Washington, D.C. – U.S. News & World Report and Best Lawyers, for the 11th consecutive year, collaboratively announce the release of the “Best Law Firms” rankings. The Kim & Lahey Law Firm has been recognized for this honor three times since it was founded in 2018.
Join Upstate SC Alliance and Kim & Lahey Law Firm to hear from USPTO representatives Elizabeth Dougherty, Cynthia Henderson, and Dominic Keating. Dominic will provide an overview of the USPTO IP Attaché Program including the history of the program, locations, and services provided. Cynthia will discuss her work in Mexico City and the issues she encounters in the region, including how she assists U.S. companies on specific intellectual property issues, her training and outreach programs to raise awareness, and her experience raising issues with foreign government officials throughout the region.
Following their presentations, attendees can participate in a discussion moderated by Kim & Lahey Law Firm Founder & Attorney Doug Kim.
When: Wednesday, November 10, 2021 | 10:00 – 11:00 a.m.
Where: Anywhere you’d like! Check your confirmation email for the Zoom link.
Please RSVP by Monday, November 8th to save your spot.
Last week, the United States Department of Justice announced that Viktors Suhorukovs, a citizen of Latvia, was sentenced to more than four years in federal prison and ordered to pay over $4.5 million in restitution after pleading guilty to mail fraud in a multi-million-dollar scheme to defraud owners of U.S. trademark registrations. Suhorukovs established and operated Patent and Trademark Office, LLC, and Patent and Trademark Bureau, LLC. These entities gave the false impression that they were, in fact, the United States Patent and Trademark Office (USPTO), scamming more than 2,900 U.S. trademark registrants out of millions of dollars for inflated, and often fake, renewal fees.
According to the DOJ, Suhorukovs’ renewal notices misrepresented the trademark registration’s expiration date. The renewal notices also contained a QR Code which linked the trademark holder directly to the official government USPTO website. The notices directed the victim to sign and return the notice. Once the victim signed and returned the renewal notice, Suhorukovs sent the victim an invoice for the renewal service and charged inflated prices for the renewal of the trademark. Victims would then, unknowingly, send renewal fees to Suhorukovs’ businesses, believing they were dealing with the USPTO.
In the notices and invoices, Suhorukovs represented he would renew the trademark registration, when in fact, he did not or could not renew the registration at the time he represented to the victims that he would because, under applicable law, those trademarks were not yet eligible for renewal. In addition, under the USPTO’s rules, Suhorukovs could not lawfully file renewal documents on behalf of registrants because he was not a licensed U.S. attorney.
This is one of many schemes that confuse and defraud owners of U.S. registrations with solicitations that are intended to look like official USPTO correspondence. These schemes often falsely promise to take required maintenance actions on behalf of the registration owner, or they scam registrants into paying for services they don’t need.
The USPTO says it works hard to fight these solicitations and assist law enforcement in cases like Suhorukovs’. Learn more about their ongoing efforts to combat scams on the USPTO website, including nine things you can do to protect your trademark application or registration.
Greenville, S.C. — August 19, 2021— A founding member of the Kim & Lahey Law Firm is named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville. This is the seventh time Douglas Kim has been recognized by Best Lawyers. The long-time intellectual property attorney says, “I am honored to have been selected for this ‘Lawyer of the Year’ award especially since it’s determined by peer reviews.”
The 2022 edition of The Best Lawyers in America recognizes the professional excellence of more than 66,000 lawyers in 147 practice areas. “Lawyer of the Year” honors are awarded to only one lawyer per practice area in each region with extremely high overall feedback from their peers, making it an exceptional distinguishment. Of all the attorneys in private practice in the United States, only 5% are recognized by Best Lawyers of America.
This is the second time Doug has received this top honor. In 2019, Doug was named Best Lawyers® Patent “Lawyer of The Year” in Greenville.
