Sperry v. Florida ex rel. Florida Bar

PETITIONER:Sperry
RESPONDENT:Florida ex rel. Florida Bar
LOCATION:Clauson’s Inn

DOCKET NO.: 322
DECIDED BY: Warren Court (1962-1965)
LOWER COURT:

CITATION: 373 US 379 (1963)
ARGUED: Mar 25, 1963
DECIDED: May 27, 1963

Facts of the case

Question

Audio Transcription for Oral Argument – March 25, 1963 in Sperry v. Florida ex rel. Florida Bar

Earl Warren:

— versus State of Florida on the relationship of the Florida Bar.

Mr. Moore.

Carlisle M. Moore:

Mr. Chief Justice, and may it please the Court.

In this case, petitioner who is a nonlawyer has been duly authorized by the Commissioner of Patents pursuant to federal statutes and rules to advise and represent applicants before the Patent Office in the preparation and prosecution of patent applications.

The petitioner resides in Florida and there carries on these activities.

The question presented here is whether the State of Florida has the power to enjoin petitioner from these activities merely because he is not a member of the Florida Bar, and the Court has forbidden such activities, and we feel that the Court was incorrect in the following specific portions of the injunction, wherein the — enjoined the petitioner from rendering opinions as to patentability of inventions, from holding himself out in Florida as qualified to prepare and prosecute applications for letters patents, and amendments thereto, and from actually preparing in prosecution applications — prosecuting applications for letters patents, and amendments thereto in Florida.

Arthur J. Goldberg:

It’s your argument — you’re (Inaudible)

Carlisle M. Moore:

He can theoretically call himself a patent attorney because he was admitted to practice before the Patent Office prior to 1938 at which time even though he was a nonlawyer, he was entitled to call himself a patent attorney.

In 1938, the rules were changed so that nonlawyers thereafter registered with the Patent Office couldn’t but there is a Grandfather clause which permitted those admitted before to still continue calling the same thing.

Arthur J. Goldberg:

(Inaudible)

Carlisle M. Moore:

Well, he can’t call himself a patent lawyer.

A patent lawyer would be a term which he is not permitted to use.

He is not a lawyer.

Now —

Arthur J. Goldberg:

How can he be described?

Carlisle M. Moore:

He can describe himself as a patent agent or as — as a patent attorney.

In this case, actually he has ceased to use the name patent attorney, although under the federal rules, he is permitted to do so.

This perhaps might be one of the engraftments on federal rules which might be permissible so that there wouldn’t be any mistake as to what capacity he’s operating under.

Now, he has voluntarily stopped using the term patent attorney.

Arthur J. Goldberg:

That issue is not before us.

Carlisle M. Moore:

That issue is not before us.

Potter Stewart:

Or whether an attorney means agent, doesn’t it, it doesn’t necessarily mean lawyer although a good many people think.

Carlisle M. Moore:

Well, my understanding is that originally attorney meant attorney in fact, and then as distinguished from attorney at law —

Potter Stewart:

Right.

Carlisle M. Moore:

And that I think that the normal interpretation of the word today, an attorney means an attorney at law.

I think that’s the —

Potter Stewart:

If I give you a power of attorney because you’re my attorney, you’re not necessarily a lawyer although you have to be one.

Carlisle M. Moore:

Well, that would be giving me an attorney — power of attorney in fact.

Potter Stewart:

That’s correct.

Carlisle M. Moore:

And I think that usually they qualify it to be an attorney of fact rather than a straight attorney which I think to the general public which he’s really most interested in what they are called.

Carlisle M. Moore:

To general public, I think that a —

Potter Stewart:

An attorney has come to mean a lawyer.

Carlisle M. Moore:

— person who says an attorney means he’s an attorney of law.

Potter Stewart:

Although the dictionary definition I’m sure without having looked it up which showed at least one meaning of the word, it’s simply “agent.”

Carlisle M. Moore:

Well, I think that is correct but I don’t think that’s the — what the public necessarily think.

John M. Harlan II:

Does this record show one way or the other whether Mr. Sperry ever attempted to take the Bar — the Florida Bar examination?

Carlisle M. Moore:

No, the record doesn’t —

John M. Harlan II:

Or any bar examination?

Carlisle M. Moore:

The record does not show that and I myself do not know.

Earl Warren:

What does the patent bureau call them now since they no longer called them attorneys?

Carlisle M. Moore:

Well, there are two classifications, ‘patent attorneys’ and patent agents.

Earl Warren:

Patent agents.

Carlisle M. Moore:

The members who are registered with the Commissioner of Patents who are attorneys are entered on the list of ‘patent attorneys’.

Now those who are not are entered on a list called patent agents.

Earl Warren:

I see.

William O. Douglas:

And the matters that the Court enjoined are listed on pages 67 and 68 of the record.

Carlisle M. Moore:

Yes, correct.

William O. Douglas:

Which of those do you object to?

Carlisle M. Moore:

Well, we object Your Honor to —

William O. Douglas:

You don’t object to the first using the term ‘patent attorneys’ do you?

Carlisle M. Moore:

No, we don’t object to that.

William O. Douglas:

Do you object to the second rendering legal opinions?

Carlisle M. Moore:

We object to the portion wherein it says including opinions as to patentability.

We maintain that this is a necessary function in advising an inventor as to the preparation of an application.

We object to number four and number five as well.

Earl Warren:

You don’t object to three?

Carlisle M. Moore:

Well, three is — as broadly stated preparing drafting and construing legal documents, he is not a lawyer.

If this, however, was intended to include activities before the Patent Office, then we would object to it.

Earl Warren:

Do you take that this is broad enough to prevent him from drafting an application for a patent.

Carlisle M. Moore:

Well, of course that is particularly covered in five.

Earl Warren:

In five.

Carlisle M. Moore:

And insofar as any activities which are restricted to state lawyers, we don’t feel that he has any right to pursue those.

Earl Warren:

Yes.

John M. Harlan II:

Do you say you objected to three?

Carlisle M. Moore:

No, Your Honor, three as stated strictly the practice of law which would we — within the purview of the State.

John M. Harlan II:

It depends what the documents are.

Carlisle M. Moore:

Well, it does.

It — you have to find out what documents were intended, however, what we are particularly concerned with are four and five having to do with the patent applications.

Earl Warren:

But is — is the patent application a legal document?

