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Arbitration, Dispute Resolution & Litigation Guide

End of Year 2013 / January 2014

VOLUME NINE ISSUE SIX

PCT & Global IP Review

WWW. CORP-INTL .COM

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CONTENTS EDITOR’S TALK In this edition’s cover story, we profile Herrick, a midsized, full-service New York firm with a Corporate Department that has long distinguished itself as an alternative to the mega-firms. Herrick’s Corporate Department provides the sophisticated legal advice and technical expertise of a prominent New York City firm, without the layering and inefficiencies common to larger firms. Its balanced staffing model, with carefully managed deal teams and a relatively low partner-to-associate ratio, ensures that clients receive senior level advice throughout the transaction. There is perhaps no better testament to the success of Herrick’s approach than the group’s stellar client roster. It currently includes the New York Yankees; global corporations such as Unilever; notable international banking and investment management leaders; and an impressive roster of hedge funds, private equity investors and middle-market companies. Irwin Kishner, chairman of Herrick’s executive committee and co-chair of its Corporate Department, remarked: “Our value proposition is simple. We provide practical, creative legal advice and work relentlessly to achieve our clients’ goals. […] We are – first and foremost – business people, and we understand it is vital to maintain a business perspective on legal affairs.”

Herrick’s Corporate Department: Committed to its Clients’ Success

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A focus on Herrick, New York City counsel to the New York Yankees as well as global corporations such as Unilever.

Sector Panel Corporate INTL examines the latest trends and developments affecting global industries.

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Enjoy the issue – and best wishes for the New Year to all our readers. Ryan Daff, Editor

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PCT & Global IP Review A focus on the Patent Cooperation Treaty and the hot topic of intellectual property – prefaced by WIPO and the EPO.

Others

News & Views Competition Law Who’s Who Route to Greece

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Arbitration, Dispute Resolution & Litigation Guide Profiles of alternative dispute resolution, and litigation, advisers from around the world – complete with a useful location finder.

reprints & permissions All rights reserved. No part of Corporate INTL may be reproduced or transmitted in any manner or by any means without the prior permission of the publishers.

disclaimer Every effort is made to ensure the accuracy of the contents of Corporate INTL. However the publishers cannot accept responsibility for any errors and subsequent claims made by any third parties. The magazine contains predictions for the future of various companies and sectors. However, no forward statement should be construed as profit forecast.

Editor: Ryan Daff ryandaff@corp-intl.com

Advertising: advertising@corp-intl.com 0121 237 8831

Journalist: Carneika Washbrook carneikawashbrook@corp-intl.com

Switchboard: 0121 236 0411

Designer: Christiana Caves christianacaves@corp-intl.com

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JRS Corporate Ltd

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NEWS&VIEWS Sector Panel

Implications for Business Following the Government’s Consultation on Prevention of Illegal Working Regime In 2008, the UK government introduced a system of civil penalties for employers who employ illegal migrant workers. The legislation was designed to encourage employers to prevent illegal working without criminalising those who make honest mistakes in operating their recruitment and employment practices. The prevention of illegal working regime is now under review, with the latest Immigration Bill proposing changes which will make it easier for civil penalties to be recovered, and a recent public consultation on increasing the maximum civil penalty and changing the way in which employers need to comply. Nearly 500 individuals, employers and representative organisations responded to the government’s consultation on the proposed changes. The results, which were published last month, indicate broad support for the government’s aims to get tough on rogue employers while supporting compliant employers. With over 60% support from respondents, the government shall increase the maximum civil penalty from £10,000 to £20,000 per illegal worker when an employer commits a breach on more than one occasion. The consultation did not explain how the government came to the increased figure, which will have a disproportionate impact on small businesses. An employer can establish a statutory defence against illegal working by undertaking prescriptive right to work checks – e.g. copying a migrant’s original passport and UK immigration permission, where appropriate. Currently, an employer must complete the right to work checks before employment commences, and for migrants with time limited immigration permission additional checks must be done every 12 months. Over 80% of employers were in favour of the removal of the annual checks, and the government intends to remove this additional burden, replacing it with the requirement to undertake a check ‘at the point of expiry’ of the migrant’s immigration permission. This will close the loophole which provided employers with statutory defence during the 12 months following the annual check, despite the migrant’s immigration permission expiring during this period (provided that the employer did not knowingly illegally employ them). A significant majority of respondents agreed to the calculation of civil penalties being simplified, and the government has therefore decided to remove the partial right to work check, e.g. copying only one of the prescribed documents, as a mitigating factor when calculating the level of the civil penalty. The government claims that its intention is to implement a ‘straightforward, transparent and consistently applied process, and one which provides clarity to an employer about the likely level of sanction in the event of non-compliance’. 81% of all respondents agreed that, if an employer has already received one or more civil penalty notices, this should be considered an aggravating factor when determining the current penalty level. The notion of more severe penalties for repeat ‘offenders’ is not unreasonable, but there is a real danger of employers being branded repeat ‘offenders’ for numerous breaches for different reasons. Further, there needs to be a distinction between those employers who make honest mistakes and those who intentionally flout the law and fail to carry out any checks. Many large international businesses begin their compliance journey well intentioned, implementing robust right to work practices and procedures. However, due to a high turnover of staff or restructuring, these fall to the wayside and the cracks appear when it is too late, and an illegal worker is found to be working for them. There is frequently tension between HR teams who are already overstretched, trying to instil effective prevention of illegal working practices, and the business managers who need migrants working for them yesterday! Whatever the size of a business, it will need to implement effective systems which its 4

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Natasha Chell, Partner, Laura Devine Solicitors staff can apply due care and attention to, protecting the business from a civil penalty. Employers should welcome the fact the government has listened to the majority of respondents and made a sensible decision to retain the current warning letter for first time breaches. A saving grace for first time offending employers who are otherwise generally compliant, cooperative and have reported the suspected illegal working. A majority of respondents were supportive of directors and partners of limited liability businesses being held jointly and severally liable for civil penalties to allow recovery action to be taken against them if the business does not make payment. Whilst the government acknowledges this support, it will not be implementing this proposal, taking heed of the warnings that such a measure may have a wider impact on company and partnership law. So for now, directors and partners can breathe a sigh of relief! The above amendments to the current regulations should be taken forwards by the government in April 2014. As with all changes to UK immigration legislation and policy, the devil will be in the detail. Employers should take the opportunity to review their right to work practices, ensuring they are compliant, as the proposed changes will make non-compliance a costly price to pay. Natasha Chell, partner at Laura Devine Solicitors, advises on all areas of business and personal immigration to the UK, as well as European free movement, and has particular interest in Tier 1 and Tier 2 applications. She regularly advises employers on complex Tier 2 compliance issues, consulting on risk management and remediation strategies. Natasha also directs the team’s employer audit service. Tel: +44 (0)20 7469 6460 natasha.chell@lauradevine.com www.lauradevine.com


Insurers Must Get to Grips with the Realtime Mobile Marketplace, Says Ovum The insurance industry is at an inflection point between operating in a product-orientated marketplace and operating in a customer-orientated marketplace. According to new research from Ovum, a leading global analyst firm, growing customer empowerment, the increasing ubiquity of mobile capabilities and minimal economic growth in developed countries are making it imperative for insurers to embrace customer-centricity. In 2014, insurers will have to support real-time commercial interactions not only with customers, but also with prospects and sales channels. Insurance sales channels will expect insurers to provide them with the capabilities to create market awareness, generate business and service clients. As customers are increasingly equipped with more advanced smart devices and apps, they are exerting greater influence in their interactions with insurers. Barry Rabkin, principal analyst, Insurance Technology, Ovum, noted: “The old saying that the ‘customer is king’ has never been more apparent in the insurance industry. However, to improve the level of customer focus, insurers’ legacy IT systems will need modernising. Insurers need to integrate systems of record, such as core administration systems, with systems of engagement, such as customer channels. “This will require hybrid systems that combine the two, such as customer relationship management (CRM) or customer experience management (CEM) systems. Data management and analysis, including analysis of variably structured data, will become an essential skill for insurance companies. These systems will not only help in the increasing efforts towards customer centricity, but support mobile sales channels to meet the demands of a real-time marketplace.”

the Shah Deniz Consortium to bring Caspian gas from the European border of Turkey to Italy. It has also seen the launch of AzerSpace–1, the first Azerbaijani communications satellite, while work on the Trans-Eurasian Information Superhighway (TASIM) is expected to reach completion at the end of the year. Charles Hendry MP, Prime Ministerial Trade Envoy to Azerbaijan, Kazakhstan and Turkmenistan, said: “In a little over 20 years, Azerbaijan has made tremendous progress. The UK is the greatest FDI contributor to Azerbaijan, due to the oil and gas industry, but it is time for it to take a similar position in the non-oil sector. There is a pre-existing long-term relationship between the countries. “Azerbaijan’s role in the development of the Southern Gas Corridor, due to the construction of TANAP and TAP, is destined to provide European energy security. Today’s event, with its additional emphasis on the non-oil sector, is of great significance for Azerbaijan and the UK. I urge British businesses to come to Baku and see what the country has to offer. The UK government wants British businesses to be the partner of choice for their Azerbaijani counterparts.”

South Korea State Visit Delivers UK Trade Boost UK companies are celebrating new trade partnerships with South Korea, which will boost commercial ties between the two countries.

Azerbaijan’s Buoyant Economy Highlighted in London The European Azerbaijan Society (TEAS) organised its fourth annual London Business Forum, entitled Enhancing Azerbaijan’s Competitiveness and Business Climate, attended by more than 200 politicians, business executives and journalists on the 5th of November. The event came at the end of a pivotal year for Azerbaijan. This has seen the concrete steps taken towards realisation of the Southern Energy Corridor, following the signing of the protocols regarding construction of the Trans-Anatolian Pipeline (TANAP) and the selection of the Trans-Adriatic Pipeline (TAP) by

The announcements came during a November state visit to the UK by The Republic of Korea’s President Park Geun-hye, in her first official visit to the UK since her election.

Sector Panel

At the inaugural JETCO (Joint Economic and Trade Committee), Business Secretary Vince Cable and Korea’s Minister of Trade, Industry & Energy, Yoon Sang-jick, committed to doubling trade by 2020, and doubling Foreign Direct Investment between the UK and South Korea by 2020. A number of trade deals were also signed, including Hyundai Capital UK and Santander Bank announcing a £20 million expansion to provide finance packages to buyers of Hyundai and Kia vehicles as part of a scheme that will create 40 new UK jobs. Since the EU Korea Free Trade Agreement was signed in July 2011, entering the South Korean market has become easier for UK companies. UK exports to Korea reached a new historical peak in 2012 and the UK is now Korea’s second largest trading partner among EU countries.

90,000 Pension Schemes to be Reviewed if 0.75% Cap Introduced Within the UK government’s document ‘Better Workplace Pensions: A Consultation on Charging - Impact Assessment Report’, it is estimated 90,000 private sector defined contribution pension schemes, many of which will have been specifically set up or revised for auto-enrolment, will need to be reviewed again if a proposed 0.75% charging cap is introduced.   LEBC Group’s Divisional Director Glynn Jones said: “This statistic has not been reported on to date, but if progressed would be a serious further burden on employers. Plus how is the pensions industry expected to cope at a time when tens of thousands of new auto-enrolment schemes are having to be set up next year for SMEs?” LEBC is a national IFA, pensions and employee benefits consultancy. Speaking for the Group, Mr Jones added: “For an employer having to undertake a review, there would be significant additional financial costs. This seems particularly unfair as they have already taken the responsible route, with incurred costs, of establishing a pension scheme for their employees to comply. So through no fault of their own, the goal posts are effectively being moved and they would be expected to pick up the tab.  “Not only have they had the cost of establishing their scheme in the first place and all that entailed, but they are having to pay into it under the new auto-enrolment rules. And now they could be expected to incur further costs of a review, at a time when many businesses are working hard to move out of recessionary times.”

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Sector Panel

HERRICK’S CORPORATE DEPARTMENT: COMMITTED TO ITS CLIENTS’ SUCCESS Herrick www.herrick.com New York / Newark / Princeton / Washington, DC / Istanbul

In late 2012, Yankee Global Enterprises and other investors agreed to

Stevenson splits his time between the firm’s New York and Newark offices.

