USPTO Qualifies as a “Foreign Jurisdiction” for Reciprocal Discipline; First Department Tailors Sanction to New York Precedent for Outsourced Trademark Practice

Introduction

This commentary examines the Appellate Division, First Department’s per curiam decision in Matter of Ni, 2025 NY Slip Op 05893 (Oct. 23, 2025). The Attorney Grievance Committee (AGC) sought reciprocal discipline in New York after the United States Patent and Trademark Office (USPTO) suspended attorney Angus Ni for five months for professional misconduct in trademark matters. The First Department expressly holds that the USPTO is a “foreign jurisdiction” for purposes of reciprocal discipline under 22 NYCRR 1240.13 and 1240.2(h), adopts the USPTO’s misconduct findings as New York violations, and imposes a three-month suspension calibrated to First Department precedent. The Court also declines to make the suspension retroactive (nunc pro tunc).

The case arises from Mr. Ni’s rapid scaling of a trademark filing practice that heavily relied on a nonlawyer Chinese “referring partner,” Shenzhen Cadmon Intellectual Property Co., Ltd. (SCIP), to intake clients, prepare and file applications, respond to USPTO correspondence, and even enter the attorney’s signature—all with limited or no attorney review in many instances. After a stipulated resolution with the USPTO Office of Enrollment and Discipline (OED), the AGC moved in New York for reciprocal discipline. Mr. Ni opposed, arguing among other things that the USPTO is not a qualifying foreign jurisdiction and that the conduct would not constitute misconduct in New York.

Summary of the Opinion

The First Department:

Holds that the USPTO qualifies as a “foreign jurisdiction” under 22 NYCRR 1240.2(h), aligning the First Department with the Third and Fourth Departments.
Finds none of the three defenses to reciprocal discipline under 22 NYCRR 1240.13 applicable (due process, infirmity of proof, or conduct not constituting New York misconduct), in light of Mr. Ni’s OED stipulation and admissions.
Concludes the underlying conduct would violate multiple New York Rules of Professional Conduct (RPC), including rules 1.1(a), 1.3(a), 3.3(a)(1) and (3), 5.3(b)(1), 5.5(b), 8.4(c), 8.4(d), and 8.4(h).
Imposes a three-month suspension (rather than the USPTO’s five-month suspension), reasoning that three months better matches comparable First Department sanctions; declines to make the suspension nunc pro tunc.
Orders standard suspension conditions under Judiciary Law § 90 and 22 NYCRR 1240.15.

Analysis

Precedents Cited and Their Influence

The Court anchors its ruling in several lines of precedent:

USPTO as a “foreign jurisdiction”: The Court expressly “agrees” with the Third and Fourth Departments that have already imposed reciprocal discipline based on USPTO sanctions. Cited cases include Matter of Swayze, 230 AD3d 906 (3d Dept 2024); Matter of Yiheng Lou, 206 AD3d 1221 (3d Dept 2022); Matter of Whitney, 202 AD3d 99 (4th Dept 2021); and Matter of Caraco, 197 AD3d 1391 (3d Dept 2021). These decisions collectively established that the USPTO is a qualifying disciplining authority for purposes of 22 NYCRR 1240.13. The First Department now explicitly joins that consensus.
Framework for reciprocal discipline: Matter of Milara, 194 AD3d 108 (1st Dept 2021) provides the three narrow defenses: lack of due process; infirmity of proof; or conduct not constituting NY misconduct. Milara also supports deference to the foreign forum’s findings where an attorney stipulates and admits misconduct.
Deference to foreign sanctions and departures: The Court reiterates its general practice of deferring to the original jurisdiction’s sanction (see Matter of Milara; Matter of Tabacco, 171 AD3d 163 [1st Dept 2019]; Matter of Blumenthal, 165 AD3d 85 [1st Dept 2018]) but notes that it will depart where appropriate (see Matter of Karambelas, 203 AD3d 75 [1st Dept 2022]; Matter of McHallam, 160 AD3d 89 [1st Dept 2018]). Here, it departs to impose three months instead of five.
Sanction calibration to NY precedent: The Court aligns the sanction with comparable First Department cases: Matter of Braverman, 178 AD3d 35 (2019) (aiding unauthorized practice, 3-month suspension); Matter of Bernstein, 170 AD3d 77 (2019) (lack of diligence and dishonesty, 3-month suspension); Matter of Weichsel, 154 AD3d 207 (2017) (failure to supervise nonlawyer employee, 3-month suspension); Matter of Bartley, 151 AD3d 1 (2017) (competence and diligence lapses, 3-month suspension). These cases underscore the Court’s aim for consistency and proportionality in sanctions.

