Posts Tagged: "american bar association"

The issue of unauthorized practice of law is a concern for all attorneys, and something that periodically does catch up with patent attorneys. The typical scenario where this issue arises is when patent attorneys are admitted in one state and have an office in another state but provide more than patent related services. When an attorney accepts a job as an in-house counsel, the potential for problems associated with the unauthorized practice of law similarly present themselves. Different states have different regulations and procedures that must be followed when an out-of-state attorney relocates to become in-house counsel. Although in-house counsel should always consult the rules and regulations of the state where their employer is located, a common thread in these rules and regulations is that the in-house lawyer must be a full-time employee and may only provide legal services for the employer (including parent, affiliate and subsidiaries). However, in-house attorneys with out-of-state registrations are frequently allowed, often even encouraged, to provide pro bono representation through recognized legal aid organizations. The American Bar Association has compiled links to information for each state, which is current through November 7, 2019. In-House Corporate Counsel Registration Rules (last visited December 14, 2019). What follows below is a discussion of how several states with higher populations of patent attorneys handle admission for out-of-state in-house counsel. We will review the rules for Virginia, Texas, California, New York, Illinois and Florida.

Last month, we reported on the responses submitted to Senator Richard Blumenthal (D-CT) by panelists who participated in the June hearings on the state of U.S. patent eligibility, held by the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Along with Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI), Senator Blumenthal entered a series of questions for the record to be answered by certain participants. While movement on the bill appears to be stalled for the time being, with reports that Tillis and Senator Chris Coons (D-DE) have reinstituted the stakeholder roundtables that led up to the draft bill and hearings in the first place, it’s worth reviewing some of the responses to Tillis’ questions as the IP community waits for the next move. From David O. Taylor’s statistic that 62% of investors he surveyed said they were less likely to invest in companies where patent protection is not available, to Bob Armitage’s characterization of the draft bill’s revision to Section 112(f) as “perfect,” to the Cleveland Clinic’s statement that they are currently less likely to make the necessary investments to bring new advances in diagnostics to market, these responses are a reminder of what’s at stake.

Yesterday’s IPWatchdog webinar, sponsored by Anaqua, hinged on the statistic that 70% of in-house counsel surveyed by the American Bar Association in 2012 would not recommend their primary outside counsel to others and 87% would replace their current firm if given a good reason.

Panelists Bart Eppenauer and Benjamin Brown emphasized that avoiding complacency is key. “The legal industry needs to do a lot better,” said Eppenauer. “It’s not enough to deliver quality work; go to your client and ask how things are going or you could find yourself on the way out.”

The American Bar Association filed an amicus brief today with the United States Court of Appeals for the Federal Circuit, arguing that a provision of U.S. patent law does not give the government the right to be reimbursed for its lawyers’ expenses regardless of which side prevails in a court appeal of an administrative patent decision… The Federal Circuit split 2-1 in determining that the language approved by Congress includes lawyer fees for the USPTO win or lose. The ABA’s amicus brief supports the petition by Nantkwest Inc., which owns the cancer treatment patent application in question, and asks the full Federal Circuit to reverse that decision.

Although law firms have traditionally been slow to adopt technology, a 2015 survey conducted by Williams Lea Tag and Sandpiper Partners LLC reported that 64 percent of law firms now believe investing in technology is a priority. Attorneys are using technology to personalize connections with clients, automatically update legal documents, and improve operational efficiency—all of which frees up valuable time for client work, according to Law Technology Today. This is especially true for IP attorneys as they are on the front lines of technological growth. However, rather than implementing a variety of disparate solutions and falling victim to application gluttony, IP attorneys need an enterprise class solution that provides the breadth of capabilities needed to perform the exacting task of IP prosecution and management.

In the brief, the ABA takes no official opinion on whether the disparagement provisions of the Lanham Act are invalid in the face of constitutionally-protected free speech. The organization does want to correct what it sees as “certain principles of trademark law erroneously set forth by the court of appeals,” however. The ABA argues that Federal Circuit misapplied the basics of U.S. trademark law in confusing the separate concepts of mark validity and mark registrability. Specifically, the Federal Circuit’s decision seemed to indicate to the ABA that a determination of unregistrability for a mark on the principal register would also restrict the ability to use that mark in commerce.