(YES Network) to News Corporation. The acquisition, which valued the

We have a core presence in a global financial centre, robust offices in one of

sell a 49% interest in the Yankees Entertainment and Sports Network Yes Network at close to $4 billion, was heralded as among the most

significant media and entertainment deals of the year. It marked a mile-

stone in the evolution of the YES Network, a pioneering regional sports network that has been a fixture of the American broadcast landscape

for over a decade. It was also seen as an important step in News Cor-

poration’s development of a cable sports channel to compete against ESPN in the lucrative North American television market.

The size and complexity of the acquisition required top-tier legal talent, and a host of leading firms were engaged to advise on the deal. While News

Corporation and Goldman Sachs turned to global firms Hogan, Lovells and

Skadden, the Yankees turned to their longtime counsel at Herrick, Feinstein, a mid-sized, full-service, NY firm whose Corporate Department has long

“Our office mix puts us where we want to be: on the ground with our clients. the nation’s most vibrant business corridors, and a presence in the nation’s

capital. This gives us a unique perspective, having constant contact with the

global financial establishment and strong ties to brick-and mortar companies across a variety of industries.”

Barbaros Karaahmet, the department’s newest member, adds significant

international reach to an already robust platform. Karaahmet, Co-Chair of

Herrick’s Turkish practice group, joined the firm in 2011, bringing with him extensive experience in cross-border transactions for multinational and

Turkish clients across a wide range of sectors. He is spearheading Herrick’s latest expansion effort – the establishment of an Istanbul office that will

capitalise on the firm’s broad network of contacts in the region, and provide

a legal nexus for clients and investors seeking to do business in this vibrant emerging market.

distinguished itself as an alternative to the mega-firms. “We know all the sig-

A Transactional Powerhouse

to retain any of them. We routinely turn to Herrick’s Corporate Department

strength, and emphasise the team’s capabilities in the middle-market. “We

nificant law firms in the city, the region and beyond, and we have the means

because we trust them so thoroughly, and they are without peer at helping us navigate some tricky waters in complex transactions,” says Lonn Trost, Chief Operating Officer of the Yankees. The Value of a Unique Model

Herrick’s Corporate Department provides the sophisticated legal advice and

Kishner says mergers and acquisitions represent the department’s greatest are the go-to department in that area,” he says. “We have repeatedly demonstrated the ability to do deals swiftly and efficiently, with a realisation that

they can’t sustain the enormous fees mega-deals can. For middle-market

deals to make sense, transactional costs have to be kept reasonable, and we proceed accordingly.”

Anthony Viscogliosi, founder of Small Bone Innovations, a long-time client,

technical expertise of a prominent New York City firm without the layering

speaks to the firm’s understanding of the middle-market segment. “We know

carefully managed deal teams and a relatively low partner-to-associate ratio

also know that we, as a middle-market, privately-held concern, get the royal

and inefficiencies common to larger firms. Its balanced staffing model – with – ensures that clients receive senior-level advice throughout the transaction.

“Their Corporate Department is big enough to do the heavy lifting, yet I know I’m getting advice from someone senior,” says Yankees COO Trost. “They

have the sophistication to handle complex issues, and pinpoint knowledge of applicable law. Perhaps most importantly, they have the wisdom and

about the big-brand-name corporate clients that Herrick represents, but

treatment from Herrick’s Corporate Department. That runs the gamut from knowledge, experience and wisdom, to introductions, business sense and

pure legal skills. I know we get the best possible outcome when we call on Herrick.”

The department’s recent work includes numerous strategic acquisitions on

business acumen to give us sound, practical advice as business counsellors

behalf of major public conglomerates, as well as a variety of private equity

There is perhaps no better testament to the success of Herrick’s approach

of Colgate-Palmolive’s Colombian laundry detergent brand, and also acted

to the Yankees.”

than the group’s stellar client roster. It includes the New York Yankees; global corporations such as Unilever; notable international banking and investment management leaders; and an impressive roster of hedge funds, private equity investors and middle-market companies.

Irwin Kishner, Chairman of Herrick’s executive committee and Co-Chair

of its Corporate Department, remarks: “Our value proposition is simple, we

transactions. The team represented Unilever in its $215 million acquisition for Powers Fasteners, a major construction supplies manufacturer, in its

acquisition by Stanley Black & Decker. In the private equity arena, the group recently represented Mediware Information Systems, Inc., a NASDAQ-listed provider of clinical software, in its $195 million going-private sale to leading investment firm Thoma Bravo, LLC.

Ed Stevenson was the lead partner on the Unilever transaction. “The

provide practical, creative legal advice and work relentlessly to achieve our

Colombian deal truly epitomises what Herrick is all about; we worked in close

reflects our own experience. We are, first and foremost, business people,

their viewpoint enabled us to be an effective and nimble partner in what was

clients’ goals – and we do so in the most efficient way possible. Our model and we understand it is vital to maintain a business perspective on legal affairs.”

The department, which includes 14 partners and more than 25 counsel

and associates, also leverages the resources of a full-service New York

City firm. Herrick has 170 attorneys and additional offices in Newark and

Princeton, New Jersey and Washington, DC. Department Co-Chair Edward 6

End of Year 2013 / Jan 2014 Corporate INTL

coordination with our client’s in-house team, and our ability to understand a very complicated, multifaceted transaction.” Roots in the Financial Services Industry

Herrick has deep connections to the financial services industry. The depart-

ment’s Financial Institutions practice, chaired by Stephen Brodie, represents a number of premier private and money-centre banks on loan transactions,


Sector Panel

“We are – first and foremost – business people, and we understand it is vital to maintain a business perspective on legal affairs.”- Irwin Kishner, Chairman - Executive Committee / Co-Chair - Corporate Department

from documentation and origination to workouts, restructurings and foreclosures. The practice includes high-end middle-market syndicated loans for commercial banks, as well as tailored lending or “custom credit” deals for

private banks. The group also advises a number of banking clients on credit policy with respect to certain kinds of specialty lending, such as loans se-

cured by fine art as collateral. “Finance is among our core capabilities,” says Kishner. “We have had a long association with the banking industry, and our lawyers, many of whom have worked in-house at major institutions, bring a true insider’s perspective to all of our engagements.”

The Investment Management practice, led by Patrick Sweeney, provides

comprehensive legal representation to investment advisers, broker dealers

and other multi-service financial institutions. Sweeney practised investment management law in-house with both Merrill Lynch and Nomura, and brings

to the table an in-depth understanding of the internal mechanisms and legal concerns of his institutional clients. “Our investment management clients

already possess a high degree of legal and financial sophistication. Yes, we

offer them legal counsel, but key to the confidence they place in us is that we

understand their business and are sensitive to the issues they face,” remarks Kishner.

Public Companies and Private Clients

Partners Louis Goldberg and Richard Morris, a former CPA and “Wall Street”

auditor, spearhead the department’s Public Company practice which encompasses traditional securities and capital markets advice, but also provides

guidance on the array of commercial and legal issues faced by companies, their directors and officers and board committees. Daniel Swick co-chairs

Herrick’s Tax and Personal Planning department and is also a member of the corporate team. His corporate practice focuses on counselling closely-held businesses on an array of complex transactions and business succession concerns. “The approach we take to private businesses extends to our

representation of public companies as well. Our team has the experience

and knowledge to wrestle with highly-focused legal issues, but we strive to be more than hyper-specialists. We take a genuine interest in our clients’

businesses, and seek to provide true business counsel and a comprehensive solution for all of their legal needs,” says Stevenson.

Fund Formation, Private Equity and Alternative Investments

Herrick maintains a robust presence in the alternative investment and private fund industry. The firm’s highly regarded Hedge Fund practice has been recognised by major industry publications as among the most prominent in the

United States. Led by Irwin Latner, the group focuses on representing hedge fund and private equity fund managers in the establishment of investment

funds and their ongoing operations, as well as alternative investment struc-

tures such as CLOs and asset-backed securitisation vehicles. The team also advises clients on an array of regulatory and compliance issues, and has

recently focused on the significant developments emerging from the ongoing Dodd-Frank implementation process.

John Rogers spearheads the firm’s Private Equity practice, which concen-

trates on representing private equity sponsors in middle-market transactions. Members of the Private Equity practice group act as outsourced general

counsel for several PE-backed companies on a broad range of legal matters. “We cater to clients seeking deal lawyers that can take an active role in identifying and resolving complicated financial and legal issues in a user-friendly

manner,” says Department Co-Chair Ed Stevenson, who also leads the

firm’s Venture Capital practice. The Venture Capital practice provides ongoing representation to early stage companies, from initial concept all the way through liquidity events, and also represents a broad spectrum of investor

profiles deploying venture capital, including funds, high-net-worth individuals and family offices.

An Industry Leading Practice

Herrick’s Sports Industry practice is perhaps the crown jewel of the de-

partment. The group’s clients include some of the world’s leading sports

enterprises as well as investors and promoters with global reach. Led by Irwin Kishner and Daniel Etna, the team is regularly involved in a variety

of high-profile transactions. Herrick was lead counsel in the development

of New Yankee Stadium, and played a central role in the financing of New

Meadowlands stadium (home to the Giants and Jets) as well as half a dozen

other significant stadium projects. Top Rank – the world’s leading boxing promoter – is a long-time client, and partner Michael Heitner represents them in connection with contracts for pay-per-view television revenue and international rights licensing. “The success of our sports practice is a testament to the strength of our department. The sports industry is one of the most

demanding and active sectors in the business world, and we have long been on the cutting edge of legal work done in the area,” says Kishner. A Tradition of Stewardship

Herrick’s distinctive model presents an attractive alternative for those clients seeking full-service capabilities and the highest level of legal sophistication, yet who are unwilling to sacrifice the value of a personal connection with their counsellors. The firm’s Corporate Department blends the technical

expertise of a specialised boutique with the depth and capabilities of a large law firm, yet yields nothing in the way of client service and partner attention.

This approach to legal practice has remained largely unchanged throughout the firm’s history, and has allowed Herrick to forge enduring relationships with its clients.

“Over a decade ago, we helped the Yankees create the YES Network

concept, and we have been privileged to assist them across many years of growth,” says Kishner. “This recent successful deal is not just a lone trans-

action; it embodies our firm’s culture of commitment to our clients’ success.

We view ourselves as stewards of this success, and each and every lawyer

in our group holds in high regard the responsibility and confidence our clients place on us.”

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Sector Panel

Company Laws & Foreign Investment Law in Saudi Arabia Al-Soaib Law Firm, established in 1995, is a leading law firm in the Kingdom of Saudi Arabia. It is one of the most experienced business and litigation law firms in Saudi Arabia. Its expertise and reputation stems from a long and a successful track record of almost two decades. Its attorneys have a wealth of experience dealing with specialised investment and Saudi law issues related to business. Mohammed Hamad Al Soaib, Al-Soaib Law Firm chairman, is very experienced with Saudi courts and competent in pleading in front of all courts and committees. As the senior litigator of the firm, he assumes personal responsibility for directing the actions of its clients through the court systems in Saudi Arabia. Mr Al-Soaib obtained a degree in law from King Saud University in Riyadh, the capital of Saudi Arabia. After graduating, he worked with some of the most famous law firms in the country, before establishing his own practice in 1995. During the past 15 years he has become one of the most successful lawyers in the Kingdom, especially in the field of construction. He is a member of The Arab Lawyers league; The International Trademark Association (INTA); The Saudi American Business Council; and The SAGIA’s 10x10 programme. Over the years, Al-Soaib Law Firm has evolved to provide a comprehensive range of services to a broad scope of clients from private individuals to the largest multinationals. These include: banking, capital markets, intellectual property, international dispute resolution, finance, Islamic finance, real estate, public international law, corporate, company regis-

tration, international trade, project finance, mergers & acquisitions, oil & gas, patent and trademarks, Sharia Law and litigation. Among its other professional values, the firm believes in: client cost awareness, up-to-date client informing system and accountability. Regarding cost awareness, the firm will strive to detail the costs of the legal services rendered so that the client may not be taken by surprise in future or be confronted by unexpected expenses. An up-to-date informing system means that it strives to keep the client updated with every single step taken on his behalf. In regards to accountability, the firm will take responsibility for problems and make every effort to always find solutions to issues and complexities faced by its clients. Al-Soaib Law Firm is an international law firm with a vision of the future. A firm that understands what a client needs today and tomorrow. It has recognised that the marketplace is changing, and is focusing on creative and cost-effective solutions that ensure clients receive the best service at the best price. It is an approach that keeps the firm as such an innovative force in the legal world.