Legal Reasoning

The Court’s reasoning proceeds in three steps:

Foreign jurisdiction status of the USPTO: Interpreting 22 NYCRR 1240.2(h) and 1240.13, the Court concludes that the USPTO is a qualifying foreign jurisdiction for reciprocal discipline. This aligns with other Departments and reflects the USPTO’s recognized authority to regulate the professional conduct of practitioners before it. The Court thus rejects respondent’s threshold challenge.
Applicability of reciprocal discipline defenses: The Court applies the Milara framework and finds none of the three defenses met:
- Due process: Respondent received notice, negotiated, and signed an OED stipulation admitting misconduct and consenting to a five-month suspension. That stipulation defeats any claim of lack of notice or opportunity to be heard.
- Infirmity of proof: Respondent’s admissions supply the proof for the misconduct findings.
- Conduct not constituting New York misconduct: The Court identifies direct New York analogs to the OED rule violations, finding that the same conduct would violate NY RPC 1.1(a), 1.3(a), 3.3(a)(1), 3.3(a)(3), 5.3(b)(1), 5.5(b), 8.4(c), 8.4(d), and 8.4(h). In particular, the hands-off, “at scale” outsourcing model with nonlawyer preparation, filing, and signature-entry implicates competence, diligence, candor, supervision, aiding the unauthorized practice of law, dishonesty, and conduct prejudicial to the administration of justice.
Sanction selection and retroactivity: Although the Court “generally defers” to the foreign jurisdiction’s sanction, it concludes this case warrants departure. A three-month suspension more closely matches First Department precedent for comparable misconduct. The Court also rejects nunc pro tunc retroactivity, noting its general practice not to impose retroactive discipline in reciprocal matters.

Impact and Significance

The decision has immediate and broad implications:

Reciprocal discipline from federal agencies: By expressly recognizing the USPTO as a “foreign jurisdiction,” the First Department clarifies that federal agencies with disciplinary authority—at least the USPTO—can trigger reciprocal discipline in New York. This harmonizes the First Department with the Third and Fourth Departments and reduces forum-driven inconsistencies.
Outsourced, high-volume trademark practices: The Court signals that assembly-line models delegating core legal tasks and signatures to nonlawyers—especially foreign vendors—are fraught with disciplinary risk. Lawyers must maintain adequate supervision, exercise independent professional judgment, and personally satisfy agency-specific requirements (such as USPTO signature rules).
Sanction calibration to local precedent: Even when imposing reciprocal discipline, the First Department will tailor the sanction to its own precedent to promote proportionality and consistency. Attorneys should not assume that New York will mirror the exact term imposed elsewhere.
No retroactive relief as a default: The Court reiterates its general refusal to make reciprocal suspensions retroactive, an important practical consideration for attorneys hoping to synchronize suspensions across jurisdictions.
Rule coverage clarity: The Court’s enumeration of New York rules implicated by this fact pattern provides a roadmap for how federal-agency misconduct maps onto New York’s RPC—useful for practitioners who practice before the USPTO under their New York licenses.

Complex Concepts Simplified

What is “reciprocal discipline”?

