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.
Kim, Lahey & Killough Law Firm is pleased to announce the addition of Robert Merting as an attorney in the firm’s Greenville, SC, office. Mr. Merting’s primary focus will be the firm’s intellectual property practice, corporate law, and regulatory compliance. He will also provide legal services directed to patent application preparation, contract and licenses, trademarks, non-disclosure agreements, and litigation.
A native of South Carolina, Mr. Merting worked in the research lab at Milliken and Company while attending Wofford College. It was at Milliken and Company that he gained a deep understanding of the creation process while working in research and development, following strict corporate guidelines for developing and documenting intellectual property. “Today, I leverage the lessons from those R&D challenges while helping clients document and protect their own intellectual property. It is always a joy telling a client their patent will issue,” says Merting.
In addition to his intellectual property practice, Mr. Merting brings more than ten years of legal experience in the areas of corporate law, wills and trusts, estate planning, and firearms law. “We welcome Robert and are delighted to have him at Kim, Lahey & Killough,” commented founding attorney Doug Kim. “Our firm has doubled in size this past year as we grow to meet the legal needs of South Carolina businesses. Robert brings a unique skillset to our firm by combining his business experience while working at a major Upstate manufacturing company, his in-house counsel experience with a Department of Defense contractor, and his private practice experience to assist us in continuing to provide excellent legal services to our clients and meet their growing needs.”
Robert Merting earned a Bachelor of Science in computer science, a Bachelor of Arts in business economics from Wofford College, and his Juris Doctor from Washington and Lee University. He is admitted to practice before all South Carolina Courts, the South Carolina Supreme Court, the United States District Court for the District of South Carolina, and the United States Patent and Trademark Office.
With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate to the Lowcountry and across the globe.
Kim, Lahey & Killough Law Firm has been named in the 2023 U.S. News – Best Lawyers® “Best Law Firms” list in Greenville for the fourth consecutive year. Firms included in the 2023 “Best Law Firms” list are recognized for professional excellence with consistently impressive ratings from clients and peers.
Ranked firms, presented in three tiers, are listed on a national and regional-based scale. Firms that received a tier designation reflect the highest level of respect a firm can earn among other leading lawyers and clients in the same communities and practice areas.
Kim, Lahey & Killough is recognized as a Tier 1 law firm in the area of Patent Law and a Tier 3 law firm in the area of Trademark Law in Greenville.
With offices in Greenville and Charleston, SC and Brevard, NC, Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe. The firm serves the manufacturing, software, energy, finance, hospitality, tourism, and technology industries. Key practice areas include intellectual property, business and commercial litigation, mediation, employment, corporate and business matters, mergers and acquisitions, contracts, and cybersecurity.
The Kim, Lahey & Killough Law Firm is pleased to announce several of its attorneys are recognized by Best Lawyers® for 2023.
Founding member, Doug Kim, is recognized in the 29th edition of The Best Lawyers in America® in the practice areas of patent law and trademark law. He has been recognized in both areas previously as Greenville’s Trademark Lawyer of the Year, 2022, and Patent Lawyer of the Year, 2019. This is the eighth time he has been recognized by Best Lawyers.
In our Charleston office, B.C. Killough is also listed in The Best Lawyers in America in the practice areas of patent law and trademark law, as well as corporate law and intellectual property litigation. Killough has been recognized annually in Best Lawyers since 2010 for his work in these areas. In 2015, he was listed as The Corporate Law Lawyer of the Year for the Charleston metro.
Attorney Casey Martin is named in Best Lawyers: Ones to Watch in America™ in the practice areas of employment law for employees, employment law for managers, and employment law litigation. This recognition highlights the legal talent of lawyers who have been in practice for less than 10 years.
The Best Lawyers in America recognizes only the top 5.3% of elite lawyers in the nation across 150 practice areas. More than 12 million evaluations were considered in this purely peer-review to identify this year’s exclusive group of Best Lawyers honorees.
With offices in Greenville and Charleston, SC, and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.
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.
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.
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.
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.