Al-Soaib Law Firm Mohammed Hamad Al Soaib Chairman Tel: +966-1 472 6362 soaib@soaiblaw.com www.soaiblaw.com

Trademark Law Expert in Turkey Başalan Patent & Trademark first began working in IP rights in 1980. It formalised its services in 1994 under the corporate structure, enabling its business activities to reach larger masses. Ahmet Başalan, Başalan Patent & Trademark attorney at law, noted: “The protection for trademarks in Turkey is available to real and legal persons who are domiciled or who have industrial or commercial establishments within the territory of the Turkish Republic, or to the persons who have application rights resulting from the terms of the Paris or Bern Conventions or the Agreement Establishing WTO. Others who are nationals of states, which accord legal and de facto protection to the nationals of the Turkish Republic, have rights according to the reciprocity principle.” The firm is a significant contributor to the practice of IP in Turkey. Its specialised attorneys are on hand to assist clients with any problem regarding IP and trademark rights. Başalan Patent & Trademark provides a full range of intellectual and industrial property services, including: application, registration and prosecution of trademarks; patents; utility models; industrial designs; domain names; copyrights; plant rights; integrated circuits; geographical signs; consulting; enforcement of IP rights; preventing infringement; and general and unfair competition litigation. Mr Başalan commented: “Regarding the protection of industrial and intellectual properties, including the trade and service marks, patents, utility models, industrial designs, literary and artistic works, Başalan Patent & Trademark is happy to assist its clients in legal actions, such as: market investigation; warning letters; legal actions with customs; determination of infringement and unfair competition; filing a complaint with the Public Prosecution Offices for the seizure of the counterfeit goods; filing lawsuits with the specialised courts; and unfair competition lawsuits, with or without the request of preliminary injunction.

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End of Year 2013 / Jan 2014 Corporate INTL

“The registration of IP rights is the most important step for the enterprises aiming for success. Therefore, Başalan Patent & Trademark provides consultancy services to its clients for solving problems relating to industrial property rights, and also renders services regarding objection, counter complaint, cancellation and registration proceedings relating to decisions concerning the trademarks, patents, utility models and industrial designs of private and public institutions, as well as the persons.” The firm follows the current and latest legal issues, keeping up to date with the latest developments both in IP rights and law, such as court and Supreme Court decisions, new publications, etc. Mr Başalan explained: “In our century, the key point for success is to present new, creative and distinctive products and services to the target customers, and to obtain protection thereof with the registration of IP rights. As the trademarks are the distinctive signs capable of reproduction that distinguish the products and services of one enterprise from another, the companies shall protect their products by registering the trademarks.”

Başalan Patent & Trademark Ltd. Co. Giz 2000 Plaza Ayazağa Yolu No:7 Kat:12 34398 Maslak İstanbul / Turkey Ahmet Başalan Attorney at Law & Patent Tel: +90 (212) 2906272 Fax: +90 (212) 2906270 info@basalanpatent.com.tr www.basalanpatent.com.tr


Sector Panel

Intellectual Property Law in Mexico Becerril, Coca & Becerril, S.C., founded in 1969, is dedicated to every IP and licensing matter, including patent, trademark and copyright prosecution, IP litigation and IP licensing. It is a member of INTA, ASIPI, AIPPI, LES, AIPLA and IPO. The firm collaborates as a strategic ally of major representatives of the pharmaceutical and biotechnology sectors, information technology and computing sectors, oil corporations, academic research institutes, universities and major luxury brand companies. In the past year, it has developed a series of business solutions to its clients’ problems. These have included: anti-dilution strategies to support notorious and famous trademarks; strategic models for the operation of programs to manage, distribute, negotiate and license IP rights in research institutes; and integral protection systems for trademark portfolios, including any actions needed – administrative, judicial or civil, as well as corporate affairs and negotiation of agreements in the field of technology, trademarks and copyrights. Becerril, Coca & Becerril, S.C. has performed contentious actions directed to infringing pharmaceutical products for a confidential client. It has also designed a strategy in order to avoid dilution of the American Eagle trademark. In addition, it has been performing contentious actions against manufacturers and traders of shoes that counterfeit the Burberry trademark. Fernando Becerril, CEO, noted: “Counterfeiting is a constant in our country. Even though it has somewhat decreased, Mexico is still one of the countries with the highest levels of counterfeiting in the world. Sanctions for IP crimes are very high and punishable with prison without bail. “Conscience in IP rights protection has been gradually increasing, and the government has recently designed a strategy in order to promote technology generation, as well as promoting IP rights obtention and IP licensing.

“Mexico is a member of the Paris Convention and the Patent Cooperation Treaty (PCT), and entered into the Madrid Protocol in February, 2013. The Trans Pacific Partnership in its intellectual property chapter will definitely have effects on Mexico. The entrance of Mexico to the Madrid Protocol is very recent, so we are still waiting for the effects on trademark filings.” Becerril, Coca & Becerril, S.C. has been named as the Technology Law Firm of the Year by Corporate INTL magazine since 2011. It was also awarded the Inspirational Company Award for 2012 by The World Confederation of Businesses (WORLDCOB), and was recommended as the Top Communicator in Mexico on Mondaq.com. Further, the firm has four recognised experts in the 2013 edition of The Legal Media Group Guide of the World’s Leading Patent Law Practitioners. It is also a Tier 1 firm in Patent Prosecution and Patent Contentious in the Managing Intellectual Property Magazine Survey, 2013. Moreover, Becerril, Coca & Becerril, S.C. was a Gold Sponsor for the Cleantech Challenge Mexico 2012, which promotes the development of self-sustainable and ecology-focused companies.

Becerril, Coca & Becerril, S.C. Fernando Becerril CEO Tel: +52 55 52638730 main@bcb.com.mx www.bcb.com.mx

Commercial Litigation Expert in Uganda Cephas K Birungyi, Partner at Birungyi, Barata and Associates. He is an Advocate of the High Court of Uganda. He specialises in Tax matters and has vast experience in Civil and Commercial litigation. His area of expertise is Tax. He has handled matters against the Uganda Revenue Authority for local and international companies/organisations on: income and corporation tax, value added tax, import and export duty, excise duty, Pay As You Earn tax, illegal seizure of goods and customs duties. He is a graduate of the University of Makerere and holds post-graduate qualifications from various institutions in the UK, Sri-Lanka and South Africa. He worked with URA as the head of the Quality Assurance Section of the Income Tax Department for six years; was the chairman of the Quality Assurance Committee of the East African Revenue Authorities Technical Committee; and was counsel for URA on several matters before the Tax Appeals Tribunal. He negotiated several double tax treaties between Uganda and other states. He represented the Uganda Revenue Authority (URA) in the Parliamentary Committee of Finance and advised on the drafting of the Income Tax Act 1997 of Uganda. He represented the URA in drafting the Tax Appeals Tribunal Act. Before his resignation, he worked for URA as deputy commissioner of domestic direct taxes. He is also retained by International Finance Corporation, a member of the World Bank Group, as a consultant in taxation. He is a member of the Uganda Law Society; the Investment Committee of the Uganda Law Society; the East Africa Law Society; the Institute of Corporate Governance; the Institute of Taxation; the International Bar Association; and the Walter Reed Board of Directors.

His advice to clients seeking litigation is: • Consider the likely effects if you lose the case. • Prepare for a long and likely costly and emotionally draining exercise. • Consider a one-off settlement. The major dispute resolution institutions in Uganda are: Courts of Judicature, which resolve disputes by adjudication – namely, the Supreme Court, Court of Appeal, Constitutional Court, High Court and Magistrates Courts; the Centre for Arbitration and Dispute Resolution (CADER), which provides alternative dispute resolution mechanisms; the Tax Appeals Tribunal, which handles appeals against decisions by the Uganda Revenue Authority; the Industrial Court, which handles labour and employment related disputes; and local council courts, which handle disputes at village, parish and local council level. The recent developments in Uganda in litigation are, among others: the use of witness statements instead of oral testimonies where possible; the digital recording of evidence; and small claims litigation procedure without representation by counsel.

Birungyi, Barata and Associates Cephas K Birungyi Partner / Advocate Tel: +256 772 444 536 cbirungyi@taxconsultants.co.ug / birungicephas@yahoo.com www.taxconsultants.co.ug

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Sector Panel

IP: Preventing Piracy and Counterfeiting in Venezuela Bolet & Terrero is one of the oldest law firms in Venezuela and, upon

ministrative and police proceedings in customs and the internal market.

matters. It is proud to have various clients who have accompanied

now cost and time efficient.”

its foundation in 1915, has been dedicated exclusively to all IP related it from the beginning, and others who have relied on it for several

decades. The secret of this achievement is quite simple – offer the best quality service, and maintain ethical values.

Manuel Polanco (LLM, Georgetown University, Washington, DC), the firm’s managing partner since 1999, noted: “Bolet & Terrero, since its

establishment in 1915, has handled the registration and prosecution of patents, trademarks, copyright and domain names, including coun-

Thanks to our firm’s accomplishments and work, these procedures are

Due to the fact that Venezuela’s territorial position allows plenty of piracy and a presence of counterfeits, Bolet & Terrero has a team of

investigators on constant surveillance of fake products, allowing it to

notify clients on any threats against their brands. Upon notification to

the customs authorities, the firm’s team prepares periodic workshops to inform officials about the main characteristics that help differentiate a legitimate product from a fake product.

selling, prosecution, portfolio management, licensing, arbitration,

Mr Polanco added: “Even though, the Andean Pact is no longer in force

has been listed in international rankings as the main Venezuelan IP firm,

scribed several IP Protocols.”

litigation, unfair competition and anti-counterfeiting. Over the years it and has earned recognition for its efficiency and loyalty to its clients.”

in Venezuela, we are now a Member State of MERCOSUR, which sub-

The firm has been involved with customs measures since the creation of the responsible Customs Authorities more than 20 years ago. Its attor-

neys were the first in handling these types of proceedings in Venezuela and have always worked hand in hand with the authorities in training and initiatives.

