Kumayl received his Juris Doctor from the University of St. Thomas School of Law, magna cum laude. Kumayl holds a Bachelor of Science degree in Electrical Engineering from the University of Minnesota. While completing his undergraduate degree, Kumayl participated in a variety of internships and volunteer positions including a software development summer internship, computer engineering summer internships, and a research assistant volunteer position for nanoparticle testing. Before attending law school, Kumayl worked as a full-time software engineer with a focus on firmware tools development and firmware testing in medical devices.
Author: Kinney & Lange, P.A.
New Shareholders Announced
Kinney & Lange is pleased to announce three new shareholders: Ian MacKinnon, Nicholas Peterka, and Andrew Swanson.
Ian MacKinnon has extensive experience in IP portfolio management. He has assisted clients with monetizing their IP portfolios through licensing and sales activities. Ian has also participated in enforcement activities and providing IP litigation support.
Nick Peterka’s practice has been primarily in patent preparation and prosecution, as well as clearance activities. Such clearance activities include performing offensive activities, such as patentability searches and analyses as well as defensive activities, such as freedom-to-operate searches and analyses. Nick also has extensive experience in Trademark prosecution and registration.
Andrew Swanson has extensive experience managing large patent portfolios for various clients of Kinney & Lange. In addition to client management, Andrew’s practice includes patent preparation and prosecution, as well as clearance activities. Please welcome Kinney’s three new shareholders.
Kinney & Lange would like to introduce our 2021 summer interns. Our 2021 class of interns joined us on June 1st
Kumayl Lakha is a returning intern, having served as a Kinney intern last year. Kumayl is currently a law student at the University of St. Thomas School of Law and is expected to graduate in June 2022. Kumayl has a Bachelor of Science in Electrical Engineering from the University of Minnesota. He previously worked as a software support intern at Squigl and as a software engineer at Medtronic. During his undergrad years, Kumayl also worked as a bioheat lab assistant at the U of M where he tested the properties of different nanoparticles on artery heating.
Ryan Meger is currently a law student at the University of Iowa College of Law and is expected to graduate in May 2022. Ryan has a Bachelor of Arts in Applied Physics from Saint John’s University. He previously worked as an intellectual property law intern at 3M and as a judicial intern for the Honorable Sara L. Darrow. Ryan also has experience working as an engineering intern for Keytronic where he designed, built, and programmed an automated optical inspection system for pin-through-hole electronic components.
Benjamin Williams is currently a law student at the University of Missouri-Kansas City School of Law and is expected to graduate in May 2022. Ben has a Bachelor of Science in Chemical Engineering from Iowa State University. He previously worked as a systems and process automation engineering intern at Empirical Foods where he programmed ladder logic to control motors, pumps, valves, and variable frequency drives. Ben also completed an improvement engineering co-op and a production engineering co-op at the Dow Chemical Company.
Erik Janss is currently a law student at Drake University Law School and is expected to graduate in May 2023. Erik has a Bachelor of Science in Mathematics and a Bachelor of Science in Computer Science from La Salle University. He has experience working as a research analyst intern at Monument Economics Group where he developed reports on technical aspects of financial markets. Erik is also a representative for the Division One Student-Athlete Advisory Committee of the NCAA.
Hibah Lateef is currently a law student at the University of Iowa College of Law and is expected to graduate in May 2023. Hibah has a Bachelor of Science in Computer Engineering from the University of Texas at Dallas. She previously worked as an intern with Texas Instruments where she analyzed prototype projects from engineering and marketing perspectives. She has also worked as a legal intern with Barbieri Law Firm.
Kinney is pleased to have such interns who bring diverse technical expertise to our firm. Please join us in welcoming them!
Kinney & Lange, P.A. welcomes Dana Brown and Alexander Walker as our newest Associates
Dana holds a BS degree in Physics from the University of Massachusetts Amherst. She attended law school at Washington University in St. Louis. Dana focuses her practice on patent prosecution, including drafting and prosecuting patent applications, providing recommendations on international patent application strategy, and conducting patentability and freedom-to-operate studies. In her free time, Dana enjoys hiking and visiting Minnesota’s state parks.
Alexander holds a BS degree in biochemistry and a PhD in molecular biosciences from Washington State University. Alexander attended law school at the University of Minnesota. Alexander focuses his practice on patent law, including drafting and prosecuting patent applications, conducting freedom-to-operate studies, and conducting patentability studies. In his free time, Alexander enjoys live music, playing guitar and piano, crate-digging for vinyl records, and late-night sessions of Dungeons & Dragons.
K&L Announces New Shareholders
Kinney & Lange is happy to announce two new shareholders – Jessica Thomas and Michael Parish. Jessica and Michael join David Fairbairn, Alan Koenck, Erik Wright, George Romanik, John Leighton, Rick Nelson, and Boyd Black as shareholders. With the addition of Jessica and Michael, with their educational degrees in Biomedical Engineering and Mechanical Engineering, Kinney & Lange has strengthened our suite of technical arenas in which we have expertise. We are very excited to have these two attorneys join us, not only because they have demonstrated such talent and ability, but also because both of these young attorneys are fine people who share our core values: Dignity, Respect, Teamwork, Stewardship, and Excellence.
George Romanik Joins Kinney & Lange
Kinney & Lange, P.A. is pleased to announce that George J. Romanik has joined the firm as a shareholder, team leader, and member of the leadership group. George holds a BS in Chemical Engineering from Lehigh University (Bethlehem, PA) and a JD from the University of Connecticut School of Law (Hartford, CT).
Before joining Kinney & Lange, George was Associate General Counsel, Intellectual Property at Chemtura Corporation (now LANXESS Solutions US) where he led the in-house intellectual property team in providing a full range of IP services, including IP protection (patents, trademarks, trade secrets, copyrights), IP transactions (licensing and other commercial transactions), and information technology support (licensing, outsourcing, and other IT matters).
George began his legal career at United Technologies Corporation, where he served in a number of positions over the course of 21 years, notably as Chief Intellectual Property Counsel for both the Pratt & Whitney and Hamilton Sundstrand (now part of UTC Aerospace Systems) divisions. George also served as counsel to Pratt & Whitney’s information technology organization.
George will apply his extensive experience in intellectual property and commercial law, business transactions, and client counseling to serve Kinney & Lange’s clients.
George can be reached by phone at 612.337.9341 or by email at gromanik@kinney.com.
Kinney & Lange serves a wide range of clients, from Fortune 500 corporations to start-up businesses and individuals. The firm strives to offer the highest-quality intellectual property services, combined with flexible and competitive pricing strategies that reflect the modern business environment. Since its formation over thirty years ago, the firm has secured, licensed and maintained national and international intellectual property rights for clients throughout the world. Kinney & Lange has also successfully defended these rights in litigation, and through professional, confidential and cost-effective mediation and settlement services. Striving for excellent service on every matter is one of Kinney & Lange’s core values.
A Day of Volunteering
The Kinney & Lange team helped pack 6,732 pounds of food to be distributed by Second Harvest Heartland – a food bank working to solve the problem of hunger in our region
.
Cooperative Patent Classification Implementation and Best Practices
The Cooperative Patent Classification (CPC) is a harmonization of the U.S. and European existing patent classification systems, the European Classification System (ECLA) and the U.S. Patent Classification (USPC). The change to the CPC was initiated through a joint partnership between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). The CPC is the result of the USPTO’s effort to provide a modern classification system that is internationally compatible; and a result of the EPO’s effort to eliminate the reclassification of U.S. patent documents and ensure compliance with International Patent Classification (IPC), administered by the World Intellectual Property Organization (WIPO). The CPC is designed to have both US and European patent documents under a single classification scheme with a similar structure to that of the IPC. The joint classification system allows the USPTO and the EPO to efficiently share resources for classifying documents, revise the classification scheme where necessary, and to reclassify documents in an evolving world of technology.
