Sperry v. Florida - 373 U.S. 379, 83 S. Ct. 1322 (1963)

Rule:

A state may not enforce licensing requirements which, though valid in the absence of federal regulation, give the state's licensing board a virtual power of review over the federal determination that a person or agency is qualified and entitled to perform certain functions, or which impose upon the performance of activity sanctioned 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.

Facts:

Petitioner was not a lawyer and has never been admitted to the Bar of any State; but, under regulations issued by the Commissioner of Patents with the approval of the Secretary of Commerce pursuant to 35 U.S.C. § 31, he has been authorized to practice before the United States Patent Office. As part of that practice, he has for many years represented patent applicants, prepared and prosecuted their applications, and advised them in connection with their applications in the State of Florida. The Florida Bar sued in the Supreme Court of Florida to enjoin the performance of these and other specified acts within the State, contending that they constituted unauthorized practice of law. Holding that the petitioner's conduct constituted the unauthorized practice of law within the state, the court enjoined him from preparing and prosecuting patent applications and rendering legal opinions as to patentability or infringement on patent rights. A writ of certiorari was granted. 

Issue:

Under the circumstances, was it proper to enjoin petitioner from preparing and prosecuting patent applications and rendering legal opinions as to patentability or infringement on patent rights? 

Answer:

No.

Conclusion:

The order enjoining petitioner was vacated and remanded because it prohibited him from performing tasks which were incident to the preparation and prosecution of patent applications before the Patent Office. 35 U.S.C. § 31, which permitted nonlawyers to represent applicants before the Patent Office, preempted Florida law, under which the preparation and prosecution of patent applications for others constituted the practice of law. According to the Court, petitioner maintained an office in Florida, held himself out as a patent attorney, prepared patent applications, represented clients before the Patent Office, and was not a member of the bar of any state. The Court held that 35 U.S.C. § 31 expressly permitted the Commissioner of Patents to authorize practice before the Patent Office by nonlawyers, and the Commissioner had explicitly granted such authority. Under the Supremacy Clause, Florida may not deny petitioner the right to perform the functions within the scope of the federal authority.