Petition — Amalgamated Development Co. v. Committee on Unauthorized Practice, District of Columbia Court of Appeals

Supreme Court brief1977

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Supreme Court, U. S,

FILED

SEP 14 1977

= |

In THE en, 1 CL

Supreme Court of the Hnited States

OCTOBER TERM, 1977

No.

IN RE: yeas

AMALGAMATED DEVELOPMENT CO., INC. t/a WASHING-

TON PATENT OFFICE SEARCH BUREAU and H.

LAWRENCE BLASIUS,

Petitioners,

-against-

COMMITTEE ON UNAUTHORIZED PRACTICE, DISTRICT

OF COLUMBIA COURT OF APPEALS,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE DISTRICT OF COLUMBIA COURT OF APPEALS

HARRY GROSSMAN

Attorney for Petitioner

515 Madison Avenue

New York, N.Y. 10022

(212) 752-4220

——————— ee

Dick Bailey Printers, 290 Richmond Ave., Staten Island. N.Y 10302

Tel.: (212) 447-5358

TABLE OF CONTENTS

Page

SEA Lub AWOEES Gs i's she's ght Ue. s' eenes l

Opinions of the Courts Below ........ ... . ..... 2

Jurisdiction.... .. Wak Ged Sekee: <auntwe nde eeu 2

Questions Presented ......... cixeabe iL ac eaes 2

ed) pe ceeescheteseeeceue 3

Reasons for Grantingthe Writ... Ss ............. s

I—The Recent Decision of This Court in Bates v. State

Bar of Arizona, 97 S. Ct. 2691 Compels a Reversal

of the Court Below with Regard to Petitioner, H.

nn 2. ache e aves cebeseetesre

II—An Analysis of the Case of Hull v. United States.

390 F. 2d 462 Indicates that the Activities

Engaged in by the Petitioner, Amalgamated

Development Co.. Inc.. t/a Washington Patent

Office Search Bureau Are Authorized and not

a re Pree t Terre

III—Any Question Dealing with any Type of Patent

Law Practice is Vested in the Commissioner of

Patents Only. ... ..... (eucunenes iethaweeune

1V—What Petitioner Amalgamated Development

Co., Inc., t/a Washington Patent Office Search

Bureau is Doing in its Business Relationships with

Prospective Inventors Does not Constitute the

PEE evn Scieccnedewean ssebs canes

Page

V—Preparation of Patent Applications or the Holding

out of Being Able or Qualified to Prepare Such

Applications is not a Violation of Section 33 and

Does not Constitute the Practice of Law......... 22

CamebeGbe onc ccccccveces VP pr rere eer eee ree 26

Appendix A—Opinion and Order Decided June 20,

POPUP en TTT Tore ET TTT TTT ER ite

Appendix B—Order Dated May 14, 1976.........-- 12a

Appendix C—Order to Show Cause..........-++++> 22a

Appendix D—Answer ....... 6.666 seeeeeeeeeeenes 26a

AUTHORITIES CITED:

Amesen v. Raymond Lee Organization, Inc., 333 F.

Supp. 116 (1971—D.C. Cal.) «1... 0. e eee eeeees 17

Bates v. State Bar of Arizona, 97 S. Ct. 2691 (decided

a rer rr Ter TT 2,9

Battelle Memorial Institute v. Green et al 29 Ohio

Opinions (2d) 388, (1962—Ohio Appeals Court,

Tenth District, Franklin County) ...........+--

Enders v. American Patent Search Company. et al.

535 F. 2d 1085 (1976—9th Cir.) cert. denied 97 S.

ee ows eee neue ese oeesee

Hull v. United States, 390 F. 2d 462 (1968)..........

In Re Battelle Memorial Institute (Unauthorized

Practice of Law—29 Ohio Opinions (2d) 388

(1962—Ohio Appeals Court. Tenth District,

Franklin County) .......... 00 eee cece eee e eens

2.7.10

— 2+

e+ eee

on a

iii

Page

In Re Blasius, 138 U.S. P. Q. 482 |Comm. Pats. 1961] 9

People v. Miller, 23 A.D. 2d 144, 146, 147 (196S5—Ist

RIN AU is DEWi iw desk cuee doce 21

Silverman v. State Bar of Texas. 405 F. 2d 410

ND vi0.ie'esceeweseeedS'scsvcscecs 17

Sperry v. Florida, 33 U. S. 379 (1963) .............. 10

Supreme Court of Florida, 140 So. 2d. 587 . . Se

U.S. v. Blasius, 393 U.S. 1008, 89 S. Ct. 615, 21 L.

ie S60 bev vibe bias +cece so 6

STATUTES CITED:

Rule 46 II (b}—General Rules of District of Columbia

ge cmwes 7

Title 2—District of Columbia Code, Sec. 2-901 .. ... 22

Title 2—District of Columbia Code, Sec. 2—1101.

eee 23

Title 28, U.S . Code, Seo. 1254(1) ........ ee. - se 2

Title 35, U. S. Code, Sec. Ila... . 0. eee ce cece, 25

Title 35, U. S. Code, Sec. 33...........4...... 25

United States Constitution—Article VI........ .... 14

BULLETINS:

U. S. Civil Service Commission—Announcement No.

2-21-3 (1960) Issued March 23,1960 .......... 23-24

U. S. Civil Service Commission—-Announcement No.

AT 35-1 (65) X-118 GS—1221 Issued 1/6/65 ....

U. S. Patent Office—General Information Concc rning

Patents June 1960 (Reprint of November 196 3) . ..

Page

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM 1977

Fe sescececeses

IN RE:

AMALGAMATED DEVELOPMENT CO., INC.

t/a WASHINGTON PATENT OFFICE SEARCH

BUREAU and H. LAWRENCE BLASIUS,

Petitioners.

-against

COMMITTEE ON UNAUTHORIZED PRAC-

TICE, DISTRICT OF COLUMBIA COURT OF

APPEALS,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE DISTRICT OF COLUMBIA COURT OF

APPEALS

To the Honorable Chief Justice and the Associate Justices

of the Supreme Court of the United States:

Your petitioners, Amalgamated Development Co.. Inc.

t/a Washington Patent Office Search Bureau and H.

Lawrence Blasius. respectfully show:

Petitioners pray that a writ of certiorari issue to review

the final order and judgment of the District of Columbia

Court of Appeals entered in the above entitled action on

June 20, 1977.

OPINIONS OF THE COURTS BELOW

The opinion and order of the District of Columbia Court

of Appeals, decided June 20, 1977 is marked Appendix A,

hereto annexed. The said opinion and order affirmed a

prior order made by one Judge of the District of Columbia

Court of Appeals (Hon. John W. Kern, III), dated May 14,

1976, and marked Appendix B, hereto annexed.

JURISDICTION

The jurisdiction of this Court is invoked under Title 28 of

the U.S. Code, Section 1254(1).

QUESTIONS PRESENTED

1. Does the recent decision of this Court in Bates v. State

Bar of Arizona, 97 S.Ct. 2691 (decided June 27, 1977)

compel a reversal of the Court below with regard to

petitioner, H. Lawrence Blasius?

2. Does the case of Hull v. United States, 390 F.2d 462

(1968) indicate that the activities engaged in by the

petitioner, Amalgamated Development Co., Inc., t/a

Washington Patent Office Search Bureau are authorized

and not contrary to any law?

3. Does this proceeding deal with matters related ex-

clusively to Patent Law practice, which are vested ex-

clusively in the Commissioner of Patents?

4. Does the District of Columbia Court of Appeals have -

the authority to enjoin the petitioners from engaging in

their lawful business activities in Washington, D.C.?

5. Does the mere assistance in the preparation of patent

applications for “‘pro se” applicants constitute the practice

of law?

STATEMENT OF THE CASE

This proceeding was brought by the Committee on

Unauthorized Practice of Law by means of a Petition and

Order to Show Cause. The said Petition sought to have the

Petitioners herein, Amalgamated Development Co., Inc.,

t/a Washington Patent Office Search Bureau and H.

Lawrence Blasius, held in criminal contempt of court

and/or permanently enjoined from holding themselves out

as authorized or qualified to practice law in the District of

Columbia. A copy of the Order to Show Cause and Petition

is hereto annexed as Appendix C.

The Petitioners herein interposed an Answer to the

Petition containing general denials with the admission that

they are not admitted to practice law in the District of

Columbia. Said Answer of the Petitioners also contained

eight (8) separate affirmative defenses. A copy of said

Answer is annexed as Appendix D.

Pursuant to order of the District of Columbia Court of

Appeals, a hearing on this matter was held on january 2,

1976 before Hon. John W. Kern, III, Associate Judge,

District of Columbia Court of Appeals. On May 14, 1976,

Judge Kern made an Order herein containing Findings of

Fact and Conclusions of Law (Appendix B). He concluded

by ordering that the Petitioners herein be enjoined from:

(1) giving legal advice as to inventors’ rights in

their inventions;

(2) advising inventors and potential patent ap-

plicants as to rights and procedures in filing ap-

plications for patents and in patenting inventions;

(3) rendering legal opinions as to patentability of

inventions;

(4) recommending that clients proceed or not

proceed with patent applications, file amendments

to rejected initial applications, and file additional

amendments rather than appeal final rejections;

(S) preparing and drafting patent applications

ready for applicants’ signatures, preparing

amendments to rejected patent applications, and

employing or hiring others to do these tasks;

(6) otherwise engaging in the practice of law.”’

The Petitioners then filed a Petition for Review dated

May 21. 1976 of the aforesaid Order of Judge Kern dated

May 14. 1976. Briefs were then submitted on March 15,

1977 and a decision affirming Judge Kern was rendered on

June 20, 1977 (Appendix A).

The pertinent and relevant factors involved herein are as

follows:

At the outset, it was conceded that neither of the

Petitioners named herein nor any of the persons connected

with them are admitted to practice law in the District of

Columbia. At the same time, it was also contended and was

proved at the hearing that neither of the Petitioners named

herein nor any of the persons connected with them are

engaged in the practice of law in the District of Columbia

or anywhere else.

The Petitioner, Amalgamated Development Co., Inc.

t/a Washington Patent Office Search Bureau does conduct

preliminary patentability searches for prospective in-

ventors. The conducting of such searches has never been

held to be a legal act or anything whatsoever to do with the

practice of law. In fact, the patent searchers who actually

conduct the searches at the United States Patent Office are

rarely lawyers, but are mostly engineers or trained per-

sonnel in this particular field. The searching of patents has

never been deemed to be a legal function of a lawyer. It is a

highly technicai field in which even many patent lawyers do

not themselves engage. but have others to conduct such

searches for thern and their clients.