Doug is an innovation enthusiast, entrepreneur and long-time business advocate who enjoys providing legal solutions and strategies tailored to each client’s goals, from start-ups to multinational corporations. Doug helps clients match their intellectual property goals with their business goals by providing legal strategies to protect inventions (patents), brands (trademarks), websites, software, apps, music, photos, and websites (copyright, licenses and Internet law), and trade secrets. Doug also chairs the South Carolina Bar Intellectual Property and Innovation Committee.
The Kim & Lahey Law Firm is proud to announce that our attorneys are being honored by Greenville Business Magazine as part of South Carolina’s 2021 Legal Elite. This is the second year in a row that all Kim & Lahey attorneys have made the list.
Greenville Business Magazine’s Legal Elite is the only regional awards program that allows every active attorney to nominate and vote for their peers across 26 categories. The following are the Kim & Lahey attorneys selected for inclusion, as well as the practice areas in which their work is recognized:
Douglas Kim: Intellectual Property and Innovation – Business Litigation
Seann Lahey: Intellectual Property and Innovation – Business Litigation
Jason Rosen: Tax and Estate Planning – Corporate Law, Mergers, and Acquisitions
Casey Martens: Labor and Employment
Thank you to all of our peers who voted and congratulations to all of the South Carolina attorneys who are being recognized this year.
Hear from national experts during this five-part webinar series. You will learn everything from the basics of intellectual property, including trademarks, patents and copyrights, to how to protect your inventions using the claims process. Session titles include: The Path to a Patent, IP basics, patent searching, drafting a patent application, and drafting patent claims.
The Path to a Patent, Part I: IP Basics
Elizabeth discussed intellectual property basics during this interactive virtual session. In this module, she provided a brief overview of the different types of IP (patents, trademarks, trade secrets, and copyrights). She reviewed the patenting process from invention to application to issue. Finally, she covered requirements for patentability, how to determine whether a provisional or non-provisional application is right for you, and how to weigh the costs and benefits of hiring a patent attorney.
The Path to a Patent, Part II: Patent Searching
Before you file your patent application, you need to conduct a prior art search. At this virtual presentation, you will learn about the benefits of searching, how to perform a prior art search using keywords and the Cooperative Patent Classification (CPC) system, and how to build a search strategy. We will also provide resources for filing your application.
The Path to a Patent, Part III: Drafting a Patent Application 101
July 21, Presenters: William Vaughn, USPTO, and Attorney Doug Kim
Learn how to prepare for a patent during this interactive workshop. USPTO experts and Attorney Doug Kim will share insights on the formalities and requirements of drafting a patent application, as well as common pitfalls to avoid. For example, when do you know you’re ready to apply for a patent? How do you prepare and what questions should you ask an attorney? Join us for the answers and to learn about state and regional patent pro bono programs that offer financial aid for inventors.
The Path to a Patent, Part IV: Learn How to Draft Patent Claims
Wednesday, August 4 @11:00am, Presenters: Stephen Yanchuk, USPTO and Attorney Doug Kim
Claim drafting may be the most important part of protecting your invention. How do claims work in the courtroom? Why do they matter? Learn the basics of claim drafting from USPTO Primary Patent Examiners and Attorney Doug Kim in this interactive workshop. You will develop a better appreciation of how a patent examiner views a claim during the course of examination. We’ll also cover some of the latest infringement cases involving big-name brands and discuss how wording in their claims may have affected outcomes.
The Path to a Patent, Part V: Electronic filing in DOCX using Patent Center
DOCX is a word processing file format based on open standards, including Extensible Markup Language (XML) that is supported by many popular word processing applications, such as Microsoft Word, Google Docs, Office Online, Pages for Mac, and LibreOffice. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents. Uploading a multi-section document in DOCX format containing the specification, claims abstract and drawings is detected and split into single files for each section and document codes are automatically assigned, which saves initial processing time. A feedback document is generated pre-submission where warnings and errors are pinpointed in a copy of the uploaded document in real time, which reduces time responding to non-compliant notices and enhances the quality of examination.
