Sperry v. State of Florida the Florida Bar, No. 322

CourtUnited States Supreme Court
Writing for the CourtWARREN
Citation83 S.Ct. 1322,373 U.S. 379,10 L.Ed.2d 428
Docket NumberNo. 322
Decision Date27 May 1963
PartiesAlexander T. SPERRY, Petitioner, v. STATE OF FLORIDA ex rel. THE FLORIDA BAR

373 U.S. 379
83 S.Ct. 1322
10 L.Ed.2d 428
Alexander T. SPERRY, Petitioner,

v.

STATE OF FLORIDA ex rel. THE FLORIDA BAR.

No. 322.
Argued March 25, 1963.
Decided May 27, 1963.

[Syllabus from pages 379-380 intentionally omitted]

Page 380

Carlisle M. Moore, Mellin, Hanscom & Hursh, San Francisco, Cal., for petitioner.

F. Trowbridge vom Baur, Washington, D.C., for respondent.

[Amicus Curiae from pages 380-381 intentionally omitted]

Page 381

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

Page 382

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

Page 383

engage in activities that would be regarded as the practice of law.'1 We granted certiorari, 371 U.S. 875, 83 S.Ct. 148, 9 L.Ed.2d 113, to consider the significant, but narrow, questions thus presented.

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, 333 U.S. 486, 67 S.Ct. 1400, 91 L.Ed. 1621; Murdock v. Memphis, 20 Wall. 590, 22 L.Ed. 429. 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, 12 S.Ct. 825, 831, 36 L.Ed. 658. 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

Page 384

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, 6 L.Ed. 23. 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 qualifications necessary to enable him to render applicants for patents valuable service, and is otherwise competent to advise and assist them

Page 385

in the presentation and prosecution of their applications before the Patent Office.' 37 CFR § 1.341(c).

The statute thus expressly permits the Commissioner to authorize practice before the Patent Office by non-lawyers, 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 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,4 or which impose upon the performance of activity sanctioned by federal license additional conditions not contemplated by Congress.5 'No State law can hinder or obstruct the free use of a license granted under an act of Congress.' Pennsylvania v. Wheeling & Belmont Bridge Co., 13 How. 518, 566, 14 L.Ed. 249.

Respondent argues, however, that we must read into the authorization conferred by the federal statute and regulations the condition that such practice not be inconsistent with state law, thus leaving registered practitioners with the unqualified right to practice only in the physical presence of the Patent Office and in the District of Columbia, where the Office is now located.

Page 386

The only language in either the statute or regulations which affords any plausible support for this view is the provision in the regulations that '(r) egistration in the Patent Office * * * shall only entitle the persons registered to practice before the Patent Office.' 37 CFR § 1.341. Respondent suggests that the meaning of this limitation is clarified by reference to the predecessor provision, which provided that registration 'shall not be construed as authorizing persons not members of the bar to practice law.' 3 Fed.Reg. 2429. Yet the progression to the more circumscribed language without more tends to indicate that the provision was intended only to emphasize that registration in the Patent Office does not authorize the general practice of patent law, but sanctions only the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications. That no more was intended is further shown by the contrast with the regulations governing practice before the Patent Office in trademark cases, also issued by the Commissioner of Patents. These regulations now provide that '(r)ecognition of any person under this section is not to be construed as sanctioning or authorizing the performance of any acts regarded in the jurisdiction where performed as the unauthorized practice of law.' 37 CFR § 2.12(d). The comparison is perhaps sufficiently telling. But any possible uncertainty as to the intended meaning of the Commissioner must be dispelled by the fact that when the present regulations were amended in 1948,6 it was first proposed to add a provision similar to that appearing in the trademark regulations.7 After objection had been leveled

Page 387

against the revision on the ground that it 'indicated that the office thinks that the states have the power to circumscribe and limit the rights of patent attorneys who are not lawyers,' 8 the more...

