The Kim & Lahey Law Firm is proud to announce that our attorneys are being honored by Greenville Business Magazine as part of South Carolina’s 2021 Legal Elite. This is the second year in a row that all Kim & Lahey attorneys have made the list.
Greenville Business Magazine’s Legal Elite is the only regional awards program that allows every active attorney to nominate and vote for their peers across 26 categories. The following are the Kim & Lahey attorneys selected for inclusion, as well as the practice areas in which their work is recognized:
Douglas Kim: Intellectual Property and Innovation – Business Litigation
Seann Lahey: Intellectual Property and Innovation – Business Litigation
Jason Rosen: Tax and Estate Planning – Corporate Law, Mergers, and Acquisitions
Casey Martens: Labor and Employment
Thank you to all of our peers who voted and congratulations to all of the South Carolina attorneys who are being recognized this year.
Hear from national experts during this five-part webinar series. You will learn everything from the basics of intellectual property, including trademarks, patents and copyrights, to how to protect your inventions using the claims process. Session titles include: The Path to a Patent, IP basics, patent searching, drafting a patent application, and drafting patent claims.
The Path to a Patent, Part I: IP Basics
Elizabeth discussed intellectual property basics during this interactive virtual session. In this module, she provided a brief overview of the different types of IP (patents, trademarks, trade secrets, and copyrights). She reviewed the patenting process from invention to application to issue. Finally, she covered requirements for patentability, how to determine whether a provisional or non-provisional application is right for you, and how to weigh the costs and benefits of hiring a patent attorney.
The Path to a Patent, Part II: Patent Searching
Before you file your patent application, you need to conduct a prior art search. At this virtual presentation, you will learn about the benefits of searching, how to perform a prior art search using keywords and the Cooperative Patent Classification (CPC) system, and how to build a search strategy. We will also provide resources for filing your application.
The Path to a Patent, Part III: Drafting a Patent Application 101
July 21, Presenters: William Vaughn, USPTO, and Attorney Doug Kim
Learn how to prepare for a patent during this interactive workshop. USPTO experts and Attorney Doug Kim will share insights on the formalities and requirements of drafting a patent application, as well as common pitfalls to avoid. For example, when do you know you’re ready to apply for a patent? How do you prepare and what questions should you ask an attorney? Join us for the answers and to learn about state and regional patent pro bono programs that offer financial aid for inventors.
The Path to a Patent, Part IV: Learn How to Draft Patent Claims
Wednesday, August 4 @11:00am, Presenters: Stephen Yanchuk, USPTO and Attorney Doug Kim
Claim drafting may be the most important part of protecting your invention. How do claims work in the courtroom? Why do they matter? Learn the basics of claim drafting from USPTO Primary Patent Examiners and Attorney Doug Kim in this interactive workshop. You will develop a better appreciation of how a patent examiner views a claim during the course of examination. We’ll also cover some of the latest infringement cases involving big-name brands and discuss how wording in their claims may have affected outcomes.
The Path to a Patent, Part V: Electronic filing in DOCX using Patent Center
DOCX is a word processing file format based on open standards, including Extensible Markup Language (XML) that is supported by many popular word processing applications, such as Microsoft Word, Google Docs, Office Online, Pages for Mac, and LibreOffice. As an open standard format, DOCX offers a safe and stable basis for authoring and processing intellectual property documents. Uploading a multi-section document in DOCX format containing the specification, claims abstract and drawings is detected and split into single files for each section and document codes are automatically assigned, which saves initial processing time. A feedback document is generated pre-submission where warnings and errors are pinpointed in a copy of the uploaded document in real time, which reduces time responding to non-compliant notices and enhances the quality of examination.
WASHINGTON – The United States Patent and Trademark Office (USPTO) today officially issued U.S. patent number 11 million, recognizing an important milestone in American innovation and ingenuity.
“This momentous benchmark is a reminder of the remarkable and enduring tradition of American innovation that has driven our nation forward for generations,” said U.S. Secretary of Commerce Gina Raimondo. “Building our economy back stronger requires new ideas and innovative solutions from every sector. I am proud to recognize patent 11 million, its inventors, and its promise.”
“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone.”
Patent number 11 million, granted to co-inventors Saravana B. Kumar and Jason S. Diedering of 4C Medical Technologies, Inc. in Maple Grove, Minnesota, is for a utility patent that provides a new method for delivering, positioning, and/or repositioning a collapsible and expandable stent frame within a patient’s heart chamber.
