Five Kim Lahey Killough attorneys named 2025 Best Lawyers
Five Kim Lahey Killough attorneys named in Best Lawyers for work in intellectual property, corporate and employment law
Kim, Lahey & Killough Law Firm is honored to announce that five of the firm attorneys are named in The Best Lawyers in America® 2025 edition:
Charleston patent attorney B. C. Killough is recognized for his work in:
- Business Organizations (including LLCs and Partnerships)
- Corporate Law
- Litigation – Intellectual Property
- Patent Law
- Trademark Law
Previously, Killough was honored as the Corporate Law Lawyer of the Year for the Charleston metro in 2015.
In the Greenville, SC metro market, four Kim, Lahey & Killough attorneys are recognized, including firm founder Douglas W. Kim, who is honored for his work in the areas of:
- Litigation – Intellectual Property
- Litigation – Patent
- Patent Law
- Trade Secrets Law
- Trademark Law
Kim has previously been recognized as a Lawyer of the Year in Greenville, SC, in two of these areas: as Trademark Lawyer of the Year in 2022 and the Patent Lawyer of the Year in 2019.
Greenville intellectual property attorney Seann Lahey is recognized for his work in:
- Trademark Law
Additionally, Seann has extensive experience dealing with international and U.S. patent prosecution. His practice also regularly includes matters on trademarks, copyrights, trade secrets, licensing of intellectual property rights, and rendering legal opinions on validity, infringement and enforceability of intellectual property rights, as well as litigation involving intellectual property rights.
IP attorney Hunter S. Freeman is commended for his work in:
- Commercial Litigation
- Copyright Law
- Litigation – Intellectual Property
- Trademark Law
As an Intellectual Property attorney, experienced litigator and certified mediator, Hunter Freeman’s 20+ years of experience and insight provide novel ways for clients to create value through the protection, prosecution and enforcement of their IP.
Attorney Casey Martens practices employment and business law in both the Greenville SC and Brevard NC offices of Kim, Lahey & Killough. Licensed in South Carolina, North Carolina and Georgia, her law practice focuses in the areas of business disputes and litigation, state and federal employment law, drafting and enforcement of restrictive covenants, and business disputes involving tortious interference with contract. Casey is recognized as a 2025 Best Lawyers One to Watch in America in the areas of:
- Employee Benefits (ERISA) Law
- Labor and Employment Law – Employee
- Labor and Employment Law – Management
- Litigation – Labor and Employment
Since 1983, The Best Lawyers in America has compiled and reviewed peer evaluations from across the United States to identify an annual list of honorees. The Best Lawyers in America recognizes only the top 5.3% of lawyers in the nation across 150 practice areas.
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.
Seven attorneys named 2024 Legal Elite
Seven Kim, Lahey & Killough attorneys listed as 2024 Legal Elite by Charleston Business and Greenville Business Magazines
Kim, Lahey & Killough is pleased to announce that seven attorneys have been named in the 2024 Legal Elite lists. Notably, all five of the firm’s registered patent attorneys were recognized for their work in the areas of intellectual property and innovation, a core focus of the law firm.
Greenville Business Magazine and Charleston Business Magazine recognized Doug Kim, Seann Lahey, Hunter Freeman, Robert Merting and B.C. Killough for their contributions to Intellectual Property and Innovation. “This recognition from our peers is a testament to the depth and breadth of our IP practice, as well as our firm’s commitment to excellence. We are honored to have our entire patent team acknowledged, alongside our talented colleagues in employment and corporate law,” commented firm founder, Doug Kim. Additionally, Casey Martens and Emily Bohan were honored for their work in Employment Law and Corporate Law – Business Organization matters.
Doug Kim is no stranger to legal awards and accolades. In addition to his Legal Elite IP and Innovation recognition, Kim has been listed in South Carolina Super Lawyers annually since 2017, and he has been recognized in the Greenville, SC Best Lawyers® list, named the Best Lawyers® Trademark Lawyer of The Year, the Best Lawyers® Patent Lawyer of The Year, and an IP Star by Managing Intellectual Property magazine.
Firm co-founder Seann Lahey is noted for his IP and Innovation work not only by Legal Elite of the Upstate but is also listed in South Carolina Super Lawyers as well as Best Lawyers in America for his work in intellectual property law. Seann has extensive experience dealing with international and U.S. patent prosecution, trademarks, copyrights, trade secrets, licensing of intellectual property rights, and rendering legal opinions on validity, infringement and enforceability of intellectual property rights, as well as IP litigation.