—— =>: — --—— _- ~~» . _

After conducting a search for a prospective inventor, the

said Petitioners send the said person a report including

copies of the nearest and closest patents already on file. In

such letter, the said Petitioner, which does employ

engineers and draftsmen on its staff. gives the inventor

copies of the most pertinent and relevant patents located in

its search in the U. S. Patent Office and then makes a

statement as to whether they beliéve his invention or idea

appears to be patentable. Here again, we have a purely

technical opinion which is not at all legalistic. Such opinion

is based only on the comparison of the structural and other

features of one mechanical or other device with the

structural features of a plurality of other mechanical

devices. Such a process is a purely technical one, requiring,

in the main, the services of an engineer, particularly a

mechanical engineer or one trained im such technical

matters. It does in no way involve or deal with a legal

opinion. ,

Furthermore, the U. S. Patent Office itself maintains a

roster of Registered Patent Attorneys and Agents who are

permitted to represent and appear for inventors. However,

the Patent Agents are mostly engineers and are not at-

torneys, even though they are entitled to dc anything that a

Patent Attorney can do within the Patent Office. Certainly,

such Patent Agents, who are engineers, can tell inventors

after a search that their invention “‘appears to be paten-

table.’ Such expression is deemed to be an expression of a

technical opinion and not a legal one. If it was deemed to

be legal opinion, then such Patent Agents who are not

lawyers would be precluded and forbidden from rendering

such opinion.

Accordingly, if it is held that said Petitioner is rendering

a legal opinion by merely stating that an invention appears

to be patentable, then all of the registered Patent Agents

are also practicing law illegally. The fact is that such

opinion is strictly a technical one when made by the

registered Patent Agents as well as when made by

representatives of the said Petitioner. To hold otherwise

would entail a definite form of discrimination.

The conclusion is inevitable that the work : nd services

engaged in by said Petitioner is of a highly technical nature

and cannot possibly be considered to be legal work or legal

services of any nature.

It is also respectfully contended that the saic Petitioner,

besides conducting the aforesaid preliminary | atentability

searches, also is engaged in the business of furnishing

assistance to applicants for patents who desire to file their

own patent applications and appear “‘pro se’. which they

are legally authorized and entitled to do.

In other words, a line must be drawn between providing

services or help to applicants who represent themselves, on

the one hand, and representing applicants directly before

the U. S. Patent Office. on the other. As long as the said

Petitioner does not hold itself out as being registered or

able to practice before the U. S. Patent Office, it is not

doing anything wrong or illegal.

In fact, in their letters to inventors and prospective

inventors, the said Petitioner specifically advises such

applicants that they can obtain their own Patent Attorney

or Agent if they wish or they can represent themselves in

filing their respective applicaionts for patent. The said

Petitioner merely assists them in preparing their “pro se”’

applications. Such conduct has been held to be legal in

Washington, D.C.

In fact. Hon. Erwin N. Griswold, former Solicitor

General of the Department of Justice in December, 1968,

in a Memorandum for The United States on a Motion to

Dismiss the Writ of Certiorari in the case of U.S. v.

Blasius, 393 U.S. 1008, 89 S. Ct. 615, 21 L. Ed. 557 (1969),

made the following statement on page 2 of said Mem-

orandum:

, “Dismissal of the present case could long delay

resolution of this issue. There could well be a

tendency thereafter for individuals who wish to

engage in the questionable practices to locate or

relocate their activities in the apparent sanctuary

of the District of Columbia Further, criminal

prosecutions in the District of Columbia would be

of questionable propriety in the. face of Hull v.

United States, 390 F.2d 462 (C.A.D.C.), aud there

is no express provision in the statute for a civil

remedy.”

It should also be noted that a mere examination of the

Yellow Pages of the telephone directories all over the

country as well as many national magazines contain ad-

vertisements of many organizations and individuals who

are engaged in the same or similar activities to those of said

Petitioner. This type of business has been going on for a

long time and has never in any jurisdiction been considered

to be the practice of law.

Petitioners herein therefore respectfully contend that

they are not in violation of Rule 46 II (b) of the General

Rules of the District of Columbia Court of Appeals. It is

submitted that what said Petitioners do and engage in their

business does not and has never constituted the practice of

law. Further. said Rule 46 II (b) does not apply to or

control any practice or alleged practice before the U.S.

Patent Office.

It is contended by the Petitioners that their acts and

actions have been declared to be authorized in the District

of Columbia by virtue of the determination and decision

made in Hull v. United States, supra.

It is further submitted that the District of Columbia

Court of Appeals, as well as its Committee on the

Unauthorized Practice of Law. lack jurisdiction to en-

turtain the instant matter because the power to admit

persons to practice in patent matters before the U.S.

Patent Office has been reserved by the United States

Constitution to Congress, and in turn by Congress it has

been granted only to the Commissioner of Patents. It

logically follows that since the said Court does not have

power to authorize practice in patent matters before the

U.S. Patent Office, it is unable to exercise any control over

such practice.

From the above, it is established that the Commissioner

of Patents has exclusive jurisdiction to determine what

constitutes unauthorized practice before the U.S. Patent

Office. Therefore, control of practice before the U.S.

Patent Office is a superior right vested by the United States

Constitution and by acts of Congress in the Commissioner

of Patents, and this Court by virtue of Article VI of the

United States Constitution, is bound thereby and

precluded from interfering.

It might well be argued that even if the Petitioners herein

were engaging in practice before the U.S. Patent Office.

the said acts would not be an invasion of a right vested in

an attorney by virtue of his franchise, to practice law in the

District of Columbia, since such franchise does not

authorize practice before the U.S. Patent Office.

REASONS FOR GRANTING THE WRIT

THE RECENT DECISION OF THIS COURT IN

BATES v. STATE BAR OF ARIZONA, 97 S.Ct.

2691, COMPELS A REVERSAL OF THE

COURT BELOW WITH REGARD TO PETI-

TIONER, H. LAWRENCE BLASIUS.

The Petitioner, H. Lawrence Blasius, is by education and

background a Chemical Engineer. He received the degrees

of B. A. and B. S. in Chemical Engineering from Columbia

University in 1948 and 1949, respectively. In 1950, he

passed the examination for registration to practice before

the U.S. Patent Office and became a Registered Patent

Agent. From 1950 to 1953, he worked in the field,

preparing and prosecuting patent applications and in 1953

he opened his own office, in New York City. On July 1,

1959, new regulations in the U.S. Patent Office were

promulgated and adopted which prohibited Registered

Patent Attorneys and Agents from advertising. At that

time, Mr. Blasius was engaged in a marketing service for

inventions, and the success of his business required that he

advertise. He, therefore, continued to advertise his ser-

vices. On February 9, 1961, Mr. Blasius was suspended

from practice before the U.S. Patent Office by reason of his

advertising. (Jn re Blasius, 138 U.S.P.Q. 482 |Com. Pats.

1961}).

In view of the recent opinion of this Court in Bates v.

State Bar of Arizona, 97 S. Ct. 2691 (decided June 27,

1977), it should be held that the regulation passed by the

U.S. Patent Office prohibiting any advertising by

Registered Patent Attorneys or Agents be declared null and

void and be declared entirely ineffective and of no legal

consequence.

Accordingly, the petitioner herein H. Lawrence Blasius,

will be entitled to restoration of his former status as a

Registered Patent Agent. Therefore, said petitioner can

legally still be considered to be a Registered Patent Agent,

as his exclusion to practice before the U.S. Patent Office on

the sole ground of his advertising activities was not proper

or in accord with law.

Since the aforesaid decision of this Court in Bates v.

State Bar of Arizona, supra, came about after the final

determination herein by the District of Columbia Court of

Appeals (Appendix A), the question concerning the revived

satus of the petitioner. H. Lawrence Blasius. as a

Kegtstered Patent Agent was not raised in the Court below.

However now that such advertising has been declared

lawful by this Court. the petitioner, H. Lawrence Blasius,

will undoubtedly be restored as a registered Patent Agent.

Thus, the instant case with regard to the petitioner H.

Lawrence Blasius, will fall squarely within the confines of

the decision of this Court in Sperry v. Florida, 373 U.S. 379

(1963).

The District of Columbia Court of Appeals in its opinion

herein (Appendix A), acknowledged the validity of the

argument now being made:

“If petitioner Blasius were a registered patent

agent/attorney. he would be correct under Sperry.

in saying that the District of Columbia Committee

on Unauthorized Practice has no power to forbid

his activities.”

If this Honorable Court does not see fit to entertain the

instant Writ of Certiorari, then it is respectfully urged that

the entire case be returned or remanded to the District of

Columbia Court of Appeals for further study or review in

light of the recent decision of this Court in Bates v. State

Bar of Arizona, supra.

AN ANALYSIS OF THE CASE OF HULL V.

UNITED STATES, 390 F. 2d 462 INDICATES

THAT THE ACTIVITIES ENGAGED IN BY

THE PETITIONER, AMALGAMATED

DEVELOPMENT CO., INC., t/a

WASHINGTON PATENT OFFICE SEARCH

BUREAU ARE AUTHORIZED AND NOT

CONTRARY TO ANY LAW.

In commenting on 35 U.S.C. 33, the Hull case. supra,

stated that this section does not make registration with the

U.S. Patent Office an essential condition of all gainful

employment in connection with the preparation of the

patent applications. What this section punishes is

misrepresentation as to one’s status as a registered

practitioner, not mere rendition of services by one who does

not pretend to that status.

By virtue of the Hull decision, the Petitioner,

Washington Patent Office Search Bureau has the right to

perform in Washington, D. C. the tasks incident to helping

or assisting others in the preparation and prosecution of

patent applications before the U.S. Patent Office, just so

long as they do not hold themselves out as registered or

admitted to practice in the U.S. Patent Office.

The Hull case, supra, also discusses the Crampton bills,

which never passed in Congress. On pages 464-465 of that

decision, Circuit Judge McGowan states:

‘In 1924 there was introduced in Congress the first

of the so-called Crampton bills, which reappeared

five times thereafter through 1932. As its language

shows, it made it illegal not only to hold oneself out

falsely as registered, but also ‘to habitually air or

assist’ in the preparation of any patent application.

‘The Crampton bills never passed, and one of the

principal attacks made upon them was that they

disabled all non-registered persons from providing

any services in connection with the preparation of a

patent application. When the bill that became the

Lanham Act was first introduced in 1935, it did not

sweep so broadly, as is clear from the testimony in

support of it given by the Commissioner of Patents.

The Lanham bill passed in 1937, without com-

mittee hearings but with a Senate Committee

Report (No. 462, 7Sth Cong. Ist Sess.) that

characterized the bill as ‘not as sweeping as the

familiar Crampton bill often introduced into

Congress heretofore.’ And on the floor of the

Senate. the sponsor of the Lanham Act was at

pains to assure a leading opponent of the Cramp-

ton bills that the new measure fell far short of the

latter's prohibition of all work on patent ap-

plications by non-registered persons.”