“We are incredibly excited and honored to be granted U.S. patent number 11 million for our invention,” said inventor Saravana Kumar. ”The 4C Medical beginning is a true story of American entrepreneurship, where Jason and I worked in a garage many nights and weekends to turn this idea into reality. We could not have gotten here without the support of so many, including my wife Katherine and 4C Medical’s founder, physician Dr. Jeff Chambers. Currently, our team is actively working to demonstrate the benefits of our technology to treat patients with severe mitral regurgitation as part of a U.S. clinical trial.”
“4C Medical’s approach to inventing is simple—we identified a need, created a solution, and demonstrated its benefits. We are a team of highly driven and creative engineers who are committed to bringing lifesaving technologies to people who need it most,” explained inventor Jason Diedering.
Background on the U.S. patent system
Patents predating the Patent Act of 1836 were unnumbered, identifiable only by the name of the patentee and the date of issue. These patents became known as “X-patents” after Patent No. 1 was granted to Senator John Ruggles on July 11, 1836 for a traction wheel for steam locomotives—the first patent issued under the new law, which officially assigned patent numbers. A few months after the Patent Act of 1836 was enacted, a catastrophic fire at the Patent Office destroyed almost all of the records and models related to the X-patents. Efforts to reconstruct the records lost in the fire continue to this day.
Patent 11 million comes three years after the USPTO issued patent number 10 million in 2018. As part of that celebration, the USPTO redesigned the official U.S. patent cover—the seal-and-ribbon document awarded with each patent grant—paying homage to the classic elegance of its predecessors. A list of the patent milestones can be found here.
The attorneys of the Kim & Lahey Law Firm have been supporting the entrepreneurship community for over 20 years and are happy to continue our support for InnoVision, an award program that recognizes innovation in South Carolina annually. This year, InnoVision received a record number of applications reflecting both the strength of the innovation economy in South Carolina and the special circumstances of the 2020 pandemic.
This year we are sponsoring InnoVision’s Small Enterprise Award, which recognizes a small business for creative technology development or innovative technology application. The technological innovation may be applied to a product, process or service that is intended for sale to customers or for use inside of the organization. To be eligible for this award, the organization must employ fewer than 50 full-time employees or generate less than $20 million in revenue.
InnoVision is hosting a series of Meet the Finalists online get-togethers to announce and congratulate finalists in two award categories each Tuesday at 4:00pm. The Small Enterprise Award finalists will be announced tomorrow, October 13. Please join us through this registration link.
The winners will be announced at the Tuesday, November 17th Awards Ceremony. This year, since it’s an online event, it is open to the public and we will let you know when registration is open.
InnoVision Awards was established in 1999. InnoVision Awards are the mark of distinction for outstanding leadership, innovation, and technological excellence.
You’ve heard of SEO. How about SCO? It stands for Shipping Cost Optimization, a patent pending method of using artificial intelligence to slash shipping costs. This homegrown innovation, called IntelliPack, has thrust local entrepreneur, John Peck, CEO, President, & Co-Founder of FastFetch Corporation into the national spotlight.
Peck joined Katie Neau, RCI Supervisor of Snap-on Tools at the Council of Supply Chain Management Professionals’ (CSCMP) EDGE 2019 Conference on September 18, 2019, in Anaheim, California, for their presentation about “Using Artificial Intelligence to Slash Shipping Costs.” They beat out Silicon Valley giant Intel Corporation, as the winners of the 2019 Supply Chain Innovation Award (SCIA) .
Snap-on Tools is saving 11% annually on total shipping costs at its distribution center in Crystal Lake, IL. The initiative employs artificial intelligence to minimize wasted space in shipping cartons as well as new logistical processes to cut corrugated material costs by 20%, dunnage costs by 27% and packing labor costs by 30%. Peck says companies like Snap-on Tools often save an average of $18,000 per month on small parcel carrier shipping costs using his patent pending packing process.
It took Peck about six months to develop the new method. He says, “You have to be able to calculate the best box size for shipping an unpredictable collection of items of given sizes in less than a second. When someone orders online, that one order may have eight to 10 things in it. Each comes in different shapes and sizes and there are more than 100 boxes to choose from. Using the right size box is important.”
Doug Kim represents FastFetch. He says, “Because it’s our job to help with intellectual property protection, we get to see these inventions very early on. It’s exciting to see our clients be successful, to see an idea go from conception to commercialization.”
Peck’s method of using A.I. to slash shipping costs can virtually figure out how to place the items in the best sized box. “It’s going to make e-commerce affordable,” says Peck. “Consumers want free shipping, but someone has to pay for it. Our method ensures there is minimal wasted space. Smaller boxes means more packages can fit in each shipment. Instead of needing multiple trips, using multiple trucks or airplanes, now more can fit into each trip and that will help shipping companies become more efficient too.”
Congratulations to the entire FastFetch team! Watch the video below to see SCO in action.