WASHINGTON – The United States Patent and Trademark Office (USPTO) today officially issued U.S. patent number 11 million, recognizing an important milestone in American innovation and ingenuity.
“This momentous benchmark is a reminder of the remarkable and enduring tradition of American innovation that has driven our nation forward for generations,” said U.S. Secretary of Commerce Gina Raimondo. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognize patent 11 million, its inventors, and its promise.”
“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone.”
Patent number 11 million, granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota, is for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.
“We are incredibly excited and honored to be granted U.S. patent number 11 million for our invention,” said inventor Saravana Kumar. ”The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality. We could not have gotten here without the support of so many, including my wife Katherine and 4C Medical’s founder, physician Dr. Jeff Chambers. Currently, our team is actively working to demonstrate the benefits of our technology to treat patients with severe mitral regurgitation as part of a U.S. clinical trial.”
“4C Medical’s approach to inventing is simple—we identified a need, created a solution, and demonstrated its benefits. We are a team of highly driven and creative engineers who are committed to bringing lifesaving technologies to people who need it most,” explained inventor Jason Diedering.
Background on the U.S. patent system
Patents predating the Patent Act of 1836 were unnumbered, identifiable only by the name of the patentee and the date of issue. These patents became known as “X-patents” after Patent No. 1 was granted to Senator John Ruggles on July 11, 1836 for a traction wheel for steam locomotives—the first patent issued under the new law, which officially assigned patent numbers. A few months after the Patent Act of 1836 was enacted, a catastrophic fire at the Patent Office destroyed almost all of the records and models related to the X-patents. Efforts to reconstruct the records lost in the fire continue to this day.
Patent 11 million comes three years after the USPTO issued patent number 10 million in 2018. As part of that celebration, the USPTO redesigned the official U.S. patent cover—the seal-and-ribbon document awarded with each patent grant—paying homage to the classic elegance of its predecessors. A list of the patent milestones can be found here.
In light of the pandemic, some entrepreneurs who may have steered the course 5 – 10 years more are now considering passing their businesses down to family or selling them early. For those looking to buy, there are new questions about how to do your due diligence in the post-COVID era.
If you’re thinking about buying or selling a business in 2021, these are two areas where avoidable mistakes are often made:
- Licensing – Are licenses involved? Who is the license holder? How easy is it to transfer?
- Contracts / Agreements – Who owns the company? What happens if one partner wants out or dies unexpectedly? How do you handle contracts with existing employees? With vendors?
Attorney Jason Rosen will answer those questions and more. Jason helps entrepreneurs create businesses, negotiate contracts and buy and sell assets. He advises business owners how to avoid legal situations before they arise and guides individuals in preparing for their future through legacy planning.
This Zoom webinar is free and open to the public on Thursday, May 6 from 11:30am – Noon. For more information, read more and register here.
A recent decision by the U.S. Federal Circuit Court of Appeals is being hailed as a big win for the photo industry. The 2-year battle revolves around a company’s attempt to enforce a software patent, contending it owned exclusive rights to a data processing system for grouping photographs together.
The Kim & Lahey Law Firm represented the plaintiff, ImageQuix, a software company that was based in Greenville, SC, until recently moving to Raleigh, NC. ImageQuix is a pioneer in the online photo sales industry and has serviced professional photographers for more than 20 years.
In fall of 2018, Snapizzi, a Washington state corporation, began contacting ImageQuix about its patented image tagging technology (U.S. Patent 8,794,506). ImageQuix had just released Blueprint, their latest photography workflow software that also includes image tagging to sort and organize large volumes of images.
Snapizzi insisted they purchase a license in order to continue offering image tagging. In reviewing the patent with its counsel, Doug Kim, ImageQuix President Alex Kovacevic decided to take the dispute head on. ImageQuix filed a lawsuit asking to the court to hold that Snapizzi’s patent was invalid and not infringed. ImageQuix stated that photo tagging technology was not new to the industry and that the Snapizzi patent was invalid. Snapizzi snapped back with a counterclaim alleging patent infringement.
