The Ethical Risks of Paraprofessionals Providing IP Legal Services (Part 2 of 2)

Michael E. McCabe, Jr.IP Ethics, OED, Office of Enrollment and Discipline, USPTO OED0 Comments

manage and superviseIn this part, we continue to address some of the ethical risks involving delegation of intellectual property legal services to non-lawyer paraprofessionals.

Ethical Responsibilities of Practitioners Regarding Paraprofessionals

The USPTO ethics rules state the responsibilities of practitioners over non-practitioners as follows:

First, a practitioner who is a partner, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that the non-practitioner’s conduct is compatible with the professional obligations of the practitioner.

Second, a practitioner having direct supervisory authority over the non-practitioner assistant shall make reasonable efforts to ensure that the person’s conduct is compatible with the professional obligations of the practitioner.

Third, a practitioner shall be responsible for conduct of such a person that would be a violation of the USPTO Rules of Professional Conduct if engaged in by a practitioner if: (a) the practitioner orders or, with the knowledge of the specific conduct, ratifies the conduct involved; or (b) the practitioner is a partner or has comparable managerial authority in the law firm in which the person is employed, or has direct supervisory authority over the person, and knows of the conduct at a time when its consequences can be avoided or mitigated but fails to take reasonable remedial action.

37 C.F.R. § 11.503. This Rule is modeled after ABA Model Rule 5.3.

Permitted v. Prohibited Conduct

The conduct of a non-lawyer would not constitute the practice of law as long as it is limited to “work of a preparatory nature.”  In addition, courts recognize that non-lawyers may conduct legal research, engage in factual investigations, and prepare drafts of legal documents.  Such services “enable the licensed attorney-employer to carry a given matter to a conclusion through his own examination, approval or additional effort.”  See In re Easler, 272 S.E.2d 32, 32-33 (S.C. 1980).  The only caveats are that:

(a) the non-lawyer may not engage in activities that involve the exercise of professional judgment;

(b) the non-lawyer must be supervised by the lawyer; and

(c) the lawyer remains responsible for the final work product.

So what activities involve the exercise of professional legal judgment?  Courts recognize at least four activities that involve the exercise of professional legal judgment and thus can not lawfully or ethically be delegated to the non-lawyer:

  • Establish an attorney-client relationship
  • Set legal fees.
  • Represent a client before a court, tribunal, or the USPTO.
  •  Offer legal opinions or advice to a client.

See ABA Model Guidelines for the Utilization of Paralegal Services, Guideline 3 (2004); see also NALA Code of Ethics and Professional Responsibility, Canon 3 (2001) (“A paralegal must not: (a) engage in, encourage, or contribute to any act which could constitute the unauthorized practice of law; and (b) establish attorney-client relationships, set fees, give legal opinions or advice or represent a client before a court or agency unless so authorized by that court or agency; and (c) engage in conduct or take any action which would assist or involve the attorney in a violation of professional ethics or give the appearance of professional impropriety.”).

Establishing the Attorney-Client Relationship

The first category of functions that is reserved solely for the lawyer is creating the attorney-client relationship. Only the attorney and the client can establish the attorney-client relationship.  See Model Rules of Prof’l Conduct R. 5.4 (a nonlawyer cannot “direct or control the professional judgment of a lawyer”). Only lawyers can decide whether to take on a legal representation.  A non-lawyer cannot make the independent decision on whether or not to represent a potential client nor suggest to a client that a lawyer will or will not represent them.  Instead, a lawyer must maintain a direct relationship with all clients and must use independent professional judgment.

Setting Legal Fees

The second core category of conduct that involves the exercise of professional judgment is determining the fees to be charged for the legal services to be provided.  A non-lawyer must never agree to charge a client a specific fee.  In fact, only lawyers may set the fee. Indeed, lawyers have an ethical obligation to discuss all fee matters with the client prior to undertaking representation.  See Model Rules of Prof’l Conduct R. 1.5 & 5.4.

Representing a Client Before a Tribunal or the USPTO

The third category of activities that involves the exercise of professional judgment is representation of a client before a tribunal.  In most states, non-lawyers are prohibited from appearing before courts or other adjudicatory tribunals “representing” someone else (a non-lawyer can always represent herself in her own legal matters). See, e.g., Virginia Alliance of Paralegal Associations, Educational Standards and Professional Responsibility Guidelines for Paralegals in the Commonwealth of Virginia, Guideline 1 cmt. (1995) (“A paralegal shall not … represent a client in court (unless authorized by court or agency rules)”).

Non-lawyers should refrain from representing a client before any tribunal and shall not sign pleadings on behalf of another person.  This prohibition applies to trademark and patent-related representation before the USPTO, and a non-practitioner may not sign a practitioner’s name on any filings before the Office.

Offering Legal Opinion or Providing Legal Advice

Finally, a paraprofessional may not provide legal advice or opinions to a client.  See Model Rules of Prof’l Conduct R. 2.1.  Non-lawyers, therefore, are prohibited from giving legal advice to a client.  See, e.g., NALA Code of Ethics and Professional Responsibility, Canon 3 (2001) (a paralegal “must not render independent legal judgment in place of an attorney”); Virginia Alliance of Paralegal Associations, Educational Standards and Professional Responsibility Guidelines for Paralegals in the Commonwealth of Virginia, Guideline 1 cmt. (1995) (“A paralegal shall not give legal advice or opinions ….”). It is the responsibility of the lawyer to ensure that a legal assistant for whose work the lawyer is responsible does not provide legal advice or otherwise engage in the unauthorized practice of law. Thus non-lawyers must refrain from answering legal questions themselves and must defer such inquiries to the lawyer.

Conclusion

Paraprofessionals can be instrumental to the provision of legal services and the overall operation and efficiency of a law firm. And yet even the best paraprofessionals must be aware of their own limitations. Even if the non-lawyer is an “expert” in the field of their work, they must be supervised by a lawyer. And certain tasks are strictly off-limits to the non-lawyer.

The paraprofessional is generally prohibited from accepting clients, setting legal fees, representing clients before a court, and providing legal advice. Moreover, non-lawyers are prohibited in the USPTO of signing the attorney’s name on any documents.

Lawyers are responsible for delegating and supervising the work of non-lawyers by giving clear instruction, monitoring progress, and reviewing and editing the non-lawyer’s work product. Non-lawyers must be well-informed about the specific rules governing their conduct and the conduct of the lawyers they work for in their jurisdiction. An understanding of and strict adherence to the rules of professional conduct is critical to avoid exposure to a charge that the non-lawyer engaged in the unauthorized practice of law or that the lawyer violated her duty of supervision.

 

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