Opinion
No. UPL-92-1.
Decided January 21, 1993.
Matthew T. Fekete, for relator.
McLaughlin, McNally Carlin, Richard P. McLaughlin and Robert Herberger, for respondent.
This matter came on for hearing before the Board of Commissioners on the Unauthorized Practice of Law on December 11, 1992 in Columbus, Ohio, on the formal complaint filed February 24, 1992. Members of the board present and participating in this decision were Kenneth F. Seibel, Chairman, Paul M. Greenberger, Jeffrey L. Maloon, D. John Travis, and John W. Waddy, Jr.
Relator Mahoning County Bar Association was represented by Matthew T. Fekete, Boardman, Ohio. Respondent Webster B. Harpman was present, represented by Richard P. McLaughlin and Robert Herberger of McLaughlin, McNally Carlin, Youngstown, Ohio. Attorney Harvey B. Jacobson, Jr., of Washington, D.C., appeared as a witness for relator; John Conrad of Westlake Village, California, appeared on behalf of respondent.
Relator's complaint alleged that Harpman is not an attorney at law, and that he engaged in the unauthorized practice of law by rendering legal services to John Conrad on matters related to a petition for reexamination of the GPAC/Natale patent between April 22, 1987 and late December 1991.
At the close of relator's evidence, relator moved to amend the complaint to conform to the evidence submitted; respondent objected to the motion. The motion was granted pursuant to Gov.Bar. R. VII(17), which states that "Amendments to any complaint * * * may be made at any time prior to final order of the Board. The party affected by such amendment shall be given reasonable opportunity to meet any new matter presented thereby." Respondent did not request a continuance.
In his second amended answer filed December 3, 1992, respondent admitted "that he represented John Conrad regarding a petition for reexamination before the United States Patent and Trademark Office," but denied that this representation constituted the unauthorized practice of law. Respondent also asserted the defense that this board lacks jurisdiction because his activities before the patent office are permitted and regulated by federal law, since he is a registered patent attorney and was granted a registration to practice before the United States Patent and Trademark Office.
Addressing first respondent's defense of lack of jurisdiction, which was reasserted at the hearing by way of a motion to dismiss, the United States Supreme Court squarely recognized the broad authority of the states to regulate against the unauthorized practice of law in Sperry v. Florida ex rel. Florida Bar (1963), 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428. In the absence of federal legislation to the contrary, the state has jurisdiction over the protection of its citizens from the practice of law by unauthorized laymen. Id. at 383, 83 S.Ct. at 1324, 10 L.Ed.2d at 431. Furthermore, the United States Supreme Court strictly limited application of the federal supremacy doctrine: "[T]he State maintains control over the practice of law within its borders except to the limited extent necessary for the accomplishment of the federal objectives." Id. at 402, 83 S.Ct. at 1335, 10 L.Ed.2d at 442.
In the case of In re Cowgill (1973), 37 Ohio App.2d 121, 66 O.O.2d 237, 307 N.E.2d 919, the Marion County Court of Appeals ruled that state regulation imposed no burden or restraint upon the authority of the federal government in patent matters.
We conclude that the state of Ohio has the authority to regulate conduct by a federally registered patent attorney in matters outside the scope of authority granted by federal law. Ohio thus joins other states in determining that the unauthorized practice of law falls within the jurisdiction of the state regulating body, whether the source of the law practiced is the state of Ohio, another state of the United States, the United States, or a foreign country. See Mahoning Cty. Bar Assn. v. Rector (1992), 62 Ohio Misc.2d 564, 608 N.E.2d 866, and cases cited therein.
Many of the facts surrounding this matter are not in dispute. Relator and respondent stipulated to the following statements of fact and conclusions of law:
1. Harpman has and currently maintains offices at 400 City Centre One, Youngstown, Ohio 44503.
2. Harpman is a practicing "patent attorney" and was granted a registration to practice before the United States Patent and Trademark Office on January 7, 1935.
3. Harpman is not an attorney at law and is not registered under Gov.Bar R. VI or XI, or the Supreme Court of Ohio, nor is Harpman a registered attorney at law in any other state.
4. Under the authority of Section 10.34(b), Chapter 1, Title 37, C.F.R., Harpman is authorized to use the designation "patent attorney," since his registration before the United States Patent and Trademark Office was properly made prior to November 15, 1938.
5. Registration to practice before the United States Patent and Trademark Office permits the representations of individuals and corporations before the Patent and Trademark Office by non-lawyers as prescribed by Section 10.14(b), Chapter 1, Title 37, C.F.R.