Carlisle M. Moore:

Well, there is an answer — our question would have to be answered yes in the sense that the patent application as it has been held by this Court is really a contract between the inventor and the Government.

Now this is a contract, however, that can be prepared for the inventor only by those whom the Commissioner of Patents has decided, has sufficiently qualified both legally and technically to prepare and prosecute such a contract.

It is a contract which cannot be prepared on behalf of an inventor by any regular member of a State Bar.

Earl Warren:

Would the preparation of an appeal to the Court of Patents – Customs and Patent Appeals be a legal document?

Carlisle M. Moore:

Well, that would not be practiced before the Patent Office.

Yes, that would be a legal document.

Earl Warren:

It would be.

Carlisle M. Moore:

But we aren’t contending that practice —

Earl Warren:

No, no, I’m not — I’m not questioning what you’re contending.

I’m just trying to see whether this number three preparing, drafting, and construing legal documents would prevent you from doing certain things.

Carlisle M. Moore:

Yes, I would say that there is no right in a patent agent to appeal to a court without becoming a member of the Bar of that court.

Earl Warren:

The Court of Patent Appeals?

Carlisle M. Moore:

Court of — Customs and Patent Appeals, correct.

Earl Warren:

You concede that there must be a lawyer to do that?

Carlisle M. Moore:

Oh, yes, Your Honor.

Earl Warren:

I see.

Very well.

Carlisle M. Moore:

Now, we contend that practice before the Patent Office consist of preparing a patent application after consulting with the inventor as to the scope of the invention then filing that patent application with the Patent Office, and then prosecuting it through the Patent Office until there is a final determination by the Patent Office, all of these to be performed within the rules and regulations of the Patent Office.

Now, once a patent is issued then any advice pertaining to the patent would not be practiced before the Patent Office.

Preparing of license agreements under patents is not something which is within the jurisdiction of the Patent Office.

That would not be —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

I would say that matters relating to infringement are matters of law relating to issued patents over which the Patent Office has no jurisdiction.

So therefore, it would not be practiced before the Patent Office.

That would be reserved to a lawyer.

Byron R. White:

(Inaudible)

Carlisle M. Moore:

By the rules of the Patent Office, agents and attorneys were treated alike within the conduct of interference proceedings.

Byron R. White:

Where the finding of possible facts (Inaudible)

Carlisle M. Moore:

Well, the advise as to —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

No, that’s — that would be another problem.

First of all, if an inventor comes to a patent practitioner being an attorney or agent, his first problem is, is this an invention which calls for making a preliminary search back here in Washington in the Patent Office.

After the —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

That is correct.

That is —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

He is rendering opinions as to whether the particular invention concerned is new and inventive in relation to the disclosures of those other patents.

Now the patents are prior — part of the prior art which can invalidate the patent, but so are magazine articles, publications which aren’t legal documents.

As far as determining patentability as to whether the following application, all that you are concerned with is whether the particular invention now is different from what has been done in the past.

You aren’t concerned —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

Well, it’s very conceivable that he might.

Byron R. White:

(Inaudible)

Carlisle M. Moore:

Well, I think that when you get to matters like that, that that is beyond the rights of a patent agent but —

Byron R. White:

He required a patent (Inaudible)

Carlisle M. Moore:

You would have to —

Byron R. White:

(Inaudible)

Carlisle M. Moore:

I would say so.

Byron R. White:

(Inaudible)

Carlisle M. Moore:

Yes.

William J. Brennan, Jr.:

(Inaudible)

Carlisle M. Moore:

An interference proceeding is a proceeding within the Patent Office to determine which of two applicants is actually the first inventor.

William J. Brennan, Jr.:

How was it initiated?

Carlisle M. Moore:

It’s initiated by — usually by the Patent Office because there are two conflicting applications in the Patent Office which are claiming the same subject matter.

(Inaudible)

Carlisle M. Moore:

It could be initiated by the fact of a patent issuing which was then is a public document.

Someone else who has the same invention either already on — in an application in the Patent Office are — who then files an application claiming the same subject matter in order to setup an interference.

William J. Brennan, Jr.:

(Inaudible)

Carlisle M. Moore:

It involves — well, pleadings of a sort, yes, within the Patent Office.

William J. Brennan, Jr.:

In preparation of introduction of evidence at first.

Carlisle M. Moore:

It concerns the taking of testimony by deposition.

William J. Brennan, Jr.:

By deposition.

Carlisle M. Moore:

By deposition.

William J. Brennan, Jr.:

And the agent or would your client do this?

Carlisle M. Moore:

The rules granting that privilege.

William J. Brennan, Jr.:

Any of the — any of the —

Earl Warren:

The rules say what the —

Carlisle M. Moore:

The rules throughout the — the rules of practice throughout refer to attorney or agent in all instances that I can find wherein it determines what — what can be done.

Earl Warren:

Well, you can’t take depositions, can you?

Carlisle M. Moore:

Yes, as I was trying to find a particular place here as —

Byron R. White:

Well, isn’t all — aren’t all the proceedings by mail with the Patent Office.

Carlisle M. Moore:

The bulk of the proceedings are by mail, all conducts with the Patent Office is by writing otherwise depositions are reduced to writing.

Byron R. White:

But anything — any kind of proceedings that goes on in the Patent Office an agent who is authorized to inform the Patent Office as well as an attorney.

Carlisle M. Moore:

Under the rules, he is, yes.

John M. Harlan II:

Is most — are there any figures that indicate how much of the business in the Patent Office handled by people who are registered attorneys as distinguished in patent agents.

Carlisle M. Moore:

No, I know of no such statistics along that line, all I know are the statistics which we obtained from the Patent Office as to the numbers of practitioners in the various groups.

John M. Harlan II:

Was to whether the business tends to flow on one direction or the other, it has no trend or you don’t?

Carlisle M. Moore:

I do not know, Your Honor.

Hugo L. Black:

Would you mind stating precisely as you can — precisely what you think an agent can do like this sort of the staging in the practice of law in giving legal opinions and so forth, precisely what?

Carlisle M. Moore:

Precisely, I think that the patent agent can advise and assist inventors in the preparation and prosecution of applications before the Patent Office.

Carlisle M. Moore:

And this, I believe includes by necessity, the right to advise a client as to whether a patent application should be filed, that is whether it’s patentable.

