Ohio-Licensed Patent Lawyer in West Virginia Is Subject to Bar Discipline in West Virginia

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By Joan C. Rogers  


An Ohio-licensed lawyer who is practicing patent law in West Virginia is not beyond the reach of disciplinary charges in the Mountain State, the West Virginia Supreme Court of Appeals declared June 5 (State ex rel. York v. West Virginia Office of Disciplinary Counsel, W. Va., No. 12-1410, 6/5/13).

The court held that West Virginia has disciplinary jurisdiction over the lawyer even though the state has not yet enacted the multijurisdictional practice provisions found in the Model Rules. Also, state disciplinary power over lawyers practicing as patent agents is not preempted by federal law, the court ruled in an opinion by Margaret L. Workman.

Charges Against Patent Lawyer

The case involves Olen L. York III, who is licensed in Ohio but not West Virginia. York lives in West Virginia and represents West Virginia clients, but does not appear in West Virginia state courts. Instead, the court said, he confines his practice to patent and trademark matters before the U.S. Patent and Trademark Office.

The disciplinary board charged York with mishandling client funds in violation of the West Virginia Rules of Professional Conduct. At the time of the underlying events, York was associated with a law firm as an independent contractor. The board alleged that after announcing that he had accepted a position with a different firm, York contacted two clients he had represented while working with the first firm and deposited payments they owed for patent services into his own personal checking account.

In response to the disciplinary charges, York asked the state supreme court to issue a writ blocking the disciplinary case. He contended that West Virginia disciplinary authorities lack jurisdiction over him as a matter of state law, and that federal law preempts state disciplinary action against him.

York did not carry the day on either point. The disciplinary investigation and action may go forward, the court decided without addressing the merits of the charges.

State Has Disciplinary Jurisdiction

The court pointed out that Rule 1 of the West Virginia Rules of Lawyer Disciplinary Procedure allows the disciplinary board to investigate complaints against West Virginia lawyers or “any individual admitted to the practice of law in another jurisdiction who engages in the practice of law in West Virginia.”

Thus, the court said, the jurisdictional issue turns on whether the practice of patent law in West Virginia constitutes the “practice of law in West Virginia.”

The court found guidance in Iowa Supreme Court Attorney Disciplinary Bd. v. Carpenter, 781 N.W.2d 263, 26 Law. Man. Prof. Conduct 265 (Iowa 2010), which concluded that Iowa disciplinary authorities had jurisdiction over an attorney not licensed in Iowa for conduct occurring there in connection with the lawyer's federal immigration practice.

That conclusion, the court noted, was premised on two Iowa professional conduct rules drawn from the ABA Model Rules: Rule 5.5(d)(2), which permits out-of-state lawyers to provide legal services that they are authorized by federal law to furnish, and Rule 8.5(a), which provides that a lawyer not admitted in the state is subject to the state's disciplinary jurisdiction if the lawyer provides or offers to provide any legal services there.

Although those two rules have not yet been enacted in West Virginia, the court found that their rationale comports with Rule 1 and that they provide “persuasive authority” for applying state disciplinary rules to lawyers engaged in federal practice.

Accordingly, the court held that under Rule 1, West Virginia's professional conduct rules govern the conduct of a lawyer who practices law in West Virginia or offers to provide legal services there--even where the lawyer's practice consists entirely of federal matters.

In such circumstances, the court stated, West Virginia disciplinary authorities have jurisdiction to investigate the alleged misconduct and recommend disciplinary action regardless of whether the lawyer is a member of the West Virginia bar.

Not Federally Preempted

On the issue of whether West Virginia's disciplinary authority is limited by the supremacy of federal law, the court noted that Sperry v. Florida, 373 U.S. 379 (1963), grew out of a state's injunction against a nonlawyer patent agent who was licensed to practice before the PTO.

Quoting from a Third Circuit opinion, the court said Sperry stands for the proposition that where federal law authorizes an agent to practice before a federal tribunal, the federal law preempts a state's licensing requirements to the extent that those requirements hinder the federal law's goals.

But principles of federal preemption do not prohibit state action that does not interfere with the requirements of federal law, the court continued, citing Kroll v. Finnerty, 242 F.3d 1359, 17 Law. Man. Prof. Conduct 219 (Fed. Cir. 2001), and Gadda v. Ashcroft, 377 F.3d 934, 20 Law. Man. Prof. Conduct 172 (9th Cir. 2004).

Kroll held that a lawsuit alleging that federal law preempts state regulation of patent lawyers was so devoid of merit that it must be dismissed for lack of subject matter jurisdiction, and Gadda concluded that federal law does not preempt a state from disbarring a lawyer over misconduct that occurred in his federal immigration practice.

Here, the court pointed out, state disciplinary authorities do not dispute York's right to represent patent clients before the PTO and do not seek to suspend or expel him from practicing before that office. The court agreed with them that the state disciplinary investigation does not pose any conflict with federal law and that federal law does not preempt West Virginia's disciplinary proceedings against York.

Lonnie C. Simmons of DiTrapano, Barrett & DiPiero in Charleston, W. Va., and Robert B. Kuenzel II of Kuenzel & Associates in Chapmanville, W. Va., represented York. Lawyer Disciplinary Counsel Renee N. Frymyer, Charleston, represented her office and the lawyer disciplinary board.

Full text at http://www.bloomberglaw.com/public/document/State_ex_rel_York_v_West_Virginia_Office_of_Disciplinary_Counsel_.

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