NEW YORK STATE BAR ASSOCIATIONCommittee on
Opinion #230 - 02/25/1972
Topic: Partnership between attorney and patent agent
Digest: Improper for attorney and patent agent to form partnership
when partnership solicits business and refers work to the
attorney’s law firm
Code: DR 2-103
May an attorney form a partnership with a non-lawyer patent agent for
the purpose of filing patent and trademark applications in foreign
countries and the United States when the attorney is a partner in a law
firm practicing all phases of patent and trademark law for both domestic
and foreign clients, the proposed partnership will include the
attorney's name and will actively solicit foreign patent work from U.S.
attorneys in private practice and in patent departments of domestic
corporations, and the proposed partnership will operate independently of
the law firm except in those cases where it may be convenient to refer
work back and forth between the two firms?
The proposed partnership, when preparing and prosecuting U.S. patent
applications, would be engaged in the practice of law. Sperry v.
Florida, 373 U.S. 379 (1963). In discussing an attorney's participation
n another business relating to the practice of law, N.Y. State 206
"Where the other occupation is that of accountant, collection agency,
claims adjuster, labor relations consultant, business consultant,
insurance agent, marriage counselor, real estate broker, income tax
service, loan or mortgage broker or any other business where the lawyer
participant's activity would be likely to involve frequent solution of
problems that are essentially legal in nature, the risk of having the
other occupation used improperly as a feeder for legal practice is very
great. To avoid this every precaution should be taken to separate the
other profession or business from the legal practice."
The applicable guide lines enunciated in N.Y. State 206 (1971)
require that the lawyer who engages in a profession related to the
practice of .law must not solicit business in the other profession,
otherwise the risk would be great that the other profession would serve
improperly as a feeder for his ]aw practice.
In the proposed arrangement, the attorney would be assisting the new
partnership, which furnishes legal services (as mentioned above, the
filing of U.S. applications is the practice of law), to obtain work for
his law firm in contravention of DR 2-103. In other words, the new
partnership, in referring work to the law firm, would indirectly be
soliciting and obtaining legal business for the law firm, for example,
domestic patent litigation, license negotiating and drafting, and the
rendering of opinions on the validity, scope and infringement of U.S.
Although decided prior to the adoption of the Code, N.Y. County 418
(1952) held that a New York lawyer may not take an active part with
laymen in a company which would solicit businessmen to protect their
trademark rights in foreign countries and undertake the filing for them
of proper papers in those countries, on the ground that solicitation of
business by laymen under these circumstances "may readily become a means
of indirect solicitation of business for any lawyer that is associated
with them." In N.Y. County 530 (1964), it was ruled that a practicing
New York patent lawyer could ethically operate a company to pay foreign
patent taxes, but only if the company did not bear his name, was
operated from an office separate from his law practice, and the lawyer
refused to accept any legal business that came to him through his lay
Therefore, it would be improper for the attorney to enter into the
proposed partnership with a non-lawyer patent agent.