And on pages 465-466, Circuit Judge McGowan discusses

the word “qualified’’ as follows:

“In view of the legislative origins of that word, we

believe that Congress has not as yet abandoned its

reluctance. manifest in connection with the

Crampton bills, to make registration with the

Patent Office an essential condition of any and all

gainful employment in connection with the

preparation of patent applications. That is a policy

which Congress might well adopt as necessary for

the protection of the public, but it is not a policy

for us to impose by a construction so at variance

with the Congressional rejection of that policy thus

far.”

From the aforesaid quotations from the Hull case, supra,

it is clear that the Court was well aware of the

Congressional history involved in 35 U.S.C. 33. It is also

important to take into consideration footnote #8, which

appears on page 465 of said decision:

“8. The trial court defined ‘qualified’ as meaning

‘fitted for a given purpose, competent, having

complied with specific requirements of precedent

conditions for an office or employment.’ From this

the trial court drew the conclusion that the words

as used in the statute presented no ambiguity

justifying resort to legislative history. But the

definition which the trial court employed looks in

both directions on the issues before us. One might

conceivably be technically ‘competent’ to prepare a

patent application without having complied with

And, on page 466 of said decision

; : . the Court

the following conclusion: og haeuasthed

“We, therefore, are of the view that what Section

33 punishes is misrepresentation as to one’s status

as a registered practitioner. and no the mere

rendering of service by one who does not pretend to

that status."’

ANY QUESTION DEALING WITH ANY TYP

OF PATENT LAW PRACTICE IS VESTED IN

THE COMMISSIONER OF PATENTS ONLY

It is respectfully contended that the i

Unauthorized Practice of the District of ~ ena sande

Appeals does not have jurisdiction over any question

dealing with or related to the practice of Patent Law. The

— ; ny exclusively reserved to the Commissioner of

Persons admitted to the practice of law in Washi

D C. are not thereby qualified or authorized to aoe in

patent matters before the U.S. Patent Office. The power to

admit persons to practice in patent matters before the U.S.

Patent Office has been reserved by the Constitution of the

United States to Congress. and in turn, Congress has

granted the same only to the Commissioner of Patents.

Since the Washington. D.C. Courts do not have the

power to authorize practice in patent matters before the

U.S. Patent Office. they are therefore unable to exercise

any control over such alleged practice.

The Commissioner of Patents therefore has exclusive

jurisdiction to determine what constitutes unauthorized

practice before the U.S. Patent Office.

Control of practice before the U.S. Patent Office is a

superior right vested by the United States Constitution and

by acts of Congress in the Commissioner of Patents; and

the State Courts, including the Courts of the District of

Columbia, by virtue of Article VI of the United States

Constitution, are bound thereby and precluded from in-

terfering herein.

The right to practice law conferred by a State or the

District of Columbia is a special privilege in the nature of a

franchise. However, practice before the U.S. Patent Office

would not be an invasion of a right vested in an attorney by

virtue of his franchise to practice law, since such franchise

does not authorize practice before the United States Patent

Office.

The cases of Battelle Memorial Institute v. Green et al

and In Re Battelle Memorial Institute (Unauthorized

Practice of Law), both reported together in 29 Ohio

Opinions (2d 388, (1962—Ohio Appeals Court, Tenth

District, Franklin County), deal with the charge that the

Battelle Memorial Institute, although not qualified to

practice law and not admitted to the practice of law in

Ohio, is nevertheless charged with engaging in the practice

of law in Ohio.

The Court on the appeal held that a petition by the

Unauthorized Practice of Law Committee of the State Bar

Association seeking an injunction to prevent a non-profit

corporation organized to conduct scientific research

through the patent section of its legal department, from

performing acts for its industrial sponsors claimed to

constitute the practice of law does not grant jurisdiction to

the Common Pleas Court to interfere with the superior

right to control practice before the U.S. Patent Office,

which Congress has vested in the Commissioner of Patents

under authority of the United States Constitution.

In the Battelle cases, supra, the following clear and

concise argument is set forth by the Court on pages 392 and

393. as follows:

er -e:--

“Normally, the practice of law is controlled

exclusively by the judiciary. The reason why

lawyers are officers of the court, and therefore

subject to the control of the court, is that they are

admitted by order of the court. However, persons

admitted to the practice of law by the Ohio courts

are not thereby qualified or authorized to practice

in patent matters before the U.S. Patent Office.

This power has been reserved by the United States

Constitution to Congress. and, in turn, by

Congress it has been granted only to the Com-

missioner of Patents. This leaves the Ohio courts in

the position of being unable to exercise control over

that which they do not have the power to authorize

in the first instance.”

** *

“Were the courts of each state to control

practice before the United States Patent Office,

thus usurping a right to control that which they

cannot authorize in the first instance, by con-

sidering it to constitute the practice of law within

their state, then the courts of the SO states, by

ignoring the provisions of Article VI of the United

States Constitution, supra, could render the

provisions of Congress in regard to practice before

the Patent Office as enacted under the provisions

of Article 1, Section 8, of the United States

Constitution, supra, a nullity.

“It is our finding that the Commissioner of

Patents, from the standpoint of unauthorized

practice has exclusive right to determine whether

the patent matters, in which Battelle participates

through attorneys or agents employed by Battelle.

are matters which constitute the business of Batelle

due to a direct or primary interest of Battelle

therein, or of Battelle by virtue of rights as an

assignee as provided for under Title 35, Section

152. or Rule 32, supra. and whether Bartelle is

engaged in unauthorized practice before the Patent

Office.

“For the reasons set forth. we conclude that

control of practice before the U.S. Patent Office is

a superior right vested exclusively by the United

States Constitution and by acts of Congress in the

Commissioner of Patents, subject to appeal to the

federal courts, and the state courts, by virtue of

Article VI of the United States Constitution, are

bound thereby and precluded from interfering.”

The Court makes the following summary at page 394 in

the Battelle cases:

“If the practices of Battelle, carried on through

its agents or attorneys, in matters as to which the

right of control has been reserved by the United

States Constitution and Congress in the Com-

missioner of Patents. are to be questioned as being

unauthorized practice in patent matters, the

proceedings must be brought not before the Ohio

courts but in the manner provided for by the acts of

Congress passed under the authority of Section 8.

Article I, of the United States Constitution and

Rules of the Patent Commissioner, authorized by

acts of Congress, as hereinbefore set forth. This

power in the federal government is exclusive and a

superior right granted by the United States

Constitution to the Commissioner of Patents, and

the judges in every state are bound thereby.”

The aforesaid Battelle decision, supra, holds that the

control of patent practice is wholly within the jurisdiction

of the United States Commissioner of Patents, and that the

same is not within the jurisdiction of the Ohio courts.

Similarly. it must be held that control over the practice

—

Se ete

related to patent matters is not within the jurisdiction of

the District of Columbia Courts in our situation.

The case of Silverman v. State Bar of Texas. 405 F. 2d

410 (1968-Sth Cir.) also holds that whey a state law con-

flicts with an area covered by federal statutes enacted

pursuant to constitutional authority, the federal policy may

not be disregarded and its benefits denied bv state law,

even if the state law is enacted in exercise of otherwise

clearly established state power.

On page 412 of that case, Circuit Judge Coleman stated:

“By statute, Congress has delegated to the

United States Commissioner of Patents authority

to ‘prescribe regulations governing the recognition

and conduct of agents, attorneys or other persons

representing applicants or other parties before the

Patent Office ***’ 35 U.S.C.A. 831.” |

And, on page 413 of the Silverman’ case, supra, the

Court succinctly held:

“At the outset, it might be well to note that

federal patent laws, like other laws of the United

States enacted pursuant to constitutional

authority, are part of the supreme law of the land,

and when state law touches on an area of those

federal statutes, federal policy may not be set at

naught and its benefits may not be denied by state

law, even if the state law is enacted in the exercise

of otherwise undoubted state power. The Supreme

Court specifically so held in Sears Roebuck & Co.

v. Stiffel Co., 376 U.S. 225, 84 S. Ct. 784, 11 L.

Ed. 661 (1964), reh. den. 376 U.S. 973, 84 S. Ct.

1131, 12 L. Ed. 87”

The case of Arnesen v. Raymond Lee Organization, Inc..

333 F. Supp. 116 (1971—D. C. Cal.) is further authority

for holding that only the U.S. Patent Office can establish

rules and regulations for practice before it which are

neither subject to nor subordinate to rules of practice of

individual states. That case further held that the U.S.

Patent Office has the power to establish criteria for practice

as well as rules for disbarment and has authority to

regulate all activities before it. At page 118 of the Arnesen

case, supra. the same was clearly enunciated as follows:

“Chapter 3 of Title 35 regulates practice before

the Patent Office. It is beyond question that that

office can establish rules and regulations for

practice before it which are neither subject to nor

subordinate to the rules of practice of the in-

dividual states. Sperry v. Florida, 373 U.S. 379, 83

S. Ct. 1322, 10 L. Ed. 2d. 428 (1963). It follows

that the Patent Office also has the power to

establish criteria for practice as well as rules for

disbarment and that it has plenary authority to

regulate the patent bar.”

See: Enders v. American Patent Search Company, et al.

535 F. 2d 1085 (1976—9th Cir.), cert. denied. 97 S. Ct. 242

(1976).

From the above authorities, it is respectfully contended

that the Committee on Unauthorized Practice of the

District of Columbia Court of Appeals does not have

jurisdiction over amy alleged practice before the U.S.

Patent Office or over any type of practice in patent matters.

WHAT PETITIONER, AMALGAMATED

DEVELOPMENT CO., INC., t/a

WASHINGTON PATENT OFFICE SEARCH

BUREAU IS DOING IN ITS BUSINESS

RELATIONSHIPS WITH PROSPECTIVE

INVENTORS DOES NOT CONSTITUTE THE

PRACTICE OF LAW.

After obtaining a preliminary patentability search, if it is

believed that a product could command a market. the in-

ventor is told that he can proceed with an application for

patent. He is also specifically advised that the Washington

Patent Office Search Bureau is NOT PATENT AT-

TORNEYS, and no where do they specify that the inventor

need have his application serviced by them. In fact. the

Washington Patent Office Search Bureau specifically tells

him that he may use a Patent Attorney or Agent and that

he need not use their organization. They do not state that

they are qualified to perform such patent services or that

they are admitted to practice before the U.S. Patent Office.

In fact. they tell the inventor that he is filing his own ap-

plication, “pro se’’. They merely state that they can and

will assist him for a fee.

