Lefkowitz v. Napatco, Inc.

CourtNew York Court of Appeals
Writing for the CourtPER CURIAM; GABRIELLI; GABRIELLI, J., dissents in part and votes to reverse, deny defendant's motion for summary judgment and grant summary judgment in favor of plaintiff in an opinion in which COOKE
Citation51 N.Y.2d 434,434 N.Y.S.2d 925,415 N.E.2d 916
Decision Date18 December 1980
Parties, 415 N.E.2d 916, 212 U.S.P.Q. 617 Louis J. LEFKOWITZ, as Attorney-General of the State of New York, Appellant, v. NAPATCO, INC., Respondent.

Page 925

434 N.Y.S.2d 925
51 N.Y.2d 434, 415 N.E.2d 916, 212
U.S.P.Q. 617
Louis J. LEFKOWITZ, as Attorney-General of the State of New
York, Appellant,
v.
NAPATCO, INC., Respondent.
Court of Appeals of New York.
Dec. 18, 1980.

Page 926

Robert Abrams, Atty. Gen. (Paul S. Shemin and Shirley Adelson Siegel, Asst. Attys. Gen., of counsel), for appellant.

Charles G. Mills IV and Samuel N. Greenspoon, New York City, for respondent.

OPINION OF THE COURT

PER CURIAM.

A corporation which at the behest of a general practice attorney and for a fee causes a patent application to be prepared by a patent attorney or agent registered with the United States Patent Office renders legal rather than clerical services within the meaning of subdivisions 1 and 5 of section 495 of the Judiciary Law. In this action by the Attorney-General to enjoin defendant from continuing such a practice, Special Term granted defendant's motion for summary judgment dismissing the complaint and denied the Attorney-General's cross motion for discovery as academic. The Appellate Division, 74 A.D.2d 1008, 426 N.Y.S.2d 892, affirmed, without opinion. We granted leave to appeal and now reverse.

Special Term's conclusion that subdivision 5 of section 495 of the Judiciary Law explicitly permits a service corporation such as defendant to prepare patent applications for general practice attorneys was in error. What that subdivision allows is the "furnishing to any person, lawfully engaged in the practice of law, such information or such clerical services in and about his professional work as, except for the provisions of this section, may be lawful, provided that at all times the lawyer receiving such information or such services shall maintain full professional and direct responsibility to his clients for the information and services so received." Lest it be not clear from the phrase "clerical services" that legal services are not within the subdivision the immediately following sentence states: "But no corporation shall be permitted to render

Page 927

any services which cannot lawfully be rendered by a person not admitted to practice law in this state". This is consistent with subdivision 1 of the same section which provides that a corporation may not "furnish attorneys or counsel" (subd. (d)) nor "render legal services of any kind * * * in any * * * way or manner" (subd. (e)).

Thus, unless preparation of a patent application is a clerical service it is proscribed by the section. That preparation of a patent application is not clerical is clear from section 33 of title 35 of the United States Code which provides that "Whoever, not being recognized to practice before the Patent Office, holds himself out * * * as being qualified to prepare * * * applications for patent shall be fined not more than $1,000 for each offense." Whether, as defendant argues, as a matter of Federal criminal law that provision punishes merely the holding out of oneself as qualified or the preparation of the patent application (compare United States v. Blasius, 2nd Cir., 397 F.2d 203, cert. granted 393 U.S. 950, 89 S.Ct. 375, 21 L.Ed.2d 361, cert. dsmd. 393 U.S. 1008, 89 S.Ct. 615, 21 L.Ed.2d 557, with Hull v. United States, 390 F.2d 462), it is clear that preparation of a patent application is not a clerical service, but one which can be performed only by a registered and qualified patent attorney or agent, or perhaps by a general practice attorney, and that it is, therefore, a legal service within the meaning of section 495. The fact that defendant may use the services of an attorney or agent admitted to the patent bar in...

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3 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
    ...practice attorney and for a fee, it causes a patent application to be prepared by a registered practitioner. See Lefkowitz v. Napatco, 415 N.E.2d 916, 212 USPQ 617 (NY 1980). There are numerous cases and ethics opinions wherein attorneys have been found to have aided lay organizations in th......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...practice attorney and for a fee, it causes a patent application to be prepared by a registered practitioner. See Lefkowitz v. Napatco, 415 N.E.2d 916, 212 USPQ 617 (NY 1980). There are numerous cases and ethics opinions wherein attorneys have been found to have aided lay organizations in th......
  • In re Morgan, Bankruptcy No. 197-12429-352
    • United States
    • United States Bankruptcy Courts. Second Circuit. U.S. Bankruptcy Court — Eastern District of New York
    • September 30, 1998
    ...corporation retaining an attorney to prepare a patent application on behalf of a customer of the corporation. Lefkowitz v. Napatco, Inc., 51 N.Y.2d 434, 434 N.Y.S.2d 925, 415 N.E.2d 916 (1980) ("A corporation which at the behest of a general practice attorney and for a fee causes a patent a......
1 cases
  • In re Morgan, Bankruptcy No. 197-12429-352
    • United States
    • United States Bankruptcy Courts. Second Circuit. U.S. Bankruptcy Court — Eastern District of New York
    • September 30, 1998
    ...corporation retaining an attorney to prepare a patent application on behalf of a customer of the corporation. Lefkowitz v. Napatco, Inc., 51 N.Y.2d 434, 434 N.Y.S.2d 925, 415 N.E.2d 916 (1980) ("A corporation which at the behest of a general practice attorney and for a fee causes a patent a......

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