Hugo L. Black:

And you say of course, that if he can do that as an agent, he can do it in the District of Columbia or he can do it in any state.

Carlisle M. Moore:

Yes, Your Honor because ‘patent attorneys’ and agents reside all over the country as to inventors.

It’s necessary for them — for the practitioner to meet with the inventor to discuss the technical problems involved in any invention.

Now the Congress has, I’m sure recognized the fact that there are patent agents and practitioners all throughout the country.

The Patent Office, I believe, certainly realizes — publishes a list of practitioners by state.

Hugo L. Black:

Now, most of the agents is here in Washington provide for practice and their agencies of people who are not attorneys.

Carlisle M. Moore:

I’m not sure I understand your question.

Hugo L. Black:

Well, there are other agencies in the City of Washington besides the Patent Office and many of them, people who are there all the time and file applications of various kinds and types.

Lawyers do it sometimes and other people do it sometimes.

Are there any regulations with reference to the other agencies that you know of in this connection besides the Patent Office?

William O. Douglas:

How about the customs, for example?

Hugo L. Black:

I’m not that familiar with the — that branch, however, it is my understanding that the Treasury Department can qualify or register qualified attorneys and laymen to represent people before the Customs Court.

William O. Douglas:

Will they do the same thing in the Interstate Commerce Commission?

I believe they do, Your Honor.

There are a number —

Earl Warren:

Probably so, do they not, don’t they have agents all over the country —

Carlisle M. Moore:

Yes, they do.

Earl Warren:

— who are qualified to act before the Interstate Commerce Commission?

Carlisle M. Moore:

Yes, and from the amicus brief, I understand that about a third of the Interstate Commerce Commission practitioners are not attorneys.

William O. Douglas:

How about the CPAs in the Treasury and Tax Courts?

Carlisle M. Moore:

Well there again, the Treasury before the Tax Court has provisions wherein it can set the standards of who appears before the agency and it permits attorneys are qualified nonattorneys to represent people before that agency.

Hugo L. Black:

Is this jurisdiction of dispute something like a dispute that they frequently have over — making abstracts of title?

I’ve been familiar with some of those.

Carlisle M. Moore:

Well, I’m — I’m afraid I’m not familiar with the problems involving the object of titles.

Hugo L. Black:

Well, I wouldn’t have (Voice Overlap) to this title, lawyers sometimes get an idea that nobody should make abstract for a lawyer.

Carlisle M. Moore:

Oh, I —

Hugo L. Black:

I think they have laws to that effect.

Carlisle M. Moore:

Well, yes, and actually you would have really somewhat the same problem here that that’s a matter of policing of activities which are carried on by professions which sometime overstep their rights and privileges and get into the unauthorized practice of law.

That of course, is improper.

Hugo L. Black:

That’s also is —

Carlisle M. Moore:

That could happen here.

Hugo L. Black:

It’s also analogous, I assume, to the controversy that come over banks.

Carlisle M. Moore:

Yes, Your Honor.

Hugo L. Black:

Acting as guardians and so forth, and to what extent they can do one thing and not do another.

Carlisle M. Moore:

That’s correct and even though there maybe problems, there’s no reason to abolish those institutions.

John M. Harlan II:

You’re not suggesting, as I understand it in your argument — (Inaudible) your argument that under Florida law, what your client did, constituted under Florida law the practice of law.

Carlisle M. Moore:

Well, I can take —

John M. Harlan II:

Or I —

Carlisle M. Moore:

I contend that this is an area under which Florida has no power that this is not an area under which any of their general attorneys can practice.

This is —

John M. Harlan II:

Well, it maybe that Florida has no right to do what it’s done but it surely has the right to say what is the — what is practice of law and within the meaning of the Florida statutes?

Carlisle M. Moore:

Well, I think it might have that power but I don’t think that it can then go and say that even though they consider this to be the unauthorized practice of law, I don’t think that they have the right, the power to say that a person cannot do that in Florida when he has a federally right to do it.

John M. Harlan II:

Well, that’s what I thought the real question in this case was whether the federal statute in effect preempts Florida’s right to say that you can’t do this without becoming a member of the Bar under Florida law.

Carlisle M. Moore:

Well, that is correct.

And the patent statutes and rules do provide that.

The patent statutes provide — give the Commissioner of Patents the sole power to determine who is to be admitted to practice before the Patent Office.

John M. Harlan II:

We’ll put it in another way.

This case comes here with a finding by the Highest Court of Florida that what is being done here violates their practice of law statutes.

Carlisle M. Moore:

That is correct.

John M. Harlan II:

And we certainly have to accept that determination, don’t we?

Carlisle M. Moore:

Not when it discuss upon federal rights —

John M. Harlan II:

Well, is that where the point (Voice Overlap) is — that doesn’t end the case as far as you’re concerned obviously but that’s the point of departure that we have to move on from, isn’t it?

Carlisle M. Moore:

No, I don’t think that you are bound by their determination that this is the unauthorized practice of law and therefore must be stopped.

Hugo L. Black:

But why aren’t we —

John M. Harlan II:

I don’t understand that.

Hugo L. Black:

I don’t quite understand that either.

What I understand is, as you claim that the Federal Government with power to do so as prescribed how patent applications shall be filed carried to the Patent Office and that the appointed agents who have power to do that, do you say that Florida has come along and said that — the doing of that thing violates Florida law and you say that it’s barred by the Superior — the Supremacy Clause of the Federal Constitution.

Carlisle M. Moore:

That’s right, Your Honor.

Hugo L. Black:

That’s — that’s your only question, isn’t it?

Carlisle M. Moore:

Yes.

That there is a case cited in the — in the reply brief also relied upon by respondent wherein they say that the State of Florida’s determination on this matter should be accepted as final and binding on this Court.

Hugo L. Black:

Do they claim as I understand it that the Florida Court did that it can prevent that being done in Florida whatever else might be done somewhere else.

Carlisle M. Moore:

That is correct.

And I —

Hugo L. Black:

And you say that they can’t prevent it being done there or —

Carlisle M. Moore:

Well, I think it’s —

Hugo L. Black:

— in the District of Columbia or in California because they were without power.

Carlisle M. Moore:

Well, I think it’s completely at odds with the federal legislation on the subject.

If all states were to do this and as indicated by one of these amicus briefs, their Bar Associations of about 20 different states taking the respondent’s position.