If the inventor chooses to use the services of the

Washington Patent Office Search Bureau, he is sent for his

signature a statement in which he states that he is aware of

what he is doing.

As has heretofore been pointed out in this petition, the

Washington, D. C. Courts are without jurisdiction over the

Washington Patent Office Search Bureau in that the U. S.

Patent Office has exclusive power and control over any

question of admission to practice in the U. S. Patent

Office. as well as the exclusive right to discipline those who

practice or attempt to practice in said office. Moreover, the

practice before the U. S. Patent Office is done and

regulated under rules and requirements of that office

alone.

The case of Sperry v. Florida, supra, held that the State

of Florida may not prohibit one who is not a lawyer from

performing within the State tasks which are incident to the

preparation and prosecution of patent applications before

the U. S. Patent Office. In that case, the petitioner, Sperry,

also rendered opinions as to patentability and prepared

various instruments.

Our instant case, with regard to the petitioner,

Washington Patent Office Search Bureau, is distinguished

from the Sperry case, supra, because in our case, the said

petitioner does not practice before the U. S. Patent Office

and merely assists prospective inventors to file “pro se”

applications. However, similar to our instant situation, the

Florida Bar in the Sperry case, supra, instituted

proceedings in the Supreme Court of Florida to enjoin

certain conduct on the ground that it constituted the

unauthorized practice of law. The Supreme Court of

Florida, 140 So. 2d. 587, granted an injunction and the

respondent therein brought certiorari to the United States

Supreme Court. Chief Justice Warren, writing the

unanimous opinion of the Court, held that the State of

Florida could not enjoin a non-lawyer from performing and

prosecuting applications in Florida, notwithstanding that

such activity constituted the practice of law in Florida. This

determination was made in view of the federal statute and

U. S. Patent Office regulation authorizing practice before

them by non-lawyers.

The Sperry case, supra, clearly stands for the proposition

that the law of the state. though enacted in the exercise of

powers not controvened, must yield when incompatible

with federal legislation. That case also holds that the

authority of Congress is no less when the state power which

it displaces would otherwise have been exercised by the

state judiciary rather than the state legislature.

Another relevant case is People v. Miller, 23 A.D. 2d

144, 146, 147 (196S—list Dept.) which dealt with a

proceeding brought by the Attorney General of the State of

New York to enjoin one, Car! Miller, from using the words

‘Patent Attorney”. even though he was only duly admitted

as a “Patent Agent’’. In commenting on Section 270 of the

Penal Law of the State of New York. Mr. Justice Eager, in

speaking for the Court stated:

“The section 270 proscription against the use by

a non-lawyer of the title ‘attorney’ is not general or

all-inclusive. By its express provisions, a violation

of the section depends upon whether or not the

non-lawyer used the title ‘in such manner as to

convey the impression that he is a legal practitioner

of law or in any manner to advertise that he either

alone or together with any other person or persons

has, owns, conducts, or maintains a law office or a

law and collection office of any kind for the

practice of law.’

The defendant by virtue of Federal statute and

regulation. has the right to perform within the

State the tasks incident to the preparation and

prosecution of patent applications before the

United States Patent Office and to use the

designation ‘patent attorney’ in this connection.

The State law may not be construed or applied to

interfere with such Federal right. (See Sperry v.

Florida, 373 U. S. 379, supra.)”

As heretofore noted, the petitioner, Washington Patent

Office Search Bureau, at no time files any document with

the U.S. Patent Office. It is always signed and filed by the

inventor, who is acting “pro se’’ or as his own attorney of

record. Neither the Washington Patent Office Search

Bureau, nor any of its employees. appear or take any action

in respect to such matters in any of the courts of the United

tes or of the several states, or act on behalf of the in-

ventor, before any government body.

All that the petitioner, Washington Patent Office Search

Bureau, does is to assist in the preparation of the technical

drawings and application from the material sent or sub-

mitted by the inventor. Whatever is done by the petitioner.

Washington Patent Office Search Bureau, is sent to the

inventor for his approval. It is the inventor's application

and he must approve it before he files it. The entire services

performed by the petitioner, Washington Patent Office

Search Bureau, are of a technical nature usually done by a

draftsman or engineer in the office of a registered Patent

Attorney or Agent. It cannot possibly be considered to be a

legal document.

PREPARATION OF PATENT APPLICATIONS

OR THE HOLDING OUT OF BEING ABLE OR

QUALIFIED TO PREPARE SUCH AP-

PLICATIONS IS NOT A VIOLATION OF

SECTION 33 AND DOES NOT CONSTITUTE

THE PRACTICE OF LAW.

Congress did not say that if a person is unregistered, that

person may not perform patent services. It said that if a

person is not registered, he may not represent to others that

he is registered or indicate that he has official approval of

any sort.

This distinction is a clear one, found in other certifying

schemes. For example, in the District of Columbia, any

person is permitted to act as an accountant, but only a

person certified as a public accountant is permitted to hold

himself out as a certified public accountant. District of

Columbia Code, Title 2. Section 2-901, 902, 909 (1961 ed.).

See also: District of Columbia Code. Title 2, Section 2-

1101, 1102, 1114 (1961 ed.).

It should be noted that the Government itself uses non-

registered personnel to prepare and prosecute patent

applications in the U. S. Patent Office. For example, in a

bulletin put out by the United States Civil Service Com-

mission announcing an examination for Patent Adviser, a

description of the work performed by such Patent Advisers,

who are not necessarily registered or admitted to practice

before the Patent Office, is given on page 2 of said bulletin

as follows:

“DESCRIPTION OF WORK

Patent Advisers perform professional work

related to inventions and patents including, for

example, the study and analysis of descriptions,

drawings. and models of inventions and the in-

vestigation of earlier patents, inventions and

technical literature to determine the advisability of

filing patent applications thereon and to ascertain

the scope of such applications; the preparation of

patent applications and their prosecution in the U.

S. Patent Office. including preparing amend-

ments, affidavits, and other responsive documents,

filing appeals to the Patent Office Board of Ap-

peals, and assisting in the conduct of interference

proceedings; the investigation in the Patent Office

of the prior knowledge in a particular field, as

evidenced by earlier inventions, patents and

technical literature, for use by Signal Corps

scientists and engineers in carrying out their

assigned research and development projects more

expeditiously, economically and effectively; the

investigation of claims of patent infringement

made against the U. S. Government; and con-

sultation with civilian and military officials on

patent and related matters."’ (Emphasis added).

Announcement No. 2-21-3 ( 1960), issued: March

23, 1960. Open Continuously, X-118 Modified.

Army—Fort Monmouth. N. J. MON 863-60.

In still another bulletin put out by the United States Civil

Service Commission, also announcing an examination for

the position of Patent Adviser. which position does not

require one to be registered or admitted to practice before

the Patent Office, the following description of duties for

said position appears on page I of said bulletin:

“DESCRIPTION OF DUTIES: Patent advisers

perform professional Scientific or engineering work

related to patents. Such work includes the analysis

of inventions, the determination of patentability,

and the preparation and prosecution of ap-

plications for patents. The work also involves

making validity and infringement investigations,

prosecuting appeals in the U.S. Patent Office, and

serving in an advisory capacity to administrative

and legal officers on patent matters. The work

requires the knowledge of one of the fields outlined

above, and of Patent Office procedures, patent

law, and applicable precedents.’’ (Emphasis

added). Announcement No. AT 35-] (65) X-118

GS-1221. Issued 1/6/65.

Thus, it is obvious that many governmental employees

who prepare patent applications are not registered to

practice before the U.S . Patent Office. In other words, the

Government is doing even more than the Petitioner.

Amalgamated Development Co., Inc. t/a Washington

Patent Office Search Bureau. herein is doing. The

Government is doing some of the very same acts which the

said Petitioner is here accused of doing. In fact, the

Government via the United States Civil Service Com-

mission is advertising for personnel to prepare patent

applications even though such personnel is not registered

or admitted to practice before the U. S. Patent Office.

As clearly appears herein, the Government has its —

creat tanmatiaan entty dip. W to Gnesi tel ©

ications every day. e t i

sarge roe law, oon certainly the said Petitioner is

iolating any.

ras fon in this case have not been Te us

assisting inventors by any law or statute. The U. ; ~~

Office itself is well aware of and recognizes the fac

persons like the Petitioners herein will continue to ——

their ability to assist inventors. The U. S. Patent Office “

never referred to such conduct as illegal or in “KC

the law. In fact, in a bulletin put out by the U. S. Pa en

Office entitled ‘‘General Information —— oe

Patents,”’ June 1960 (Reprint of November — in

section headed “Attorneys and Agents”, oe following

paragraph is contained on page 11 thereof:

“Some patent attorneys and agents ened

- advertised their services in magazines, particular /

popular magazines of a mechanical or technica

nature. and in telephone books. By regulation,

registered patent attorneys and agents <ggho

forbidden to advertise for patent business. Some

individuals and organizations that are Eee

registered advertise their services in the - :

patent searching and patent promotion.

individuals and organizations cannot represen

inventors before the Patent Office. They a _

subject to Patent Office discipline and the fice

cannot assist inventors in dealing with them.

From a reading of the above, it becomes clear that =

U.S . Patent Office has never been able to sng

Congress that the non-registered attorney an =

technician should not be allowed to assist ge eine

only laws in this respect that the Patent ye = a

able to have enacted are Sections Ila and 33 of Ti :

U.S.C.

Accordingly, it must be concluded that the general

attorney and the technician, as well as the Petitioners in

this case, have the legal right to assist inventors in the

preparation of applications for patent. Therefore. no crime

or unlawful practice of law has been committed by the

Petitioners herein.

CONCLUSION

For the above stated reasons, it is respectfully submitted

that the petition for writ of certiorari be granted.

Respectfully submitted.

HARRY GROSSMAN

Attorney for Petitioner

515 Madison Avenue

New York, N.Y. 10022

Tel.: (212) 752-4220

DISTRICT OF COLUMBIA COURT OF APPEALS

No. 10907

IN RE:

AMALGAMATED DEVELOPMENT Co., INC.,

t/a Washington Patent Office Research

Bureau and H. LAWRENCE BLASIUS, PETITIONERS.

Petition for Review of an Order of

Judge John W. Kern, III,

Associate Judge,

D.C. Court of Appeals

(Submitted March 15, 1977 Decided June 20,1977)

Harry Grossman for petitioners.

Edgar T. Bellinger, Chairman, Committee on Unauthor-

ized Practice of Law. :

Before KELLY, GALLAGHER and MACK, Associate

Judges.

KELLY, Associate Judge: H. Lawrence Blasius and

Amalgamated Development Co., Inc., here seek review of

an order enjoining them from practicing law in the

District of Columbia after a hearing in which the follow-

ing facts were found.’