Mr Polanco commented: “In recent years we have established a special effort to help clients fight against counterfeiting through our legal

assistance in seizing and destroying counterfeit goods by means of ad-

Bolet & Terrero Manuel Polanco

Managing Partner

Tel: +58 212 283 9444

bolyter@bolyter.com www.bolyter.com

Boutique Law Firm in the Netherlands Brada LLP was founded in 1991 as a small group of lawyers dedicated to providing advice on corporate law, tax law and litigation, with focus on international matters and clients. Its team of advocaten (attorneys-at-law) and tax attorneys have in-depth sector knowledge and commercial awareness with a hands-on service attitude. The firm works in close cooperation with several leading international law firms. With branches in Amsterdam, New York, Tel Aviv, Helsinki and Geneva, it is in a unique position and has many international transactions on its track record. Jouke Brada is one of the founding partners of Brada. As chair of the firm’s Corporate Department, he has a strong background and extensive experience in corporate law. He assists national and international clients in a wide range of sectors. His practice concentrates on mergers and acquisitions, alliances and corporate finance. He has also been engaged in many matters that include cross-border transactions, financing projects for ongoing businesses and start-up enterprises and restructuring deals. Mr Brada is admitted to practise in the Netherlands as an advocaat (attorney-at-law). He holds various board positions with privately held international companies. Further, he is a member of the Dutch Bar Association, the Dutch Association of Lawyers involved in International Trade (NAVIH), the International Bar Association and the American Bar Association (Section of Business Law). Brada has long-standing international experience in the corporate practice. The firm has experience in the fields of mergers and acquisitions, joint ventures, corporate governance, restructurings, finance, corporate law and international contract law. Its experience means that it regularly handles large and complex transactions, which, in similar cases, larger law firms tend to advise on. The firm’s specialised attorneys – legal and tax – have a hands-on, per10

End of Year 2013 / Jan 2014 Corporate INTL

sonal and flexible approach, managing matters with an easy style during all phases of the transaction. They assist national as well as international corporate clients, advising on a wide range of corporate matters. Brada’s tax practice deals with the needs of clients who want advice and service on local and international tax issues, including: global structuring; corporate income tax; personal income tax; VAT / real estate transfer tax; estate planning and gift and inheritance tax; and compliance and litigation. In tax structuring, the firm makes sure that the most efficient and suitable (transaction) structure is created, tailored to the specific needs and requirements of its clients, taking all taxes in the relevant jurisdictions into consideration. Brada’s national and international litigation practice handles litigation and employment matters, in and out of court. The firm’s expertise and experience in litigation means it can handle complex commercial and corporate litigation matters. The firm approaches each matter with intensity, thoroughness and creativity. It makes appearances in courts throughout the country at different trial levels, as well as in arbitrations. The firm also handles employment matters, including the preparation of employment agreements, resolving employment disputes and assisting in immigration matters. Its areas of work include: corporate / commercial litigation and arbitration; employment law; and tax disputes. Brada LLP Jouke Brada Founding Partner Tel: +31 (0)20 577 4000 jb@bradalaw.com www.bradalaw.com


Sector Panel

Complexities of Family Law in the UK The family courts in England deal with just under 300,000 new matters each year. In the first quarter of 2013, there were 70,547 new applications made, dealing with divorce, private children disputes, financial claims, domestic violence and care and adoption cases. 44% of those applications were in relation to divorce; private child applications contributed 21%; and financial claims 16%. Olive McCarthy, Head of Family Law at Breeze & Wyles Solicitors LLP, noted: “Unlike our neighbours on the continent, there is no community of property. There is no automatic presumption that marital property will be divided equally and pre-nuptial agreements are not binding. “Each individual member state has its own rules about separation, divorce and children. In the UK, there are three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has different systems of family law and courts. For England and Wales, family law cases are heard in the Magistrates’ Court (Family Proceedings Court), County Courts and the Family Division of the High Court.” There is a strong emphasis in England and Wales to use alternative dispute resolution (ADR) in family law matters. Resolution is a group of family law professionals who are committed to conducting family law matters following a code of practice. The Resolution Code of Practice is built on resolving disputes in a non-confrontational way. Members of Resolution are required to conduct matters in a constructive manner, avoiding the use of inflammatory language, retaining professional objectivity and respect for everyone involved in the process. They must take into account the long-term consequences of actions and communications, as well as the short-term implications, financial or emotional. Within this group, many of the professionals are trained mediators, collaborative lawyers and arbitrators.

Ms McCarthy commented: “All legal practitioners will be familiar with the legal process and the benefits of using ADR. But, more importantly, the myriad of emotions that envelops a person requiring advice in relation to their relationship or their children requires a different approach. It requires a family practitioner to be aware of the various complex and sensitive emotions that a client is going through and tailoring constructive and, where possible, conciliatory advice to assist the client in meeting their objective. “The easiest part of being a lawyer is to outline the legal process; the hardest part is to frame the legal process in a conciliatory and holistic way, that inspires confidence in the client that what can sometimes seem like a passive approach is still productive.” Ms McCarthy believes that in the future, ADR – particularly family law arbitration – will be the preferred route to settlement. She said: “I predict that the courts will support the opportunity that arbitration presents, given the specialist nature of those that have been successful in becoming family law arbitrators, and that there will be confidence among the legal professionals, including the courts, that, in reducing the burden on the court process, parties choosing to arbitrate will be in good hands.”

Breeze & Wyles Solicitors LLP Olive McCarthy MCIArb Head of Family Law / Collaborative Lawyer / Family Law Arbitrator Tel: +44 (0)1992 558411 olive.mccarthy@breezeandwyles.co.uk www.breezeandwyles.co.uk

Changes in Private Equity Legislation in Italy CBA Studio Legale e Tributario usually assists private equity firms

The firm has deep knowledge of corporate structure deals, knowing the

order to maximise clients’ return, it also stays up-to-date with changes

ing deals, finance structure deals and tax structure deals.

in the three phases of each deal – analysis, management and exit. In to legislation relating to foreign funds.

Angelo Rocco Bonissoni, CBA managing partner and tax adviser, noted: “Our best approach comes from a deep knowledge of the industry,

because many of our partners are members of specific associations –

i.e. private equity funds associations, CFO associations, management

companies associations and wealth transfer associations. The academic approach, together with a practical approach, can give the best surety

main EU legislation in the field, and having a great experience in financ-

Mr Bonissoni commented on the legal complexities of cross-border private equity. He said: “The main problems that characterise the

cross-border transactions come from the different legislations involved. In order to overcome these problems it is strongly necessary to have

great knowledge and experience in approaching transactions and all problems in which they could be involved, including financial law, bankruptcy law, corporate law and tax law.”

for the clients.

The last five years have been very negative for the Italian private equity

“Our clients are international UK, US, German and French private equi-

systematically – due to the credit crunch, the general market conditions

ty funds, Italian and UK family offices and Italian PE funds.”

funds – which usually approach the market opportunistically and not and the political environment.

Mr Bonissoni specialises in corporate M&A, private equity, restructuring and tax. He was admitted to practise in 1986. Prior to establishing

CBA, he worked for a major Milan-based firm of certified tax advisers, accruing experience in the sector of tax and corporate consulting for medium to large companies.

In 1985, he founded CBA and has been managing partner since 2007.

Under the scope of extraordinary transactions, he has assisted national

and international private equity funds, both during start-up and investment / divestment, and has assisted banks and companies in financial restructuring transactions.

CBA Studio Legale e Tributario Angelo Rocco Bonissoni

Managing Partner / Tax Adviser Tel: +39 02 778061

angelo.bonissoni@cbalex.com www.cbalex.com

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Sector Panel

Intersection of Antitrust and IP in China: A Case Study of Huawei vs InterDigital Group On October 28, 2013, Guangdong Higher People’s Court (Higher Court) gave the final adjudication, favouring the claims of Huawei Technologies Co., Ltd. (Huawei) against InterDigital Group (IDC), who is the holder of the 3G essential patent. It is the first case in China where an essential patent is involved. IDC was affirmed to have abused its market dominant position and shall compensate Huawei RMB 20,000,000. Huawei initiated the lawsuit as a defence against patent infringement litigation brought by IDC in the US, and seemed to succeed in at least a partial counterattack.

Beijing Dacheng Law Offices, LLP (Shanghai) Ken Dai Partner Tel: +8621-5878 1965 jianmin.dai@dachenglaw.com www.dachenglaw.com

IDC has designed and developed a range of products, which are used in digital cellular and wireless products and networks, including 2G, 3G, 4G and Institute of Electrical and Electronic Engineers (IEEE) 802-related products and networks. It generates revenues from royalties received under its patent license agreements, without manufacturing any products itself. Huawei, based in Shenzhen, China, is an international provider of wireless communication products and services. Despite its popularity in China, Huawei has been burdened with litigations worldwide in recent years, and was sued by IDC in 2011 in the US for infringing seven essential patents. Huawei brought antitrust litigation to Shenzhen Intermediate People’s Court, alleging that IDC, with its 3G essential patent, implemented behaviour suspicious of abusing the market dominant position. The adjudication of first instance forecast the success of Huawei and was reaffirmed by the Higher Court after being appealed by both parties. With an essential patent involved in the antitrust litigation, the following issues deserve further analysis: Jurisdiction and Extraterritorial Effect Since the defendant is located in the US and the subject of the case refers to the portfolio of worldwide patents, IDC objected that Shenzhen Intermediate People’s Court had no jurisdiction, either according to the residence of defendant or where the infringement took place. However, the objection was dismissed by the Higher Court. According to Article 2 of the Anti-Monopoly Law (the AML), the monopolistic behaviours outside China which have eliminative or restrictive effects on competition in domestic market, shall be applied by the AML. Since the products of Huawei are exported to the US, the license of IDC has an impact on competition of the Chinese export market. Though, the residence of Huawei is in Shenzhen, where the result of infringement took place. Therefore, Shenzhen Intermediate People’s Court has the jurisdiction. Essential Patent An essential patent, or standard-essential patent, is a patent that claims an invention which must be used to comply with a technical standard. Once combined with a technical standard, the patent becomes indispensable for manufacturers who shall conform to the standard. The patent holder becomes the sole supplier in the patent licensing market, and it is therefore highly risky to raise antitrust concerns. Defining Relevant Market Relevant market depends to a large extent on the substitutability of the product or service involved. In this case, IDC is the holder of essential patents of 3G standards all over the world (including China and the US), each of which is not substitutional for another. Hence, every essential patent of 3G wireless communication technology standards (WCDMA, CDMA2000, TD-CDMA) owned by IDC constitutes an independent relevant market.

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Market Dominant Position As each essential patent of 3G wireless communication technology is irreplaceable and is held by IDC, the Higher Court deemed that IDC has full share in every patent licensing market and has the capability to impede or influence market entry in the relevant market. Besides, Huawei can’t place any restriction on IDC by cross-licensing, as IDC only generates revenue from royalty and does not manufacture products at all. Therefore, IDC can manipulate the price, amount and other trading conditions of license, and consequently dominate the relevant market defined. Abuse of Market Dominant Position On the basis of Huawei’s allegations, the Higher Court ruled accordingly that: • In comparison with Apple or Samsung, either the royalty or the rate imposed on Huawei is much higher (about 10 times the royalty for Apple and Samsung) and hence belongs to overpricing and discriminatory pricing; • Since IDC profits only from license royalty, forcing to get Huawei’s free license is considered as raising royalty payment, an unreasonable trading condition instead of cross-licensing; • Packaging essential and non-essential patent is ascribed to tying, because a non-essential patent, unlike an essential patent, is substitutable. However, it is not counted as tying to package its essential patents of 2G, 3G and 4G, or package its patents worldwide, which can promote efficiency for a multinational company like Huawei; • The litigation brought by IDC against Huawei in the US does not mean to refuse trading, but to impose unreasonable licensing conditions, which is also categorised as abuse of market dominant position. Amount of Compensation However, Huawei can’t prove the amount of “the plaintiff’s damage or the defendant’s profit due to the infringement”. The Higher Court merely counts the lawyer’s fee in both this case and the case in the US, as well as expenses to collect evidence. Practical Implication This case indicates that some domestic enterprises in China have learnt to defend themselves with antitrust law. It also implies that holding and exercising IP rights in China shall be very cautious in order to avoid the breach of AML. This has also reflected in the latest investigation against Qualcomm by National Development and Reform Commission (the authority in charge of pricing monopolistic conducts), where it might pertain to the relevant patents of Qualcomm. In addition, with the expected enactment of the Provisions on Prohibiting Abusing Intellectual Property Rights to Exclude or Restrict Competition by SIAC next year, some light will be shed on the balance between IP and antitrust in China. And this long-awaited rule will also provide some practice guidance for undertakings for their exercise of IP in China.