Hunter Freeman has over 20 years of experience as a litigator and certified mediator and works to provide novel ways for clients to create value through the protection, prosecution and enforcement of their IP including trademarks, service marks and copyrights. As the 2024 Chairman of the InnoVision Awards, Hunter works hard to provide opportunities for start ups and businesses in the state to advance technological innovations. In addition to Legal Elite, Hunter has been recognized for his legal efforts by both Super Lawyers and The Best Lawyers in America ® for his work in intellectual property and business litigation.
Greenville patent attorney Robert Merting joins his colleagues as a named Legal Elite for IP and Innovation this year. Robert’s general business practice serves a variety of clients and industries, including builders, manufacturers, inventors, professionals and governmental organizations. He counsels businesses and individuals on IP contracts, corporate IP agreements, trademarks, non-disclosure agreements, and patents.
Charleston patent attorney B.C. Killough has counseled businesses and professionals for over 30 years. Regularly recognized for his legal efforts on behalf of his clients, Killough’s Legal Elite for IP and Innovation award is joined by recognition as a Senior Fellow by the Litigation Counsel of America, as an AV preeminent rated attorney with Martindale-Hubbell, as a Best Lawyers Corporate Lawyer of the Year for the Charleston market, and Thomson Reuters has recognized Killough as a Stand-Out Lawyer – a recognition bestowed by in-house counsel peers.
Casey Martens is recognized as a Legal Elite for her work in employment law for both plaintiffs and defendants. Casey’s legal practice includes business litigation, intellectual property and employment counsel to small and medium-sized businesses, as well as to employees in employment disputes. Licensed to practice in South Carolina, North Carolina and Georgia, Casey heads up the firm’s Brevard, NC office.
Business attorney Emily Bohan is commended as a Legal Elite for her efforts with Corporate Law – Business Organization matters. Emily focuses her legal practice on franchise law, business formation and organizations (Including LLC’s and Partnerships), and labor and employment matters. And when businesses are in a dispute, Emily serves as a certified mediator, to assist parties to come to a resolution outside of the courtroom. Greenville Business Magazine recognized Emily as a 2024 SC Women in Business.
The Legal Elite are selected annually through peer nominations from attorneys throughout the state of South Carolina in 50 legal practice areas.
About Kim, Lahey & Killough
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.
Emily Bohan named 2024 Women in Business
Congratulations to Kim, Lahey & Killough Greenville Attorney Emily Bohan, named one of the 2024 SC Women in Business in recognition of her outstanding contributions to the legal and business communities in Greenville.
Emily Bohan has served as a leader and mentor to small and medium business owners for years. She has been a member of the Greenville Professional Women’s Forum member since 2011 and has served as an executive board member for the 2017-18, and 2020-2021 terms. Her dedication to empowering women in business and fostering their growth and development has been unwavering.
Her commitment to fostering collaboration and knowledge sharing within the local business community is exemplified by her co-founding of the networking group, a local confidential peer advisory forum My Trusted Advisors. This initiative has provided a valuable platform for small and medium-sized business owners to connect, learn, and grow together.
Emily Bohan’s business acumen is best defined through her experience running the Greenville PuroClean franchise, which she owned, managed and recently sold after 15 successful years. Her firsthand experience in navigating the complexities of running a franchise operation equips her with insights into the myriad of challenges faced by businesses. During her years there she was active and served as a presenter in both PuroClean’s Impact Group and PuroWomen, a women’s growth group. She has Chaired the Greenville Technical College, Environmental, Occupational Health & Safety Advisory Committee since 2022.
“What the public does not see every day is Emily’s determination to not only provide top notch legal representation to her legal clients, but to advance the knowledge base and successes of her peers through the delivery of continuing legal education courses and lunch and learns to educate and uplift those around her. Emily is a true asset to the legal and business communities in Greenville. Her leadership, mentorship, and entrepreneurial spirit are deserving of this recognition and we are proud to have her on our team.”
Emily Bohan focuses her law practice in the areas of business, franchise and employment law and is featured on page 48 of the July issue of Greenville Business Magazine.
2024 South Carolina Super Lawyers
Five Kim, Lahey & Killough attorneys named in 2024 South Carolina Super Lawyers
Four patent attorneys with Kim, Lahey & Killough – Doug Kim, Seann Lahey, B.C. Killough and Hunter Freeman – have been named in the 2024 South Carolina Super Lawyers list as top-rated intellectual property attorneys and attorney Casey Martens has been named in the 2024 South Carolina Rising Stars list as a top-rated employment and labor attorney in the Greenville and Charleston markets. 2024 marks the tenth year that B.C. Killough has been honored with inclusion on the list. “I am honored to work with such a dedicated, innovative team that puts our clients first and this recognition showcases our unwavering commitment to excellence in providing legal services,” commented firm founder Doug Kim.
Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive the honor of inclusion on the Super Lawyers list and no more than 2.5 percent of the lawyers in the state are selected to be listed as Rising Stars. Super Lawyers, part of Thomson Reuters, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.
Doug Kim has been listed in South Carolina Super Lawyer annually since 2017. With experience with matters in brand and invention protection, licensing, patents, trademarks, and business disputes, he has also been recognized in the Greenville, SC Best Lawyers® list, named the Trademark Lawyer of The Year, the Best Lawyers® Patent Lawyer of The Year, an IP Star by Managing Intellectual Property magazine and a Legal Elite of the Upstate by Greenville Business Magazine.
Firm co-founder Seann Lahey’s practice seeks to provide comprehensive and integrated legal services for companies whose products or services are technical in nature. Seann has extensive experience dealing with international and U.S. patent prosecution, trademarks, copyrights, trade secrets, licensing of intellectual property rights, and rendering legal opinions on validity, infringement and enforceability of intellectual property rights, as well as ip litigation. He advises startups, middle market companies, multinational corporations, universities, and individuals alike on various intellectual property protection and enforcement strategies. Seann has worked across a range of technologies and industries including automotive, agriculture, biotech, composite technology, construction, education, manufacturing, medical, and others. In addition to Super Lawyers, he has also been recognized by Greenville Business Magazine as a Legal Elite of the Upstate for his work in intellectual property law.
B.C. Killough celebrates his tenth year listed in South Carolina Super Lawyers for his intellectual property work in the Charleston metro area. His practice areas include brand and invention protection, technology licensing, contracts, company formation, patents, trademarks, copyright, technology transfer, IP litigation, trade secrets, business disputes, commercial transactions, and mediations of intellectual property and commercial disputes. Bill Killough has also been recognized as a Senior Fellow by the Litigation Counsel of America, an AV preeminent rated attorney with Martindale-Hubbell, a Charleston Best Lawyers Corporate Lawyer of the Year, a Legal Elite by Charleston Business Magazine for Intellectual Property and Innovation and in 2024, Thomson Reuters named him a Stand-Out Lawyer.
Previously recognized as a Super Lawyers South Carolina Rising Star, Hunter Freeman joins his colleagues and is listed in South Carolina Super Lawyers for his work in intellectual property litigation in the Greenville market. His 20+ years of experience and insight as a patent attorney, litigator and mediator provide novel ways for clients to create value through the protection, utilization and enforcement of their IP both in and out of the courtroom. In addition to Super Lawyers, Hunter has been recognized for his work in intellectual property litigation by The Best Lawyers in America ® and as a Legal Elite of the Upstate by Greenville Business Magazine for Intellectual Property and Innovation as well as Business Litigation.
2024 Super Lawyers South Carolina Rising Star Casey Martens practices employment and business law in both the Greenville SC and Brevard NC offices of Kim, Lahey & Killough. Licensed in South Carolina, North Carolina and Georgia, her law practice focuses in the areas of business disputes and litigation, state and federal employment law, drafting and enforcement of restrictive covenants, business disputes involving tortious interference with contract, and the like. She has also been previously recognized by Greenville Business Magazine as a Legal Elite of the Upstate.
About Kim, Lahey & Killough
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.
GeigTech East Bay awarded $34.6 million in patent infringement case
South Carolina company GeigTech East Bay, LLC, awarded $34.6 million in damages in patent infringement case against Lutron Electronics
South Carolina company GeigTech East Bay, a maker of modern window shades, has been awarded $34.6 million dollar in damages by a New York Federal jury in a case against Lutron Electronics Co. for infringing upon a window shade patent obtained by Greenville patent attorney Douglas Kim for GeigTech East Bay.
The case involved GeigTech’s U.S. patent No. 10,294,717, for a “shade bracket with concealed wiring,” which was obtained by registered patent attorney Douglas Kim of Kim, Lahey & Killough law firm and granted on 05/21/2019.
With patent in hand, Geigtech East Bay, LLC filed a federal patent infringement complaint (with trade dress allegations) against Lutron Electronics Co., Inc. alleging that, among other things, patent infringement and trade dress infringement. One of the tactics used by Lutron was to try to invalidate the patent. However, the patent written by Kim withstood two challenges in the United States Patent Trial and Appeal Board as well as in the jury trial which concluded last week. On March 12, 2024, the jury returned a verdict stating that Lutron had infringed on GeigTech’s ‘717 patent on window shade brackets and awarded $34.6 in damages.
