By Donald Zuhn --
On Monday, the American Bar Association (ABA) Standing Committee on Ethics and Professional Responsibility released a statement regarding a new ethics opinion (Formal Opinion 08-451), which concludes that U.S. lawyers can outsource legal and nonlegal work provided that they adhere to ethics rules regarding competence, supervision, protection of confidential information, reasonable fees, and not assisting in the unauthorized practice of law. The opinion, entitled "Lawyer’s Obligations When Outsourcing Legal and Nonlegal Support Services," outlines the ethics obligations of lawyers and firms that wish to utilize legal and nonlegal outsourcing.
Stating that "[a] lawyer may outsource legal or nonlegal support services provided the lawyer remains ultimately responsible for rendering competent legal services to the client," the opinion notes that lawyers and law firms engage lawyers and nonlawyers for various legal and nonlegal support services, ranging from "the use of a local photocopy shop for the reproduction of documents, to the retention of a document management company for the creation and maintenance of a database for complex litigation, . . . or even to the engagement of a group of foreign lawyers to draft patent applications." The opinion acknowledges, however, that "[t]he challenge for an outsourcing lawyer is . . . to ensure that tasks are delegated to individuals who are competent to perform them, and then to oversee the execution of the project adequately and appropriately."
Notwithstanding the ABA opinion -- and its reference to the outsourcing of patent application drafting to foreign lawyers -- the U.S. Patent and Trademark Office recently reminded patent practitioners that the export of subject matter abroad pursuant to a USPTO-issue foreign filing license is limited to purposes related to the filing of foreign patent applications, and that the foreign filing license does not authorize exporting of subject matter abroad for the preparation of patent applications to be filed in the United States (see "PTO Issues Notice on Scope of Foreign Filing Licenses"). As the USPTO noted, U.S. patent practitioners wishing to outsource patent application drafting to foreign lawyers are not without recourse, as these practitioners can contact the Bureau of Industry and Security (BIS) at the Commerce Department in order to secure the appropriate clearances.
Thus, while the new ABA ethics opinion permits U.S. lawyers to outsource legal support services to foreign lawyers, patent practitioners would be wise to, at a minimum, refrain from outsourcing the drafting of patent applications to foreign lawyers. Patent practitioners who intend to outsource other types of legal support tasks (e.g., document review) are advised to consult the ABA opinion before doing so.