Sector Panel

Challenges for a Criminal Law Office - A Brazilian Criminal Lawyer View DELMANTO CRIMINAL LAWYER OFFICE, located in the city of São Paulo, was founded in 1937 by DANTE DELMANTO, a son of Italian immigrants who became the most famous criminal jury lawyer in Brazil for decades. Since then, our law firm has been continued by his sons CELSO (who passed on in 1989) and ROBERTO, and his grandsons ROBERTO, JR and FABIO. During almost 80 years of tradition, our firm testified several changes in the Brazilian society. From the political point of view, we experienced two dictatorships, the Getulio Vargas` regime, from 1937 to 1945, and the military one, from 1964 up to 1985 when democracy came. From the economic angle, with ups and downs, in the beginning Brazil basically exported commodities like coffee beans and rubber; then the industrialisation came with automotive industries and others; more recently, our economy experienced a boom, going back to commodities export such as iron and soy beans and, at the same time, with the increase of a strong internal market, from civil construction, oil exploitation, airplane companies increase, etc. From the monetary aspect, Brazil became an international creditor with a relatively strong currency. From the social view, Brazil still has a huge social gap, with a tremendous housing issue with millions of people living in slums, a very weak public educational system and a chaotic public health system. Moreover, in the large cities, traffic is chaotic and people lose an average four hours a day commuting to work, causing distress and increasing public health problems such as obesity. Drugs, guns, human trafficking and violent crimes are a serious problem. At the same time, recently (in the last 15 years) our country experienced a tremendous globalisation impact once several companies and banks, traditionally owned by Brazilian entrepreneurs, were bought by international investment funds and significant foreign companies. Following all this, DELMANTO LAWYER OFFICE manages to keep up tradition with innovation, pointing out some important aspects, which enhances client satisfaction and success in our cases: •

Honouring our 80 years of law practice, we are fully compromised with international standards of compliance; Comparing criminal law practice with a “heart surgery”, the client must have eyeto-eye contact with his lawyer, feeling trust and confidence with a specialist. That is why we intentionally avoided to become a “corporate style” law firm; The partners and associates are extremely specialised in the criminal law practice, like artisans. To became an associate, a lawyer of our firm spends years of direct training by

one of the partners; The partners Roberto Delmanto, Roberto Delmanto, Jr and Fabio Delmanto are co-authors of several books. One of these books deserve a special mention: Commentaries on the Penal Code, which is in its eighth edition (Saraiva, 2010) and, in the last 25 years, sold more than 500.000 volumes among law students, judges, public prosecutors, lawyers and police authorities. It is common to see on a judge`s desk one edition of “our Penal Code”, which make us very proud and, at the same time, more and more responsible to keep a very high standard in every defence we make; Being updated with all the transformation of our society, we noticed a huge transformation regarding international companies which face white collar crime, ecological crime and tax crime charges. That is why, based in our expertise in those areas obtained after years of practice in every Brazilian Court, we wrote a specific book in which the laws regarding those crimes are commented with updated jurisprudence: Special Criminal Laws Commented (2° edition, Saraiva, 2014).

DELMANTO CRIMINAL LAWYER OFFICE Roberto Delmanto, Jr Partner Tel: +55 11 984250457 (cell); +55 11 3887-6251 (office) robertojr@delmanto.com www.delmanto.com

Talking about trends, we notice several changes in the Brazilian Criminal Justice System. One of them is corruption, financial crimes and money laundry combat. Adopting international standards of crime investigation, like the PALERMO CONVENTION, Brazil is facing a huge transformation improving punishment in this area. It is one scandal after another involving politicians, public servants and private companies. This increase on the law enforcement is possible due to several procedural criminal law modifications held in the last 15 years, which granted a lot of power (maybe too much) to the authorities to investigate: telephone and email monitoring, surveys, infiltration of police agents in criminal organisations, etc. Another trend regards mass media coverage of criminal cases. It is a new trend now that Brazil has total freedom of press, as a democracy. From a law firm’s perspective, this phenomenon requires a very good capability of interaction with reporters – and this is one issue very well handled by DELMANTO CRIMINAL LAWYER OFFICE, which is today renowned for being one of the most ethical practising law firms in Brazil. End of Year 2013 / Jan 2014 Corporate INTL

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Sector Panel

Corporate Law Expert in Saudia Arabia Consultants Group Dr. Saleh B. Al-Tayar & Associates is a Saudi professional company, with its head office in Jeddah, Saudi Arabia Kingdom, providing assistance in diverse legal fields inside and outside Saudi Arabia. It is considered to be the first professional worldwide company to provide the maximum protection for its clients, through specialised partners who make agent protection their goal.

Services provided by the firm include: legal

assistance; reconciliation and arbitration; intellectual property rights; transfer of technology

climate change; and environmental issues in the Arab world, etc.

and energy; construction and building contrac-

In addition, he has participated in the devel-

fication of companies’ shares and quote-parts;

interventions on geopolitical and geostrategic

tors contracts; trade merging operations; unifiscal legislations; banking operations; prop-

erty management; company’s foundation and

registration of marks and commercial agencies; obtaining of foreign investment contracts; and customers’ advocacy and defence.

Dr. Saleh B. Al-Tayar & Associates prepares

opment of several legal studies or academic

issues. Through the many conferences, international meetings and forums which he has held or participated in, he has facilitated discus-

sions on topics that particularly encompass the future of the Arab world through the Euro-Arab Centre for Studies.

registration contracts for all types of compa-

Among the books that Dr Al-Tayar has pub-

nies, joint-stock companies, mutual companies,

of the 21st Century; Global Challenges and

nies, including limited responsibility compa-

limited partnership companies and commercial and professional companies. The firm pre-

pares, registers and certifies company contracts in a way that suits the best interests of the

clients, to preserve their rights in accordance

to the adopted legal procedures. In addition, it registers and releases the clients’ commercial

marks, following the adopted legal procedures. Saleh Al-Tayar, Dr. Saleh B. Al-Tayar & Associ-

lished are: Saudi Arabia and the Challenges

Reform in the Arab Countries (the example of

Saudi Arabia); International Arbitration in Oil

Concession Contracts; International Transfer of Technology; Terrorism and International Law;

The Role of Education in the Decision-making Centers; The Legal Nature of International Contracts in Build, Operate and Transfer

(BOT); and Saudi Arabia and the Fight Against Terrorism (confrontation and repentance).

ates lawyer and legal adviser, has a wide range

Dr Al-Tayar graduated from the Faculty of

conciliation and arbitration in disputes relating

1981, before joining the University of Rennes,

of expertise, particularly regarding matters of

to international investment; study and drafting of texts and projects relating to international

tax law; international trade negotiations; and

industrial domestic and multinational invest-

Law at the University of Cairo, Egypt, in

France, in 1984, where he received a master’s

degree in Private International Law and a PhD in International Business Law, in 1987.

ment. He also provides legal support during

From 1987 to 2000, he worked within a law

and transfer of technology, and acts as a real

a team of legal advisers and experts, with a

negotiations on investments relating to energy estate legal adviser.

Since January 1988, Dr Al-Tayar has been involved in approximately 390 disputes

implicating trade or multinational investment, as a lawyer, mediator or arbitrator. He has

also been actively involved in discussions on

firm he founded in Jeddah, which incorporated mission to promote Franco-Saudi cooperation and business relations. In 1992, he founded

the Euro-Arab Centre for studies to stimulate

dialogue, intensify exchanges on major societal issues and draw the European and Arab cultures closer together.

the major issues that concern society – he has

As the demand from international and regional

private television channels, as well as being a

countries grew in the years 2000, so did Dr

participated in debates on the major public or regular publisher in major Arab newspapers

and magazines of articles and texts on the challenges of modern societies. These include: the war against terrorism; the dangers of nuclear energy; the challenges of the Gulf countries; 14

End of Year 2013 / Jan 2014 Corporate INTL

corporations in Saudi Arabia and the Gulf

Al-Tayar’s firm. It was therefrom known as Consultants Group Dr. Saleh B. Al-Tayar &

Associates, a firm which now works together with the largest firms worldwide, notably in Paris, London, New York, Beirut and Cairo.

Consultants Group Dr. Saleh B. Al-Tayar & Associates Saleh Al-Tayar Lawyer / Legal Adviser Tel: +966 920006115 info@altayar-consultants.com / advisor@altayar-consultants.com www.altayar-consultants.com Head Office: Jeddah - Kingdom of Saudi Arabia King Road Tower King Abdulaziz Road Office 601-602 12th floor Tel: +966126068497 Fax: +966126068498 P.O. Box 9396 Jeddah 21413 Representative Office for Europe & US: 116 Bis Av. Des Ch. Elysees 75008 Paris, France Tel: +33153574320 Fax: +33153574321


Sector Panel

Increasing IP Awareness in Turkey Ersin Dereligil, Destek Patent Inc managing partner, is a registered European and Turkish patent attorney. He counsels on all areas of intellectual property protection, due diligence and development, IP commercialisation and licensing, patent orientated R&D, and technological innovation to domestic and foreign clients. Mr Dereligil also serves as an expert before the Istanbul Specialized IP Court. He noted: “Turkey’s position as a hub between Europe and Asia makes it especially important in the struggle against counterfeiting. Customs applications are a useful weapon used by authorities in the fight to protect. The counterfeit market in Turkey is huge, although recently the police and customs authorities have worked together to prevent sales of counterfeits. There have also been various programmes to raise public awareness of counterfeits.” To effectively tackle the production and sale of counterfeited goods, Turkey amended its customs rules covering intellectual and industrial rights in 2009 and 2010 to comply with those in the EU. Turkish customs authorities have simplified destruction systems, extended customs applications from one to 12 months, and created centralised customs application systems for IP protection at Turkish customs. They have also arranged a number of training programmes for customs officials and controllers, and developed their software capability to monitor customs applications more efficiently. To increase the IP awareness in the community, Destek Patent contributes greatly by providing DESTEK PATENT TV, the first and only online Turkish IP television channel; INOVERSITE, university-industry collaboration projects; DESTEK AKADEMI, continuous training of clients and in-house personnel; TEKNOPROFIL, clearance searches, freedom-to-operate opinions and technology watch-up/analysis; MARKALARM, trademark watch services; PATSIS, setting up in-company research and development and patent management systems; ALFASOFT, in-house IP software; online services; Turkish Patent News magazine with indus-

try-specific inserts; and lectures at universities and seminars at business associations. Mr Dereligil added: “We understand clients’ needs and expectations regarding expert IP counselling, fast response, clear communication and cost-effective quality IP services, an independent indicator of which is our high clients’ satisfaction rate.” Destek Patent has been Turkey’s leader in IP management and protection since 1995. It has the largest IP team – four partners, five associates, eight European patent attorneys, 50 patent and trademark attorneys and a total of nearly 200 professionals – and the largest office network throughout Turkey. It has experience and expertise gained from thousands of IP files, more than 100,000 trademarks, 10,000 patents and 70,000 designs since 1995. In addition, it was the first Turkish IP firm to implement total quality management, having held the ISO 9001: 2008 certificate since 2001. Mr Dereligil commented on upcoming legislation updates. He said: “A new draft IP law is ready and expected to be effected soon in order to remedy several deficiencies such as legal void in criminal IP enforcement in the existing legislation. Besides, a new judicial reform package announced this year also introduces extra measures to lighten the judiciary’s workload and to shorten average length of trials – which would drop to one year for civil proceedings and between 18 months and two years for criminal proceedings, including appeals, until 2015.” Destek Patent Inc. Ersin Dereligil Intellectual Property Attorney Tel: +90 224 444 4344 ersin.dereligil@destekpatent.com.tr www.destekpatent.com.tr

Current Corporate Law Issues in The Bahamas Graham Thompson is a diverse, multifaceted firm that has provided expert advice to institutional and private clients for more than 60 years. It has a strong corporate and commercial practice with a number of highly trained professionals who are regularly sought after to act as a lead counsel in major multijurisdictional transactions, providing in-depth corporate law advice to assist in the structuring of these transactions. The firm has also distinguished itself with its ability to provide expert advice to international banks with respect to corporate restructurings. Tanya Hanna, Graham Thompson partner, noted: “A variety of complexities typically arise in cross-border corporate law issues. These complexities relate to the need for careful and efficient tax and estate planning, having special regard to the laws and fiscal regimes that are applicable in those onshore jurisdictions where clients are domiciled or reside. Our firm works closely with legal counsel in these other jurisdictions in order to ensure that the most appropriate solutions to these issues are identified and implemented.” Since the financial crises in 2008, there has been an increase in bank and trust company consolidations, as well as attendant restructurings. This has resulted in a host of complex legal issues being raised. Also, the need for regulatory advice and advice on interaction with governmental authorities has increased. Ms Hanna added: “In recent times, I have advised a European bank and trust company on queries raised in connection with the proposed restructure of that entity to ensure enhanced compliance with evolving international regulatory and compliance regimes. In addition, there has been a significant increase in corporate work associated with the formation of SMART funds and other investment funds. “The foregoing practice areas have become more active in recent months because of the increased need for financial institutions and private clients alike to find more efficient and adaptable vehicles for

the holding, management and investment of institutional and private wealth.” Regarding new legislation, the International Business Companies Act, 2011, has been amended to require that financial information be maintained at the registered office of the company that would, inter alia, correctly explain all transactions and enable the financial position of the company to be determined with reasonable accuracy at any time. This amendment was driven by international pressure aimed at ensuring that financial information would be available for inspection if an appropriate request was made. In 2012, the Companies (winding up amendment) Act and the International Business Companies (winding up amendment) Act were enacted with a view to modernising and rationalising the corporate insolvency law of The Bahamas, which had remained largely untouched for most of the twentieth century. Ms Hanna commented: “In the area of cross-border insolvency involving multinational companies, the new winding up rules provide greater clarity and useful mechanisms for the recognition and regulation of ancillary windings up. This will be particularly attractive to liquidators of foreign companies with Bahamian subsidiaries or affiliates in a group that is undergoing liquidation. Professionally speaking, there is likely to be an increase in this area of corporate and litigation practice.”

