Mahoning Cty. Bar Assn. v. Harpman

• Decision Date: 21 January 1993
• Docket Number: No. UPL-92-1,UPL-92-1
• Citation: 62 Ohio Misc.2d 573,608 N.E.2d 872
• Parties: MAHONING COUNTY BAR ASSOCIATION v. HARPMAN. Ohio Board of Commissioners on the Unauthorized Practice of Law
• Court: Ohio Board of Unauthorized Practice

Page 573

62 Ohio Misc.2d 573

608 N.E.2d 872

MAHONING COUNTY BAR ASSOCIATION v. HARPMAN.

No. UPL-92-1.

Ohio Board of Commissioners on the Unauthorized Practice of Law.

Decided Jan. 21, 1993.

Matthew T. Fekete, Youngstown, for relator.

McLaughlin, McNally & Carlin, Richard P. McLaughlin and Robert Herberger, Youngstown, for respondent.

KENNETH F. SEIBEL, Chairman.

This matter came on for hearing before the Board of Commissioners on the Unauthorized Practice of Law on December 11, 1992 in Columbus, Ohio, on the formal complaint filed February 24, 1992. Members of the board present and participating in this decision were Kenneth F. Seibel, Chairman, Paul M. Greenberger, Jeffrey L. Maloon, D. John Travis, and John W. Waddy, Jr.

Relator Mahoning County Bar Association was represented by Matthew T. Fekete, Boardman, Ohio. Respondent Webster B. Harpman was present, represented by Richard P. McLaughlin and Robert Herberger of McLaughlin, McNally & Carlin, Youngstown, Ohio. Attorney Harvey B. Jacobson, Jr., of Washington, D.C., appeared as a witness for relator; John Conrad of Westlake Village, California, appeared on behalf of respondent.

Relator's complaint alleged that Harpman is not an attorney at law, and that he engaged in the unauthorized practice of law by rendering legal services to John Conrad on matters related to a petition for reexamination of the GPAC/Natale patent between April 22, 1987 and late December 1991.

At the close of relator's evidence, relator moved to amend the complaint to conform to the evidence submitted; respondent objected to the motion. The motion was granted pursuant to Gov.Bar. R. VII(17), which states that "Amendments to any complaint * * * may be made at any time prior to final order of the Board. The party affected by such amendment shall be given reasonable opportunity to meet any new matter presented thereby." Respondent did not request a continuance.

In his second amended answer filed December 3, 1992, respondent admitted "that he represented John Conrad regarding a petition for reexamination before the United States Patent and Trademark Office," but denied that this representation constituted the unauthorized practice of law. Respondent also asserted the defense that this board lacks jurisdiction because his activities before the patent office are permitted and regulated by federal law, since he is a registered patent attorney and was granted a registration to practice before the United States Patent and Trademark Office.

Addressing first respondent's defense of lack of jurisdiction, which was reasserted at the hearing by way of a motion to dismiss, the United States Supreme Court squarely recognized the broad authority of the states to regulate against the unauthorized practice of law in Sperry v. Florida ex rel. Florida Bar (1963), 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428. In the absence of federal legislation to the contrary, the state has jurisdiction over the protection of its citizens from the practice of law by unauthorized laymen. Id. at 383, 83 S.Ct. at 1324, 10 L.Ed.2d at 431. Furthermore, the United States Supreme Court strictly limited application of the federal supremacy doctrine: "[T]he State maintains control over the practice of law within its borders except to the limited extent necessary for the accomplishment of the federal objectives." Id. at 402, 83 S.Ct. at 1335, 10 L.Ed.2d at 442.

In the case of In re Cowgill (1973), 37 Ohio App.2d 121, 66 O.O.2d 237, 307 N.E.2d 919, the Marion County Court of Appeals ruled that state regulation imposed no burden or restraint upon the authority of the federal government in patent matters.