Obviously, they are all going to — to do the same thing if the Florida decision is upheld and the position of patent agents sanctioned by Congress would be eliminated.

Hugo L. Black:

Do you claim they don’t have a right to have clothes shop industry?

Carlisle M. Moore:

No, I don’t, Your Honor, I don’t believe they do, that this is something I feel is beyond the power of the State.

John M. Harlan II:

Your answer to Mr. Justice Black perhaps I misapprehended the thrust of it.

I understood you to say that the things you thought that Florida had no right to interfere with were number five which was the preparation of applications for — to those patents, would you — you go beyond that, I take it, you say that they can give opinions and draw contracts within the field of —

Carlisle M. Moore:

Only re —

John M. Harlan II:

— what pertains to applications?

Carlisle M. Moore:

Yes, only relating to practice within the Patent Office.

What field in which they have been especially qualified to which they have had to take a test, a one day written test given to lawyers and agents alike before the Patent Office to meet the technical requirements of the — an equivalent of an engineering degree which — which is something that the average attorney does not posses.

These are matters of special techniques both legal and technical which are required to compare these patent applications.

John M. Harlan II:

They’re horrible things to read.

I know.

I’ve read a lot of them — you go beyond that, you go beyond that, don’t you?

Carlisle M. Moore:

No.

John M. Harlan II:

Or do you?

Carlisle M. Moore:

No.

John M. Harlan II:

In other words supposing these decree were cut down, let me put it specifically to you, to limit — limited simply to five, would you be satisfied with that?

Carlisle M. Moore:

No, Your Honor, because then with four, it says he can’t hold himself out as qualified to prepare and prosecute applications, what sense would there be in saying that he could do that in Florida and yet say that he couldn’t hold himself out as — and able to do that.

It makes no sense to me.

William J. Brennan, Jr.:

Unless the Board (Inaudible) whatever, your position basically as I understand it is that — can federal preemption here, whatever the activities maybe defined as under Florida law as bringing them within the practice of the law, nevertheless to the extent of the federal statutes, permit the Patent Office to permit agents to do things.

William J. Brennan, Jr.:

To that extent, Florida is powerless to prevent it.

They’re being done in Florida.

Carlisle M. Moore:

That is our position.

William J. Brennan, Jr.:

Well, then what — well, then what — I don’t understand why you’re — you’re so willing to concede the wording of this injunction in any form if basically it’s a problem of preemption.

Carlisle M. Moore:

Because —

William J. Brennan, Jr.:

Now the Patent Office defines what these agents may do.

Carlisle M. Moore:

Because the — the judgment here extends far beyond practice before the Patent Office.

Now, we are con —

William J. Brennan, Jr.:

I know but preparing, drafting, construing legal documents in this context, if permitted under Patent Office regulations could be done by patent agents, I would suppose —

Carlisle M. Moore:

Then we would say that was bad.

William J. Brennan, Jr.:

Well, I should think you would.

Carlisle M. Moore:

Well, we do, Your Honor, and that’s why I was talking about specifically four and five.

Byron R. White:

Well, you don’t say, don’t you that if number six says otherwise engaging in the practice of law, I would assume you would say that if doing what the pat — Patent Office tells you, you can do, happens to amount to the practice of law in the State of Florida, Florida nevertheless cannot prevent it.

Carlisle M. Moore:

That is right, Your Honor.

Byron R. White:

Suppose the Patent Office wants to call an attorney instead of agents.

Carlisle M. Moore:

Well then, of course that’s what they do right now.

That might however be in such a field that a state could properly require those persons to designate themselves in such a manner that would not confuse the public into thinking that they were actually attorneys at law.

Arthur J. Goldberg:

(Inaudible)

Carlisle M. Moore:

No, that’s — of course, that is one of the problems involved here.

That’s why the case is here.

Arthur J. Goldberg:

(Inaudible)

Carlisle M. Moore:

That is correct generally.

But there’s another requirement.

Arthur J. Goldberg:

No, the decision of this Court is whether there is a federal statute that (Inaudible) that does not exclude (Inaudible)

If that is so, then, you are saying what?

Are you saying that this statute, this statute of a state, if they argue the (Inaudible), is that granted by a lawyer?

Are you saying that — what, it has no rational basis?

Carlisle M. Moore:

No.

Arthur J. Goldberg:

Is that what you want to look into?

Carlisle M. Moore:

On that’s —

Arthur J. Goldberg:

(Inaudible)

Carlisle M. Moore:

On that specific point, this Court itself has said that it’s the duty of the Commissioner, not the courts to protect the public from dishonest patent practitioners.

Arthur J. Goldberg:

Then you are saying that the Federal Government is acting to the area of court proceedings — the Federal Government has been active in the area of court proceedings (Inaudible)

Carlisle M. Moore:

Yes, Your Honor.

Arthur J. Goldberg:

Where do you find this from the statute, the part that discussed about the Patent Office and discussed about the Commissioner of Patents (Inaudible) regulations?

Carlisle M. Moore:

Well, we find it in Sections 31, 32, and 33 of Title 35 and then in the — in a comprehensive set of rules which have been adopted by the Patent Office covering the admission, conduct, and expulsion-exclusion and discipline of patent practitioners.

Arthur J. Goldberg:

In other words, the general finding is that you may provide for (Inaudible)

Is that correct?

Carlisle M. Moore:

In this particularity, yes.

Hugo L. Black:

It’s something like the Labor Act.

Carlisle M. Moore:

Like what?

Hugo L. Black:

It’s something like a Labor Act preemption.

Carlisle M. Moore:

I know.

Hugo L. Black:

Very well.

Mr. vom Baur.

F. Trowbridge Vom Baur:

Mr. Chief Justice, may it please the Court.

This is probably the first unauthorized practice case to be argued in this Court.

And in my view of the petitioner’s contentions raised a number of serious legal questions.

And as a result, I have a fair amount of materials to try to get out in 30 minutes and accordingly I will endeavor to present my argument in more or less outlined form.

Now, there are certain facts which the petitioners did not mention of which I think are material to the case.

The Solicitor General states in his brief that the petitioner here had practiced in Florida for many years.

This is incorrect.

The petitioner moved to Florida in 1958.

And there he proceeded to rent an office on the First National Bank building of Tampa and to advertise himself on the office door as a Patent Attorney.

