Greenville Law Firm expands to Charleston and NC
Kim and Lahey Greenville Law Firm welcomes attorneys Casey Martens to our new North Carolina office, as well as B.C. Killough and Ernest B. Lipscomb, III in our newly established Charleston office. Moving forward, the firm will operate under the tradename Kim, Lahey & Killough.
These additions expand the firm’s geographical reach, enhancing its capabilities in providing legal services to companies ranging from start-ups and early ventures to established international markets throughout the Carolinas. Additionally, these combinations broaden the industries the firm can serve, including manufacturing, software, energy, finance, hospitality, tourism, and technology. Key practice areas will include intellectual property, business and commercial litigation, mediation, employment, corporate and business matters, mergers and acquisitions, contracts, and cybersecurity. Each individual firm brings unique benefits along with them.
Kim, Lahey & Killough is committed to advancing diversity and inclusion in the legal profession. Adding Casey to the team continues the active promotion of their passionate commitment to improve diversity in this field. The expansion into North Carolina has been secured by a new office location in Brevard, NC.
The practice areas of the firms are complementary and will heighten our presence in the South and North Carolina economies. “The practice strengths, collaborative culture and focus on providing exceptional client-centric service will help us to deliver even greater value to our clients. We’re confident that this combination will accelerate our growth and lead to long-term, sustained success,” says Doug Kim.
Casey Martens brings a unique mix of interests and experience in public service and small-business restaurant management to her litigation contact and employment law practice.
Some of Casey’s highlights are her work with the South Carolina ACLU on prison reform, the League of Women Voters Voting Rights Act presentations and voter registration to South Carolina high schools, and the Young Lawyers Association’s initiative for educating students about the intersection and impact of social media, technology, and the law. For these and her other efforts, Casey was awarded the “William Bennett Regan Award for Outstanding Public Service” by the Charleston School of Law.
Experience has its advantages. With a decade of small-business management to draw on, Casey recognizes the realities and challenges that employers and employees face in small business settings. Her tenure in the food, beverage and hospitality industries gives her a uniquely informed view of how-to best structure and implement preventative measures such as policies, procedures, and employee manuals. Casey is adept at how to approach social issues like sexual harassment and racial discrimination, as well as financial issues such as non-payment of wages and overtime.
Previously, Casey served as an intern and a paralegal in a wide variety of legal areas, including product liability, probate, the SC Department of Health and Environment, and the US District Court for the District of South Carolina.
The South Carolina Lowcountry
The inclusion of B.C. Killough and Ernest B. Lipscomb, III in Charleston brings two legal powerhouses.
For over thirty years, Bill has provided legal services in the areas of patents, trademarks, copyrights, commercial transactions, litigation, and mediation to his clients. He is a Senior Fellow with the Litigation Counsel of America, is rated AV Preeminent® by Martindale Hubbell®, and listed in The Best Lawyers in America (2015 Charleston, SC Corporate Lawyer of the Year), South Carolina Super Lawyers and Charleston Business Magazine as one of its Legal Elite. Killough and his co counsel Lip Lipscomb both previously served as adjunct professors of the patent law course at the University of South Carolina School of Law.
Ernest B. Lipscomb, III
Ernest B. Lipscomb, III is the author of the seminal eleven-volume treatise in the patent field, Lipscomb’s Walker on Patents, and Lipscomb’s Patent Claims. He has also testified as an expert witness in numerous patent cases. Lipscomb is rated AV Preeminent® by Martindale Hubbell® and recognized by both The Best Lawyers of America and Super Lawyers for his work in trademarks, patents, and intellectual property law. In 2015, the South Carolina Bar Foundation honored him as a member of the Nifty Fifty Class.
“We are excited to bring the comprehensive knowledge of both Bill and Lip to the firm and look forward to further enhancing the legal services we offer to our existing and future clients”, says Doug Kim. “With this new expansive presence in both Carolinas, Kim Lahey & Killough not only gains a larger geographical footprint, we increase our resources network, enabling us to provide an expended legal service offering to our clients.”
Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights. With our client-centric focus, we seek to understand your needs and customize legal solutions that best achieve your goals and budgets.
Upcoming Webinar – Protecting IP Overseas: USPTO Trade Attaché Program
Did you know the U.S. Patent & Trademark Office (USPTO) offers services and information to U.S. companies entering foreign markets or conducting business abroad?
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.
European Man Sentenced for Impersonating USPTO
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.
Doug Kim named Best Lawyers® 2022 Trademark “Lawyer of The Year” in Greenville
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.
Trademark Renewal Scams: A Growing Problem. Don’t be Fooled.
Anyone who has registered or applied for a trademark knows it eventually must be renewed. Unfortunately, bad actors know this too and are trying to rip you off. According to the US Patent and Trademark Office (USPTO), trademark renewal scams are on the rise. They’re becoming so sophisticated that the USPTO has filed several trademark applications to increase protection for its own brand.
Being on a national trademark register is one of the many benefits of have a federally registered trademark. It allows others to search and find your registration. When other companies are trying to determine if a name is “available,” one of the first places they look is the USPTO database of trademark registrations and pending applications. To keep a trademark registration enforceable, it must be renewed periodically. Generally, the first renewal is five years from registration. The next one in five more years and then every 10 years after that. Unfortunately, bad actors are also looking at the public database. The USPTO says they’re seeing an increasing number of misleading solicitations and trademark filing scams.
The USPTO has also stated that it is “seeing more sophisticated enterprises entering the space” with some scams even impersonating the US Patent and Trademark Office. I know first hand. I received a fraudulent text regarding my trademark just last year. The USPTO has taken steps in the past to curb this misleading and sometimes illegal behavior, including providing scam alerts, working with law enforcement and sanctioning filers who violate the US Patent and Trademark Office rules.
On August 4, 2021, the Department of Commerce (the agency under which the USPTO sits), filed several applications for the federal registration of USPTO marks. The USPTO hopes with a federal registration, it can improve its ability to stop these scams and protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation with the USPTO. In appreciation of the potential conflict of filing an application in its own office (because the application would be examined by the USPTO) the Department of Commerce is the actual applicant.
As we see more and more activity online and with more and more access to information, we can expect these scams to continue. If you receive a notification from a party you do not know (for example, not your law firm) take caution. Some of the known violators call themselves names like:
“Patent and Trademark Office”
“Patent & Trademark Office”
“Patent and Trademark Agency”
“Patent and Trademark Bureau”
“Trademark Compliance Center”
“Trademark Compliance Office”
“Trademark Office LTD”
“United States Trademark Registration Office”
One company in Belize went so far as to attempt to register the mark PATENT & TRADEMARK AGENCY. In response, the USPTO stated, “Registration is refused because the applied-for mark PATENT & TRADEMARK AGENCY consists of or includes matter which may falsely suggest a connection with a US government agency, specifically, the US Patent and Trademark Office.”
If you have any doubt as to the authenticity, truthfulness or honesty of any communication you receive concerning your trademark registration or application, contact an experienced trademark attorney for assistance.
Kim & Lahey Attorneys Honored in 2021 Legal Elite
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.
Join Us: Special Webinar Series featuring the U.S. Patent Office!
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
June 8, Presenter: Elizabeth Dougherty, USPTO
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
July 8, Presenter: Cynthia Sdrewski, USPTO
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
Thursday, August 19 @11:00am, Presenter Kimberly Williams
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.
United States Issues Patent Number 11,000,000
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.
Strategies for Buying or Selling a Business During a Pandemic
Join us for the first in a series of Micro Meetings where we’ll dive deep into one topic during a 30-min Zoom, focusing on two main points to help innovative business owners reach their goals.
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.
Patent Victory Seen as a Win for Photo Industry
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.