In re Amalgamated Development Co., No. 10907.

Docket NºNo. 10907.
Citation375 A.2d 494
Case DateJune 20, 1977
CourtCourt of Appeals of Columbia District
375 A.2d 494
In re AMALGAMATED DEVELOPMENT CO., INC., t/a Washington Patent Office Research Bureau and H. Lawrence Blasius, Petitioners.
No. 10907.
District of Columbia Court of Appeals.
Submitted March 15, 1977.
Decided June 20, 1977.

Page 495

Harry Grossman, Washington, D. C., for petitioners.

Edgar T. Bellinger, Washington, D. C., Chairman, Committee on Unauthorized Practice of Law.

Before KELLY, GALLAGHER and MACK, Associate Judges.

KELLY, Associate Judge:


H. Lawrence Blasius and Amalgamated Development Co., Inc., here seek review of an order enjoining them from practicing law in the District of Columbia after a hearing in which the following facts were found.1

Petitioner Blasius is the principal owner and operator of Amalgamated Development Co., Inc., trading as the Washington Patent Office Search Bureau, a District of Columbia corporation.2 He is not, nor does he hold himself out to be, a member of the District of Columbia bar or licensed to practice before the United States Patent Office.

Petitioner places advertisements in such publication as Popular Science Magazine offering to conduct patentability searches for and to advise inventors on patent matters. When a response to an advertisement is received, petitioner initially writes the inventor describing the procedure for conducting a patentability search, and advising the inventor to have the application for such a search witnessed by a friend to prove that he is the "first and true inventor." The letter warns an inventor not to attempt to market his ideas until he has an application pending in the Patent Office.

When the inventor sends in a "disclosure" of his invention, petitioner conducts a patentability search in the Patent Office. Copies of the prior art revealed by the search are sent to the inventor and an opinion on

Page 496

patentability is offered.3 If petitioner concludes that the idea is not patentable, the client is so ab advised and it is recommended that no more money be spent developing the inventor's idea. If in the petitioner's opinion the idea appears patentable, it is recommended that a patent be applied for and assistance is offered the client in preparing the application. If the inventor agrees to enlist the services of petitioner, the application, oath, and formal drawings are prepared and sent to the inventor with instructions to file them in the Patent Office pro se together with the $65.00 filing fee. The Patent Office communicates directly with the inventor in all further correspondence.

If the application is rejected, as it usually is at least once, petitioner assists the client in amending the specification and claim to overcome Patent Office objections. When and if the application is finally rejected, petitioner recommends that the client file another amendment rather than an appeal and again offers to assist in preparing the amendment. Petitioner is paid for his services.

It is argued in this petition for review that jurisdiction over any question related to the practice of patent law is vested exclusively in the Commissioner of Patents and that, in any event, the enjoined activities do not constitute the practice of law.

I.

Any person may deal directly with the Patent Office in his own behalf in prosecuting an application for letters patent. 37 C.F.R. § 1.31 (1976).4 To represent another before the Commissioner of Patents, however, the requirements set out in the regulations established by the Commissioner pursuant to 35 U.S.C. § 31 (Supp. V

1975), i. e., 37 C.F.R. §§ 1.341, -.342 (1976), must be met. Two categories of persons are licensed to practice before the Patent Office — patent attorneys (§ 1.341(a)) and patent agents (§ 1.341(b)). The only difference between the two is that patent agents are not also attorneys. Both must otherwise meet the same requirements, and once registered have the same scope of authority.5 The fact that one is an attorney does not of itself qualify one to practice patent law.

As we shall discuss, infra, much of the activity engaged in by a patent agent/attorney (and by petitioner) concerns the practice of law. Sperry v. State of Florida, 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428 (1963); In re Cowgill, 37 Ohio App.2d 121, 307 N.E.2d 919 (1973). Thus, many nonlawyer/patent agents are actually practicing law in the state where they are situated. Such practice is unauthorized by state bar associations which have in the past attempted to curtail it, but the Supreme Court has resolved the conflict between the federal license to practice before the Patent Office and state regulations limiting the practice of law to attorneys in Sperry v. State of Florida, supra. The Court, in a unanimous opinion, based its decision on the Supremacy Clause, U.S. Const. art. 6, stating:

The statute [35 U.S.C. § 31 (1952)] thus expressly permits the Commissioner to authorize practice before the Patent Office by nonlawyers, and the Commissioner has explicitly granted such authority. If the authorization is unqualified, then, by virtue of the Supremacy Clause, Florida may not deny to those failing to meet its own qualifications the right to perform the functions within the scope of the federal authority. A State may not enforce licensing requirements which, though valid

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in the absence of federal regulation, give "the State's licensing board a virtual power of review over the federal determination" that a person or agency is qualified and entitled to perform certain functions, or which impose upon the performance of activity sanctioned by federal license additional conditions not contemplated by Congress. "No State law can hinder or obstruct the free use of a license granted under an act of Congress." . . . [Id. at 385, 83 S.Ct. at 1326 (footnotes omitted).]

