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FAQ re Ethics for Practitioners

Ethics FAQs for Practitioners in Response to Hurricane Katrina

Office of Enrollment and Discipline, United States Patent and Trademark Office 

 

I am a registered patent practitioner and have temporarily moved my practice out of state. May I continue to prepare and prosecute patent applications for my clients?
Yes. A practitioner registered to practice before the Office in good standing may continue to prepare and prosecute patent applications and otherwise represent clients in other patent matters before the Office, regardless of where the practitioner is located. The standing of a registered practitioner to practice in patent matters is not affected by state bar rules.
I have temporarily moved my practice out of state and intend to set up my own office. May I temporarily continue to provide my clients with representation in trademark matters, or provide my clients with patent law related services such as assignments, licenses and other agreements?

While USPTO statutes and regulations preempt state licensing requirements with respect to the practice of patent law before the Office, other practice outside the state where a practitioner is licensed may be prohibited by state law. Lawyers attempting to provide legal services outside the state where they are licensed to practice law should confirm with the relevant regulatory authority that their proposed activity does not violate the law of the host jurisdiction. Many states have multijurisdictional practice rules that may permit an attorney to practice temporarily in a state in which he or she is not licensed. Some states have issued orders waiving rules to help lawyers evacuated because of the Katrina hurricane. We have included links to two comprehensive sites that we are aware of at this time.

ABA's Center for Professional Responsibility: http://www.americanbar.org/groups/professional_responsibility.html.

ABA's Katrina Web site: http://www.americanbar.org/groups/committees/disaster/resources/hurricane_katrina_disaster_resources.html

I have offered space in my office to out-of-state lawyers displaced by the storm. What ethical considerations should I be aware of?
When lawyers who are not members of the same firm share office space, they must implement measures to protect client confidences and secrets. If a lawyer who is not associated with your firm will have access to your computers, file space, etc., you must develop systems to restrict access to confidential client information.
I have hired an out-of-state practitioner to work in my office until she can return to her practice in Louisiana. What work can she handle?
A registered practitioner may continue to represent clients before the office in patent matters. Whether the practitioner may practice in other areas is primarily a question of state laws. Be aware that a state’s multijurisdictional practice of law rule may permit an out-of-state lawyer to practice temporarily, but not to establish a continuous presence.
May I add an out-of-state practitioner's name to my letterhead temporarily?
The USPTO’s rules do not prohibit adding a practitioner’s name to a firm’s letterhead, so long as the letterhead does not falsely imply that the individual is an attorney or a registered practitioner. The host state’s rules will likely require that the letterhead indicate that the attorney is not authorized to practice in the state, and additional state restrictions or prohibitions may apply.

Ethical and Practical Considerations in Helping Evacuated Practitioners 

Sharing space with practitioners displaced by Hurricane Katrina is an excellent way to help protect the interests of the clients of the displaced practitioners. It can, however, present challenges under the USPTO’s rules and applicable state regulations. While displaced practitioners and the law firms with whom they share space are responsible for complying with all applicable ethics rules, the following list of suggestions may provide a starting point for analyzing and dealing with potential issues.

  • Confirm the arrangement in writing. A written agreement between the displaced practitioner and the host firm will define the specific relationship and provide a point of reference for applying ethics regulations. The agreement might reflect the fact that the host firm is merely providing office space, or set forth specifically any legal collaboration or business relationship contemplated.
  • Notify all partners and employees of the firm. To be effective, safeguards against unauthorized sharing of client secrets between the displaced practitioner and the host firm must be known to all employees. If legal collaboration is contemplated, all attorneys and practitioners must be alert to potential conflicts of interest.
  • Notify clients. Obviously the displaced practitioner’s clients will need to know how to reach him or her. The host firm may also wish to notify its own clients that it is sharing office space and give them the opportunity to object. Depending on the arrangement, conflict of interest or other rules may impose specific notification requirements.
  • Implement and document safeguards. This is particularly important if the displaced practitioner will be sharing the firm’s information technology or clerical resources. Careful documentation of the safeguards used will help protect the parties if questions arise later.
  • Ensure that potential clients understand the arrangements. For example, a notice in the lobby or waiting room might be necessary to ensure that potential clients understand that they are retaining only the services of the displaced practitioner and not of the host firm.
United States Patent and Trademark Office
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Last Modified: 6/6/2011 11:51:32 AM