1 The present proceeding began with a petition to this court

filed by the Committee on Unauthorized Practice under D.C.

App. R. 46 II(b) (8). This committee was established by Rule

; 4

Petitioner Blasius is the principal owner and operator

of Amalgamated Development Co., Inc., trading as the

Washington Patent Office Search Bureau, a District of

Columbia corporation.’ He is not, nor does he hold himself

out to be, a member of the District of Columbia bar or

licensed to practice before the United States Patent Office.

Petitioner places advertisements in such publication as

Popular Science Magazine offering to conduct patent-

ability searches for and to advise inventors on patent

matters. When a response to an advertisement is re-

ceived, petitioner initially writes the inventor describing

the procedure for conducting a patentability search, and

advising the inventor to have the application for such a

search witnessed by a friend to prove that he is the “first

and true inventor.” The letter warns an inventor not to

attempt to market his ideas until he has an application

pending in the Patent Office.

When the inventor sends in a “disclosure” of his

invention, petitioner conducts a patentability search in

the Patent Office. Copies of the prior art revealed by the

search are sent to the inventor and an opinion on patent-

ability is offered. If petitioner concludes that the idea is

46 Il(a) by the court, which was promulgated pursuant to

D.C. Code 1973, §§ 11-2501, -2504. The chief judge of the

court issued two orders: one designating an associate appel-

late judge to act as a hearing judge and the second

respondents to show cause why they should not be adjudged

in contempt of court and/or permanently enjoined from the

challenged activities. After making the findings enumerated

above, an injunction issued.

* For the sake of clarity, we refer to petitioners in the

singular.

* Whether an invention is patentable depends upon whether

it meets the statutory criteria set forth in 35 U.S.C. §§ 101-

not patentable, the client is so advised and it is recom-

mended that no more money be spent developing the in-

ventor’s idea. If in the petitioner’s opinion the idea ap-

pears patentable, it is recommended that a patent be ap-

plied for and assistance is offered the client in preparing

the application. If the inventor agrees to enlist the serv-

ices of petitioner, the application, oath, and formal draw-

ings are prepared and sent to the inventor with instruc-

tions to file them in the Patent Office pro se together with

the $65.00 filing fee. The Patent Office communicates

directly with the inventor in all further correspondence.

If the application is rejected, as it usually is at least

once, petitioner assists the client in amending the speci-

fication and claim to overcome Patent Office objections.

When and if the application is finally rejected, petitioner

recommends that the client file another amendment rather

than an appeal and again offers to assist in preparing

the amendment. Petitioner is paid for his services.

It is argued in this petition for review that jurisdic-

tion over any question related to the practice of patent

law is vested exclusively in the Commissioner of Patents

and that, in any event, the enjoined activities do not con-

stitute the practice of law.

Any person may deal directly with the Patent Office in

his own behalf in prosecuting an application for letters

patent. 37 C.F.R. § 1.31(1976).* To repres.ut another be-

103 (1970 & Supp. V 1975), viz., among other things, wheth-

er it is novel, useful, and unobvious.

*The Rules of Practice, which are regulations promulgated

by the Commissioner of Patents pursuant to statutory au-

fore the Commissioner of Patents, however, the require-

ments set out in the regulations established by the Com-

missioner pursuant to 35 U.S.C. §31 (Supp. V 1975),

t.e., 37 C.F.R. §§ 1.341, -.842 (1976), must be met. Two

categories of persons are licensed to practice before the

Patent Office—patent attorneys (§ 1.341(a)) and patent

agents ( § 1.341(b)). The only difference between the two

is that patent agents are not also attorneys. Both must

otherwise meet the same requirements, and once registered

have the same scope of authority.’ The fact that one is

an attorney does not of itself qualify one to practice

patent law.

As we shall discuss, infra, much of the activity en-

gaged in by a patent agent/attorney (and by petitioner)

concerns the practice of law. Sperry v. State of Florida,

373 U.S. 379 (1963) ; In re Cowgill, 37 Ohio App. 2d 121,

307 N.E.2d 919 (1973). Thus, many nonlawyer/patent

agents are actually practicing law in the state where they

are situated. Such practice is unauthorized by state bar

associations which have in the past attempted to curtail

it, but the Supreme Court has resolved the conflict be-

tween the federal license to practice before the Patent

Office and state regulations limiting the practice of law

to attorneys in Sperry v. State of Florida, supra. The

Court, in a unanimous opinion, based its decision on the

Supremacy Clause, U.S. Const. art. 6, stating:

The statute [35 U.S.C. §31 (1952)] thus ex-

pressly permits the Commissioner to authorize

thority, have the force and effect of law. Application of Rubin-

field, 270 F.2d 391, 123 USPQ 210 (1959 denied

U.S. 903 (1960). oe ses

*In fact, before 1938 all registrants were registered as at-

torneys whether they were a tl

51506 Hee Ge Orem Ore

practice before the Patent Office by nonlawyers,

and the Commissioner has explicitly granted such

authority. If the authorization is unqualified,

then, by virtue of the Supremacy Clause, Florida

may not deny to those failing to meet its own

qualifications the right to perform the functions

within the scope of the federal authority. A

State may not enforce licensing requirements

which, though valid in the absence of federal reg-

ulation, give “the State’s licensing board a vir-

tual power of review over the federal determin-

ation” that a person or agency is qualified and

entitled to perform certain functions, or which

impose upon the performance of activity sanc-

tioned by federal license additional conditions

not contemplated by Congress. “No State law

can hinder or obstruct the free use of a license

granted under an act of Congress.” ... [/d. at

385; (footnotes omitted). |

Thus, the State of Florida could not prevent a nonat-

torney who was a licensed patent agent from conducting

his practice before the Patent Office in Florida. The ob-

vious corollary of this principle is that if the federal gov-

ernment has not granted a license in this area, a state is

free to enforce its own licensing regulations.°

Our case is identical with Jn re Cowgill, supra, where

the practitioner was neither registered to practice before

the Patent Office nor a member of the bar. The Ohio

Court of Appeals held that the state was free to proceed

*The Supremacy Clause protects only those activities of

registrants “necessary for the acct .aplishment of the federal

objectives.” Sperry v. State of Florida, supra at 402.

against him for the unauthorized practice of law,’

stating:

There is no federal purpose to protect those

whom it [the federal government] does not li-

cense from further regulation by the state. The

objective is to protect the right to practice before

the U.S. Patent Office from restraint by the

states. [/d. at 124, 307 N.E.2d at 922.]

If petitioner Blasius were a stered

attorney, he would be correct, a a nage io

that the District of Columbia Committee on Unauthor-

ized Practice has no power to forbid his activities. But

he is not so registered,* as he freely concedes; therefore

Sperry does not apply. And when a petitioner is not

registered in the Patent Office a state does not interfere

with any federal purpose in subjecting the practitioner

to its own licensing regulations and is free to do so.

Petitioner argues, however, that because only the Com-

missioner has the power to authorize practice before the

Patent Office only the Commissioner can determine what

"aaa unauthorized practice and take action against

it.

‘It is well settled that the state has a valid i

nterest

preventing nonlawyers from engaging in the practice of 4

an v. State Bar of California, 366 U.S. 36, 40-41

* Apparently Blasius became a Registered Patent A i

1950. Unfortunately he persisted in soliciting business be

advertising, even after a regulation was passed in 1959 pro-

hibiting advertising by registered patent agents /attorneys

(37 C.F.R. § 1.345 (1976)) As a consequence, he was excluded

from practice before the Patent Office in 1961, In re Blasius

138 USPQ 482 (Comr. Pats. 1961), and has since that time

been engaged in the business described above. United States

v. Blasius, 397 F.2d 208, 204 (2d Cir.), cert. granted, 393

U.S. 950 (1968), cert. dismissed, 398 U.S. 1008 (1969)

It is undisputed that the Commissioner has jurisdiction

over persons, registered or not, who hold themselves out

as qualified to prepare or prosecute patent applications.

Proceedings to suspend, disbar, or exclude a registrant

from practice are before the Commissioner. 37 C.F.R.

£ 1.848 (1976). The Commissioner can also criminally

prosecute nonregistrants under 35 U.S.C. § 33 (Supp. V

1975), which provides:

Whoever, not being recognized to practice be-

fore the Patent and Trademark Office, holds

himself out or permits himself to be held out as

so recognized, or as being qualified to prepare

or prosecute applications for patent, shall be

fined not more than $1,000 for each offense.

Nevertheless, there is no authority for petitioner’s ar-

gument that because the Commissioner can punish un-

authorized practice before the Patent Office, a state is

precluded from concurrently preventing the unauthorized

practice of law. No case cited by petitioner is on point.

In Battelle Memorial Institute v. Green, 93 Ohio Law

Abs. 516, 29 Ohio Op. 2d 388 (1962), the practitioner

was a registered patent agent, whereas petitioner is not.

Silverman v. State Bar of Texas, 405 F.2d 410 (5th Cir.

1968), holds that a state bar regulation prohibiting a

registered patent attorney from being listed both as a

general attorney and a patent attorney unduly inter-

fered with the Patent Office’s interest in having its

licensees make their specialty known and was thus in-

valid under Sperry. Both Enders v. American Patent

Search Company,® 535 F.2d 1085 (9th Cir.), cert. denied,

—_— US. ——, 97 S. Ct. 242 (1976), and Arnesen v.

Raymond Lee Organization, Inc., 333 F. Supp. 116 (C.D.

*One of the defendants in Enders was Harold Lawrence

Blasius.

Ca]. 1971), were prosecutions under 35 U.S.C. 8 38 and

there was no discussion in either opinion of simultaneous

proceedings under state law.’

The subject was discussed in In re Cowgill, supra at

124, 307 N.E.2d at 922, however, where the court said:

Some claim is made that the federal government

has preempted the regulation of those not ad-

mitted to practice before the Patent Office by

the passage of Section 38, Title 35 U.S. Code,

which makes it a criminal offense for a person

not so registered to hold himself out, or permits

himself to be held out as so recognized, or as

being qualified to prepare or prosecute applica-

tions for patent. However, the action of a state

in forbidding the acts here injoined neither pre-

vents a federal prosecution under this section,

nor impedes the federal government from acting

against those who, besides engaging in the prac-

tice of law, violates this statute. The action of

the state is at the most parallel to the federal

action and not in opposition to it. { Emphasis

in original. ]

We are thus of the opinion that regardless of any ac-

tion taken by the Commissioner of Patents under § 33,

this court has jurisdiction to review and enjoin peti-

tioner’s activities.

II.

Petitioner also argues, citing Hull v. United States,

129 U.S.App.D.C. 47, 390 F.2d 462 (1968), that the

challenged activities do not constitute the practice of

'° The two cases are significant, however, in that they es-

tablish a private right of action under 35 U.S.C. § 33 (Supp.