Thus, the State of Florida could not prevent a nonattorney who was a licensed patent agent from conducting his practice before the Patent Office in Florida. The obvious corollary of this principle is that if the federal government has not granted a license in this area, a state is free to enforce its own licensing regulations.6

Our case is identical with In re Cowgill, supra, where the practitioner was neither registered to practice before the Patent Office nor a member of the bar. The Ohio Court of Appeals held that the state was free to proceed against him for the unauthorized practice of law,7 stating:

There is no federal purpose to protect those whom it [the federal government] does not license from further regulation by the state. The objective is to protect the right to practice before the U.S. Patent Office from restraint by the states. [Id., 37 Ohio App.2d at 124, 307 N.E.2d at 922.]

If petitioner Blasius were a registered patent agent/attorney, he would be correct, under Sperry, in saying that the District of Columbia Committee on Unauthorized Practice has no power to forbid his activities. But he is not so registered,8 as he freely concedes; therefore Sperry does not apply. And when a petitioner is not registered in the Patent Office a state does not interfere with any federal purpose in subjecting the practitioner to its own licensing regulations and is free to do so.

Petitioner argues, however, that because...

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12 practice notes
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...of patent applications by unregistered individuals to be the unauthorized practice of law. See In re Amalgamated Development Co., Inc., 375 A.2d 494, 195 USPQ 192 (D.D.C. 1977), cert. denied, 434 U.S. 924 (1977); People v. O'Brien, 142 USPQ 239 (N.Y. 1964); Cowgill v. Albright, 307 N.E. 2d ......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...of patent applications by unregistered individuals to be the unauthorized practice of law. See In re Amalgamated Development Co., Inc., 375 A.2d 494, 195 USPQ 192 (D.D.C. 1977), cert. denied, 434 U.S. 924 (1977); People v. O'Brien, 142 USPQ 239 (N.Y. 1964); Cowgill v. Albright, 307 N.E. 2d ......
  • Simons v. Bellinger, No. 77-2012
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • November 6, 1980
    ...jury: it not only determines who shall be prosecuted, but also takes charge of the prosecution. E. g., In re Amalgamated Development Co., 375 A.2d 494 (D.C.App.), cert. denied, 434 U.S. 924, 98 S.Ct. 403, 54 L.Ed.2d 282 (1977). Rule 46 II (b)(8) provides that violations "shall be punis......
  • Williams v. State, No. 2749 September Term, 2007.
    • United States
    • Maryland Court of Special Appeals
    • October 1, 2009
    ...certainty in regard to the objects that were exchanged here in order to obtain probable cause. As the Court said in Tobias, supra, 375 A.2d at 494, "[e]ven though there might have been innocent explanations for appellant's conduct, it is not necessary that all innocent explanations for......
  • Request a trial to view additional results
10 cases
  • Simons v. Bellinger, No. 77-2012
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • November 6, 1980
    ...jury: it not only determines who shall be prosecuted, but also takes charge of the prosecution. E. g., In re Amalgamated Development Co., 375 A.2d 494 (D.C.App.), cert. denied, 434 U.S. 924, 98 S.Ct. 403, 54 L.Ed.2d 282 (1977). Rule 46 II (b)(8) provides that violations "shall be punishable......
  • Williams v. State, No. 2749 September Term, 2007.
    • United States
    • Maryland Court of Special Appeals
    • October 1, 2009
    ...certainty in regard to the objects that were exchanged here in order to obtain probable cause. As the Court said in Tobias, supra, 375 A.2d at 494, "[e]ven though there might have been innocent explanations for appellant's conduct, it is not necessary that all innocent explanations for a pe......
  • United States v. Bennett, No. 85-469.
    • United States
    • District of Columbia Court of Appeals of Columbia District
    • August 20, 1986
    ...a conviction and approving a stop, we distinguished Gray on two bases, one of which was that unlike Tobias, Gray had not fled. Tobias, 375 A.2d at 494.5 The facts addressed at the hearing on the suppression motion were undisputed. The motions judge's findings of fact are unchallenged. But o......
  • In re Banks, No. 96-SP-817
    • United States
    • District of Columbia Court of Appeals of Columbia District
    • August 29, 2002
    ...review and enjoin" the activities of nonlawyers which constitute practicing law in the District of Columbia. In re Amalgamated Dev. Co., 375 A.2d 494, 498 (D.C.1977); see D.C.App. R. 49(a) (2002) ("No person shall engage in the practice of law in the District of Columbia or in any manner ho......
  • Request a trial to view additional results

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