We conclude that the state of Ohio has the authority to regulate conduct by a federally registered patent attorney in matters outside the scope of authority granted by federal law. Ohio thus joins other states in determining that the unauthorized practice of law falls within the jurisdiction of the state regulating body, whether the source of the law practiced is the state of Ohio, another state of the United States, the United States, or a foreign country. See Mahoning Cty. Bar Assn. v. Rector (1992), 62 Ohio Misc.2d 564, 608 N.E.2d 866, and cases cited therein.

Many of the facts surrounding this matter are not in dispute. Relator and respondent stipulated to the following statements of fact and conclusions of law:

1. Harpman has and currently maintains offices at 400 City Centre One, Youngstown, Ohio 44503.

2. Harpman is a practicing "patent attorney" and was granted a registration to practice before the United States Patent and Trademark Office on January 7, 1935.

3. Harpman is not an attorney at law and is not registered under Gov.Bar R. VI or XI, or the Supreme Court of Ohio, nor is Harpman a registered attorney at law in any other state.

4. Under the authority of Section 10.34(b), Chapter 1, Title 37, C.F.R., Harpman is authorized to use the designation "patent attorney," since his registration before the United States Patent and Trademark Office was properly made prior to November 15, 1938.

5. Registration to practice before the United States Patent and Trademark Office permits the representations of individuals and corporations before the Patent and Trademark Office by non-lawyers as prescribed by Section 10.14(b), Chapter 1, Title 37, C.F.R.

6. A patent attorney registered to practice before the United States Patent and Trademark Office is permitted to prepare and file reexamination requests on behalf of interested parties. Requests for reexaminations set forth specific documentation and arguments raising substantially new questions of the patentability of a previously issued patent. See Section 1.510, Paragraphs A and B, Subheading 1, Chapter 1, Title 37, C.F.R.

7. Harpman prepared and filed on behalf of John Conrad a petition requesting reexamination of the GPAC/Natale patent 4,604,111 on April 22, 1987. The request for reexamination was granted and on March 31, 1988, resulted in claims 1-29 of the patent being rejected.

8. The examiner's ruling of March 31, 1988 was reversed by the Board of Patent Appeals and Interferences on March 6, 1989.

9. On November 23, 1990, Harpman prepared and filed a petition for reexamination of the GPAC/Natale patent on behalf of James W. Simpson.

10. Again, the examiner for the Patent and Trademark Office granted the request for reexamination and on July 31, 1991, Examiner Miles rejected claims 1-29 of the GPAC/Natale patent. An appeal of that examiner's decision is currently pending before the Board of Patent Appeals and Interferences.

Although the parties stipulated that respondent's activities before the patent office did not constitute the unauthorized practice of law, this board has an independent duty to review any stipulations. Disciplinary Counsel v. Brown (1992), 61 Ohio Misc.2d 792, 584 N.E.2d 1391. In so doing, the board concurs and finds that respondent has not engaged in the unauthorized practice of law by virtue of his activities before the patent office, based upon the cited provisions of the Code of Federal Regulations and Sperry v. Florida ex rel. Florida Bar. However, the board must also determine if respondent has engaged in conduct outside the scope of authority granted him under federal law.

Gov.Bar R. VII(2)(A) states that "[t]he unauthorized practice of law is the rendering of legal services for others by anyone not registered under Rule VI or Rule XI of the Rules for the Government of the Bar of Ohio." Since it was stipulated that respondent is not registered under the Ohio rules, it remains for this board to determine whether any of respondent's other conduct constitutes "the rendering of legal services for others" and thus the unauthorized practice of law.

The Supreme Court of Ohio set forth the clearest definition of what constitutes the unauthorized practice of law in the case of Land Title & Trust Co. v. Dworken (1934), 129 Ohio St. 23, 1 O.O. 313, 193 N.E. 650. In the first paragraph of its syllabus, the court held:

"The practice of law is not limited to the conduct of cases in Court. It embraces the preparation of pleadings and other papers incident to actions and special proceedings and the management of such actions and proceedings on behalf of clients before judges and courts, and in addition conveyancing, the preparation of legal instruments of all kinds, and in general all advice to clients and all action taken for them in matters connected with the law." (Emphasis added.)

The court in Special Master Commrs. v....