Graham Thompson Tanya R Hanna Partner Tel: +1-242-322-4130 trh@gtclaw.com www.grahamthompson.com End of Year 2013 / Jan 2014 Corporate INTL

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Sector Panel

The UAE - A Popular Jurisdiction for Company Formation Existing entities worldwide come to Dubai to explore the commercial environment. It has a lot to offer to investors and companies as it is abundant in infrastructural resources, capital and is a booming market for various industries. Ethics Plus Public Accountants, a prominent player in the field, has advised many new and existing entities in the establishment of offices in the mainland, freezones and offshore estates. In addition, it also assists companies with the preparation of feasibility reports, business valuations, due diligence, obtaining financial assistance from banks and private agencies, business plans, accounting, auditing and other finance related services for start-ups or companies that wish to expand into new sectors. Mr A R Ramachandran, managing partner of Ethics Plus Public Accountants, noted: “Dubai is a popular destination for companies internationally for setting up offices as it facilitates state-of-the-art infrastructure, technology and special economic sites like free zones to promote the growth of specific industries. This is an emerging global hub for commerce, industry and trade.” There are a number of advantages for doing business in Dubai, such as industry-focused infrastructure, tax incentives, a cosmopolitan environment, 100% foreign ownership and better connectivity globally and technologically. Recently, the firm has seen the most company formations in real estate, travel and tourism, trade, food and dining, recruitment, supermarkets / hypermarkets and automobiles. One of Ethics Plus’ past case studies involved the formation of a restaurant at Jumeirah Lake Towers Free Zone, Dubai. Mr Ramachandran commented: “The client approached us to set up this restaurant and as formation experts we successfully assisted them in the entire process. “The initial approval took around two weeks, during which the provisional licence was issued. On submission of all required documents to

JLT, including tenancy contract, fit-out approvals, etc, it took 10 working days to receive the final licence. The entire process took approximately 70 days.” Another of the firm’s cases involved a client setting up a company in the UAE that would act as the main holding company of the group, which is comprised of several companies within and outside the UAE. The client was looking for a cost-effective and quick formation process. Ethics Plus advised the client to form an offshore company in the Jebel Ali Free Zone in order to meet his requirements. Mr Ramachandran explained: “There are different ways of setting up companies in Dubai, depending upon the function to be carried out. A Limited Liability Company (LLC) is the most common and recommended, where the purpose of the entity is to make retail sales within the region. However, 100% foreign ownership of such an entity is not permitted. A Professional Licence will enable the provision of professional services, while a Branch or Representative Office will be suitable where there is no requirement to actually conduct sales or manufacturing. “Representative offices only exist to provide information and negotiate sales. However, free zones in and around Dubai offer many advantages – and the main attraction of establishing an entity in one of the free zones is that there is no UAE national shareholding or sponsor requirement.”

Ethics Plus Public Accountants Mr A R Ramachandran Managing Partner Tel: +97143451522 ram@ethicsplusuae.com www.ethicsplusuae.com

Commercial Litigation Expert in Nigeria Kola Awodein, founding partner of Kola Awodein & Co., specialises in civil and commercial litigation, constitutional law and arbitration. He was called to the Nigerian Bar in 1978 and conferred with the rank of Senior Advocate of Nigeria (SAN) in 1999. He has been involved in some of Nigeria’s largest and most complex commercial and transactional disputes and litigations. Mr Awodein has appeared for various domestic and offshore clients, including governments, multinationals, corporate entities and individuals in high-profile cases, both at the trial and all appellate courts in Nigeria. He has also been involved as lead counsel in a number of landmark governorship election petitions. He noted: “I have been involved as adviser, consultant and lead counsel to the Central Bank of Nigeria in its recent major reform of the Nigerian banking sector and the recapitalisation of eight Nigerian Banks. “I am a Fellow of the Chartered Institute of Taxation of Nigeria; Fellow of the Society of Construction Industry Arbitrators; and Fellow and scholar of the Centre for International Legal Studies, Austria.” Further, Mr Awodein is contributing editor: ‘International Execution against Judgment Debtors’ (Sweet & Maxwell 1993) and ‘International Franchising Law’ (Matthew Bender & Co. Inc. 1993). He is currently editor-in-chief of the Law Pavilion Electronic Law Reports, Nigeria. He commented: “In my view, there are no particular clients best-suited for litigation. There are, however, matters that are best-suited for litigation and different kinds of clients may be involved in such matters at one point or another. “Litigation as a dispute resolution mechanism is adversarial in nature, and is concerned with adhering to the law. Thus, it is quite ideal for all types of clients, depending on the nature of the matters. Alternative dis16

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pute resolution (ADR) methods are, however, preferred for commercial disputes. “Criminal cases and matters that are of public interest, such as those touching on corruption, the electoral process and human rights, are more suitable for litigation. On the other hand, the flexibility in the rule of evidence in alternative forms of dispute resolution may not be appropriate for resolving the peculiar issues arising from such cases. “In Lagos, Nigeria, litigation practice has experienced innovations such as the setting up of fast track courts and registries with their separate rules to ensure faster dispensation of justice for suits that involve huge sums of money.” Currently, Mr Awodein is leading a team of lawyers representing the British American Tobacco Nigeria (BATN) in several multi-million dollar suits instituted against it by the Attorney-General of the Federation, along with Attorneys-General of other States in Nigeria. He is representing a major financial institution in Nigeria in a series of suits instituted in respect of stock and margin trading facilities claims by some companies and individuals. He is also leading a team of lawyers representing another major financial institution in several multi-million naira suits against it over possession of its assets acquired by merger.

Kola Awodein & Co. Kola Awodein Founding Partner Tel: +234 1 4729952 kolaawodein@kolaawodeinandco.com www.kolaawodeinandco.com


Sector Panel

Embarking Upon a New Era for Cyprus Investment Funds Kannava, Kitromilidou & Co LLC

(KPK Legal) is a dynamic law firm offering high quality legal advice in various fields of Cyprus law.

Through its office in Limassol and

its global network of associates, the firm offers its clients professional, responsive, ethical and cost-effec-

tive legal services in a personalised and amicable setting. Its team of

experts strive to deliver high quality services and advice to meet their

clients’ business or other objectives, always putting their interests first.

Cyprus might be one of the smallest member states of the EU, but it has, however, managed to develop and establish the status of one of the most attractive business centres in Europe. In recent years, Cyprus has focused on presenting itself as a viable option for hedge funds and private equity managers, and is now making significant steps ahead to position itself as a reputable fund jurisdiction. On the 22nd of July 2013, Cyprus was one of the first member states to implement the European Directive on Alternative Investment Fund Managers (AIFMD) into national law. This implementation was not only a turning point in the world of the Cypriot funds industry, but it was also an indication that Cyprus is ready to embark upon this specific industry within the regulated framework of the EU. The Madoff fraud triggered the genesis of the AIFMD by the EU, which has as its main objective the harmonisation, regulation and supervision of the operation of the Alternative Investment Fund Managers (AIFMs) within the EU.

Kannava, Kitromilidou & Co LLC Maria Kitromilidou Partner Tel: +357 25 585583 m.kitromilidou@kpklegal.com www.kpklegal.com

Although the AIFMD was introduced in order to regulate the AIFMs, it also, indirectly, regulates the Alternative Investment Funds (AIFs) and thereby changes the status quo of the regulatory frameworks of many types of funds – whether those funds are regulated or unregulated. Moreover, the new legislation indicates major changes for depositaries, administrators and external valuers of the AIFMs. Therefore, the AIFMD provides a holistic approach in harmonising the operation of funds in general within the EU. This new regulated framework entails a number of benefits, some of which are described below: •

An EU-wide “passport” under which AIFMs can provide cross-border management and marketing services to AIFs; Detailed regime regarding depositary functions of safekeeping, cash monitoring and oversight; Operating conditions for AIFMs including internal control and compliance, risk management, liquidity management, transparency, delegation arrangements, conflicts of interest, and remuneration policies; Rules regarding third-country undertakings.

The AIFMD will essentially provide a regulatory framework whereby AIFMs will have a passport to market AIFs to professional investors within the EU. However, the EU passporting

does not include the marketing and distribution of the AIF to retail investors, as this is subject to the approval of the regulator in each member state, but stricter requirements may apply. One cannot ignore the fact that the mere existence of the AIFMD will attract a larger pool of investors, as they will develop a sense of assurance and trust merely by the knowledge that AIFs are being managed in accordance with carefully designed EU laws. In the Republic of Cyprus, AIFMs will need to submit an application to the Cyprus Securities and Exchange Commission in order to obtain a licence to operate as a duly regulated AIFM. This application will include a detailed analysis and description on the AIFM itself, its internal policies, fund valuation and pricing methodology, depositary information and information about the funds it intends to manage. Once the Cyprus Securities and Exchange Commission grants the licence to the AIFM, then the said licence will be considered valid in all the member states of the EU for all purposes. The European Securities and Markets Authority will keep the official register of all the licensed AIFMs alongside with their respective details The AIFMD will also regulate the functioning of International Collective Schemes (ICIS) and their successor products; this will be done by classifying ICIS as a non UCITS (Undertakings for Collective Investment in Transferable Securities) fund. Cyprus already has an attractive package to offer to foreign investors, with benefits which include low company tax, tax exemptions and an extensive network of double tax treaties. This package is now further enhanced through the operation of AIFs in Cyprus. Investors through AIFs will have the ability to create tax efficient vehicles through which they can structure their investments. A typical example of such a tax efficient vehicle through the operation of the AIF is a structure of an investment in private equity; any profits which may be earned from the investment of shares, or any redemption of such shares, is not subject to tax in Cyprus. Thus, AIFs that own shares in a foreign subsidiary can receive dividends, in most cases, tax exempt in Cyprus. The enactment of the AIFMD marks the beginning of a new era for the funds industry in Cyprus, whereby within a coherent, regulated framework, Cyprus will be able to offer foreign investors the highest level of expertise by protecting their best interests. End of Year 2013 / Jan 2014 Corporate INTL

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Sector Panel

Project Finance Law Expert in Indonesia During the course of Lubis Ganie Surowidjojo’s (LGS) more than 28 years of service, it has secured its position as the premier Indonesian corporate transaction and commercial litigation law firm. This combination of commercial law experience and litigation uniquely positions LGS to deal with the full range of commercial issues faced by its clients. The firm has experience representing a diverse range of clients, including domestic and multinational corporations, public and private companies, government instrumentalities and state-owned enterprises. It works closely with clients to understand their problems, determine their needs and arrive at practical solutions that are both cost-effective and viable over the long term. Mohamed Idwan ‘Kiki’ Ganie, LGS managing partner, has more than 30 years of legal experience, and specialises in commercial transactions and commercial litigation, including alternative dispute resolution. He has acted as an expert in a number of court and arbitration proceedings. Mr Ganie graduated from the Faculty of Law of the University of Indonesia and holds a PhD in Law from the University of Hamburg, Germany. His expertise covers general corporate / company law, banking law, finance, bankruptcy and restructuring, mining, investment, acquisitions, infrastructure projects/project finance, antitrust, and shipping/aviation, with a particular focus on corporate governance and compliance. He noted: “LGS acts as the lead legal adviser to the IIGF, which is an Indonesian government institution that insures risks of Public Private Partnership (PPP) projects stemming from a variety of sources, including unfavourable policy changes and other political risks. This replaces the previous practice of government guarantee notes that were issued on a per-project basis, and creates a robust framework within which all future PPP projects in Indonesia will operate.

