Rules Governing Admission to the Bar for In-House Counsel
The issue of unauthorized practice of law is a concern for all attorneys, and something that periodically does catch up with patent attorneys. The typical scenario where this issue arises is when patent attorneys are admitted in one state and have an office in another state but provide more than patent related services. See e.g. In the Matter of Michael W. Starkweather, Proceeding No. D2012-31 (2013) (Starkweather issued reprimand via reciprocal discipline. In 2019, Starkweather was suspended for a period of three years for violating multiple disciplinary rules. He was caught up in the World Patent Marketing investigation spearheaded by the Federal Trade Commission in cooperation with the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office. See In the Matter of Michael W. Starkweather, Proceeding No. D2018-44 (2019)).
When an attorney accepts a job as an in-house counsel, the potential for problems associated with the unauthorized practice of law similarly present themselves. Different states have different regulations and procedures that must be followed when an out-of-state attorney relocates to become in-house counsel. Although in-house counsel should always consult the rules and regulations of the state where their employer is located, a common thread in these rules and regulations is that the in-house lawyer must be a full-time employee and may only provide legal services for the employer (including parent, affiliate and subsidiaries). However, in-house attorneys with out-of-state registrations are frequently allowed, often even encouraged, to provide pro bono representation through recognized legal aid organizations.
The American Bar Association has compiled links to information for each state, which is current through November 7, 2019. In-House Corporate Counsel Registration Rules (last visited December 14, 2019).
What follows below is a discussion of how several states with higher populations of patent attorneys handle admission for out-of-state in-house counsel. We will review the rules for Virginia, Texas, California, New York, Illinois and Florida.
The Commonwealth of Virginia
A lawyer admitted to the practice of law in a state other than Virginia, or territory of the United States, or the District of Columbia, may apply to the Virginia State Bar for a certificate as a Virginia Corporate Counsel, which will allow the lawyer to practice law as in-house counsel in Virginia while he or she is employed by an Employer in Virginia. Employment in Virginia as a lawyer must be exclusively for a non-governmental for-profit or a non-profit corporation or other business entity engaged in any lawful purpose other than the practice of law or the provisions of legal services.
During the period in which an application for a Corporate Counsel Certificate is pending with the Virginia State Bar, the applicant may be employed in Virginia as Certified Corporate Counsel on a provisional basis by an employer who furnishes an affidavit from an officer of the applicant’s employer attesting to the fact that the applicant is employed as legal counsel to provide legal services exclusively to the employer, which can also include its subsidiaries and affiliates.
The practice of a lawyer with a Corporate Counsel Certificate in Virginia is limited to practice exclusively for the employer furnishing the affidavit, including its subsidiaries and affiliates, and may include appearing before a Virginia court or tribunal as counsel for the employer. If and when the employment relationship ceases, the employer is required to notify the Virginia State Bar immediately the applicant’s separation.
Despite the fact that a lawyer with a Corporate Counsel Certificate may not engage in the practice of law except on behalf of the employer, Virginia does specifically allow and encourage those with a Corporate Counsel Certificate to provide pro bono legal services.
For more information please see Corporate Counsel Limited Admission and Registration (last visited December 14, 2019).
Subject to certain rules, California allows for attorneys in good standing and members of a bar of another jurisdiction in the United States to become a registered in-house counsel capable of representing an employer without taking and passing the bar examination. First, the employer must employ at least 5 full-time employees or employee a California attorney who is an active licensee in good standing by the bar in the State of California. Second, while the attorney requesting status as registered in-house counsel may practice law while awaiting review of his or her application, a determination of moral character and fitness is required.
As with Virginia, an officer, director, or general counsel of the employer must by declaration attest that the attorney to be registered as in-house counsel will be employed as an attorney for the employer and that the employer will notify the state within 30 days of the cessation of the attorney’s employment in California. Practice of law is likewise exclusively limited to the single qualifying employer, except that the attorney having a registered in-house counsel credential may provide pro bono services through eligible legal aid organizations.
California further requires: (1) that registered in-house counsel reside in California; (2) compliance with California rules governing attorney fingerprinting; (3) submission by signed declaration to the disciplinary authority of the Supreme Court of California; and (4) renewed annual registration.
For more information please visit 2019 California Rules of Court (last visited December 14, 2019).
In 2014, the Texas Supreme Court updated its rules relating to what they call “Foreign Legal Consultants”, who are attorneys admitted to practice in another State. An applicant who has for three of the previous five years immediately preceding the Application been authorized to practice law in a foreign jurisdiction, has been a member in good standing in the bar of another state, or has been actively and substantially engaged in the lawful practice of law in a foreign country or another U.S. jurisdiction can become admitted to practice in Texas as in-house counsel without taking and passing the Texas bar examination. The applicant must be at least 26 years of age and possess good moral character and general fitness required for a member of the Texas Bar.