According to the jury verdict form filed March 15th, when asked “Has GeigTech shown by a preponderance of evidence that any portion of the accused statement is true?” the form is marked “Yes” with a notation that “Lutron opted to poach (GeigTech’s) patented designs and intellectual property to try and remain competitive in a segment of the market that (GeigTech) cornered.”
As the finding of infringement was willful, GeigTech can ask the judge to triple the damages.
“This verdict underscores the importance of protecting intellectual property rights for businesses of all sizes,” commented attorney Kim. “We are thrilled that this patent has withstood numerous challenges, scrutiny and legal maneuvers and that our client has emerged victorious.”
The case was tried by Gary Sorden and his trial team in the firm Cole Schotz P.C.
Lutron was represented by Scott W. Breedlove Carter Arnett PLLC and his defense team.
The patent was originally filed by Richard J. McKenna of Foley & Lardner LLP and taken over by Douglas Kim of the Kim Lahey & Killough Law Firm.
Founded in Charleston, SC in 2011, James Geiger designed a revolutionary shading system: a window shade system with no visible wires or screws. His shading systems company J Geiger is known for its high-tech, minimalist, clean and modern shading systems, His business, J Geiger, provides superior shading systems to both high end home and commercial properties. J Geiger products have been featured in numerous publications including Forbes, dwell, The Architect’s Newspaper, Window Fashion Vision, This Old House, Gray, Aspen Peak, and BD West, where their products won Best in Show in 2019. For more information visit https://jgeigershading.com/ .
Kim, Lahey & Killough founding attorney Doug Kim began his professional career as a computer programmer and software engineer after his graduation from Davidson College. His intellectual property career began in 1998 when he combined his business experience with his legal education and was involved with enforcing a client’s patent against multiple infringers. Kim has created a well-rounded Intellectual property practice that provides client centric legal solutions and strategies tailored to each client from multinational corporations to start-ups.
With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients achieve their business goals and establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.
New DOL Rule Independent Contractor Classifications
New Department Of Labor Rule in Effect March 11 Affects Employee/Independent Contractor Classifications
Businesses relying on independent contractors need to know about the US Department of Labor’s new 6-factor test for determining worker classification under the Fair Labor Standards Act. This test narrows who is an “independent contractor,” and goes into effect March 11, 2024.
Key Changes in Worker Classification: New 6 Factor Test Used In Determining Worker Status. Factors considered:
- Opportunity for profit or loss depending on managerial skill;
- Investments by the worker and the potential employer;
- Degree of permanence of the work relationship;
- Nature and degree of control;
- Extent to which the work performed is an integral part of the potential employer’s business; and
- Skill and initiative.
DOL says these factors aren’t exhaustive. Instead, the analysis uses a totality-of-the-circumstances “economic reality” approach, allowing consideration of other relevant factors that “in some way indicate whether the worker is in business for themself.” Where the worker is dependent on the employer for work, they will not qualify as an independent contractor under this rule. Importantly, only the courts, federal and state agencies decide classification, not the employer or the worker.
Diverse Classification Standards:
Notably, this rule solely addresses DOL’s interpretation under the FLSA and does not supersede other law, such as state “ABC Tests,” IRS interpretations of common law, etc.
Serious Consequences for Misclassifying Workers:
- Owing double the worker’s damages
- Paying the other side’s attorney’s fees and costs
- Individual liability: individuals with a hand in misclassification aren’t shielded by the corporation; and
- To the extent a settlement is reached, the agreement itself—and the amounts paid—is public information.
- Not including IRS and/or DOL penalties.
What Employers Should Do Now:
- Review existing and future independent contractor arrangements against the new framework.
- Consider conducting a worker classification audit using the updated criteria.
- Explore the IRS Voluntary Classification Settlement Program (VCSP) with guidance from a CPA.
- Seek legal advice to understand the implications and ensure compliance.
If you would like for us to assist you in navigating the complexities of worker classification, please contact attorney Casey Martens at cmartens@kimandlahey.com or 864.973.6688.
B C Killough named Thomson Reuters Stand-Out Lawyer
CHARLESTON, SC – Kim Lahey & Killough law firm is pleased to announce that B.C. Killough has been named to the list of “Stand-out Lawyers” by Thomson Reuters. Each year, thousands of senior in-house legal counsels from around the world nominate the top three attorneys they have worked with during the past year.
Bill Killough has been recognized for decades by his peers in publications such as The Best Lawyers in America, South Carolina Super Lawyers and Charleston Business Magazine’s Legal Elite. Best Lawyers named him the “Corporate Lawyer of the Year” for the Charleston area in 2015. These client-nominated attorneys are “real stand-out lawyers [and] are distinctive because, in combination with their technical competence, they offer business savvy advice, deliver exceptional service, or integrate well with the client team,” according to Thomson Reuters.