“The infrastructure projects necessarily involve a large number of parties, both commercial and government, ranging from local regional governments to the ministerial level, and often involving projects of national significance, with the associated political aspects of their development. As such, it is challenging, but necessary, to keep in mind the interests of all of the parties involved, and make sure that there is continued understanding and cooperation throughout the initiation and development of the projects. “The legislative complexity is also of note, since the PPP framework in Indonesia is still developing, with a number of projects that we have worked on being prepared in conjunction with the drafting and issuance of the necessary legislation to allow the projects to proceed.” The firm has advised on a number of large infrastructure projects in recent months, such as the Central Java Power Plant Project with 2 x 1000 MW capacity; the Way Sekampung Drinking Water Project; the Central Kalimantan Coal Transport Railway PPP Project; and the Business Viability Guarantee to be provided to developers to cover the national electricity utility (PLN) in connection with 10.000 MW Fast Track 2. Further, LGS has obtained Lloyd’s Register Quality Assurance certifications of ISO 9001:2008 for Quality Management systems, and ISO 14001:2004 for Environmental Management systems to ensure the quality of its operations. Lubis Ganie Surowidjojo Dr Mohamed Idwan ‘Kiki’ Ganie Managing Partner Tel: +62 21 831-5005 / 831-5025 ganie@lgslaw.co.id www.lgsonline.com

Corporate Law in Luxembourg Ober & Partners is an independent Luxembourg law firm with offices in Luxembourg and New York. Its model relies on the strong involvement of partners with a high ratio of partners / counsels to associates and a multicultural team. Each client is advised by a team of experienced and multilingual advisers. The firm’s lawyers and advisers either started their career at the firm or worked previously in one of the prestigious large international firms in Luxembourg and / or abroad. It has developed extensive non-exclusive relations with other leading independent firms and lawyers around the world to provide seamless international service, whenever and wherever needed. Ober & Partners is recognised in each of its core practice areas – corporate finance, M&A, corporate / commercial law, banking, structured finance, real estate, tax, insolvency and investment management – and is regularly retained by domestic and international companies in a wide range of industries. These include financial services, intellectual property, technology, telecommunication, energy, aviation, maritime, infrastructure and retail. In regards to corporate and M&A, the firm is recognised for its expertise in high-end complex matters and has considerable experience advising on a broad range of domestic and cross-border transactions. It advises some of the world’s most successful and ambitious businesses and business leaders, with clients ranging from private equity houses and investment banks, to national and international corporations and wealthy individuals, across a variety of markets. The clients benefit from the firm’s ability to combine international experience with in-depth local knowledge. 18

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Stéphane Ober, Ober & Partners’ founding and managing partner, is the head of the firm’s investment management practice and co-heads the corporate practice. He advises a large international client base on all investment management related matters. He has a particular focus on private equity, real estate, mezzanine, infrastructure, hedge funds and sharia compliant funds. He also regularly advises on general corporate law. Prior to establishing Ober & Partners, he worked for leading Luxembourg law firms. He also launched and led the Luxembourg desk of a Dutch firm in London for two years, serving worldwide clients on all Luxembourg corporate and investment management legal matters. Mr Ober studied both in France and in the United States of America. He graduated from University of Nancy, in France, where he obtained two master’s degrees in European law. He holds an LLM (Master of Laws) in international transaction and comparative law from the University of San Francisco, 2002, where he was an Ambassadorial Scholar for the Rotary Foundation. Further, Mr Ober is a member of the Paris Bar and the Luxembourg Bar, as well as being a member of several working groups within ALFI, the Association of Luxembourg Fund Industry. He is fluent in English and French. Ober & Partners Stéphane Ober Founding Partner Tel: +352 26 26 79 1 sober@ober.lu www.ober.lu


Sector Panel

Litigation Expert in the Bahamas Kenra Parris-Whittaker, a partner at ParrisWhittaker, is an award-winning litigator with a reputation for securing excellent outcomes for her clients, often against considerable odds. Whether she is advising individuals in serious personal injury claims, acting swiftly in maritime and shipping cases, securing large sums on behalf of multinational corporations or defending judicial review at the Supreme Court, her guiding principle is that all of her clients deserve full and equal access to justice. She noted: “ParrisWhittaker undertakes the full range of litigation, such as corporate law, including restructuring and incorporation; real estate and commercial property transactions; personal injury; and maritime and shipping law.” The Bahamas is becoming a regional and international arbitration hub and is the third largest branch of the Chartered Institute of Arbitrators in the Americas region. Individuals who believe they have been wrongfully dismissed from employment may seek redress through the Conciliation section of the Department of Labour. Mrs Parris-Whittaker advised: “It is essential to advise clients to take the route which will most effectively secure a just and sound outcome. Alternative dispute resolution methods such as mediation and arbitration are valuable tools which may, in some circumstances, secure a satisfactory outcome more swiftly, and with less expense, than the litigation route. However, where a mutually agreed outcome is unlikely, litigation remains the best option. “It is essential that clients seek advice from firms with evidence of considerable expertise in the relevant practice area. Firms should be open with their clients, able to demonstrate success in similar cases and have a proven ability to secure a just outcome.”

Having trained at the University of Buckingham and the Inns of Court School of Law, Mrs Parris-Whittaker joined the legendary Bahamian firm, Callenders & Co, before departing to help found top Bahamian law firm, ParrisWhittaker. One of her recent major successes has been successfully obtaining millions on a client’s behalf in a major maritime claim. She described some significant developments that have taken place in the Bahamas regarding litigation. She said: “As an important centre of offshore investment, the Bahamas has been strengthening its legislation with regard to offshore investment in order to bring it into line with international co-operative standards. A major forthcoming financial change will be the introduction of VAT in 2014. “Another important development is with regards to intellectual property legislation. A series of forums are being held in the region to discuss new draft legislation in connection with intellectual property. It is anticipated that once the legislation has been passed, the Bahamas will have the most current legislation of any jurisdiction.”

ParrisWhittaker Kenra Parris-Whittaker Partner Tel: +242 352 6110 kw@parriswhittaker.com www.parriswhittaker.com

Top Pro Bono Commercial Lawyer in Pakistan M/s Qadeer Ahmad Siddiqi Law Associates is a law firm based in La-

Fahad Ahmad Siddiqi is an advocate at the High Court. He is expe-

hore, Pakistan. It was initially established as a single member practice

rienced in drafting, vetting of agreements, instruments and deeds, i.e.

1951. Since then, it has developed into a nine-lawyer, full service firm

lease mortgage, charge, hypothecation, pledge and licence agreements.

by Khan Bahadur Naseer Ahmad Siddiqi, advocate Supreme Court, in with market leading practices in diverse areas of law.

Over the past 58 years, it has formed a reputation for integrity and

provision of high quality legal services. It provides personalised services to its clients and is highly reputed for the strength and depth its lawyers possess in advising in contentious and non-contentious matters.

The firm’s clients are large national and international firms, mid-sized

franchise agreements, gift deeds, guarantee indemnities, hire & purchase, Mr Siddiqi has been making history both inside and outside of the

courtroom since he was called to the Bar in 2002. He is at the forefront of the top Pro Bono lawyers in this country – from CNG unfair Price Hike,

the Prosecutors Case, the Prohibition of Ostentatious Displays and Arrest and Detention under it, to the nationwide renowned Liberty Terrorist Attack Case; Mr Siddiqui has been making the headlines.

As a campaigner for advocating social change, he is known for his

and small enterprises, including families and individuals, financial insti-

success in winning one of the largest verdicts in the history of Lahore.

hotel owners and major retailers, as well as contractors, architects and

largest foundations on human rights in the nation.

tutions, commercial and residential real estate developers, manufacturers, other professionals’ accountants and attorneys.

Outside of the courtroom, Mr Siddiqi is a celebrated member of one of the

M/s Qadeer Ahmad Siddiqi Law Associates runs a general civil,

criminal & constitutional practice, mainly in the areas of corporate law,

commercial law, banking law, insurance law, real estate law, law of bails & appeals, labour law, bankruptcy law, trademark law, law of writs and litigation in those areas.

M/s Qadeer Ahmad Siddiqi Law Associates

corporate growth strategies, incorporation & registration, public flotation,

Fahad Ahmad Siddiqi

pute resolution practice has a superb reputation for dealing with all types

Tel: +923008411403

The firm offers specialised corporate services in the following areas:

mergers & acquisitions and taxation laws. Its substantial litigation and disof commercial disputes. The partners at M/s Qadeer Ahmad Siddiqi Law

Associates also have an excellent reputation in constitutional and criminal matters. Therefore, they represent various clients in the courts of law.

Advocate

qaslaw@gmail.com

www.qaslaw.com.pk

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Sector Panel

The Effects of The Malaysian Competition Act 2010 RAJA, DARRYL & LOH is a full service law firm providing a full range of legal services in commercial and corporate law, including intellectual property and technology law and in both dispute resolution and advisory matters. The firm has built a strong reputation in the area of competition law since the inception of the Malaysian Competition Act 2010, which came into force on January 1, 2012. Chew Phye Keat, RAJA, DARRYL & LOH senior partner, was part of the consultation group representing the American Malaysian Chamber of Commerce, which provided feedback to the Government of Malaysia on the drafting of the Act. Since the Act came into force the firm has been very active in providing competition law advice and assisting clients in compliance programmes to align their business practices with it. Phye Keat noted: “Companies in Malaysia, especially the SMEs – small and medium enterprises – appear to not have full awareness of the implications of the Act on their businesses, and have not really sought compliance under the Act. There needs to be more enforcement by the regulator – the Malaysian Competition Commission (MyCC) – to show that they mean business in all levels of commercial enterprise. “So far only a few ‘big fish’ infringement cases have surfaced and are pending final decisions. Generally, companies need to appreciate the risk they are in for non-compliance, which is basically in the form of heavy financial penalties of up to 10% of worldwide turnover. “Cartel behaviour in the form of decisions made in trade associations has been highlighted by MyCC and we have been active in helping associations understand the new rules at play on tariff fixing and standardisation of trading terms with the coming into force of the Act. Vertical price fixing is a major issue for most companies who seek to control the pricing of their resellers, retailers and dealers, and we have had to caution many

clients in this aspect as it is a common practice.” The Malaysian Competition Act 2010 does not have merger control provisions. Therefore, M&As do not come under the purview of the Act, except indirectly by way of potentially being a horizontal agreement with an anti-competitive effect. Phye Keat commented: “Being at an early phase of implementation, the enforcement work of competition law has not really picked up whereby companies would engage each other in competition law disputes or defend themselves against regulator action. This may take another few years to emerge, but law firms like ours are preparing themselves with capacity building to handle such cases drawing from our litigation strength and technical knowledge of the area. “The competition law regime in Malaysia needs time to chart its course and find its footing in the corporate culture of Malaysian companies. This will be a rocky road for the regulator to tread, and much knowledge and wisdom is necessary to ensure that the way the law is implemented and interpreted strikes a proper balance between ensuring competitiveness, while acknowledging the challenges of a developing economy like Malaysia’s.”