6. A patent attorney registered to practice before the United States Patent and Trademark Office is permitted to prepare and file reexamination requests on behalf of interested parties. Requests for reexaminations set forth specific documentation and arguments raising substantially new questions of the patentability of a previously issued patent. See Section 1.510, Paragraphs A and B, Subheading 1, Chapter 1, Title 37, C.F.R.
7. Harpman prepared and filed on behalf of John Conrad a petition requesting reexamination of the GPAC/Natale patent 4,604,111 on April 22, 1987. The request for reexamination was granted and on March 31, 1988, resulted in claims 1-29 of the patent being rejected.
8. The examiner's ruling of March 31, 1988 was reversed by the Board of Patent Appeals and Interferences on March 6, 1989.
9. On November 23, 1990, Harpman prepared and filed a petition for reexamination of the GPAC/Natale patent on behalf of James W. Simpson.
10. Again, the examiner for the Patent and Trademark Office granted the request for reexamination and on July 31, 1991, Examiner Miles rejected claims 1-29 of the GPAC/Natale patent. An appeal of that examiner's decision is currently pending before the Board of Patent Appeals and Interferences.
Although the parties stipulated that respondent's activities before the patent office did not constitute the unauthorized practice of law, this board has an independent duty to review any stipulations. Disciplinary Counsel v. Brown (1992), 61 Ohio Misc.2d 792, 584 N.E.2d 1391. In so doing, the board concurs and finds that respondent has not engaged in the unauthorized practice of law by virtue of his activities before the patent office, based upon the cited provisions of the Code of Federal Regulations and Sperry v. Florida ex rel. Florida Bar. However, the board must also determine if respondent has engaged in conduct outside the scope of authority granted him under federal law.
Gov.Bar R. VII(2)(A) states that "[t]he unauthorized practice of law is the rendering of legal services for others by anyone not registered under Rule VI or Rule XI of the Rules for the Government of the Bar of Ohio." Since it was stipulated that respondent is not registered under the Ohio rules, it remains for this board to determine whether any of respondent's other conduct constitutes "the rendering of legal services for others" and thus the unauthorized practice of law.
The Supreme Court of Ohio set forth the clearest definition of what constitutes the unauthorized practice of law in the case of Land Title Trust Co. v. Dworken (1934), 129 Ohio St. 23, 1 O.O. 313, 193 N.E. 650. In the first paragraph of its syllabus, the court held:
"The practice of law is not limited to the conduct of cases in Court. It embraces the preparation of pleadings and other papers incident to actions and special proceedings and the management of such actions and proceedings on behalf of clients before judges and courts, and in addition conveyancing, the preparation of legal instruments of all kinds, and in general all advice to clients and all action taken for them in matters connected with the law." (Emphasis added.)
The court in Special Master Commrs. v. McCahan (1960), 83 Ohio Law Abs. 1, 11, 14 O.O.2d 221, 229, 167 N.E.2d 541, 550, also described the many areas of legal practice:
"It is clear that a licensed attorney in the practice of law generally engages in three principal types of professional activity. These types are legal advice and instructions to clients to inform them of their rights and obligations; preparation for clients of documents and papers requiring knowledge of legal principles which is not possessed by an ordinary layman; and appearance for clients before public tribunals, which possess the power and authority to determine rights of life, liberty and property according to law, in order to assist in the proper interpretation and enforcement of law. (Emphasis added.)"
Much of the testimony and many of the exhibits offered at the hearing concerned a series of letters and memoranda written on respondent's letterhead and purportedly signed by him. The top-center of the letterhead states "Harpman Harpman" with the designation "Patent Attorneys" and the firm address and telephone number beneath. The left margin lists three names: Charles A. Harpman, with the dates 1876-1953 beneath his name, Webster B. Harpman (respondent), and Richard C. Harpman, with the word "Agent" beneath his name. Charles A. Harpman was respondent's father, the founder of the firm and, according to respondent, an attorney at law. Richard C. Harpman is respondent's son, a registered patent agent but not a patent attorney or attorney at law. The right margin of the letterhead lists "Patents," beneath which is "Trademarks," then "Copyrights."
Various letters, identified as Relator's Exhibits M, P, S, T, W, Y, and Z-1, are all signed "Webster B. Harpman" or "W.B. Harpman," although several of the signatures are dissimilar in appearance. Exhibits M, P, S, and W were intended for asbestos contractors or bid specifiers. These letters contain certain legal opinions, notably a statement that the Conrad patent does not infringe upon the GPAC patent and proposed bid language for bid specifiers to use to avoid "problems" with the GPAC patent. Exhibit T is a letter from Harpman to Conrad wherein Harpman compared a decontamination system to the Natale patent. Exhibit Y is an August 5, 1991 letter that claims the GPAC patent is invalid; the recipient's name and address are deleted from the heading of the letter and the recipient's name is deleted from the salutation. Exhibit Z-1 is a September 3, 1991 letter from Harpman to Eugene Newman, the President of GPAC, suggesting that Global, Conrad's company, and GPAC consider a "business deal" instead of pursuing further litigation.
At the hearing, Harpman testified he ceased representation of Conrad when the patent board reversed the first reexamination procedure, which was March 6, 1989. Harpman denied either signing or writing Exhibits M, P, S, and W. Harpman did not dispute signing or writing Exhibit T, the letter to his client, Conrad. Exhibit Y was admittedly sent by Harpman to his client, Simpson, following the successful reexamination request. Harpman also admitted signing and sending Exhibit Z-1; the letter proposed a business resolution of the Conrad/GPAC dispute, even though Harpman testified that his representation of Conrad on the patent matter had ended more than two years previously.
Conrad testified that someone at his company composed Exhibits M, P, and S. Conrad claimed that these letters were distributed without Harpman's knowledge or consent in order to assist Global's customers. According to Conrad, someone at Global either signed Harpman's name or transferred and photocopied Harpman's signature from another document.
It is clear to this board that some of the exhibits, as detailed above, offer legal opinions. If those letters were prepared or signed by Harpman for Global, that would be "the rendering of legal services for others" and thus the unauthorized practice of law.
As previously stated, Harpman denied and Conrad admitted preparing and signing some of the letters. However, some of the testimony and exhibits themselves tend to cast doubt on Harpman's and Conrad's recollections. For example, Harpman repeatedly denied having prepared or signed Exhibit S and Conrad testified that he or someone in his company prepared it. However, the more credible testimony indicated that the original of this document was produced by Harpman from his own files.
Also, there was conflicting testimony whether Conrad had obtained Harpman Harpman letterhead and thus could have produced some of the exhibits he claimed to have prepared. Harpman denied having supplied Conrad with his stationery, and there was considerable testimony as to how Conrad could have "created" blank Harpman letterhead. But under direct examination, Conrad said that at some point he had Harpman stationery.
"A (Conrad): Right. By that time I am sure we had blank stationery."
When confronted on cross-examination with this obvious contradiction of earlier testimony by both him and Harpman, Conrad denied having made the statement:
"Q (Fekete): Let me strike the last question and just ask you this question. Mr. Conrad, your earlier testimony was that you did get blank letterhead or your office did get blank letterhead from Mr. Harpman's office.
"A (Conrad): I did not say that. You are saying that.
"Q: I think your testimony was that you had blank letterhead.
"A: No, I did not say that."
These are but two examples of critical inconsistencies in the testimony presented at the hearing, yet the outcome of this case hinges to a great extent on the credibility of the testimony.
Another issue this board must consider is the notation of "Copyrights" on respondent's letterhead. This notation is a clear indication to the public that respondent is available to render legal services in the area of copyright law. However, we find nothing in the federal law or regulations, and nothing has been brought to our attention, that permits respondent to practice in any area other than patents and trademarks, and only before the patent office.
It is important to point out the board's responsibility in these matters. Gov.Bar R. VII creates a two-tiered process for the prosecution of unauthorized practice of law complaints. The board hearing is only the first step, and all the board must determine is whether there is sufficient evidence to "authorize the Relator to commence an action for the purpose of obtaining a judicial determination whether the Respondent has engaged in the unauthorized practice of law." Gov.Bar R. VII(8). The ultimate determination of whether the unauthorized practice of law has occurred rests with a court of law.
After careful consideration of the pleadings, testimony, exhibits, arguments of counsel, and the applicable law, the board finds that relator has proven that respondent has engaged in the unauthorized practice of law by (1) the preparation and signing of documents containing legal opinions outside the scope of authority granted him by federal law; (2) the inclusion of "Copyrights" on his letterhead, by which respondent holds himself out as available and authorized to render services in the area of copyright law; and (3) acting on behalf of another to negotiate the settlement of the pending Conrad/GPAC litigation as reflected in his letter to the President of GPAC, Exhibit Z-1. The board therefore authorizes relator Mahoning County Bar Association to commence an action in a court of competent jurisdiction for the purpose of obtaining a judicial determination whether respondent Webster B. Harpman has engaged in the unauthorized practice of law and, if so determined, to seek appropriate injunctive relief.
Pursuant to Gov.Bar R. VII(9), relator may seek reimbursement from the board for expenses and attorney fees incurred in the further prosecution of this matter.
A copy of this opinion shall be served upon relator, respondent, all counsel of record, Disciplinary Counsel, and the Ohio State Bar Association.
So ordered.