Bill Killough practices law in the areas of intellectual property and business law, including commercial transactions. He is a registered patent attorney and has obtained more than 350 patents for clients and filed more than 1500 trademark applications on behalf of clients. He has experience as an intellectual property litigator, with at least one of his cases setting precedent. As a certified mediator, Killough assists parties in intellectual property and corporate disputes in coming to a resolution outside of a courtroom.
With offices in Greenville and Charleston, SC and Brevard, NC, the Kim, Lahey & Killough Law Firm is devoted to helping clients achieve their business goals and establish, enforce, and leverage their intellectual property rights from the Upstate, to the Lowcountry to across the globe.
Casey Martens admitted to NC Bar and GA Bar
Congratulations to Kim, Lahey & Killough attorney Casey Martens, who has recently been admitted to both the North Carolina and Georgia Bars. Casey heads up our Brevard, NC office and serves clients in GA, NC and SC in the areas of employment law counseling and compliance, employee investigations, wage and hour disputes, business disputes and litigation, contracts, and trademark analysis and registration.
A graduate of the University of Colorado and the Charleston School of Law, Casey has regularly been named as a Legal Elite of the Upstate by Greenville Business Magazine and a South Carolina Super Lawyers Rising Star as a Top Rated Employment and Labor Attorney.
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.
Emily Bohan joins Kim, Lahey & Killough
GREENVILLE, SC – Kim, Lahey & Killough Law Firm is pleased to announce the addition of attorney Emily Bohan to the firm’s Greenville, SC, office. Bohan’s law practice focuses in the areas of franchise law, business formation and organizations (including LLC’s and Partnerships), business disputes, alternative resolutions, and labor and employment matters.
Bohan’s firsthand experience in navigating the complexities of running a franchise operation equips her with insights into the myriad of challenges faced by businesses; her own franchise business, PuroClean, will celebrate its 15th year in 2024. As an attorney, Bohan counsels businesses and individuals in all aspects of business law including business formation, contracts, franchise, employment, compliance, licensing, and trademark matters.
In addition, Emily Bohan is a South Carolina certified mediator and is able to assist parties in business disputes to come to a resolution outside of a courtroom.
Bohan earned a Bachelor of Arts in Economics and Legal Studies from the University of California, Santa Cruz and her Juris Doctor from the George Mason University School of Law. She is admitted to practice before federal and state courts within both South Carolina and Virginia.
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.
Alternative Legal Service Providers
Should They Be “Alternative?”
This article appeared the January 2024 issue of SC Lawyer magazine. Reprinted with permission of the South Carolina Bar.
For the past several years, the legal profession has been searching for ways to respond to staffing shortages, increased complexity in legal matters, and clients’ demand for cost control and faster response times. The use of Alternative Legal Service Providers (ALSPs) has been one way to meet these challenges. Failing to understand, explore and, when applicable, properly incorporate ALSPs into your legal practice will unnecessarily diminish the value you can provide to clients and companies. This is especially true when the ALSP leverages modern technology for document review and signature, e-discovery and analysis, litigation support, and regulatory and compliance projects. The introduction of artificial intelligence (AI) makes the decision to adopt or ignore ALSP even more timely and relevant to the modern law practice.
ALSPs can be very beneficial when properly implemented, as they provide non-traditional ways, even revolutionary ways, to provide legal services. There is also no question that the industry is growing. An online article by Thomson Reuters in January of 2023 stated that the ALSPs comprise a $20.6 billion portion of the legal market. The article noted that the rapidly increased use of ALSPs is causing a blurring between law firms, legal departments, and technology companies. The offerings for alternative legal services come in many forms: online legal platforms, virtual law firms, and artificial intelligence technologies that can be used for document review and even document drafting. As client demands increase, ALSPs can help firms and companies meet this demand by providing non-traditional and even disruptive solutions. We have all seen the change in the legal industry, especially post COVID, where digital transformation was increased, remote working became the norm, physical documents were the exception, and access to information dramatically increased. Proper use of alternative legal services can assist the law firm or company transition into the digital era.
One simple example is the shift to e-signature. While the algorithm that was generally used to create the first e-signatures was created in 1977, it was not until the Electronic Signatures in Global and National Commerce (ESIGN) Act of 2000 that these signatures were allowed to be legally binding and therefore an option for law firms. E-signatures are also consistent with the move to the paperless office. E-signatures offer fewer signing errors, improved security, increased response time, client convenience, and lower costs. However, adopting e-signatures comes with requirements such as having the client accept doing business electronically, allowing a wet signature option, showing a clear intent to sign, and receiving a copy of the completed, signed document. The point is that even with something as simple as e-signatures, there are practical, operational, and regulatory requirements that must be met to implement this alternative to the traditional signature. ALSPs cannot just be adopted blindly.