V 1975), a fact which further undermines petitioner’s theory

of exclusive jurisdiction in the Commissioner of Patents.

law. As the hearing judge noted, however, the Hull case

is irrelevant to the proceeding before the court.

In Hull, there was a criminal prosecution under 35

U.S.C. § 33, and while it was not stated in the opinion

whether or not defendant Hull was a member cf the bar,

she was not registered in the Patent Office. The issue

in the case was the interpretation of the word “quali-

fied” in § 33; i.e., whether it means (a) possessing par-

ticular skill or know-how in performing certain fune-

tions or tasks or (b) having formal legal authority to

do those tasks, i.e., registered to practice before the Pat-

ent Office. The court decided that it meant the latter,

whether such holding out is explicit or implied.” It said

that § 33 was intended to punish “misrepresentation as

to one’s status as a registered practitioner, and not the

mere rendering of service by one who does not pretend

to that status.” Jd. at 51, 390 F.2d at 466. The section

was not meant to prevent any and all “gainful employ-

ment in connection with the preparation of patent appli-

cations.” Id.

Petitioner appears to argue that his activities are not

proscribed by § 33, under Hull, because he does not hold

himself out to be registered to practice before the Patent

Office and therefore is not engaged in the practice of

law. Even assuming that petitioner has not violated § 33,

we fail to see how this fact could lead to the conclusion

that he is not practicing law. Hull says nothing what-

ever about whether acts found to violate § 33 are also

considered the practice of law, there being no discussion

1 The court paraphrased § 33 as follows:

‘ , tent

Whenever anyone who is not registered with the Pa

Office says he is, or, without saying so directly, employs

methods which give the impression that he is, he may be

criminally punished. [/d. at 51, 390 F.2d at 466.)

10a

at all concerning the relationship between the practice

of law and practice before the Patent Office. Thus peti-

tioner cannot seriously argue that Hull in any way

supports the contention that he is not practicing law.”

On the contrary, it has been held that activities such

as petitioner’s constitute the practice of law, e.g., advis-

ing inventors as to patentability under 35 U.S.C. §§ 101-

103 (1970 & Supp. V 1975), based on the results of the

search; preparing the patent application including the

specification claims, 35 U.S.C. §112 (Supp. V 1975),

and official drawings, 35 U.S.C. $113 (Supp. V 1976) ;

advising of what action to take after rejection, including

after final rejection; and preparing and filing amend-

ments. Sperry v. State of Florida, supra at 383; In re

Cowgill, supra at 122, 307 N.E.2d at 920. Because peti-

tioner does not sign any correspondence with the Patent

Office and disclaims that he and his organization are

patent attorneys does not remove these efforts from the

realm of the practice of law.

** Furthermore, the validity of the Hull decision is question-

able. In United States v. Blasius, supra, the Second Circuit

rejected the Hull interpretation of § 33. Instead it held that

‘qualified’ “carries its primary and more ordinary meaning

of possessing particular skill or ‘know-how’ in performing

certain tasks or functions... .” Jd. at 206. This seems more

consistent with the legislative intent te protect inventors by

setting a high standard of professional competence for the

patent bar (which includes patent agents). Arnesen v. Ray-

mond Lee Organization, Inc., supra at 118.

Because of the conflict the Supreme Court granted certio-

rari in the Blasius case to decide whether (1) the Blasius

court erred in holding that, contrary to Hull, the language in

§ 33 was clear and not ambiguous; and (2) whether the word

‘qualified’ means skill, or formal legal authority from the

Patent Office to engage in patent practice. Certiorari was

dismissed voluntarily by the parties under Rule 60 of the

Supreme Court Rules.

We are of the opinion that this court and its Com-

mittee on Unauthorized Practice have jurisdiction over

petitioner’s conduct notwithstanding the Commissioner

of Patent’s concurrent jurisdiction and, additionally,

that the findings of fact of the hearing judge are amply

supported by the record and his conclusions of law are

correct. Accordingly, the order enjoining petitioners

from continuing the unauthorized practice of law is

Affirmed.

12a

APPENDIX “B”

ORDER DATED MAY 14, 1976

DISTRICT OF COLUMBIA COURT OF APPEALS

Miscellaneous No. 17-75

In re:

AMALGAMATED DEVELOPMENT CO.. INC.

t/a WASHINGTON PATENT OFFICE SEARCH

BUREAU, and H. LAWRENCE BLASIUS.

Respondents.

ORDER

This matter comes before this hearing judge for con-

sideration on the petition of the Committee on the

Unauthorized Practice of Law filed pursuant to Rule 46

I1(b)(8) of the General Rules of the District of Columbia

Court of Appeals. On December 5, 1975, the District of

Columbia Court of Appeals issued two orders; one order

designated a hearing judge, and the second order directed

respondents to show cause why they should not be ad-

judged * -riminal contempt of court and/or permanently

enjoir .d, and further set the date of oral argument. Said

orders were premised on the petitioner's allegations that

respondents were engaged in the unauthorized practice of

law in connection with the preparation and filing of patent

applications with the United States Patent Office and the

rendering of legal advice as to the patentability of clients’

inventions and procedures in seeking patents.

After hearing and considering the testimony and other

evidence adduced in open court, and the legal arguments

asserted, the hearing judge enters the following findings of

facts and conclusions of law.

13a

FINDINGS OF FACT

1. Respondent Amalgamated Development Co., Inc.,

trading as the Washington Patent Office Search Bureau,

|hereinafter Bureau] is a District of Columbia corporation

engaged in business in the District of Columbia, and

maintains an office at 734 1Sth Street, N.W., Washington,

D.C. (Answer.) Respondent H. Lawrence Blasius is the

principal owner and operator of the Bureau. (T-. 13, 56).

Respondent Blasius works regularly in the office in the

District of Columbia. (Tr. 29-30).

2. Neither respondent is a member of the District of

Columbia Bar, and neither respondent has been admitted

to the practice of law in the District of Columbia either by

the United States District Court for the District of

Columbia prior to April 1, 1972, or by the District of

Columbia Court of Appeals. (Answer.)

3. Neither respondent is currently licensed or admitted to

practice by the United States Patent Office in accordance

with 35 U.S.C. §32 and 37 C.F.R. § 1.341. (Petitioner's

Ex. No. 1.) However, respondent Blasius was for a period

of ten years a registered patent agent authorized to practice

before the Patent Office. (Tr. 80.) His registration was

revoked. See In re Blasius, 128 U.S.P.Q. 482 (1961).

4. Neither respondent holds itself out as being admitted

to the practice of law in the District of Columbia or as

being registered or admitted to practice before the United

States Patent Office. (Petitioner’s Ex. No. 10).

5. Respondents place advertisements in Popular Science

Magazine and other magazines offering to conduct patent

searches to determine if an invention or idea appears to be

patentable. These advertisements also offer a free ‘‘In-

vention Protection Form’ and patent information.

(Petitioner's Ex. No. 2 at p. 162; Respondent’s Ex. No. | at

p. 179.)

14a

6. As a result of these advertisements. prospective in-

ventors write to respondents for information about how to

proceed with the handling and promotion of their in-

ventions or ideas. (Tr. 16). Respondents then send back

initial information to the inventors, advising them of the

steps necessary to have a patentability search conducted on

the invention to determine the novelty and potential

patentability of the invention. (Tr. 17; Petitioner's Ex. No.

3).

7. The initial letter sent by respondents in response to

inquiries advises inventors that they may have their ap-

plication for a patent search witnessed by a friend, so that

the witnessed form ‘‘can be used as legal evidence at any

time in the future to prove that you are the first and true

inventor.’ This letter also cautions inventors that at this

Stage “‘no attempt should be made to sell your invention,

since under our present laws you have nothing to sell (no

legal property), until an application for patent has actually

been filed in the Patent Office and you have PATENT

PENDING." (Petitioner's Ex. No. 3).

8. Pursuant to this initial letter, inventors send to

respondents “‘disclosures’”’ on the enclosed forms plus

payment for a patent search. These disclosures describe

how the invention works and include rough drawings of the

invention itself, allowing a search to be made to determine

if the invention appears to be patentable. (Tr. 17-18, 84.)

9. Respondents conduct preliminary patentability

searches for prospective inventors who request them. These’

searches are conducted by employees and independent

contractors hired by respondents who investigate similar

existing patents on file in the United States Patent Office to

determine whether other patents anticipate the idea that

the inventor wants to patent. (Tr. 15-16, 89). The patent

searcher also finds the patents which appear to him to be

the closest to the invention or idea submitted by the

prospective inventor. (Tr. 21, 89).

10. Upon conclusion of the patentability search.

respondents send their clients a report including copies of

patents already on file with the United States Patent Office

which are most like the clients’ inventions or ideas.

(Petitioner’s Ex. No. 5.) In this report, respondents make a

statement as to whether they believe the invention or idea

appears to be patentable. (Tr. 21).

11. The opinion as to whether an invention or idea is

patentable is made by respondent Blasius after considering

the results of the patent search. (Tr. 20-21, 76, 91). The

decision is based on a comparison of the structural and

other features of the invention or idea with the features of

other existing and patented inventions, (Tr. 64) as well as

on a judgment whether, under the statutory criteria,

sufficient novelty is shown in the invention or idea to

warrant a patent. (Tr. 15-16).

12. In the event respondents conclude, based on the

preliminary patent search, that the invention or idea does

not appear to be sufficiently new and different from

existing patents, respondents inform the prospective in-

ventor of this adverse finding and suggest that the inventor

not spend any more money attempting to develop this

invention or idea. (Petitioner’s Ex. No. 13, 14).

13. In the event that respondents conclude that the

invention or idea appears to be patentable, respondents

urge the prospective inventor to proceed with the

preparation and filing of a patent application in order to

establish a legal right to the invention or idea. Respondents

recommend that the inventor proceed as a pro se applicant.

and offer to assist the inventor in so doing by preparing the

application, specifications, claims, and official patent

drawings required by the United States Patent Office.

(Petitioner’s Ex. No. 5) Respondents advise these potential

applicants that it is not necessary to employ the services of

a patent attorney. (Tr. 25)

14. Respondents inform potential applicants that their

16a

rights if the invention is patented are limited to the United

States and its territories only, and that the publication of a

United States patent bars subsequent patenting in Canada.

Respondents offer to file the inventor's application in

Canada in order to protect the invention in Canada.