In October 2010, the USPTO and EPO began working together to develop the CPC by incorporating the best practices of both the ECLA and USPC. The CPC was formally launched in January 2013, replacing the ECLA system at the EPO and initiating a two-year transition period at the USPTO for reclassification in an effort to begin phasing out the USPC in 2015. During this transition period the USPTO classified applications both in the CPC and the USPC systems while examiners received training on how to search in the CPC system and place CPC symbols on both granted patents and published patent applications. Going forward, both the EPO and USPTO will share maintenance of the CPC through a multi-year planning system for identifying areas requiring reclassification and a revised classification scheme. ECLA and USPTO symbols will not be removed from patent documents published prior to January 2013 and January 2015, respectively, for historical searching.
Two main objectives were theorized for the transition to the CPC. First, to improve patent searching by creating a more developed classification that the already existent IPC. Second, to efficiently share resources between the USPTO and EPO. Objectives, Cooperative Patent Classification. With these objectives in mind, the expected benefits of the CPC were enhanced examination efficiency, improved access to documents from patent offices around the world, improved navigation and understanding of a single classification system, improved consistency of search results across offices, facilitated work-sharing on applications filed across offices, and more adaptive and actively maintained classification schemes.
The transition to the CPC from the USPTO and ECLA has created a number of new obstacles for searchers and attorneys in the patent searching world. The CPC is divided into nine sections which are then subsequently divided into classes, sub-classes, groups, and sub-groups. In total, the CPC contains approximately 260,000 classification entries. The greater number of classification entries than previously used provides a more detailed scheme breakdown and more descriptive classification titles. See Cooperative Patent Classification(CPC): General Introduction into CPC, United States Patent and Trademark Office (July 10, 2012). As a result, a best practice for searchers and attorneys using the CPC is to understand the more detailed breakdown and recognize that a particular feature may be covered by multiple classes.
The CPC is one scheme that includes an indexing system, which resembles the current IPC indexing system. In the CPC, all symbols belong to a single scheme but differentiate by use and scope, rather than the use of different symbols for each ECLA and USPC scheme. Available tools for searching in the CPC system include the CPC concordances with the ECLA and IPC, and statistical mapping tools from USPC to CPC. The CPC website provides CPC concordances tables for ECLA to CPC and CPC to IPC for reference. Each table provides a conversion of ECLA classifications to CPC classifications or CPC classifications to IPC classifications. For example, a patent classified under a particular ECLA classification is aligned with the respective CPC classification for that patent.
Furthermore, the USPTO provides a statistical mapping tool for mapping from USPC to CPC. The statistical mapping is produced by a statistical analysis of symbols allocated to families of documents classified simultaneously in the CPC and USPC schemes. Each USPC symbol is mapped to a CPC symbol and possibly additional CPC symbols depending on relevance and contribution. Confidence in statistical mapping is low when the statistical results of mapping of one USPC symbol to many CPC symbols is large or the number of families having the corresponding CPC symbol statistically analyzed is small. See Statistical Mapping: FI to CPC, European Patent Office (July 20, 2016). For example, a USPC symbol allocated to a certain family of documents can be mapped to at least one CPC symbol when the statistical mapping returns (in between brackets), first, the number of families bearing the corresponding CPC symbol, and second, the percentage that these corresponding families represent over the total number of families classified under that CPC classification. If the number of families found bearing the corresponding CPC symbol is less than 3, the mapping will return “NOMAP”, meaning that no mapping is possible. Moreover, searchers and attorneys should note that mapping from USPC to CPC may not be reliably precise because mapping is based on statistical analysis due to the fact that the USPC is not based on IPC/ECLA systems.
Searchers and attorneys should also note that any saved alerts or saved search queries based on USPC will no longer return results (after 2015), and may need to be updated. Likewise, any historical search queries based on USPC will not return results (after 2015) if conducted today.
Kinney & Lange Attorneys Recognized by Super Lawyers in 2016
Kinney & Lange congratulates its 2016 Super Lawyer David R. Fairbairn and Rising Star Austen Zuege. Super Lawyers surveyed Minnesota attorneys regarding those members of the Minnesota State Bar whom they considered to be Super Lawyers. The Super Lawyers Selection Committee evaluated the nominations received and made the final selections. No more than five percent of the total lawyers in the state are selected as a Super Lawyer and no more than 2.5 percent are selected as a Rising Star. This is Dave’s fourteenth consecutive year of being named a Super Lawyer and Austen’s fourth consecutive year on the list of Rising Stars.