To continue reading

Request your trial
299 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
    ...delivery of documents to the Office. The definition of practice before the Office in patent matters is derived from Sperry v. Florida, 373 U.S. 379, 137 USPQ 578 (1963). In Sperry, the Supreme Court found that ``preparation and prosecution of patent applications for others constitutes the p......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...delivery of documents to the Office. The definition of practice before the Office in patent matters is derived from Sperry v. Florida, 373 U.S. 379, 137 USPQ 578 (1963). In Sperry, the Supreme Court found that ``preparation and prosecution of patent applications for others constitutes the p......
  • Part II
    • United States
    • Federal Register August 14, 2008
    • August 14, 2008
    ...relying upon alternative forms of protection which may be available under statute law.'' In Sperry v. State of Florida ex rel Florida Bar, 373 U.S. 379, 83 S.Ct. 1322 (1963), the Supreme Court said that the preparation and prosecution of patent applications for others constitutes the practi......
  • Byrne v. Wood, Herron & Evans, LLP, No. 2011–1012.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 22, 2012
    ...the federal interest in patent cases is thus more substantial than in trademark cases. Id. at 340. 3. See Sperry v. Fla. ex rel. Fla. Bar, 373 U.S. 379, 385, 83 S.Ct. 1322, 10 L.Ed.2d 428 (1963) (holding that Florida could not exercise “a virtual power of review” over PTO practice by prohib......
  • Request a trial to view additional results
291 cases
  • Byrne v. Wood, Herron & Evans, LLP, No. 2011–1012.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • March 22, 2012
    ...the federal interest in patent cases is thus more substantial than in trademark cases. Id. at 340. 3. See Sperry v. Fla. ex rel. Fla. Bar, 373 U.S. 379, 385, 83 S.Ct. 1322, 10 L.Ed.2d 428 (1963) (holding that Florida could not exercise “a virtual power of review” over PTO practice by prohib......
  • Allied Artists Pictures Corp. v. Rhodes, No. C-2-78-1031.
    • United States
    • United States District Courts. 6th Circuit. United States District Courts. 6th Circuit. Southern District of Ohio
    • July 10, 1980
    ...359, 72 S.Ct. 312, 96 L.Ed. 398 (1952). Plaintiffs point in particular to a passage from Sperry v. Florida ex rel. Florida Bar Ass'n., 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428 (1963) in which the Supreme Court struck down state restrictions on a nonlawyer's right to practice before the P......
  • US v. Lopez, No. CR-89-0687-MHP.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • May 24, 1991
    ...in the Memorandum's reliance on Kolibash v. Comm. on Legal Ethics of W. Virginia Bar, 872 F.2d 571 (4th Cir.1989) and Sperry v. Florida, 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428 (1963). In Kolibash, the Fourth Circuit ruled that disciplinary proceedings involving a federal officer could ......
  • Kilroy v. Superior Court, No. B107509
    • United States
    • California Court of Appeals
    • April 28, 1997
    ...wages under the Economic Stabilization Act of 1970 (former 12 U.S.C. § 1904) not barred by Tenth Amendment]; Sperry v. Florida (1963) 373 U.S. 379, 383-385, 83 S.Ct. 1322, 1324-1326, 10 L.Ed.2d 428 [Tenth Amendment does not prevent United States Patent Office from permitting practice of law......
  • Request a trial to view additional results
2 firm's commentaries
  • Florida Supreme Court Is Closely Divided In Unauthorized Practice Of Law Decision
    • United States
    • Mondaq United States
    • November 19, 2021
    ...Florida law. Using the framework applied in State ex rel. Florida Bar v. Sperry, 140 So. 2d 587 (Fla. 1962), vacated on other grounds by 373 U.S. 379 (1963), the majority concluded that TIKD had engaged in UPL due to what the majority considered an impermissible degree of control by TIKD ov......
  • Florida Supreme Court Is Closely Divided In Unauthorized Practice Of Law Decision
    • United States
    • Mondaq United States
    • November 19, 2021
    ...Florida law. Using the framework applied in State ex rel. Florida Bar v. Sperry, 140 So. 2d 587 (Fla. 1962), vacated on other grounds by 373 U.S. 379 (1963), the majority concluded that TIKD had engaged in UPL due to what the majority considered an impermissible degree of control by TIKD ov......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT