by Kim, Lahey & Killough Law Firm2025 South Carolina Super Lawyers
Five Kim, Lahey & Killough attorneys named in 2025 South Carolina Super Lawyers
Kim, Lahey & Killough is pleased to announce that five of its attorneys have been recognized in the 2025 edition of South Carolina Super Lawyers, a legal ranking published by Thomson Reuters.
Four patent attorneys with Kim, Lahey & Killough – Doug Kim, Seann Lahey, B.C. Killough and Hunter Freeman – were named among the state’s top-rated intellectual property attorneys. “I am honored to share this recognition with my colleagues and am proud that these honors recognize not only individual achievement, but also the depth and strength of our intellectual property team in South Carolina,” commented founding attorney Doug Kim.
Additionally, Casey Martens has been named in the 2025 South Carolina Rising Stars list as a top-rated employment and labor attorney in the Greenville market – her fifth year earning this recognition.
Super Lawyers recognizes no more than five percent of the lawyers statewide each year, and Rising Stars honors only 2.5 percent of the lawyers in the state. Both lists are compiled by Thomson Reuters, a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.
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. For more information, visit the firm website at kimandlahey.com .
by Kim, Lahey & Killough Law FirmKey Business and Legal Trends in 2025
Navigating the Legal Landscape: Key Trends for Businesses in 2025
Kim, Lahey & Killough founding attorney Doug Kim joined Mike Switzer on South Carolina Public Radio’s South Carolina Business Review to discuss the new legal landscape for businesses in 2025. Key points include:
Disruptive Technology’s Impact
AI is rapidly reshaping business and the legal profession, presenting both opportunities and challenges. Unlike previous technological shifts, AI is accelerating change at an exponential rate, forcing businesses and law firms to adapt faster than before.
Key Implications for Businesses
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Technology Adoption: Companies must be prepared to leverage new technologies quickly and strategically.
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Increased M&A Activity: With substantial cash reserves and a pro-business climate, mergers and acquisitions are expected to increase.
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Due Diligence Preparedness: Doug strongly advises businesses to begin due diligence preparations in anticipation of potential acquisitions.
In addition, the legal profession itself is experiencing significant disruption. AI tools are enhancing efficiency in research, particularly with regard to patent and trademark searches. Kim emphasizes that AI won’t replace lawyers, but lawyers and law firms that adopt AI technologies will likely outperform those that resist change.
In 2025, businesses must stay agile, embrace technology, and quickly manage the risks associated with new technologies and business models.
Listen to the full interview here or read the full transcript, below.
Full Transcript of The new legal landscape for businesses, an interview with Doug Kim on Mike Switzer’s South Carolina Business Review.
Broadcast on South Carolina Public Radio on January 23, 2025
[00:09.710] – Mike Switzer
Hello and welcome to the South Carolina Business Review. This is Mike Switzer.
As this New Year with a new administration in Washington just getting started, many businesses may be looking at the legal landscape and what they can expect to see in 2025. Doug Kim is an attorney in Greenville, South Carolina, where he joins us from now by phone to help us with this topic.
Doug, welcome to the program.
[00:39.990] – Doug Kim
How are you doing? Thanks for having me.
[00:41.620] – Mike Switzer
Great. Let’s just go ahead and kick off the discussion with an overview of what you see happening in the legal world this year.
[00:49.970] – Doug Kim
Well, it’s going to be quite a few fast changes, and I’ll give you my opinion of the analogies of why I think this is going to happen. And that is, Windows came out many years ago, and it made software accessible to the public in general, which was disruptive for society and business. 2007, the iPhone comes out and it creates software in your hand, again, disruptive for the benefit of increased technology – massive changes in business and society. What’s happening now is we have AI, which is even faster, that’s doing a couple of things. This is what’s driving changes in the legal side, I think. Ai has made everybody feel like, Oh, there’s this new technology. Gosh, we’re behind. We need to be stepping up. That’s one piece. Another piece is you’ve got a new administration who, by all accounts, seems to be reducing regulations and is going to be pro-business. Not that other administrations haven’t been, but this particular one seems to be more pro-business. Add on top of that, you’ve got a bunch of pent-up demand: during election years, businesses tend to, I don’t want to say stall, but they tend to not make much major decisions until they see what’s going on.
