Illinois: In-house counsel who limit practice to that before the USPTO do not need to register

Some states permit in-house counsel to practice in the state so long as they only represent their corporate employer and register with the state.  Registration is not free or hassle-free.  However, in Opinion No. 15-01 (May 2015), the Illinois State Bar concluded that in-house counsel who limited his practice to patent practice did not need to register.

This issue comes up in many forms.  For example, what can a patent agent do?  The USPTO has defined what is, and is not, practice before the office and those definitions should be carefully consulted.  But this Illinois opinion is a bit of good news to in-house counsel in my law school’s state.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

5 thoughts on “Illinois: In-house counsel who limit practice to that before the USPTO do not need to register

  1. 2

    hrumph – State/Federal issues aplenty….

    What next? May Florida declare that no admittance to any bar whatsoever is required to practice patent law?

    (yes, I choose Florida not at random)

  2. 1

    David, This actually happened to me:

    I was working in corporate patent law department of a company outside California. This state required experienced attorneys to take their bar exam because California, my home state, required the same of experienced attorneys who wanted to practice there. So I did not take the local bar exam.

    Well I was in the local federal district court one day, minding my own business, when the chief judge, who knew me personally, wanted to appoint me to represent a defendant on a motion to certify a defendant class action. I remonstrated that I was not even licensed to practice in the state, a requirement to even be considered to be a member of the bar of the district court. He waived that requirement and simply asked if I was a member of the bar of any district court, and of course, I was, both of the Central and Northern Districts of California. He then made the appointment, and swore me in to membership of the bar of that district court.

    My status in this regard might be unique in the history of the US. But, one never knows.

    1. 1.1

      That’s pretty funny – thanks for sharing it. In-house counsel face lots of interesting things: for example, suppose you’re employed by X Corp. Can you provide legal advice to its parent? Its sub? Its sister? Etc…

      1. 1.1.1

        Actually, as I recall it now, he was pretty crafty, the chief judge. First he swore me in, and then appointed me to represent the defendant. I argued that he was making a mistake, etc. He “reminded” me of my duties as a member of the bar of the court, etc., etc., etc. I said OK after a bit of coaxing.

        I then argued that the class action not be certified due to lack of adequate representation, etc. He granted the motion, then lit into the plaintiffs counsel like there was no tomorrow. All part of his plan, it seems.

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