In our practice we are seeing an increase in software license disputes between software vendors and users. It seems that the main reason for the increase in disputes is the change in technology, which has changed the way in which software is created, distributed and used. This problem is aggravated by either current license agreements not being updated to reflect these changes or by vendors making license terms more onerous for users.
Technology is creating a need to modify and update license agreements.
The technological changes that are at the root of this increase in disputes include the rapid increase in cloud computing and virtualization of software. License agreements that were user based, seat based or even enterprise based do not fit well with the cloud/virtualization model. In response, software vendors are seeking to identify the actual number of user or copies by exercising their audit rights which users typically try to resist, thus creating tension between the vendor and the user. When creating, distributing or using software, it is wise to focus on the licensing model being used as well as how it fits into the existing IT system. As more and more software moves to the cloud and license agreements are not updated, we can expect to see license disputes increase.
Vendors are changing their licensing terms.
For example, Java, one of the most widely adopted programming languages (Indeed reported in 2016 that it was the second most sought after skill for programming) had its license changed so that Oracle JDK is free to individuals for use, development, testing, prototyping and demonstrations, but now requires a commercial license to avoid the GPLv2+CE license. The GLPv2 license requires that all the source code be made public, which completely removes any ability to prevent others from using your source – an outcome not very popular with most software vendors seeking to license their software.
We are also seeing license terms being used aggressively where some vendors are seeking to make up for lost revenues caused by the open source model. Software developers, that charge for their time, turn to open source for efficiencies that can increase profits and allow savings to be passed to customers. However, some of the open source licensing is being modified without the user’s knowledge, creating significant legal and financial issues.
For example, some software licenses have clauses along the lines of “[Vendor] expressly reserves the right to modify the Terms of Service at any time in its sole discretion by including such alteration and/or modification in these Terms of Service, along with a notice of the effective date of such modified Terms of Service.” The issue is that the individual in an organization that approves licenses is typically not the user that would encounter the “modified Term of Services.” So terms change without the company’s knowledge. In one case, we saw the license go from free to thousands of dollars per user. The user simply would not have used the software in the first place, had it known of this change and is now in the process of removing the software from its product.
The Recent Supreme Court may increase Software copyright disputes.
In March, the Supreme Court clarified that to bring a copyright infringement case, the copyright holder must have the copyright registration in hand. This changed the rule in many areas of the country that allowed for the copyright holder to simply have an application on file. If software vendors begin to apply for and secure copyrights upon the creation of software (as they should), they will be entitled to attorney fees and statutory damages (recovery up to $150K per infringement without proving actual damages). Under the old rule, where only the application in file was needed, the ability to recover attorney fees and statutory damages we largely lost. Knowing that the recovery of attorney fees and statutory damages are available, vendors may not be likely to use copyright infringement to more aggressively enforce their licensees or even instigate litigation.
What’s next? Prevention!
- Review the policies within your organization as to how software is used and downloaded. For example, can anyone download software and click “I Agree” and bind the company to the licenses?
- Review the existing license agreement and amendment, renegotiate or even cancel as appropriate. We are even seeing software vendors elect to use the laws of other countries to benefit for more advantageous legal structure than those in the US. For example, because Canada can allow for the modification of the license with only notice to the user, some vendors are electing to use Canadian law (localization). In 1984, Louisiana enacted the Software License Enforcement Act (SLEA) which, among other terms, state that a software license agreement can ONLY be enforced if: (a) the user can clearly read a software license notice on the software packaging; (b) the software license notice indicates that by opening the package or using the software the end user accepts the terms of the enclosed license agreement and (c) the notice states that the software may be returned if the end user does not accept the license agreement. Note how this law does not fit cloud-virtualization very well.
- At the software design stage for customer software, understand the open source used, third party software used, third party licenses needed, and the effect of the rest of the IT system already in place. For example, does the custom project legally allow for cloud-virtualization? Does the software architecture need seat licenses, enterprise, cloud, or some other license structure?
- Work with an experienced attorney that understands software, software licensing and the trends in this area.
- Act early, users can typically have a better position in negotiating when the potential issues are identified pre-dispute and can resolve the potential dispute with the vendor. Vendors can better service users when the business and legal relationship is clearly understood, and unauthorized use is avoided.
If you have any questions regarding this article, contact Doug Kim, 864-973-6699, firstname.lastname@example.org or Cherish Benton, email@example.com.
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. Doug provides his clients with strategies to protect inventions (patents), brands (trademarks), websites, software, apps, music, photos, and websites (copyright, licenses and Internet law), and trade secret (the “secret sauce”).
These materials have been prepared for informational purposes only and are not legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Internet subscribers and online readers should not act upon this information without seeking professional counsel.