And in answer to your question, Mr. Justice Stewart, the petitioner admitted in his brief in the Supreme Court of Florida which I have here, that the term ‘patent attorney’, quote, “implies that he is a member of the Florida Bar.”

Then he proceeded to advertise himself in August, 1960 in the classified directory of the telephone book as a patent attorney.

And properly thereafter, in February 1961, the Unauthorized Practice Committee of the Florida Bar got after him and sued him, sued to enjoin the unlawful practice of law by the petitioner.

Now here’s what the petitioner did in Florida.

First, he rendered legal opinions as to infringement and as to patentability.

Secondly, he prepared patent applications.

F. Trowbridge Vom Baur:

Third, he prepared legal documents, specifically license agreements, and he was admitted in the court below, and I’m quoting now from page 2 of the record, that the petitioner quote, “holds himself out to the public as authorized to engage in the practice of law in the patent field.”

In short, this is a holding out case.

Now, in the decision below, as it has already been indicated, the court below held that each of the acts in question committed by the petitioner, constituted the practice of law.

And the Court also held that the practice of law or rather the practice of patent law was the practice of law because the petitioner argued in the court below that the practice of patent law was not the practice of law.

Now it has also been indicated but not quite specifically enough, the petitioner here does not contest the entire decree below.

He does not assert a right to continue to use the term ‘patent attorney’ or to continue to hold himself out as a lawyer.

Now, he does not assert the right to continue to repair legal documents and notably license agreements, and he does not assert the right to otherwise engage in the practice of law, and notably trademark practice which is also covered by the record.

And here, we come close to the point of the case perhaps of the issue.

As I read his reply brief at page 2, he does not assert a right to give legal opinions as to infringement and patentability if unconnected with the preparation of patent opinions, but he does assert a right to give legal opinions as to infringement and patentability if connected with the preparation of patent opinions — patent applications, I beg your pardon.

Potter Stewart:

Qualification.

F. Trowbridge Vom Baur:

Yes, sir, I used the wrong word, patent applications.

Potter Stewart:

In short, is it correct to say that the issues now are narrowed so that all the petitioner is claiming is what the — what the rules of the Patent Office gives him, by which do not include the right to hold yourself out as a lawyer in the general practice of law.

F. Trowbridge Vom Baur:

Yes, sir, I think that is a fair statement.

Potter Stewart:

So now that — it’s boiled down to all — he is claiming against infringement by Florida of the rights, you say, which the Patent Office gives him, isn’t that right?

F. Trowbridge Vom Baur:

Yes, sir, and here we’re coming so closer to the — to the fine point of case because the petitioner contends in this Court, his brief as replete with statement to this effect that what the court below did was to enjoin him “from practice before the Patent Office”.

Now, I submit to this Court, that is not a fair commentary on the decision below that the court below did not enjoin the petitioner from practice before the Patent Office, and I will state my reasons why it did not.

In the first place, there is no language in the opinion below which is susceptible of any such interpretation.

Secondly, the only acts which took place, which were enjoined by the court below took place in Florida and it is noteworthy that —

William J. Brennan, Jr.:

Well, is that your point, Mr. vom Baur that all that he’s been enjoined from doing, he’s doing it — doing these things in Florida.

F. Trowbridge Vom Baur:

This is part of my point.

It’s not — it is not the whole story.

William J. Brennan, Jr.:

Well, but I thought one of his arguments was that he’s practicing before the Patent Office when he’s doing these things in Florida.

F. Trowbridge Vom Baur:

This is what he says and this is what I am endeavoring to rebut.

I’m just proceeding to that point now if I could continue with it.

In short, my point here that I’m now endeavoring to make is that the court below did not enjoin him from practicing the Board of Patent law.

Hugo L. Black:

So they specifically said that, is it not, on page 68?

F. Trowbridge Vom Baur:

Yes, sir, the Court specifically said the contrary of that —

Hugo L. Black:

That’s right.

F. Trowbridge Vom Baur:

They say — the Court said the issuance of this injunction and I think I can quote it will not in any sense interfere with the right of the petitioner to practice before the Patent Office in Washington D.C.

Hugo L. Black:

That is if he comes to Washington and does these things, couldn’t it?

Hugo L. Black:

But if it’s practiced before the Patent Office to do these things in Florida, certainly, he’s been enjoined to that extent from practicing before the Patent Office.

F. Trowbridge Vom Baur:

If it is a practice before the Patent Office, I deny, Mr. Justice Brennan, that it is and I would still like to try to get out my reasons as to why if I may, sir.

Earl Warren:

Well, doesn’t the — doesn’t the regulation of the Bureau provide that they shall not do it by public appearance in Washington that they shall — they shall deal with the Bureau by mail?

F. Trowbridge Vom Baur:

That is an interesting question, Mr. Justice Warren, Mr. Chief Justice.

And — well, the petitioner here makes that statement in his brief.

That in fact, in reading his brief, one has the impression I think, that no personal appearances are ever necessary before the Patent Office and perhaps it never even take place.

The contrary is —

Earl Warren:

Now, let’s talk about — let’s talk about the normal practice and what they — what they ask their agents to do.

Do they not encourage them to deal with the Bureau by correspondence and not by personal appearance before the Patent Bureau?

F. Trowbridge Vom Baur:

I cannot answer as to whether they encourage it but I can say is —

Earl Warren:

But don’t they suggest it in their —

F. Trowbridge Vom Baur:

— the rule of the Patent Office — excuse me, sir.

Earl Warren:

Don’t they suggest it in their rules?

F. Trowbridge Vom Baur:

Well, they say something about all correspondence should be carried on by mail, but the point I would like to make in answer to your question is, that the Patent Office rules which is a fairly voluminous document here provide specifically for a number of personal appearances in the Patent Office, such as interviews with examiners under Patent Rule 133, an oral hearing or oral argument before the Board of Patent Appeals.

Earl Warren:

Well, he admits that he can’t go before the Patent Appeals.

F. Trowbridge Vom Baur:

No, this is the Board of Patent Appeals in the Patent Office, sir.

Earl Warren:

In that —

F. Trowbridge Vom Baur:

And these are things which take place in the Patent Office in which I think constitutes practice before the Patent Office.

Earl Warren:

Yes, yes, yes, I agree.

F. Trowbridge Vom Baur:

Now third, there are — there is oral argument on motions in the Patent Office and interference cases.