(Petitioner's Ex. No. 8)

1S. When an inventor decides to employ the services of

respondents, he pays a retainer fee and returns to

respondents the copies of the patents located during the

patent search. (Tr. 22). Respondents then send the

material to technical employees in New York who prepare

and photocopy drawings of the invention for the inventor's

approval. (Tr. 22-23). The patent application is prepared

by respondents, and it includes an abstract of the

specifications of the invention. (Tr. 23)

16. Respondents forward the completed application

form and drawings to the inventor, along with an oath. a

petition ready for signature, and instructions on how to file

as a pro se applicant by mailing the materials directly to the

Commissioner of Patents with the $65 filing fee. (Tr. 23;

Petitioner’s Ex. No. 8). The United States Patent Office

yeaa directly with the pro se applicant. (Tr.

-26)

17. In many cases the patent application is rejected the

first time it is submitted. (Tr. 25) Many of respondents’

clients then contact respondents to ask what the next step

should be. Respondents advise them that an amendment to

the application must be prepared, redefining the scope of

the invention and rewording and narrowing the claims

made in order to overcome the objections cited by the

Patent Office. (Tr. 27)

18. Respondents advise their clients as to the procedure

for filing amendments and offer their services in preparing

them. (Tr. 27) Respondents also inform the applicants that

if no action is taken within three months, the application

becomes abandoned (Tr. 27-28).

172

19. Respondents use the same employees in New York

who prepare the original drawings to prepare amendments

to rejected patent applications. (Tr. 28-29). Respondents

mail the revised documents to their clients. instructing

them to sign them and forward a copy to the Commissioner

of Patents. (Tr. 29)

20. In the event a client receives a final rejection from the

Patent Office after the amended application is filed,

respondents advise their clients that they can appeal the

final rejection to the Board of Appeals in the Patent Office

or that they can file another amendment. Respondents

recommend that the applicants file another amendment

rather than appeal. and respondents offer to prepare this

second amendment. (Tr. 29; Petitioner's Ex. No. 11).

21. The majority of correspondence between respondents

and their clients is by way of form letters prepared by

respondent Blasius. (Tr. 30, 57)

22. Respondents are paid for their services (Petitioner's

Ex. No. 3. S, 8, 11).

CONCLUSIONS OF LAW

1. The District of Cotumbia Court of Appeals has

jurisdiction to prevent and punish any unauthorized

practice of law occurring within the District of Columbia

that is not otherwise authorized or allowed by federal

legislation. See Sperry v. Florida, 373 U.S. 379. 383-85.

402 (1963). This jurisdiction is derived from a statutory

grant of power to the court to make rules regulating the

qualifications of and disciplining members of the District

of Columbia Bar. D. C. Code 1973, §§11-2501 to -2504,

and from the inherent power of the court to “regulate and

contro! the practice of law and to protect the public and the

administration of justice by forbidding the unwarranted

intrusion of unauthorized and unskilled persons into the

practice of law.” J.H. Marshall & Associates. Inc. v.

Burleson, D.C. App., 313 A. 2d 687. 692 (1973) (Footnote

omitted).

2. Rule 46 II is a valid implementation of the power of

the District of Columbia Court of Appeals to regulate the

practice of law in the District of Columbia. Rule 46 II(b)

prohibits any person from regularly engaging in the

practice of law in the District of Columbia unless he is an

enrolled active member of the Bar. The practice of law

includes. but is not limited to:

|Ajppearing for a person other than himself as

attorney in any court. or prepating deeds, mor-

(gages. contracts, assignments, discharges, leases.

trust instruments or any other instruments af-

fecting real or personal property or any interest

therein, or preparing wills, codicils, or any other

instruments affecting the disposition of property or

decedents’ estates, or preparing pleadings of any

kind in any action brought before any court, or

preparing or expressing formal opinions or con-

sulting with respect to any of the foregoing or on

any other matters of law. (Rule 46 II (b)(3) ).

3. The unauthorized practice of law constitutes a con-

tempt of court and may be punished by fine or im-

prisonment for contempt after appropriate proceedings.

Unauthorized practice also may be enjoined. See D.C.

App. R. 46 II(b)(8).

4. Certain activities engaged in by respondents. viz.: (1)

giving advice at various stages of the patenting process as to

inventors’ rights in their inventions under the law; (2)

informing inventors of the procedure for patenting in-

ventions and advising inventors as to subsequent steps to

take if the patent application is rejected; (3) considering

and rendering opinions as to the patentability of inventions

within the statutory criteria; (4) advising clients whether or

not to proceed with a patent application in an attempt to

19a

protect the invention; (S) preparing and drafting patent

applications ready for signature. including drawings.

claims and specifications; (6) advising applicants of the

steps to take to file the application with the United States

Patent Office and of the procedures involved, (7)

recommending that applicants file amendments after

rejection of their initial patent applications; (8) preparing

amendments to rejected patent applications; (9) hiring

employees and independent contractors to prepare patent

applications and amendments; (10) informing clients of

their right to appeal final rejections by the United States

Patent Office but recommending instead that they file

another amendment; and (11) charging and collecting fees

for legal services rendered by respondents and respondents’

employees. constitute the unauthorized practice of law in

the District of Columbia.

5. The decision of the Supreme Court in Sperry v.

Florida, 373 U.S. 379 (1963), does not prevent the District

of Columbia Court of Appeals from prohibiting respon-

dents from engaging in “this circumscribed form of patent

practice.’ Jd at 383. In Sperry. the Court held that the

State of Florida could not prohibit the petitioner's activity

because those activities were expressly permitted by a

federal statute. 35 U.S.C. §31, which authorizes nonlawyer

patent agents to practice before the Patent Office. Since

respondents here are not admitted to practice before the

Patent Office as patent agents. denying to respondents,

who fail to meet the qualifications specified in the rules of

the District of Columbia Court of Appeals. the right to

perform certain patent-related functions does not ‘hinder

or obstruct the free use of a license granted under an act of

Congress.” id. at 385, and hence is valid.

As the Supreme Court commented in Sperry:

We do not question the determination that under

Florida law the preparation and prosecution of

patent applications for others constitutes the

20a

% %

practice of laws.... Nor do we doubt that

Florida has a substantial interest in regulating the

practice of law within the State and that, in the

absence of federal legislation, it could validly

prohibit nonlawyers from engaging in this cir-

cumscribed form of patent practice. (Footnote

omitted).

6. The decision of the Court of Appeals for the District of

Columbia Circuit in Hull v. United States, 1229 U.S. App.

D.C. 47, 390 F. 2d 462 (1968), does not prevent the District

of Columbia Court of Appeals from prohibiting respon-

dents from or punishing respondents for unauthorized

practice of law. The defendant in Hull was prosecuted for a

criminal violation of 35 U.S.C. §33, which provides:

Whoever, not being recognized to practice before

the Patent Office, holds himself out or permits

himself to be held out as so recognized, or as being

qualified to prepare or prosecute applications for

patent, shall be fined not more than $1,000 for

each offense.

Since the respondents here are not accused of violating this

Statute, the limiting interpretation made by the Circuit

Court is irrelevant to this proceeding. Respondents may be

correct in asserting that their conduct has been held lawful

under 35 U.S.C. §33 by the decision in Hull, but their

conduct is nonetheless unauthorized practice of law, and

consequently is subject to sanction by the District of

Columbia Court of Appeals. The fact that respondents do

not hold themselves out as attorneys or as registered patent

agents authorized to practice before the United States

Patent Office does not mean that respondents are not

engaged in the unauthorized practice of law in the District

of Columbia.

In consideration of the above findings of fact and

conclusions of law, the hearing judge, this /4th day of May,

Zia

1976. orders that respondents be and hereby arc enjoined

from:

(1) giving legal advice as to inventors’ rights in their

inventions:

(2) advising inventors and potential patent applicants as

to rights and procedures in filing applications for patents

and in patenting inventions;

(3) rendering legal opinions as to patentability of in-

ventions;

(4) recommending that clients proceed or not proceed

with patent applications. file amendments t: rejected

initial applications. and file additional amendments rather

than appeal final rejections;

(S) preparing and drafting patent applications ready for

applicants’ signatures. preparing amendments to rejected

patent applications, and employing or hiring others to do

these tasks:

(6) otherwise engaging in the practice of law.

s/John W. Kern, III

JOHN W. KERN, Ill

Associate Judge

D.C. Court of Appeals

May 14, 1976

22a

APPENDIX “C”

ORDER TO SHOW CAUSE

DISTRICT OF COLUMBIA COURT OF APPEALS

In Re:

AMALGAMATED DEVELOPMENT CO.., INC..

t/a WASHINGTON PATENT OFFICE SEARCH

BUREAU, and H. LAWRENCE BLASIUS.

Respondents.

Miscellaneous No. 17-75

Upon consideration of the petition of the Committee on

Unauthorized Practice of Law for an Order to Show Cause

why the respondents Amalgamated Development Co., t/a

Washington Patent Office Search Bureau, and H.

Lawrence Blasius, should not be adjudged in criminal

contempt of court, and/or permanently enjoined,

IT IS HEREBY ORDERED, that respondents

Amalgamated Development Co., Inc., t/a Washington

Patent Office Search Bureau, and H. Lawrence Blasius,

appear before this Court on Friday, January 9, 1976, at 10

a.m., Or as soon thereafter as they can be heard, to show

cause, if any they have, why they should not be adjudged in

criminal contempt of court and/or enjoined for the reasons

set forth in said petition, and that respondents file their

answer to the petition by January 2, 1975.

By the Court:

s/Gerald McNeilly

Chief Judge

Dated this Sth day of December, 1975.

23a

PETITION FOR ORDER TO SHOW CAUSE

DISTRICT OF COLUMBIA COURT OF APPEALS

In Re:

AMALGAMATED DEVELOPMENT CO.. INC.,

t/a WASHINGTON PATENT OFFICE SFARCH

BUREAU, and H. LAWRENCE BLASIUS, 734

1Sth Street. NW., Washington, D.C. 20005

Respondents.

Comes now the Committee on Unauthorized Practice of

Law and respectfully petitions for an Order to Show Cause

why the respondents Amalgamated Development Co., Inc.,

t/a Washington Patent Office Search Bureau, and H.

Lawrence Blasius, should not be held in criminal contempt

of court and/or permanently enjoined, and respectfully

represents to this honorable Court as follows:

1. That the respondents maintain an office at 734 15th

Street, N.W., Washington, D. C.; that they are not

members of The District of Columbia Bar; and that they

are not persons admitted to practice law in the District of

Columbia either by the United States District Court for the

District of Columbia prior to April 1, 1972, or by this

Court. That said respondents are engaged in a business

involving processing and review of various alleged in-

ventions in behalf of clients for the purpose of determining

whether the same may or may not be patentable by the

United States Patent Office including searching patent

records to discover inventions that are the same or similar

to those of their clients; that said respondents compare

their clients’ alleged inventions with similar ones found

either by themselves or persons employed by them for that

purpose and then advise their clients as to the patentability

24a

of their alleged inventions; that said respondents prepare

patent applications for their clients and advise them as to

the procedural steps involved in pursuing patents for their

alleged inventions before the United States Patent Office

and the courts; that respondents review unfavorable

decisions of the United States Patent Office concerning

their clients, advise them pertaining thereto, and prepare

amended applications for such clients in an effort to meet

the objections of the United States Patent Office; and that

respondents receive fees for their services.

