice of law. From a decree granting in part the relief prayed, defendant appeals, and from that part of the decree denying the relief, plaintiffs cross-appeal.

The complaint charges substantially that the defendant maintains an office in the City of Chicago; that he is not licensed to practice law in the State of Illinois, but notwithstanding has for a long time engaged in, and continues to engage in, the practice of law and holds himself out as an attorney and induces, or attempts to induce, the public to believe that he is an attorney at law. The complaint itemizes a number of specific acts which it charges constitutes the practice of law, and prays that the defendant be restrained from a continuation of these specified practices.

The answer admits that defendant is a resident of Cook County and states that on December 16, 1918, while defendant resided in the City of Washington, the Commissioner of Patents of the Patent Office of the United States caused the name of the defendant to be duly registered on the Roster of Attorneys entitled to practice before it, and by virtue of such license he became entitled to perform certain services before the Patent Office and elsewhere.

Defendant's contention is based on his interpretation of the rules of the United States Patent Office in force in the year 1918 at the time of his registration in the United States Patent Office, the pertinent rule 17 then being as follows:

‘A register of attorneys will be kept in this office, on which will be entered the names of all persons entitled to represent applicants before the Patent Office in the presentation and prosecution of applications for patent. * * *

‘(b) Any person not an attorney at law who is a citizen or resident of the United States who has had three years' experience in patent work under the personal direction and supervision of a duly registered patent attorney * * * and who shall file proof to the satisfaction of the Commissioner that he is of good moral character and of good repute and possessed of the necessary legal and technical qualifications to enable him to render applicants for patents valuable service and is otherwise competent to advise and assist them in the presentation and prosecution of their applications before the Patent Office.’

The rule was later amended restricting the practice to attorneys at law, but our consideration will be restricted to the rule as it applied at the time of defendant's registration.

The cause was referred to a master in chancery who, after a lengthy hearing, filed a report, to which exceptions were filed by the defendant. Exceptions to certain of the findings of the master were sustained, and to others, overruled, and the decree entered, from which both sides appeal.

The decree found substantially as follows: that the defendant is not licensed to practice law in the State of Illinois or elsewhere, but on December 16, 1918 was registered to practice before the United States Patent Office; that about January, 1930, defendant moved to Chicago and opened offices at 35 East Wacker Drive, has maintained offices there continuously, and has practiced during all of such time as a patent attorney upon a paid basis; that from 1931 to 1941 he had as office associates men who had been admitted to the bar of the State of Illinois; that the stationery used in the early part of his practice described himself as an attorney without qualifications as to his limitations, and had associated with him as ‘of counsel’ men who were admitted to the bar of the State of Illinois; that his stationery was changed in 1941 to read, ‘Patent Attorney’ and ‘Patent and Trade Mark Attorney’; that in several instances the defendant employed attorneys whom he paid for legal services from fees which he collected from his clients and that he employed attorneys for work to be done for clients whom such attorneys had never met and without the relationship of attorney and client ever having been established; that defendant in his correspondence has repeatedly held himself out as ‘attorney at law’ and that he has also participated as an attorney at law in legal proceedings; that the defendant repeatedly construed patent licenses and gave opinions with respect to the infringement of patents and on at least one occasion wrote a letter charging a company with violation of, and infringement upon, certain patents of a client of defendant, threatening it with litigation; that defendant has been paid for legal services involved in the preparation of infringement opinions and has made a charge in relation to an infringement suit, including the study of patent claim, extension of time in which to file defendant's answer, study of license agreement and preparation of an answer in the infringement suit.

Paragraph 18 of the decree specifically finds ‘that the defendant has been preparing, drafting and construing assignments, leases and other documents relating to letters patent. The rules of the United States Patent Office provide forms for the preparing of certain papers, including the assignment of patents, licenses for royalty and many other forms. Whether such forms may be used and are intended for the use of Patent Attorneys, whether they are licensed to practice in a state or have a license similar to the license issued to the defendant, should properly be determined by the United States Patent Office. In the preparation, drafting and construing of assignments, leases and licenses, the defendant has not been practicing law in violation of the law of the State of Illinois.’

The decree further finds that defendant has instituted in the United States Patent Office trade mark opposition and cancellation proceedings on behalf of parties who had nothing pending in the Patent Office but who were attacking issued or published trade mark registrations; that defendant's correspondence as shown by the evidence clearly indicates that he held himself out as an attorney at law.

The decree enjoins the defendant, his agents and employees from:

‘(1) Rendering legal opinions relating to infringement and enforcement of pattents and trade marks;

‘(2) Preparing, drafting and filing pleadings and other legal documents and papers in suits at law and in equity in courts of record and before administrative tribunals, other than the United States Patent Office;

‘(3) Participating as an attorney in legal proceedings other than United States Patent Office;

‘(4) In behalf of persons represented by him, threatening to bring suit against other parties;

‘(5) Preparing and serving notice of and asserting attorney's lien under Section 14 of Chapter 13, Illinois Revised Statutes; and,

‘(6) Charging and collecting fees for legal services rendered by him or rendered by him and by others in legal proceedings, other than wherein the United States Patent Office has jurisdiction.’

Defendant complains of the decree on the grounds (1) that he has a constitutional right to perform and render all services pertaining to patents and trade marks which are incidental to the license issued to him by the United States Patent Office on December 16, 1918 and that the decree entered by the court takes away from, and abridges, the constitutional rights of the defendant; and (2) that the findings of the court and the injunctional order are contrary to the law and the evidence.

Plaintiffs in their assignment of cross-errors complain of the decree on the grounds (1) that the findings set forth in paragraph 18 of the decree are erroneous, and (2) that the decree in all respects where it departs from the recommendations of the master in chancery is erroneous and should be set aside, and the relief recommended by the master granted.

Before entering upon a consideration of the errors assigned, it is to be observed that this cause was appealed directly to the Supreme Court, Chicago Bar Association v. Kellogg, 401 Ill. 375, 82 N.E.2d 639, and was transferred to this court on the ground that no constitutional questions were directly involved.

We have come to the conclusion that the evidence before us clearly indicates that for a long period of time defendant was engaged in the unauthorized practice of law within the meaning of the Illinois authorities; and we are of the opinion that the courts of the State of Illinois have the power to determine what contravenes its policy in this respect independent of any other authority. Article 1, Section 8, of the constitution of the United States, under which provision defendant claims his rights were violated, provides, ‘The Congress shall have Power * * * To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries * * *.’ Defendant further maintains that the power to regulate patents was by an Act of Congress conferred upon the Department of the Interior at the time the license was issued to him, and that under its authorization the Patent Office was empowered to permit certain practitioners, including the defendant, to practice before it.

The fallacy of defendant's argument lies in the implication that the Patent Office had the right to permit the exercise of prerogatives which are forbiden under the laws of the State of Illinois as constituting unauthorized practice. No such authorization was issued by the United States Patent Office to defendant, nor...