And fourth, there’s a whole section in the patent rules which bears a big heading in the middle of the page, trial in interference proceedings.

And then there is oral argument before the Board of Patent Interferences, another Board within the Patent Office.

Arthur J. Goldberg:

Mr. vom Baur —

F. Trowbridge Vom Baur:

Yes, sir.

Arthur J. Goldberg:

Let’s just get down with the facts.

Now, it’s your position that he can’t have an office in Florida?

F. Trowbridge Vom Baur:

And hold himself out as a patent lawyer.

Arthur J. Goldberg:

No, I haven’t said that.

Can this man (Inaudible) Patent Office have an office in Florida, what’s your argument?

F. Trowbridge Vom Baur:

I think he can have an office there.

Arthur J. Goldberg:

Alright.

Now, if he can have an office there, if he can rent an office, what can he do in that office consistent with the Florida decision that you (Inaudible)

F. Trowbridge Vom Baur:

He cannot practice law in Florida, Mr. Justice Goldberg.

He —

Arthur J. Goldberg:

Considering any patent application to the Patent Office from his office in Florida?

F. Trowbridge Vom Baur:

He cannot prepare a patent application.

That —

Arthur J. Goldberg:

Well, what do you do outside to pay rent?

F. Trowbridge Vom Baur:

Justice Goldberg, most — the great bulk of patent app — of patent agents do not hold themselves out to the public.

The instance of a patent agent holding himself out to the public as entitled to practice patent law is a rare occurrence.

The great bulk of patent agents work in corporations, in the Government, or in law firms largely under the supervision of a lawyer, that is the — those are the facts which distinguished this case from the great bulk of the other cases involving patent agents.

Arthur J. Goldberg:

So, what you’re saying now (Inaudible)

What you’re saying now is he cannot have a lease or rent an office.

He could work in a corporation if he’s under the supervision of a lawyer.

Now, (Inaudible) what could he do independently?

F. Trowbridge Vom Baur:

He cannot hold himself out to practice law in the patent field.

Arthur J. Goldberg:

Suppose he says — now supposedly, I am not a lawyer and I am an agent of the Patent Bar and owning to both to — by applications before the Patent Office, not every lawyer (Inaudible) what’s your view there?

F. Trowbridge Vom Baur:

The court below held that the preparation of patent applications constitutes the practice of law.

He would be enjoined from doing that and he will be barred from doing it.

Arthur J. Goldberg:

In other words, he could not have (Inaudible) within the Patent Office within Florida, in this area unless — regardless of the statute that followed on what might be fully advised unless he operates under the (Inaudible) of a lawyer.

F. Trowbridge Vom Baur:

Yes, sir, if he is practicing law, that is correct.

Arthur J. Goldberg:

Well, then your statement concludes it, but I am trying to get to the facts.

He could not operate in a limited area on filing applications or letters for patent to the Patent Office from Florida (Inaudible) regarding to applications unless he operates under the supervision of a lawyer.

F. Trowbridge Vom Baur:

I think that is right, sir.

William J. Brennan, Jr.:

Was that — say Mr. vom Baur that he — he might take employment with a Florida law firm in general practice and do their patent application work for them?

F. Trowbridge Vom Baur:

Working under the supervision of a lawyer, yes sir.

William J. Brennan, Jr.:

But what would — what would the lawyers in general practice know about — especially in patent applications.

F. Trowbridge Vom Baur:

Well, and — very frankly, lawyers in general practice don’t practice patent law unless they are also admitted to practice before the Patent Office.

There are, however, patent law firms in Florida and I dare say as elsewhere some of them employ patent agents to work in the firm of lawyers.

William J. Brennan, Jr.:

Well is that to say then that the only employment he could take would be with some law office doing a patent law of business.

F. Trowbridge Vom Baur:

Or with a corporation or within the Government, there are a number of faculties in the Government.

William J. Brennan, Jr.:

Not with some firm in general practice.

Byron R. White:

Well, Mr. vom Baur, that doesn’t quite follow does it really — it seems to me that anything that the Patent Office want it done or that not wanted done, permitted to be done by a nonlawyer, he could do it.

Anything that required a lawyer to do in the State of Florida any lawyer could do as far as Florida law is — were concerned.

Any lawyer could give a patent opinion, any lawyer, isn’t that true?

F. Trowbridge Vom Baur:

Under the law of Florida?

Yes, sir.

Byron R. White:

Yes.

And isn’t it true that any lawyer could hire this man to help him and sign his work.

F. Trowbridge Vom Baur:

With one condition, Mr. Justice White, and that is that the lawyer also be admitted to practice before the Patent Office.

Byron R. White:

Well now, how far does the —

F. Trowbridge Vom Baur:

Because the rules of the —

Byron R. White:

I’m just talking about the laws in the State of Florida?

F. Trowbridge Vom Baur:

No, sir, there’s a federal statute which requires —

Byron R. White:

I understand this but anything that goes to the Patent Office, he signs.

Now, the two of them together could do — could do everything that you or the State of Florida or the Patent Office which implies.

F. Trowbridge Vom Baur:

Perhaps so.

Byron R. White:

Yes.

Earl Warren:

In other words, in preparing an application for a patent, he would have to do it under the supervision of a Florida lawyer and when it came to presenting it to the — the Patent Office, the Florida lawyer would have to do it under the supervision of this man.

Is that correct?

Mr. Chief Justice, this is —

Earl Warren:

I don’t say that —

Byron R. White:

This is (Voice Overlap) —

Earl Warren:

I don’t say that superciliously but isn’t that true as you state it?

No, sir, it is not true because in the first place, if I may say so, sir, it is unrealistic in the sense that no general practitioner tries to file applications in the Patent Office.

There is a federal statute which prohibits him from holding himself as qualified to do that unless he has admitted also to practice before the Patent Office.

The great bulk of the patent work in this country, as I understand it, is done by lawyers who were admitted to practice before the Patent Office and those are what you might call dual authority.

Earl Warren:

How many are there in Texas who are lawyers who are — not detected within Florida who were so qualified?

I read from your brief that there are 73 in the State of Florida, 73 lawyers who were qualified to act before the Commission, is that not correct?

F. Trowbridge Vom Baur:

I think so.

F. Trowbridge Vom Baur:

That’s right.

Hugo L. Black:

May I ask — I think I understand what the idea is but I’d like to just state.Do you represent the Bar Association, do you not?