Like many young people, Logan LaMance had a decision to make his freshman year in college. He could continue focusing on freedom and fun or get serious and shoot for the stars. He chose the latter and it paid off. This Sunday, Logan and his partners at Kanga, LLC, will appear on Shark Tank. Their pitch? Kanga’s Kase Mate is described as a “koozie for a case of beer.” Their marketing slogan is, “Kooler than a cooler and keeps drinks cold for up to 7 hours without ice.” You get the point, but how did they get to this point?
Logan was born and raised in Pickens, SC. He started taking classes at Clemson during fall 2014. Logan says it was the end of that first semester when he realized he needed a change in direction. The following semester he was part of an internship program lead by Young Entrepreneurs Across America, that teaches students how to start and run a business. It was a house painting business called Student Painters, LLC.
Logan worked harder over the next two years than he ever had before in his life. He put in between 30 – 40 hours per week on school work and every other waking moment was spent on his business. Logan said it was a tough place to be, both mentally and physically taxing, but he was driven and had a dream. He says, “The thing I am the proudest of is not that I brought the biggest business or made the most money, but that I fought through it, never quit and learned a lot of valuable lessons along the way.”
That’s when he caught the bug. After running a grueling, yet successful painting business with other students for two years, he was sick and tired of paint brushes, but he knew he wanted to be an entrepreneur. During the spring of 2017, Logan took an entrepreneur class that would change his life. The class project was to create a solution for a problem that people face. Logan says finding a good idea wasn’t easy.
Then came football season. Logan and his friends were on their way to tailgate. They stopped to grab a couple 12-packs on the way. They all had coolers back at their apartments, but they didn’t want the hassle of carrying a heavy, clunky cooler a mile from home to the tailgate and back, which meant they ended up drinking warm beer before long. Logan thought to himself, “Why are we drinking warm beer? That’s a problem.” He had to find the solution next.
Logan says he saw someone take a cold beer out of a cooler and put it into a koozie and that’s when it hit him. Logan wondered, “Why don’t we have the same thing for the whole case? We got it from the fridge (what made it cold), why don’t we have something to put it in to keep it cold for the whole time we’re actually going to enjoy it?”
That’s how Kanga was born. He pitched the idea to his class and convinced them it was bigger than a class project. They created a prototype and worked with mentors through the Spiro Institute to take their idea and turn it into a business.
Doug Kim, Kanga’s intellectual property attorney of the Kim and Lahey Law Firm, says, “I met the owners of Kanga, LLC through my work with the Clemson Venture Program and was immediately impressed with their inventions, marketing acumen and business decisions. To see these business owners accomplish so much while also attending college, should be inspiring for everyone.”
Kanga started with a short run of 100 units to test the market and see if people would actually buy it, and they did. From there, Kanga won a first-place prize of $8,000 at Clemson’s “The Pitch Smackdown,” which Logan describes as a mini shark tank where they also picked up their first investor.
Fast forward to when Kanga had a successful Kickstarter campaign in 2018, and now, as they’re only two days away from appearing on the real Shark Tank on ABC. Logan says, “If we can do it with a koozie for a case of beer, image what other ideas can do.”
The Shark Tank episode airs at 10pm EST, Sunday, April 7.
This article is for informational purposes only. Any result achieved for one client does not necessarily indicate that similar results can be achieved for any other client. Kim and Lahey Law Firm, LLC has designated Douglas W. Kim as the person to contact for information regarding this article. He may be contacted at 864-973-6688 or at firstname.lastname@example.org.
Douglas Kim, a longtime intellectual property attorney in the Upstate area, has been selected to the 2019 South Carolina Super Lawyers list. Each year, no more than five percent of the lawyers in the state are selected by the research team at Super Lawyers to receive this honor.
Super Lawyers, a Thomson Reuters business, 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. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys.
Based in Greenville, South Carolina, Doug started his own law firm in March of 2018. Soon after, he partnered with longtime friend and colleague, Seann Lahey, in what is now the Kim and Lahey Law Firm, LLC. They assist clients, both domestically and internationally, who are looking to safeguard innovative ideas or inventions, secure their brand’s identity, or otherwise need to protect their business interests. They take a client-centric approach toward understanding a client’s needs in order to create customized legal solutions involving patents, trademarks, copyrights, trade secrets, enforcement, licensing, contracts, privacy policies, and website terms and conditions.
Doug also serves as the Chair of the South Carolina Bar Intellectual Property and Innovation Committee.
The Super Lawyers lists are published nationwide in Super Lawyers Magazines and in leading city and regional magazines and newspapers across the country. Super Lawyers Magazines also feature editorial profiles of attorneys who embody excellence in the practice of law. For more information about Super Lawyers, visit SuperLawyers.com.