ALSPs can also be thought of as “legal outsourcing”, which is the practice of law firms or corporations engaging with third parties that provide legal support. Domestically, this is outsourcing and internationally it is offshoring. In the early 2000s, tasks that were assigned to these third parties included document review, legal research and writing, drafting of pleadings and briefs, and patent services. For example, companies offered to draft patent applications for substantially less than the domestic attorney fees by using offshored authors. These third parties offered substantially reduced costs, improved turnaround and increased resources to those law firms and companies that sought their services. However, this practice was not without risk.
In 2008, the United States Patent and Trademark Office (USPTO) recognized that this offshoring was occurring and issued a notice which stated, “The USPTO has become aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to U.S. registered patent practitioners offering their services in connection with the preparation of patent applications to be filed in the United States.” The USPTO “reminded” inventors and patent attorneys that “the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.” The risk was that using these ALSPs may cause a violation of the Export Administration Regulations governing exports of dual-use commodities, software, and technology, including technical data.
The lesson here is that while there can be substantial cost savings with an ALSP, a strategy should be put in place to properly manage the ALSP, project, information, data, and regulations.
One lesson can be learned from a now infamous proceeding before the USPTO involving ALSPs Abtach Ltd., 360 Digital Marketing LLC, and RetroCube LLC. These ALSPs purported to assist trademark filers with the federal trademark application process. On November 3, 2021, the USPTO issued a show cause order stating that it had reason to believe that these and related companies were violating the USPTO’s rules of practice, engaging in the unauthorized practice of law, and providing false, fictitious, or fraudulent information in thousands of trademark submissions to the USPTO. Among the violations, the USPTO alleged that the companies failed to follow the rule that all documents submitted to the USPTO in a trademark matter must be personally signed by the named signatory. When the companies did not adequately respond to the USPTO’s show cause order, the USPTO imposed sanctions on the companies, including a bar on further communication with the USPTO, permanent deactivation of their USPTO accounts, and disallowance of any future accounts. However, this was not the worst of it. The order terminated “all trademark application proceedings involving submissions by Respondents or filed through a USPTO.gov account registered to, associated with, or controlled by Respondents,” leaving thousands of applicants with paid for, but cancelled trademark applications. Several South Carolina applicants were caught in this proceeding. Since federal trademark rights can begin from the filing date, this caused substantial legal damages to thousands of entities. In this case, the use of these ALSPs resulted in substantially more harm than any saving could overcome. The use of an ALSP without the guidance of a practicing trademark attorney was very damaging indeed.
When considering an ALSP, there is always the issue of unauthorized practice of law, as shown in the USPTO proceeding. South Carolina has addressed one business model of an ALSP (Legal Zoom) in a 2012 proceeding and found that “Legal Zoom’s business practices, as reflected in the Settlement Agreement and the Affidavit of Edward Hartman, do not constitute the practice of law.” Nevertheless, each use and implementation is different, and this is an area where the specific ALSP in use will determine the outcome.
Practical and ethical considerations require lawyers and firms to properly investigate and implement ALSPs consistent with the profession’s ethical obligations. Comment 8 to Rule 1.1 of the Rules of Professional Conduct states that a lawyer, to comply with the requirement of competency, should “keep abreast of changes in the law and its practice, including a reasonable understanding of the benefits and risks associated with technology the lawyer uses to provide services to clients or to store or transmit information related to the representation of a client.” Rule 1.4 requires transparent communication so clients can make informed decisions regarding representation. Rule 1.6(a) states, “A lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation….” Rule 1.6(c) states, “A lawyer shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.” When using an ALSP, even for normal tasks such as document review, e-discovery and data rooms, the law firm has several obligations under the application of Rules 1.1, 1.4 and 1.6. Consider an ALSP that provides e-discovery and document review. First, the lawyer has an obligation to understand the services and operations of the ALSP in sufficient detail to ensure that any information shared remains confidential (Rules 1.1 and 1.6). Second, the lawyer has an obligation to communicate and inform the client that the ALSP is being used and what information is being shared (Rule 1.4). Third, the lawyer has an obligation to stay abreast of the changes in services and operations of the ALSP in the event circumstance’s change. For example, SLPA that are technology-based companies can be subject to mergers, acquisitions, and reorganizations that can impact the ALSP operations. On August 29, 2023, the “legal technology” company Reveal published a press release stating that it acquired two other e-discovery companies, Logikcull and IPRO. Reveal provides the legal industry with tools for document review and other services. The acquisition resulted in over 4,000 customers and employees in more than two dozen countries. Logikcull, initially a United States company, now has its span globally. In the event that a law firm or client used Logikcull for a legal hold, extra steps now have to be taken to be compliant with the International Traffic in Arms Regulations (ITAR), because ITAR covered technical information cannot be transmitted without certain permissions and only to certain counties. Failing to understand the services and operations of the ALSPs of this transaction can result in not only ethical violations, but regulatory ones as well. The example of violating ITAR is the risk that the Rules of Professional Conduct are designed to prevent.