F. Trowbridge Vom Baur:

Yes, sir, I do.

Hugo L. Black:

American Bar Association.

F. Trowbridge Vom Baur:

Yes, sir.

Hugo L. Black:

What does — am I wrong in thinking under the position of Bar Association means that it doesn’t want any patent agents doing the business in Florida, thinks they shouldn’t do it, that’s its position and belief and if they should — cannot be done legally and if the State of Florida can bar agents from carrying on any of that patent activities in Florida.

F. Trowbridge Vom Baur:

We don’t believe —

Hugo L. Black:

That’s what I gather it to be.

F. Trowbridge Vom Baur:

That is fairly close sir.

We do not believe a patent agent has the right to practice law in Florida in the patent field.

Hugo L. Black:

I — let’s forget the words practice law.

That means a thousand different things to a thousand different people.

What can he do — or is it your position that he cannot thoroughly be there, be a patent agent, draw up application, talk to people about their applications, amend their applications and general management, and do any of those things and that if he does, he violates the law of Florida under the law of Florida is valid.

F. Trowbridge Vom Baur:

I think so.

Hugo L. Black:

That’s right, isn’t it?

F. Trowbridge Vom Baur:

I think so.

Hugo L. Black:

I think we could get it better if it’s — just argued on those — that statement of facts.

F. Trowbridge Vom Baur:

Well sir, I would like now if I may to return to my point that practice before the Patent Office was not enjoined by the court below.

It has pointed out the court below expressly disavowed any intention to interfere with the practice — the practice before the Patent Office.

And fourth, in support of —

Hugo L. Black:

You said when done outside the State of Florida, that’s the language you’ve used.

F. Trowbridge Vom Baur:

Yes, sir, that is true.

And in the context of facts in this case, I think it is impossible to practice before the Patent Office in Florida-D.C. and I would like to give you one big reason in my opinion why.

Practice before the Patent Office according to the cases as I understand it means practice in the presence of the practice office, the Patent Office.

I have cited some five cases in my brief, pages 54 and 55, to the effect that practice before a government official or tribunal means in the presence of the particular government official or tribunal.

Those five cases in turn I may say, cites some other cases and they are not disputed by — by adversary here.

And further, if I may proceed to the mechanics of practice before the Patent Office which I think there are some significance on this question, we find that, I submit, the practice before the Patent Office cannot begin until, number one, a proceeding is started before the Patent Office, and number two, there is an applicant there who can be represented.

Now, the mere preparation of a patent application does not start a proceeding in the Patent Office.

Secondly, if it’s mailed at the Patent Office and physically received by the Patent Office, it is not automatically filed there.

There is a rule of the Patent Office which says, they will be carefully inspected, and if the particular application does not meet the specific requirements of the rules, the application will not be accepted, and will be sent back to the applicant.

F. Trowbridge Vom Baur:

And I may that if the statute of limitation runs in the meantime of course, the inventor is in trouble.

Now finally, there is no applicant before the Patent Office to be represented by anybody until after an application has been physically received and legally accepted and filed by the Patent Office.

And now I come to my first point, which is if the States have the right to control and regulate the practice of law.

This I think has been settled in this Court by Bradwell versus Illinois and in Theard versus United States in 354 U.S.

This Court stated that a states control over its judicial system was “autonomous” and the reason for this appears to be as stated in Theard versus United States that the Court’s control over a lawyer’s professional life derived from his relationship to the responsibilities of the Court, now I come to my second sub-point under this, which is the fact that the practice of law in a particular State involves federal subject matter in no way diminishes the power of the State to regulate it and here we come, if the Court please, to perhaps the only unauthorized practice of law case that has ever actually reach this Court and then cited by it with approval and that case is Kovrak versus Ginsburg in 358 U.S.

Now in that case, Kovrak was admitted to practice before this Court, the District of Columbia Courts and most significantly, the United States District Court for the Eastern District of Pennsylvania, a tribunal which sets in Philadelphia.

Now, he was not a member of the Pennsylvania Bar, but like the petitioner here very much, he nevertheless set up an office in Philadelphia and preceded as such — advertised himself as “attorney at law, proctor in federal taxation”.

And at this point, the Unauthorized Practice Committee of the Philadelphia Bar Association proceeded to sue to enjoin him from unlawfully practicing law in Pennsylvania.

An interestingly enough in the Supreme Court of Pennsylvania, Kovrak’s position according to the Court’s statement was and I’m quoting now, “That he has a legal right to practice law anywhere in the Eastern District of Pennsylvania with regard to any legal matter in which a federal question was involved, no matter how remote.”

This is on page 26 and 28 of respondent’s brief.

And I may say this is very close to the petitioner’s contention in this case, “That he has a right to practice law anywhere in Florida with regard to any legal matter in which a patent question is involved perhaps”.

Arthur J. Goldberg:

But not before the (Inaudible)

F. Trowbridge Vom Baur:

Yes, bear in mind Mr. Justice Goldberg, that is entirely right sir, but here, this man, held — opened an office in Philadelphia, the very place where this tribunal six in the United States District Court of the Eastern District of Pennsylvania through which he was admitted, and he held himself out as an attorney at law, proctor in federal taxation.

And he contended he had a right to practice law anywhere in the Eastern District of Pennsylvania where a federal question was involved.

And the Court rejected his contention and said and I — this is very significant if you will bear with me, I’d like to read it just one sentence.

No case has been suggested to us which holds that membership in the Bar of the United States Supreme Court entitles an attorney to practice anywhere in the United States without reference to local state requirements.

And that we substitute membership in the Bar of the United States Patent Office.

We have, I think the basic problem in this case.

Now in addition, in Kovrak versus Ginsburg, the Court, Supreme Court of Pennsylvania also pointed out that this did not interfere with his right to try cases in the United States District Court for the Eastern District of Pennsylvania.

Just as the court below pointed out that the — that the decree below does not prevent him from practicing before the Patent Office in Washington D.C.

And finally, with respect to this case, if I may mention, it was cited with approval by this Court in Martin versus Walton in 368 U.S. 25.

Arthur J. Goldberg:

(Inaudible)

F. Trowbridge Vom Baur:

Yes, sir.

Arthur J. Goldberg:

(Inaudible)

F. Trowbridge Vom Baur:

Appear where, sir?

Arthur J. Goldberg:

(Inaudible)

F. Trowbridge Vom Baur:

Exactly.