There’s a lot of money sitting on the guidelines to move projects forward. So, with all that said, you add the technology changes, the environmental changes, the geopolitical changes, and the fact there’s a lot of cash sitting out there, you’re going to watch the legal profession really have a lot of, quote, “pressures on it.” Our clients are going to be pressing us to be able to adopt technology and candidly, probably move faster than the legal profession is used to.
[02:22.290] – Mike Switzer
Okay. It sounds to me like a massive headache year for you.
[02:25.480] – Doug Kim
It could be based on the law firm’s attitude. It’s not uncommon for technology to change the law. For example, in one area of the law, the right to privacy. Well, everybody’s got a phone in their pocket now, and that phone has a camera. What is your expectation of privacy if everybody can video and photograph you now? So the way the law changed was because the technology changes. The law firms are just going to have to say, “All right, I need to understand this.” I need to step up and say, Here the deal is, as well as how these businesses are adopting it and say, “Okay, how do I manage the risk?”, which is a lot of what lawyers do with these new technologies and these new ways of doing business. And how do I keep myself up to speed so I can respond properly and competently to my client’s demands? I think when you say it could be a lot of headaches, it’s going to require lawyers to educate themselves in areas faster than maybe they’re accustomed.
[03:18.490] – Mike Switzer
Maybe giving up some of the bread and butter business that’s been the thing. In any way, you see a lot of consumers and businesses turning to alternative legal service providers like Legal Zoom.
[03:32.980] – Doug Kim
That’s exactly right. There is definitely a place for that. The legal services traditionally required a lawyer and a lawyer thinking to do some of this stuff. With the advent of some of these other businesses being in those areas, particularly with the leveraging of technology, it may not be a lawyer’s job, either 100% or maybe not even at all. I’ll give you a good example. The type of work that I principally do is intellectual property. We used to have to go hire people to do patent searches and trademark searches for us. Over the years, these patent and trademark databases have been developed by government agencies, Google patents, things like that. You can take the current technology with AI and do a patent or trademark search much more efficiently and faster than a human being could have done it years ago. Some of those tools that are out there are going to reduce, I don’t think eliminate…but reduce the need for some of the legal services that typically an attorney would do. Ai is not going to replace lawyers. It’s not going to do that. However, the law firms that adopt AI will probably replace the ones that don’t.
[04:35.080] – Mike Switzer
What is your recommendation for businesses that are listening right now then on what they should be doing to take advantage of these trends?
[04:41.730] – Doug Kim
If I had to say it in one sentence: Start thinking about getting ready for due diligence. You can Google due diligence and see what that takes. I mean, anybody can do that. If I’m right and there’s going to be an increased M&A activity and companies are going to be acquiring technology, not developing it, a company that wants to be a target for an acquisition would serve themselves well getting ready for this process.
[05:05.080] – Mike Switzer
All right, Doug. Great information. Thank you so much for spending time with us today.
[05:09.120] – Doug Kim
Happy to do it. Enjoyed it.
[05:10.870] – Mike Switzer
Doug Kim is an attorney. He joined us by phone from his office in Greenville, South Carolina. Remember, you can hear this show again at our web page, southcarolinapublicradio dot org. You can hear us again wherever you find podcasts with the South Carolina Business Review. This is Mike Switzer.
[05:33.700] – Announcer
The views expressed on the South Carolina Business Review do not necessarily reflect those of South Carolina Public Radio.
by Kim, Lahey & Killough Law FirmKim, Lahey & Killough Listed in 2025 Best Law Firms
Kim, Lahey & Killough Law Firm has been named in the 2025 edition of Best Law Firms® in Greenville and Charleston. Firms included in the 2025 Best Law Firms list are recognized for professional excellence with consistently impressive ratings from clients and peers. Each year since its formation, Kim, Lahey & Killough Law Firm has received this esteemed recognition.