In December of 2019, the District court ruled the Patent was invalid under the now famous United States Supreme Court 2014 ruling Alice Corp. v. CLS Bank. Alice held that a computer implemented electronic escrow service was an “abstract idea” and therefore ineligible for patent protection under 35 USC § 101. In response, Snapizzi appealed to the Federal Court that hears all patent appeals. Last week, the Federal Circuit affirmed the District Court holding that the Snapizzi patent was invalid.
Rich Scanlon, CEO, ImageQuix, says, “It’s never an easy decision to take on the burden of a long court proceeding, but we felt it was our duty as industry leaders to go on the offensive. This ruling is also vindication for the school photo industry as a whole. We fought back against those who would try to take credit for, and advantage of, the collective innovations our entire industry has invested immense resources in. We can, and should, all share in this victory.”
“We could not stand by and allow innovation to be challenged and stifled. I am proud to be a part of a company that cares and always does the right thing,” says Tim McCain, CRO of ImageQuix and Founder of PhotoLynx.
“From the beginning, we believed that the Snapizzi patent was invalid and that its claims were in violation of the Alice ruling. We’re happy that both the District Court and the Federal Circuit Court of Appeals agreed with us,” says Doug Kim.
Although the Alice opinion did not specify that all software is patent ineligible, the case is widely considered as a decision against software patents or patents on software for business methods. Patent eligibility rules are supposed to keep patents from being issued that cover ineligible subject matter, which the U.S. Supreme Court determined in its Alice decision constitutes the “basic tools of scientific and technological work” so as not to impede innovation and undermine patent laws.
“While Alice introduced hurdles to patenting software, understanding these rules and rulings allows a patent to be written to minimize the risk and even avoid § 101 rejections,” said Doug Kim, a former software programmer and now patent attorney.
Firms included in the 2021 Edition of U.S. News – Best Lawyers “Best Law Firms” are recognized for professional excellence with consistently impressive ratings from clients and peers. To be eligible for a ranking, a ﬁrm must ﬁrst have a lawyer recognized in The Best Lawyers in America©, which recognizes the top 5% of private practicing lawyers in the United States. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.
Since it was first published in 1983, Best Lawyers® has become universally regarded as the definitive guide to legal excellence. Best Lawyers lists are compiled based on an exhaustive peer-review evaluation. Almost 108,000 industry leading lawyers are eligible to vote (from around the world), and they have received over 13 million evaluations on the legal abilities of other lawyers based on their specific practice areas around the world. For the 2021 Edition of The Best Lawyers in America©, 9.4 million votes were analyzed, which resulted in more than 67,000 leading lawyers being included in the new edition. Lawyers are not required or allowed to pay a fee to be listed; therefore inclusion in Best Lawyers is considered a singular honor.
The pandemic has forced many changes in the business world, from closings and layoffs for some, to successful pivots for others. One surprising outcome is the surge of new startups in America, which had increased by almost 50% for the year by October.
To celebrate this renaissance, i4Series is hosting a free online event as part of Global Entrepreneurship Week on November 19 from 11am – 12pm. Whether you’re a startup or looking to scale your business, join us to learn about software and legal strategies that put you on a path to success.
Doug Kim has been supporting the entrepreneurship community for more than 20 years, helping innovative businesses of all sizes thrive. Now, more than ever, during this time of rapid innovation and uncertainty, entrepreneurs need legal strategies that empower them to succeed, strategies like protecting inventions and your brand, protecting your work from being copied, and using contracts to safeguard your interests to name a few.
He is joined by fellow speaker, Zac Muma, a Business Solutions Specialist for Microsoft. Zac works with entrepreneurs to identify what they need in their software stack and helps them get set up. With so many apps available, it’s hard to know which ones you may need and how they work together. Whether you’re B2B, eCommerce or offer professional services, Zac will show you ways to streamline operations and get new clients.