Arthur J. Goldberg:

(Inaudible)

F. Trowbridge Vom Baur:

Not so much a part of — the matter of housing, it’s a matter of holding himself out.

He can house himself physically anywhere but if he holds himself out to practice law, that is bad.

F. Trowbridge Vom Baur:

Well, I may say in this connection, there are two leading cases, I have so little time that I’m just struggling to get this out which upheld that admission to practice before a federal administrative agency does not entitle the person involved to practice law in a particular State.

Now one of them is a leading case in the patent field, Chicago Bar versus Kellogg upon which the court below extensively relied.

And again, the petitioner in that case contended there as he does here, that his recognition before the Patent Office entitled him to practice patent law in Illinois.

And the Supreme Court of Illinois said, “No, you can practice before the Patent Office to beat the bond but you cannot practice patent law in Illinois.”

Now if I may continue, I only have four minutes left that I want to get to this matter of the construction of the statute, if the Court please, because this is rather important.

The petitioner is given the impression that there is some kind of federal preemption here.

In my opinion, this is not so.

The keyword in this statute is the word recognition.

And I submit to Your Honors that the word recognition does not deal with the subject or purport to grant anything of a nature of a federal license, rather it is a much more passive lukewarm tepid kind of word which deals only, as I read Webster’s Dictionary with the subject of acceptance in the sense of being entitled to attention.

This is a far cry from an affirmative grant of a license or the language in the Federal Power Act for instance which specifically says that so on as the Commission has power to issue licenses for the construction of dams, etcetera.

Now finally and this would be the last point I was trying to get out because I do not have any more time.

This particular statute in dealing with the recognition, I submit, was not passed to implement Article 1, Section 8, Clause 8 of the Constitution, rather it was merely a legislative recognition of a practice which had long existed in many of the government departments as part of their inherent power as a government department under Article 2 of the Constitution.

Now, the first place under that, during the Civil War and shortly thereafter, the Pension Office dealt with the subject of admission of attorneys to practice and their continued regu — recognition under regulations promulgated by the Secretary of the Interior.

Then the Attorney General in 1880 ruled that the authority to disbar an attorney practicing before the Department of the Interior was an authority not given by statute but which seems to have been exercised heretofore by heads of departments in the protection of the Government.

That is independent of statute and that is this statute here because it is a companion statute, the two statutes which were passed at 1884, each virtually identical with this one, one dealing with Interior and one dealing with Treasury.

And finally, in Philips versus Ballinger, a case which is cited by approval by this Court in Goldsmith versus Board of Tax Appeals, the court there upheld the disbarment of a lawyer by the Secretary of Interior under the 1884 Act, which as I say is virtually identical with this one on the theory and I’m quoting the case now, “It is unnecessary to consider whether the 1884 Act constitutes anything more than a legislative sanction of the practice heretofore existing under another statute by a — through all revised statute 161 nullified United States Code 22.

And that statute, I may say, gives the head of each department the power to promulgate rules governing the conduct of this department and this Court held in United States versus George in 228 United States that the power given by that statute was administrative only and not legislative.

In short, my point here is, if the Court please, that this particular statute was not passed to implement Article 1, Section 8, Clause 8, but rather was a mere legislative recognition of a practice theretofore existing for many years as part of the inherent power of a government department under Article 2 of the Constitution.

Now there’s another feature the red light hasn’t flashed yet but there is another feature here which I wish to — which is of some importance.

And that is to take the administrative interpretation.

In 1938, the rules of the Patent Office were revised so as to provide categorically, and I have this in full page type on page 56 of our brief, that the registration on the Patent Office “shall not be construed as authorizing persons not members of the Bar to practice law.”

And that in 1949, the rules were given — addressed the provision and that provision was restated in a new rule to effect that registration in the Patent Office shall only entitle the persons registered to practice before the Patent Office; in short, not somewhere else.

Now, I have —

John M. Harlan II:

That’s the same rules, if I mean one (Inaudible)

F. Trowbridge Vom Baur:

Yes, sir.

John M. Harlan II:

(Inaudible)

F. Trowbridge Vom Baur:

In my opinion, that is correct.

John M. Harlan II:

(Inaudible)

F. Trowbridge Vom Baur:

No, sir, there is an additional rule which says the same thing with respect to trademark.

Potter Stewart:

Are there any?

F. Trowbridge Vom Baur:

Yes, sir.

If you will look on page 56 of respondent’s brief, you will see the 1938 rule which provides in categorical terms the registration before the Patent Office shall not be construed as authorizing persons not members of the Bar to practice law.

Now there is a separate — an additional rule which is mentioned I think in Appendix A which has said the same thing for trademark practices.

Then as I’ve pointed out, the 1938 rules when they were given a general revision in 1949, preceded the State, I submit the same thing by providing that registration in the Patent Office shall only entitle people to practice before the Patent Office.

Now there’s one other point I should like to try to get up before the red light flashes, and that is that the patent power is a very limited power.

This Court has held in Patterson versus Kentucky and two other cases that except for interference with an — and fetters exclusive right to a patented invention, the Patent Clause and the patent statute passed by Congress are subject to the State’s police power and there is at least one unauthorized practice case which is referred to at some length in Patterson versus Kentucky, one of the leading cases in this Court on federal state relations in the — rather in the patent field where the — where Jordan, this is Jordan versus Overseers of Dayton in our brief at pages 71 to 73 claimed that he had a federal right to administer a patented product without getting a license to practice medicine in Ohio.

And the Supreme Court of Ohio and also this Court said that he have to get a license to practice medicine in Ohio before he could administer the particular invention.

Of that, the case at least came close to interfering with an inventor’s exclusive right to an invention.

Well, our case does not.

Our case bears no relationship whatever to the protection of an inventor’s exclusive right to an invention.

Finally, this case, if the Court please, involves the future of the Bar and my last point is that a strong Bar is itself essential to the public welfare, and in this connection, I think it is effect of no small significance that one of the first acts of dictators such as Hitler, Mussolini and Castro is to decimate the Bar and with the decimation of the Bar there disappears also that leadership and public affairs, if I may say so, and the protection of the public which a strong Bar affords.

And with — if the practice of law is going to be whittled away, chip by chip and turned over to laymen, lay agencies then the public will no longer have the protection which a strong Bar affords and the public will suffer.