Federalization of Trade Secret Law
The Defend Trade Secrets Act of 2016 (DTSA) was signed into law by President Obama on May 11, 2016. The DTSA creates a private civil cause of action in federal court for misappropriation of a trade secret “related to a product or service used in, or intended for use in, interstate or foreign commerce.” The DTSA amends the existing Economic Espionage Act of 1996 (EEA), which criminalizes trade secret theft, and makes trade secrets a national priority, affording a level of protection already provided for patents, copyrights, and trademarks.
Prior to enactment of the DTSA, plaintiffs were limited to civil remedies under state law. While 48 states have adopted some form of the Uniform Trade Secrets Act (UTSA), trade secret owners have criticized differences in the laws, as well as differences in application of the law, discovery rules, and procedural requirements between states for creating unpredictability and hampering their ability to develop a uniform policy for protecting intellectual property.
In a nutshell, the DTSA shares similarities with the UTSA, including award for attorneys’ fees, double damages for willful and malicious misappropriation, and a three-year statute of limitations, but it also contains important distinctions. Most significant are provisions allowing for ex parte seizures, limiting injunctions against a former employee’s employment with a competitor, and providing protections for whistleblowers. The DTSA also adopts the EEA definition for “trade secret,” which may be broader than the UTSA.
Ex Parte Seizures
Under the DTSA, courts can impose an ex parte seizure of “property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action.” Under the ex parte seizure, no advanced notice is provided to the defendant. To prevent or limit abuse, the law places several limitations on the property seizures including restricting issue of a court order to “extraordinary circumstances.” Nonetheless, it is a remedy that is currently unavailable under the UTSA.
Protection of Employee Mobility
Unlike the UTSA, the DTSA explicitly bars courts from providing injunctive relief that would “prevent a person from entering into an employment relationship” or “otherwise conflict with an applicable State law prohibiting restraints on the practice of a lawful profession, trade, or business.” Furthermore, any orders placing conditions on a former employee’s employment relationship must be “based on evidence of threatened misappropriation and not merely on the information the person knows.” This is in contrast to the inevitable disclosure doctrine applied by some states, which allow a party to enjoin a former employee from entering into employment with another company if it would inevitably result in the use of the party’s trade secrets.
Whistleblower Immunity
The DTSA grants immunity from civil and criminal liability under both state and federal trade secret law for whistleblowers who disclose trade secrets “in confidence to a Federal, State or local government official, either directly or indirectly, or to an attorney” where such disclosure is “solely for the purpose of reporting or investigating a suspected violation of law.” Additional protection is provided to individuals filing “a lawsuit for retaliation by an employer for reporting a suspected violation of law” provided the filing is made under seal. Most importantly, the law requires employers to provide notice of the whistleblower immunity the DTSA provides. The law states that employers must “provide notice of the immunity set forth in the [the DTSA] in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” “Employee” is defined as including “any individual performing work as a contractor or consultant for an employer.” Notice is required for “contracts and agreements that are entered into or updated after the date of enactment.” Under the DTSA, employers who fail to comply with the notice requirement may not be awarded exemplary damages and attorney fees in an action against the employee to whom notice was not provided.
“Trade Secret”
The DTSA defines “trade secret” to mean:
all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—(A) the owner thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the another person who can obtain economic value from the disclosure or use of the information.
Although similar to the eight categories listed in the UTSA (formula, pattern, compilation, program, device, method, technique, or process), there are variations among state laws that trade secret owners need to be aware of.
Takeaways
- In order to take advantage of the DTSA, owners of trade secrets must take reasonable measures, as required under state law, to keep such information secret.
- Trade secret owners should carefully consider the variations in the state and federal laws and application of those laws before seeking remedies for misappropriation. The DTSA does not preempt state law, but provides another forum.
- Employers should take action now to modify policies and new or updated employment agreements to ensure compliance with the DTSA’s whistleblower immunity notice provision.