Ranked firms, presented in three tiers, are listed on a national and regional-based scale. Firms that receive 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.
The Kim, Lahey & Killough Charleston office is recognized in the areas of Trademark Law, Intellectual Property Litigation, Corporate Law and Business Organizations (LLCs and Partnerships).
In the Greenville, SC market, the firm is recognized in the areas of Trademark Law, Copyright Law, Intellectual Property Litigation, Patent Law and Patent Litigation.
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, defense, agriculture and technology industries as well as universities. Key practice areas include intellectual property, business and commercial litigation, mediation, employment, corporate and business matters including formation and structure, mergers and acquisitions, contracts, and cybersecurity.
by Kim, Lahey & Killough Law FirmFive 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.
by Kim, Lahey & Killough Law FirmSeven 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.
by Kim, Lahey & Killough Law Firm2024 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.
by Kim, Lahey & Killough Law FirmGeigTech 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.
by Kim, Lahey & Killough Law FirmAlternative 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].
by Kim, Lahey & Killough Law FirmU.S. Patent and Trademark Office releases 2022-2026 Strategic Plan
Plan sets priorities that enable the agency’s new mission and vision
WASHINGTON, DC (June 7, 2023) — The U.S. Patent and Trademark Office (USPTO) today published its 2022-2026 Strategic Plan, completing a planning process that welcomed more than 150 comments on the draft version from the public and USPTO employees.
“We are reimagining the USPTO of the future, an agency that issues, upholds, and protects robust and reliable IP rights that incentivize innovation and bring more ideas to market for and from all,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “Our 2022-2026 Strategic Plan is our path forward for continued success – we thank everyone who provided feedback throughout the planning process to make this plan ambitious, focused, and relevant.”
The new plan outlines the USPTO’s mission-focused strategic goals:
1. Drive inclusive U.S. innovation and global competitiveness;
2. Promote the efficient delivery of reliable intellectual property (IP) rights;
3. Promote the protection of IP against new and persistent threats;
4. Bring innovation to impact for the public good; and
5. Generate impactful employee and customer experiences by maximizing agency operations.
The plan directly supports the USPTO’s new mission of driving U.S. innovation, inclusive capitalism, and global competitiveness, and its new vision of unleashing America’s potential, with multiple objectives directly linked to each of these five goals.
For more information on the USPTO 2022-2026 Strategic Plan, visit www.uspto.gov/StrategicPlan.
by Kim, Lahey & Killough Law FirmST BARTH® Prevails in Trademark Opposition Case
Charleston
intellectual property attorney B.C. Killough recently prevailed in a trademark opposition case before the Trademark Trial and Appeal Board in an opinion issued in May of 2023. The Board sustained opposition to the federal trademark registration of Poupette St Barth, which was deemed to be confusingly similar to the trademark ST BARTH®.
Brands are important and valuable assets of companies, even though that value may not appear on a balance sheet. Monitoring brands used by competitors is an important part of an IP portfolio strategy. If a trademark owner believes they would be harmed by federal registration of a similar mark, they can file an opposition to the application for registration within a very limited opposition period. Monitoring of trademark applications at the United States Patent and Trademark Office provides intellectual property attorneys the ability to timely oppose the registration of conflicting marks to protect the client’s brands and prevent consumer confusion.
The Opposer in this case used ST BARTH to identify high-end luxury personal care products and has sold these products throughout the world since 1983. The applicant sought to register Poupette St Barth for personal care products with the United States Patent and Trademark Office.
The Board concluded that the marks are confusingly similar and refused to register Poupette St Barth. The Board stated that “consumers familiar with Opposer’s ST BARTH mark for perfumery, cosmetics, and other personal care products may perceive Applicant’s addition of the term POUPETTE merely as a variant or line extension of Opposer’s ST BARTH mark, with both marks indicating a single source.”
Read the entire case opinion here.
Any results the lawyer or law firm may have achieved on behalf of clients in other matters do not necessarily indicate similar results can be obtained for other clients.