The use of technology, and investigating ALSPs, is not complete without a discussion of artificial intelligence. The risks associated with use of AI can create significant negative impacts on the client so that its use falls under this rule.
First, when we discuss AI, we should classify the type of AI that is being used. Generally, there are three types: analytical, predictive, and generative.
Analytical AI is generally directed to analyzing and interpreting data to provide insights, patterns, and meaningful information. An ALSP using analytical AI may be the easiest to implement since it can streamline document review, reduce errors, and improve efficiency. This is especially true when using AI to scan documents for key terms and flag issues for an attorney to review. Understanding the ALSP using analytical AI (and informing the client) can quickly lead to savings and improved accuracy.
Predictive AI seeks to forecast or predict future events or outcomes based on historical data and patterns. This use may be the riskiest for some firms because of the presence of bias in the very AI model itself, the large quantity of data required, the uncertainty of specific outcomes and assumptions made in the learning model about the subject matter. For example, one AI application, when presented with a potential juror name, searches public data related to the prospective juror, correlates the data with known patterns of human behavior, and provides a detailed profile of the person’s personality type and a summary of their views and biases. This application seeks to provide insight into the juror according to its AI model so that attorneys can use this information to predict biases in a potential juror. However, since AI has to be “taught” how to think, the AI may only be providing an appearance of usefulness, include bias and discrimination concerns, and even may violate the constitutional mandate not to use gender or race when selecting juries. Since the actual operation of the AI model is constantly changing and unknown, there is substantial risk with AI for this predictive application.
Nevertheless, using an ALSP with predictive AI that analyzes data to predict case outcomes and legal trends, combined with a lawyer’s oversight, can be a powerful tool. Using such an ALSP with predictive AI can allow a lawyer to make informed predictions about case success, analyze settlement offers, and develop mediation, settlement, and litigation strategies. Predictive AI can be used to review case facts, prior rulings, and judge behavior, potentially allowing the lawyer to better prepare strategic decisions concerning trial tactics, negotiations, or settlements. Predictive AI has the potential to enhance or even replace the mock jury process. It is important to be aware and understand that every model, technique, and process has its limitations when implementing it.
Generative AI is used to create new content, documents or other material and typically provides newly created content according to patterns and knowledge learned from existing data. Its use can include anything from litigation documents to emails. Again, understanding the process and communicating that it is being used to the client when deploying generative AI is critical to its proper implementation. For example, in patent law, a public disclosure can start a clock running in which the inventor has to file a patent application within twelve months or risk losing the ability to seek patent protection. ChatGPT is a public forum, so using this ALSP to draft a patent application would result in a public disclosure.
Even AI models that claim to keep confidential the information that is provided (e.g., seeking to avoid public disclosure) have issues with their operations. For example, patent drafting AI software states on its website that data is sent to Amazon Web Services (AWS), is encrypted, and the patent documents are not stored except as necessary to provide the services. While this is a good first step, the privacy policy states that the company may share the information collected from you with third-party companies, such as Amazon Web Services, Google, and LinkedIn. One has to wonder how the data remains confidential with these contradictory representations. Understanding these processes and policies is important to being able to communicate to a client when such a service is used.
We also know that there have been missteps with the use of generative AI, including the now well-known fine of $5,000.00 assessed against a lawyer who used ChatGPT to write an affidavit and brief, including six case cites that proved to be nonexistent cases. While it may appear that this is a gross dereliction of duty, the attorney explained that he was unaware that ChatGPT could provide false information (e.g., hallucinations). It is difficult to reconcile this explanation with the requirements of Rule 1.1, comment [8].
When using generative AI for a client, a detailed understanding of the ALSP policies and process is critical to ensure that confidentiality is maintained.
When selecting an ALSP and implementing it in your practice, there are several key points that are needed:
- Understanding how the ALSP receives, stores, and otherwise manages the data it receives. For example, is the data stored in one location, multiple locations domestically, and/or internationally? Further, the vendors of your vendor can play a role. In one example, a vender was used for data storage and analysis for material that was ITAR controlled. However, a vendor of a vendor was not ITAR compliant creating ethical and regulatory issues.