2. That notwithstanding that respondents have not been

admitted to practice law in the District of Columbia nor to

practice by and before the United States Patent Office,

they have and are engaging in the practice of law in the

District of Columbia particularly in the representation of

persons in connection with the preparation and filing of

patent applications with the United States Patent Office

and in the rendering of legal advice as to the patentability

of clients’ inventions and procedures in seeking patents.

WHEREFORE, it is respectfully requested that tiie

Court grant the following relief:

1. Issue forthwith an Order to Show Cause directing

respondents to appear before this Court on Friday, January

9, 1976, at 10 a.m. or as soon thereafter as counsel can be

heard, to show cause, if any they have, why they should not

be adjudged in criminal contempt of court for engaging in

the practice of law in the District of Columbia, and/or

holding themselves out as authorized or qualified to

practice law in the District of Columbia and/or per-

manently enjoined from such further conduct.

2. Order that a copy of this petition and an Order to

Show Cause be forthwith delivered to the United States

Marshal for service upon the respondents personally, and

that respondents file their answer to the petition by January

2. 1975.

25a

3. Order such further relief as may be just and proper.

Committee on Unauthorized

Practice of Law

By s/Edgar T. Bellinger

Edgar T. Bellinger, Chairman

700 Brawner Building

888 Seventeenth Street, NW

Washington, D.C. 20006

298-8600

26a

APPENDIX “D”

ANSWER TO PETITION

DISTRICT OF COLUMBIA COURT OF APPEALS

In re:

AMALGAMATED DEVELOPMENT CO.., INC..

t/a WASHINGTON PATENT OFFICE SEARCH

BUREAU and H. LAWRENCE BLASIUS, 734

ISth Street, N.W.. WASHINGTON, D.C. 2000S.

Respondents.

The Respondents, above-named. by their attorney,

HARRY GROSSMAN, appear herein and respectfully

interpose this Answer to the Petition for Order to Show

Cause obtained by the Committee on Unauthorized

Practice of Law.

FIRST: Deny each and every allegation contained in

paragraph designated ‘1’ of the Petition herein, except

admit that the Respondent, AMALGAMATED

DEVELOPMENT CO., INC., t/a WASHINGTON

PATENT OFFICE SEARCH BUREAU maintains an

office at 734 1Sth Street, N.W. Washington, D.C., and

further admit that neither Respondent herein are admitted

to practice law in the District of Columbia either by the

United States District Court for the District of Columbia

prior to April 1, 1972, or by this Court.

SECOND: Deny each and every allegation contained in

paragraph designated ‘*2” of the Petition herein.

27a

M-

AS AND FOR A FIRST SEPARATE, CO )

PLETE AND DISTINCT AFFIRMATIVE

DEFENSE.

THIRD: That neither of the Respondents nai red herein

are engaged in the practice of law in the District “

Columbia or anywhere else, nor do they rende~ any lega

“FOURTH: The Respondent, AMALG \MATED

DEVELOPMENT CO., INC., t/a WASHINGTON

PATENT OFFICE SEARCH BUREAU docs conduct

preliminary patentability searches for prospective in-

FIFTH: That the actual work in the conducting of such

preliminary patentability searches is done by —

persons, who are not themselves lawyers, and who also

conduct such searches for lawyers, business firms and

eoxTh: That the patent searchers who actually conduct

the searches at the United States Patent Office are rarely

lawyers, but are mostly engineers or trained a :

this particular field which is highly technical and in - ic

most patent lawyers do not themselves engage, but ave

others to conduct such searches for them and their clients.

SEVENTH: That patent searches are conducted on

behalf of prospective inventors by many and —

individuals, firms and organizations who regularly ad-

vertise the availability of their services in the Yellow Pages

of the telephone directory as well as in numerous

EIGHTH: That the conducting of such searches has

never been held to be a legal act or anything whatsoever to

do with the practice of law and has never been deemed to

be a legal function of a lawyer.

28a

AS AND FOR A SECOND SEPARATE,

COMPLETE AND DISTINCT AFFIRMATIVE

DEFENSE.

NINTH: That after having a preliminary patentability

search conducted for a prospective inventor, the

Respondent. AMALGAMATED DEVELOPMENT CO..,

INC., t‘a WASHINGTON PATENT OFFICE SEARCH

BUREAU sends the said person a report including copies

of the nearest and closest patents already on file.

TENTH: That in such letter, the said Respondent, who

does employ engineers and draftsmen on its staff, gives the

prospective inventor copies of the most pertinent and

relevant patents located in its preliminary patentability

search in the United States Patent Office and then makes a

statement as to whether they believe his invention or idea

appears to be patentable.

ELEVENTH: The said opinion is a purely technical one

and is not at all legalistic and is based only on the com-

parison of the structural and other features of one

mechanical or other device with the structural or other

features of a plurality of other mechanical or other devices.

TWELFTH: That such a technical process requires, in

the main, the services of an engineer, particularly a

mechanical engineer or one trained in such technical

matters and the same in no way involves or deals with a

legal opinion nor can the same possibly be considered to be

a legal opinion or legal advice and the United States Patent

Office itself only hires engineers to act as Examiners in

their office who do the same type of work.

29a

AS AND FOR A THIRD SEPARATE, COM-

PLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

THIRTEENTH: That the United States Patent Office

maintains a roster of Registered Patent Attorneys and

Agents who are permitted to represent and appear for

inventors, but the Patent Agents are mostly engineers and

are not attorneys, even though they are permitted and

entitled to do anything that a Patent Attorney can do

within the United States Patent Office.

FOURTEENTH: That said Patent Agents, who are not

attorneys, are permitted to tell prospective inventors that

their invention or idea appears to be patentable, which is

an expression of a technical opinion and not a legal one.

FIFTEENTH: That if the Respondent,

AMALGAMATED DEVELOPMENT CO., INC., t/a

WASHINGTON PATENT OFFICE SEARCH BUREAU

was restrained or enjoined from stating that an invention or

idea appears to be patentable on the ground that the same

constitutes the practice of law in the District of Columbia,

then all of the registered Patent Agents would also have to

be restrained and enjoined from similarly practicing law

illegally.

SIXTEENTH: That such opinion or advice to the effect

that an invention or idea appears to be patentable is merely

a technical one when made by the registered Patent Agents

or by said Respondent, and to hold otherwise herein would

be discriminatory and unjust.

30a

AS AND FOR A FOURTH SEPARATE,

COMPLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

SEVENTEENTH: That the Respondent,

AMALGAMATED DEVELOPMENT CO., INC., t/a

WASHINGTON PATENT OFFICE SEARCH BUREAU,

besides conducting preliminary patentability searches, is

engaged in the business of furnishing and rendering

assistance to applicants for patents who desire to file their

own patent applications and wish to appear “pro se’’,

which they are legally authorized and entitled to do.

EIGHTEENTH: The said Respondent does not appear

for or represent such or any applicants before the United

States Patent Office nor does said Respondent hold itself

out as being registered or able to practice before the United

States Patent Office.

NINETEENTH: That, in fact, in their letters to

prospective inventors, the said Respondent advises them

that they can obtain their own Patent Attorney or Agent if

they wish or they can represent themselves in filing their

respective applications for patent, and the said Respondent

merely assists them in preparing their “pro se’’ ap-

plications.

TWENTIETH: That such conduct engaged in by the

Respondent herein has been held to be permissible, legal

and in accordance with law by this Court in Hull v. United

States, 390 F. 2d 462 (C.A.D.C.) (1968).

AS AND FOR A FIFTH SEPARATE, COM-

PLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

TWENTY-FIRST: That the Petition herein deals ex-

clusively with matters related to Patent Law practice and

3la

the same is vested only in the Commissioner of Patents by

virtue of the United States Constitution and by Acts of

Congress.

TWENTY-SECOND: That the Courts in Washington.

D.C. do not have the power to authorize practicc in patent

matters before the United States Patent Office and they are

therefore unable to exercise any control over such alleged

practice.

TWENTY-THIRD: That the right to practice law

conferred by a State or the District of Columbia is a special

privilege in the nature of a franchise, but practice before

the United States Patent Office would not be an invasion of

a right vested in an attorney by virtue of his franchise to

practice law, since such franchise does not authorize

practice before the United States Patent Office.

TWENTY-FOURTH: That, by reason of the aforesaid.

neither this Court nor its Committee on Unauthorized

Practice of Law have jurisdiction over any alleged practice

before the United States Patent Office or over any type of

patent matter including the subject matter of this Petition.

AS AND FOR A SIXTH SEPARATE, COM-

PLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

TWENTY-FIFTH: That the Committee on

Unauthorized Practice of Law is designated by and is really

an arm of the same Court hearing this matter, and

therefore the Court herein is acting as both prosecutor and

Judge in this proceeding. ;

TWENTY-SIXTH: That such dual role as is assumed by

the Court herein is improper and unconstitutional. and

deprives the Respondents of their rights.

32a

AS AND FOR A SEVENTH SEPARATE,

COMPLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

TWENTY-SEVENTH: That the Petition herein seeks to

hold the Respondents in criminal contempt even though

the said Respondents have never been found in violation of

any law. statute or order of this or any other Court and no

finding of impropriety or misconduct has ever been made

against these Respondents even though hearings have

heretofore been held before the Committee on

Unauthorized Practice of Law.

TWENTY-EIGHTH: That the said relief sought herein

is improper and unwarranted and is based on a wrong

premise, namely that the Respondents herein have already

been adjudged guilty of some wrongful or illegal conduct.

AS AND FOR AN EIGHTH SEPARATE,

COMPLETE AND DISTINCT AFFIRMATIVE

DEFENSE:

TWENTY-NINTH: That the Respondent. H.

LAWRENCE BLASIUS. named in the Petition herein does

not in his individual capacity engage in any business ac-

tivity or enterprise whatsoever in Washington, D. C. and is,

in fact, a resident of New York City.

THIRTIETH: That, accordingly. this Court does not

have any jurisdiction whatsoever over the Respondent, H.

LAWRENCE BLASIUS.

WHEREFORE, the Respondents respectfully pray that

the Petition herein be dismissed and the relief sought

therein de denied in all respects.

s/HARRY GROSSMAN

HARRY GROSSMAN

Attorney for Respondents

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