Patent Attorney State Bar License Question

Q: I have a question concerning the limitations on the practice of a patent attorney who moves to a state in which he does not have a law license. As an example let's propose that the attorney has been licensed for two years in Florida and then subsequently moves accross the border to Georgia. Let's assume that 2 years is too short to allow reciprocity. I am assume that there is no issue if the attorney limits his practice to patent prosecution, because he can do that without a law license, but if the attorney does patent lawyerly things like write an opinion concerning whether a patent has been infringed, would that constitute the unauthorized practice of law in Georgia? Could there be a problem with the Florida licensed attorney advertising himself as a patent attorney in Georgia? I'd guess that such a lawyer could not file papers in a court in Georgia, but would have to hire a GA lawyer to do so. So what's the deal?

A: -Good question. I was wondering about the same thing since I have been having so much trouble finding a job in my home state. Although, I haven't done any research, I guess it would be analogous to practicing in federal court. A lawyer from Florida can get admitted to a federal court in Georgia, right? Providing the lawyer confines himself to patent law, does it matter that he isn't admitted in the new state? -I would think that the biggest problem would be that advertising as a patent attorney raises a presumption of being licenced in state, which you would have to disclaim in some prominent way. States seem to take a dim view of out of state attorneys moving in and setting up a federal law practice. They tend to argue that questions of state law could arise in a consultation. I have researched this a little, because I have often considered enrolling in a correspondence school to prepare for the California bar, whereas I live in Maryland. As far as patent prosecution goes, you should be protected by Sperry v Florida, 373 US 379 (USSC 1963). This decision protects my right as a patent agent to practice in any state, and therefore, mutatis mutandis, must also apply to patent attorneys practicing as such. As far as federal litigation and opinions that pertain to it are concerned,

I am in no position to say. I hope someone can help you out on that. -I don't know about that. I think I read somewhere that a prereq for getting admitted to a federal court was to be licensed to practice in the state in which the court is located. I think trying even a patent case in court could be problematic, because there may be non-federal issues involved in a given case. I'm mainly interested in the UPL issues involving the following: 1) Advertising and otherwise holding one's self out as a patent attorney with an out of state license. 2) Doing lawlerly things associated with patents (like write infringement opinions) that only involve federal issues.