- Understanding the ALSP’s policies such as its security policies, disclosure policies, and ability to return or destroy data is important both in operation (and what) as they provide informed consent to the client.
- Obtaining informed consent from the client can be a requirement in some, if not most, cases. As we see ALSPs continue to invest in technology, the lawyer can capitalize on these new technologies and tools, but not necessarily without the client’s permission.
- Ensuring confidentiality.
- Providing oversight so that the lawyer does not blindly rely upon the ALSP since the duty of communications, competence, and confidentiality cannot be delegated. We learned this from the case J-M Mfg. Co. v. McDermott Will & Emery where the client instigated a legal malpractice claim alleging the negligent handling of e-discovery. The client pled that its counsel’s professional duty of care was breached when its counsel failed to supervise its e-discovery vendors and contract lawyers which resulted in the inadvertent production of thousands of non-responsive, privileged documents.
Properly implemented, ALSPs can be used effectively for the benefit of the lawyer and the client, but not without investigations, precautions, and oversight. Unfortunately, there is not a single checklist for this as each ALSP has unique and ever-changing procedures, policies, and processes, especially with the introduction of AI. Nevertheless, cost savings, efficiency, speed, large data access and analysis, and future predictive services can provide the law firm with a competitive advantage without requiring the traditional “team of lawyers.” Planned, controlled and thoughtful implementation of ALSPs is the way of the future. As discovered in the Alternative Legal Services Providers 2023 Report, ALSP use is growing in large part to the ability of the ALSP to provide specialized expertise (e.g., intellectual property portfolio management) and access to technology that is not available within the firm (e.g., artificial intelligence).
Also, AI is not without its entertainment…
Doug: Please write a closing paragraph for an article discussing alternative legal service providers
ChatGPT: In an era marked by rapidly evolving legal demands and the imperative to optimize resources, alternative legal service providers have unquestionably earned their place in the legal landscape. Their innovative approaches, cost-effectiveness, and commitment to efficiency are reshaping the way legal services are delivered and consumed. As clients and law firms alike continue to seek innovative solutions, the rise of ALSPs stands as a testament to the legal industry’s adaptability and responsiveness to change. While traditional law firms remain a cornerstone of the profession, the symbiotic relationship between traditional and alternative legal service providers is fostering a legal ecosystem that not only meets but anticipates the diverse needs of clients in our increasingly complex and dynamic world. The future of the legal industry appears to be one where the combined strengths of both models will continue to drive progress, making legal services more accessible, efficient, and effective for all.
Doug: Now, write it in the voice of a pirate.
ChatGPT: Arrr, me hearties, in this ever-changin’ legal seascape, these here alternative legal service providers be a treasure worth discoverin’! Their swashbucklin’ methods, savvy for savin’ doubloons, and their knack for speedin’ through legal waters be transformin’ the way we handle our legal affairs. As clients and law firms seek new horizons, these ALSPs be showin’ their mettle, provin’ they be a vital part o’ the legal crew. While traditional law firms be anchorin’ the profession, the partnership ‘twixt old salts and these newfangled ALSPs be creatin’ a legal realm that not only meets but anticipates the diverse needs o’ clients in this ever-twistin’ and turnin’ world. The future of the legal sea be one where both models be workin’ in tandem to chart a course towards makin’ legal services more accessible, efficient, and effective for all ye landlubbers!
Doug Kim, a Physics major from Davidson College, began his professional career as a computer programmer and software engineer. His intellectual property career began in 1998 when he combined his business experience with his legal education and was involved with enforcing a client’s patent against multiple infringers. Since then, Doug has created a well-rounded IP practice that provides legal solutions and strategies tailored to each client from multinational corporations to start-ups.
Endnotes
- https://www.thomsonreuters.com/en-us/posts/legal/alsp-report-2023/ (according to the Alternative Legal Services Providers 2023 Report, published in 2023 and conducted June 1 to July
18, 2022 by the Thomson Reuters Institute, the Center on Ethics and the Legal Profession at Georgetown Law, and the Saïd Business School at the University of Oxford. - 73 CFR 42781
- Id.
- Id (See MPEP § 140 (8th ed., Rev. 5, Aug. 2006).
- 15 CFR Parts 730–774.
- https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
- 37 C.F.R. § 2.193(a); TMEP § 611.01(b).
- https://www.uspto.gov/trademarks/protect/applications-terminated-abtach-360-digital-marketing-retrocube
- Case No. 2012-208067.
- Id.
- Rule 1.1 Comment [8].
- Rule 1.4 Comment[5].