A Foreign Legal Consultant in Texas may not engage in any representation other than for the corporate employer. Furthermore, a Foreign Legal Consultant may not: (1) appear for the corporation in Texas courts, either in person or by signing pleadings, (2) prepare any legal instrument affecting title to real property, or prepare a will, trust or any instrument relating to the administration of a decedent’s estate, (3) prepare any instrument relating to marital or parental rights, or custody or care of children; and (4) render professional legal advice on the law of Texas unless as in-house counsel and within the scope of his or her employment.
For more information please see Texas Supreme Court Order Adopting Amendments to Rules Governing Admission to the Bar of Texas and Board of Law Examiners Policy Statement on Practice Requirements (last visited December 14, 2019).
Rules of the Court of Appeals for the Registration of In-house Counsel (22 NYCRR Part 522) defines an in-house counsel as an attorney who is employed full time in the State of New York by a non-governmental corporation, partnership, association or other legal entity (including subsidiaries and affiliates) that is not itself engaged in the practice of law or rendering of legal services outside the organization.
Attorneys admitted to practice and in good standing in another state or territory of the United States, or in the District of Columbia, who also possess good moral character and fitness required for a member of the bar of the state of New York, may be registered as in-house counsel upon application. The application must include a certificate of good standing from each jurisdiction where the applicant is licensed, a letter from each jurisdiction’s grievance committee or body responsible for accepting complaints certifying whether charges have ever been filed, an affidavit from the applicant agreeing to submit to the disciplinary authority of the state and to comply with the New York Rules of Professional Conduct (22 NYCRR Part 1200) and statement that he or she will only perform legal services on behalf of the employer, and an affidavit from an officer, director or general counsel of the employer attesting to the fact that applicant will be employed as an attorney.
Effective December 30, 2015, the Court of Appeals amended its Rules for the Registration of In-house Counsel to allow for similar admission of foreign attorneys. A foreign attorney who is a member in good stating of a recognized legal profession in a non-United States jurisdiction, the members of which are admitted to practice as lawyers or counselors at law or the equivalent and subject to effective regulation by a professional body or public authority.
For more information please see Court of Appeals Notice to the Bar (last visited December 14, 2019).
A lawyer licensed to practice in the highest court in any United States state, territory, the District of Columbia, or foreign jurisdiction, or who is otherwise authorized to practice in a foreign jurisdiction, may receive a limited license to practice law in Illinois when the lawyer is employed in Illinois as in-house counsel exclusively for a single corporation, partnership, association or other legal entity (as well as any parent, subsidiary or affiliate thereof), the lawful business consists of activities other than the practice of law. A lawyer licensed as in-house counsel in Illinois has the authority to act on behalf of his or her employer for all purposes as if licensed in Illinois. A lawyer licensed as in-house counsel may not offer legal services or advice to the public or in any manner hold himself or herself out to be engaged or authorized to engage in the practice of law. Notwithstanding, a lawyer licensed a lawyer licensed as in-house counsel in Illinois may provide voluntary pro bono public services.
The applicant to become licensed as in-house counsel in Illinois must have graduated from an ABA approved law school, meet the Illinois character and fitness requirements, and be in good standing in every jurisdiction in which they have ever been admitted. Applicants who have been licensed for fewer than 15 years must have passed the Multistate Professional Responsibility Exam in Illinois or in any jurisdiction where it was administered, or in the case of a foreign lawyer, have completed the course on ethics approved by the Illinois Supreme Court Commission on Professionalism.
To apply, the lawyer applicant must submit a completed application for the limited license together with a duly authorized and executed certification by applicant’s employer that: (1) the employer is not engaged in the practice of law or the rendering of legal services; (2) the employer is duly organized under the laws of Illinois; (3) the applicant works exclusively as an employee for the purpose of providing legal services to the employer; and (4) the employer will promptly notify the Clerk of the Supreme Court of the termination of the applicant’s employment.
A lawyer licensed as in-house counsel in Illinois is subject to the jurisdiction of the Illinois Supreme Court for disciplinary purposes to the same extent as all other lawyers licensed to practice law in this state, and is further required to pay the fee for active lawyers and meet the MCLE requirements set for active lawyers in Illinois.
For more information please see Illinois Supreme Court Rule 716.Image Source: Deposit PhotosImage ID: 136566694Copyright: Rawpixel