Reciprocal discipline is when a New York court imposes discipline based on discipline first imposed in another jurisdiction (which can include certain federal bodies). New York does not relitigate the merits; it asks instead whether the attorney had due process, whether the proof was infirm, or whether the conduct would be misconduct in New York. If none of those defenses apply, New York typically imposes discipline consistent with its own sanctioning norms.

What is a “foreign jurisdiction” under 22 NYCRR 1240.2(h)?

For attorney discipline purposes, a “foreign jurisdiction” is not limited to other U.S. states; it can include bodies outside the New York state courts that possess authority to regulate attorney conduct—here, the USPTO. This decision confirms that, at least for the First Department, USPTO discipline can prompt reciprocal discipline in New York.

Why does the attorney’s personal signature matter at the USPTO?

The USPTO’s rules require that signatures be entered by the signatory themselves. Allowing nonlawyers to enter an attorney’s signature is improper and can mislead the tribunal about who has reviewed, approved, and taken responsibility for filings. Violations implicate candor-to-tribunal duties and supervisory and honesty obligations.

What are the core New York rules implicated in this case?

Rule 1.1(a) (Competence): Lawyers must have the knowledge, skill, and preparation necessary for the representation. Scaling into a specialty without sufficient oversight can violate this duty.
Rule 1.3(a) (Diligence): Lawyers must act with reasonable diligence and promptness; delegating critical communications and filings without adequate review risks neglect.
Rule 3.3(a)(1) and (3) (Candor to the Tribunal): Prohibits false statements and using evidence known to be false; signature misrepresentations and unchecked filings can implicate these provisions.
Rule 5.3(b)(1) (Supervision of Nonlawyers): Lawyers are responsible for nonlawyer conduct they order, direct, or ratify that would be a violation if done by a lawyer.
Rule 5.5(b) (Aiding Unauthorized Practice): Lawyers may not aid nonlawyers in the unauthorized practice of law; letting nonlawyers prepare and file legal documents without adequate supervision can cross this line.
Rule 8.4(c), (d), (h) (Misconduct): Bars conduct involving dishonesty, fraud, deceit or misrepresentation; conduct prejudicial to the administration of justice; and other conduct adversely reflecting on fitness as a lawyer.

Practical Takeaways for Practitioners

If you practice before the USPTO, its disciplinary actions can trigger reciprocal discipline in New York. Maintain the same level of ethical compliance you would before a court.
Do not allow nonlawyers to enter your signature on USPTO filings. Ensure compliance with the USPTO’s personal signature requirements.
High-volume or “at scale” models are not per se improper, but they require robust attorney supervision, personal review where needed, direct client-lawyer relationships, and careful quality control.
Have clear protocols for reviewing all critical USPTO correspondence and filings. An “escalation-only” model that sidelines the lawyer invites supervisory and diligence breaches.
Map federal-agency practice rules to New York’s RPC. Conduct that violates 37 CFR Part 11 is often coextensive with NY RPC violations.
Expect the First Department to calibrate discipline to its own precedent; do not assume New York will mirror the foreign sanction either upward or downward. Also, do not expect retroactive effective dates in reciprocal matters absent exceptional circumstances.

Conclusion

Matter of Ni cements two important propositions in the First Department. First, the USPTO is a “foreign jurisdiction” for reciprocal discipline under 22 NYCRR 1240.13 and 1240.2(h), bringing the First Department into express alignment with the Third and Fourth Departments. Second, while New York often defers to the sanction imposed elsewhere, it will adjust the term to fit its own sanctioning landscape. On the merits, the Court underscores that an outsourced, assembly-line trademark practice that delegates core legal tasks and signature responsibilities to nonlawyers—especially without consistent attorney review—violates fundamental duties of competence, diligence, candor, supervision, and honesty, and may amount to aiding the unauthorized practice of law.

The decision offers a clear compliance message to New York lawyers practicing before federal agencies: your ethical obligations travel with you, and practices designed for scale must still honor the profession’s nondelegable duties.