Opinion 20-102

September 10, 2020

Please Note: See AO-347 concerning the status of Section 100.4(H)(2).

Digest:       A full-time judge may obtain a patent and license it to another.

Rule:         22 NYCRR 100.2; 100.2(A); 100.3(A); 100.4(D)(1)(a)-(c); 100.4(D)(2)-(4); 100.4(H)(1)(a); 100.4(H)(2); 100.4(I); Opinions 19-60; 00-01.

Opinion:

           A full-time judge asks if he/she may obtain a patent and thereafter license it to another.¹

           A judge must always avoid even the appearance of impropriety (see 22 NYCRR 100.2) and must always act to promote public confidence in the judiciary's integrity and impartiality (see 22 NYCRR 100.2[A]). Moreover, the judicial duties of a judge take precedence over any other activity of the judge (see 22 NYCRR 100.3[A]). A judge must not engage in financial and business dealings that (a) may reasonably be perceived to exploit the judge’s judicial position, (b) involve the judge with any business, organization or activity that ordinarily will come before the judge, or involve the judge in frequent transactions or continuing business relationships with “those lawyers or other persons likely to come before the court on which the judge serves” (22 NYCRR 100.4[D][1][a]-[c]). While a full-time judge generally may not serve as an officer, director, or other “active participant of any business entity” (22 NYCRR 100.4[D][3]), he/she may nonetheless “hold and manage investments of the judge and members of the judge’s family, including real estate” (22 NYCRR 100.4[D][2]). Where compensation for extra-judicial activities is permitted, such compensation may not exceed a reasonable amount (see 22 NYCRR 100.4[H][1][a]) and if exceeding the sum of $150 annually, must be reported in the office of the clerk of the court on which the judge serves or other office designated by law (see 22 NYCRR 100.4[H][2]).

           Intellectual property such as patents, trademarks and copyrights are considered “investments” within the meaning of Section 100.4(D)(2) and thus, subject to other requirements of Part 100, may be held and managed by the judge (see Opinion 19-60). Thus, a judge may patent an invention and manage and participate in a business entity engaged solely in managing that investment (see id.) with the caveat that such management must “minimize the number of cases in which the judge is disqualified” (22 NYCRR 100.4[D][4]). A judge may also sell a patent (see Opinion 00-01). As our prior opinions have permitted the sale of a patent, we conclude that it may also be licensed by the judge. Any such income must be reported to the extent required by the Rules (see 22 NYCRR 100.4[H][2] [annual disclosure to clerk of the court]; 100.4[I] [annual disclosure under Part 40]).

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¹ As the judge did not disclose the nature of his/her invention, we can only comment generally on the subject of patenting and licensure.