Can an Illinois firm advertise that it 'specializes' in a field, and can it farm work out to outside lawyers without telling the client?

Plain-English summary

A law firm held itself out as concentrating or specializing in intellectual property law but had no lawyers admitted before the U.S. Patent and Trademark Office; when clients sought patent filings, the firm farmed the application work out to other firms with licensed patent lawyers. The questions were whether holding out in IP law required the firm to cover every discipline within that field, and whether failing to tell clients that the work was farmed out misled them.

On the advertising question, the opinion concluded the firm could properly describe itself as "concentrating" in intellectual property law even though it did not do patent work, because the term IP law is broader than patent law and a lawyer need not practice every sub-area. The opinion treated that designation as not misleading under Rule 7.1(a) and as permitted under Rule 7.4(a). It concluded, however, that the firm could not describe itself as "specializing" in any area, because Rule 7.4(c) bars use of the terms "certified," "specialist," or "expert," and Rule 7.4(b) states that the Illinois Supreme Court does not recognize certifications of specialties (allowing only the specific patent and trademark designations the rule names).

On the delegation question, the opinion concluded that farming out the patent work to outside firms violated Rule 1.1(c), which bars a lawyer who has accepted employment from delegating the matter to a lawyer outside the firm without the client's consent. It relied on Opinion No. 92-07, which read Rule 1.1(c) together with Rule 1.2(a) (consulting the client on means) and Rule 1.4 (keeping the client informed), and noted that where the outside firm shares in the fee, Rule 1.5(f) requires the client's signed consent after the disclosure the rule specifies.

Currency note

This opinion was issued in 1997, before Illinois adopted the 2010 Illinois Rules of Professional Conduct. The ISBA Board of Governors affirmed the opinion in January 2010 as generally consistent with the 2010 Rules (referring to Rules 1.2(a) and (e), 1.4, 1.5(e), 7.1, and 7.4), while noting the specific standards referenced may differ from the 2010 Rules. Subsequent rule amendments or later opinions may have changed the analysis. Treat this page as historical context, not current guidance. Verify against current rules before relying on any specific rule or requirement mentioned here.

Common questions

Q: Could the firm advertise that it "concentrates" in intellectual property law without doing patent work?

A: Yes. The opinion concluded that "intellectual property law" is broader than patent law, so a firm practicing some but not all of those areas could describe itself as concentrating in the field without being misleading under Rule 7.1(a).

Q: Could the firm say it "specializes" in a field?

A: No. The opinion concluded that Rule 7.4(c) bars the terms "specialist" or "expert," and Rule 7.4(b) provides that Illinois does not recognize certifications of specialties, so a firm may not hold itself out as specializing in any area.

Q: Could the firm farm out patent work to outside lawyers without telling the client?

A: No. The opinion concluded that delegating the matter to lawyers outside the firm without the client's consent violated Rule 1.1(c), and that a fee split with the outside firm additionally required the client's signed consent under Rule 1.5(f).

Background and rules framework

The opinion interpreted the Illinois advertising rules, Rule 7.1 (false or misleading communications; Model Rule 7.1) and Rule 7.4 (communication of fields of practice and specialization; Model Rule 7.4), and the rules governing scope and delegation of an engagement, Rule 1.1(c) (delegation outside the firm), Rule 1.2(a) (Model Rule 1.2), Rule 1.4 (Model Rule 1.4), and the fee-division rule, Rule 1.5(f) (Model Rule 1.5(e)).

Citations and references

Rules of Professional Conduct:

• Model Rule 7.1 (communications concerning a lawyer's services) / Illinois Rule 7.1(a)
• Model Rule 7.4 (fields of practice; specialization) / Illinois Rule 7.4(a), (b), (c)
• Illinois Rule 1.1(c) (delegation of the matter to a lawyer outside the firm)
• Model Rule 1.2 / Illinois Rule 1.2(a) (consulting the client on means)
• Model Rule 1.4 / Illinois Rule 1.4 (keeping the client informed)
• Model Rule 1.5(e) / Illinois Rule 1.5(f) (division of fees, client's signed consent)

Other opinions cited:

• ISBA Advisory Opinion No. 92-07 (no hiring of outside lawyers for court calls or depositions without client knowledge and consent)

See also

• ISBA Ethics Op. 03-05: Identifying Non-Legal Accreditations
• ISBA Ethics Op. 03-03: Capital Litigation Trial Bar Designation
• ISBA Ethics Op. 16-04: Fee Division and Conflict-of-Interest Rules

Source

• Landing page: https://www.isba.org/ethics/opinions/9608