RAJA, DARRYL & LOH Chew Phye Keat Senior Partner Tel: +603-26949999 chewphyekeat@rdl.com.my www.rajadarrylloh.com

Intellectual Property Expert in Portugal Raul César Ferreira (Herd.), S.A. (RCF), founded in 1929, is a well-established company in the industrial property field, currently regarded as one of the leading firms in Portugal. It is a dedicated IP firm with proven expertise in all fields of industrial property. RCF works in Portugal, Timor, Macao and the African Portuguese-speaking countries of Angola, Mozambique, Guinea-Bissau, Cape Verde, Sao Tome and Principe. The Trademark Department has expertise in clearance searches and search opinions, prosecution, enforcement and oppositions in national, community and international trademarks, as well as litigation. The Patent Department offers expertise in several technical areas, such as chemistry, biochemistry, molecular biology and mechanical engineering, among others – as well as offering expert knowledge of drafting, prosecution, enforcement and litigation. João Jorge, RCF chief operating officer, noted: “Our team collaborators, both external and in-house collaborators, are specialised in all sorts of IP rights. Having made a great investment in highly skilled persons, our collaborators are mainly trademark and patent attorneys, but also collaborators specifically qualified in the field of mechanics, chemistry, computer science, biology, molecular biology, pharmacy, biochemistry, etc. These collaborators possess experience in infringement analysis and validity assessment of IP rights, conducting state-of-the-art searches and promoting a very active expert cooperation in IP disputes. “Moreover, RCF has developed a very effective anti-counterfeiting strategy that IP owners have adhered to, and which has transpired to be highly effective in achieving the required results. The RCF team is keen to promote and participate in the discussion of important IP matters. Consequently, several of our collaborators are strongly involved in the work carried out by international organisations, including: INTA, ECTA, AIPPI, FICPI, MARQUES, PTMG, ITMA, UNION, VPP, GRUR, CIPA, 20

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ABPI, ASIPI, CIPA and EPI.” The firm has a vast expertise in matters such as supplementary protection certificates, utility models, designs, copyrights and IP-related due diligence, such as validity analysis, infringement analysis, technical expertise in litigation, infringement probative searches, state-of-the-art and advanced technical searches, skilled surveillance, maintenance and technical translations. Given RCF’s experience, network of international contacts and expertise in the Countries of Official Portuguese Language, RCF is able to assist their clients in those kind of matters. RCF’s portfolio of clients includes individual inventors, some of the most important Portuguese companies, as well as the most significant European, American and Asian companies in various business fields. In this portfolio of clients, the firm acts as outside counsel for several owners of well-known trademarks, where it counsels and acts in the enforcement of their IP assets. Mr Jorge added: “We provide services to national and foreign SMEs that have chosen us directly themselves, or through referrals from our colleagues abroad. Independently of the types of clients we retain, all of them receive the same attention, dedication, commitment and quality of work that have always been present in the relationships between our clients and business partners.” Raul César Ferreira (Herd.), S.A. João Jorge Chief Operating Officer Tel: +351 213 907 373 mail@rcf.pt www.rcf.pt


Sector Panel

An Increase in Debt Recovery Cases in Nigeria Rickey Tarfa & Company was established in 1988 with the foresight of ranking among the leading law firms in Nigeria in terms of the provision of quality legal services to clients. With time, the firm has grown to four offices located in Lagos, Abuja, Yola and Port Harcourt and is one of the largest in Nigeria today. The services offered regarding debt recovery include issuance of demand notices, negotiation and litigation, among others. Rickey M Tarfa, Rickey Tarfa & Co principal counsel, noted: “Rickey Tarfa & Co has been in the business of debt recovery for more than two decades. Our vast experience and the landmark decisions obtained in favour of our clients clearly set us apart from other law firms. “Further, we have a workforce comprising of professional consultants in debt recovery who provide debt management advice. We also employ best practice in debt recovery procedures. “We were part of the team who recently obtained a favourable settlement for The Asset Management Corporation of Nigeria (AMCON) in a law suit involving a loan of approximately N81 billion.” Legal complexities regarding debt recovery include an uncertainty about the length of time litigation will take in Nigeria, as no one can say for certain how long a matter will last in court. Mr Tarfa added: “There is the issue of lenders who lend money without adequate documentation and collateral. It is part of our policy to handle all litigation as speedily as possible, especially if it involves debt recovery.” Nigerian laws on debt recovery are said to be creditor-friendly. The various High Court rules have put in place a mechanism where creditors can obtain judgement summarily for liquidated money

demands. In addition, further actions geared towards the elimination of the incidence of bad debt to the barest minimum have been put in place, such as the establishment of AMCON. Recently, there have been several significant legislative updates, including to The Lagos State High Court Civil Procedure Rules (2012) and the Federal Capital Territory; the Abuja High Court Civil Procedure Rules (2004); the Federal High Court Practice Directions of 2013; and AMCON Practice Directions 2013, among others. Mr Tarfa commented: “Recently, there has been an increase in the volume of debt recovery cases. This has been attributed to the global economic meltdown as more businesses are unable to meet their obligations to their banks and lenders. “Moreover, the use of collection management software – e.g. Experian Tallyman software; the police; and the Economic and Financial Crimes Commission (EFCC) have become popular trends in the recovery of a debt. “It is foreseeable that the use of collection management software, along with the newly enacted Freedom of Information Act to facilitate debt recovery, will become widespread in the near future.”

Rickey Tarfa & Company Rickey M Tarfa (SAN) Principal Counsel / Head of Practice Tel: +234(1) 295 7776 / 8034600000 rtlagos@rickeytarfa.com www.rickeytarfa.com

Client Focused Commercial Law Firm in England Travers Smith LLP is one of the UK’s leading law firms. It regularly advises on a wide variety of commercial agreements, such as agency, distribution, supply of goods and/or services, franchising and marketing, and all aspects of trading law, including unfair contract terms, consumer law and product liability. The firm acts for clients across a broad range of sectors, including financial services, retail, leisure, media, utilities and business support services. Commercial contract work is handled by a dedicated team led by Tom Purton, the head of the Commercial, IP and Technology Department at Travers Smith, who has extensive knowledge and experience of this area. Mr Purton is rated by the legal directories as one of the leading commercial lawyers in the UK and is praised for the “knowledge he has of [his clients’] business” and his ability to “find issues that are both legal and commercial”. The legal advisers at Travers Smith place great emphasis on developing long-standing relationships and an in-depth knowledge of clients’ businesses. Whatever the complexity, the firm always focuses on providing practical, succinct, commercial advice in response to its clients’ legal issues. In the Legal 500, the standalone commercial team at Travers Smith is described as “very client focused, reliable and a pleasure to work with” and is ranked in the top tier by Legal 500 and Chambers UK for its commercial contracts work. The firm has recently advised: •

Shepherd Neame, the UK’s oldest brewer, on its deals to brew

• •

and distribute Asahi Super Dry lager and Kingfisher lager in the UK. McColls, the UK’s largest independent neighbourhood retailer, on its business-critical supply and distribution arrangements with Palmer & Harvey and NISA. LK Bennett on its exclusive arrangements with partners wishing to open retail concession franchises under the LK Bennett name in the UAE, Kuwait, Lebanon and Qatar. Macquarie Bank on its contractual arrangements with British Gas to enable/finance the purchase and installation of both “smart” and traditional meters on a national basis in the UK. Taylor Street Baristas on its joint venture with Tesco for the creation of a new coffee shop chain, Harris + Hoole. talkSPORT on the exploitation of its radio broadcasting and syndication rights to FA Premier League matches outside Europe and to FA Cup, Community Shield and England matches worldwide. TSL Education Limited, the UK’s leading educational publisher, on a complex and groundbreaking joint venture in the US with the American Federation of Teachers.

Travers Smith LLP Tom Purton Head of Commercial, IP & Technology Tel: +44 (0)20 7295 3000 tom.purton@traverssmith.com www.traverssmith.com End of Year 2013 / Jan 2014 Corporate INTL

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Sector Panel

Leading M&A Law Firm in Mexico Vázquez Aldana, Hernández Gómez & Associates (VAHG) is a leading legal firm operating in Mexico City and Guadalajara, Mexico, consolidating more than 50 years of legal practice. It was formed as a result of the prestige, experience, reputation, business approach, high ethical values and professional standards, responsiveness, accountability and trust of its partners. The firm’s practice areas are mergers & acquisitions, contract law, banking and securities law, real estate law, as well as corporate transactions in general, including notary public and commercial notary public services. VAHG has one of the leading practices in M&A. Its partners and associates have participated in complex transactions involving investors, markets and jurisdictions of different countries. The firm’s expertise and knowledge in mergers & acquisitions, concentrations, joint ventures and strategies alliances, within regulated or unregulated sectors, is unique. Its focus is on representing both Mexican and foreign investors. The firm has participated in public and private placements in domestic and foreign markets. Its perspective on business and financial matters allows it to be sensitive and propose alternatives that address the needs of clients. Its level of service in this area ensures the implementation and development of transactions with the best results for clients, with the necessary and appropriate timing. As a result of its non-stop search for high added value, VAHG is proud to have the trust of world-renowned Mexican and multinational companies due to the adoption of its business model. The firm represents an invaluable sum of prestige and reputation with strengths and capabilities to conduct international transactions, operating under

the highest standards of services and quality. Fernando Hernández Gómez, VAHG partner, specialises in M&A; corporate and contractual law; corporate finance; banking and securities; and real estate. He is a corporate attorney with international practice, as well as being an expert in mergers & acquisitions. Mr Hernández became a commercial notary public in 2001. He is vice president of Consulegis, EEIG, an international network of lawyers; secretary of the board of directors of several corporations; a member of the Board of Colegio de Corredores Públicos del Estado de Jalisco, A.C.; a member of the International Union of Lawyers; and a member of the National Association of Corporate Counsels, A.C. He has also been a guest speaker for the international section of the Bar of New York and the International Union of Lawyers. Further, he graduated with honours, in 1994, from the Universidad Panamericana Campus, as well as graduating from the Universidad Panamericana in Economic and Corporate Law, in 1996; Contract Law, in 1997; and Tax Law, in 1999. He also has a master’s in Business Administration from the Instituto Panamericano de Alta Dirección de Empresas, 2005. VAHG - Vázquez Aldana, Hernández Gómez & Associates Fernando Hernández Gómez Partner Tel: +52 33 005919 fhernandez@vahg.mx www.hunabku.com.mx/clientes/vahg

Leading Global Investment Funds Group: Solving Complex Commercial Issues Worldwide Walkers is an offshore law firm advising on the laws of the Cayman Islands, British Virgin Islands, Jersey and Ireland. The firm has offices in these locations, as well as in London, Hong Kong, Singapore and Dubai. Walkers’ business model is professionally managed and partner led, with a deep bench of transactional partners, senior counsel and associates across its key practice areas of: Investment Funds, Finance, Corporate, Structured Products & Capital Markets, Insolvency & Corporate Recovery, Private Equity and Islamic Finance. The Dubai office of Walkers advises on the laws of the Cayman Islands and British Virgin Islands (BVI) for clients in the GCC/MENA region. The principal practice areas are Finance (both conventional and Islamic), Investment Funds and Corporate and the firm generally acts alongside international or local legal counsel whenever there is an offshore element to a transaction. Walkers’ Dubai office, established in 2005, is led by managing partner Tim Buckley. The Dubai office is staffed with a combination of leading attorneys specialising in all types of investment funds, finance and Islamic finance and Middle Eastern issues. Walkers advises many of the region’s leading asset managers, including Sovereign Wealth Funds, across a broad range of Investment Funds matters. The lawyers in Walkers’ Dubai office have specialist experience in all types of investment funds, including private equity funds, hedge funds and Islamic funds. The Walkers’ Dubai office has seen steady growth over the past year through the consolidation of existing relationships with key clients, and also an expansion of its client base thanks to a number of successful pitch wins for new business. Regionally, the firm has expanded further and regularly acts for the leading players in the UAE, Qatar, Bahrain, Kuwait, Saudi Arabia and Lebanon. Walkers is internationally recognised as having one of the leading offshore Investment Fund practices, advising many of the world’s most prominent asset managers, fund promoters and institutional investors. Its innovative and practical approach to solving complex commercial issues has been expertly applied to establishing the full range of structures used in 22

End of Year 2013 / Jan 2014 Corporate INTL

the market and advising on their commercial implications. Tim Buckley advises many of the world’s leading asset managers and banks across a broad range of investment funds and finance matters. He has specialist experience in investment funds of all types, including private equity funds and hedge funds. Mr Buckley also has extensive corporate, asset and leverage finance and structured lending experience, as well as public and private securities offerings of both debt, equity and hybrid products. He services some of the firm’s most significant clients, including global asset managers, banking institutions and sovereign wealth funds. He has also advised on some of the largest global corporate, investment fund and financial institution restructurings. Daniel Wood also advises many of the region’s leading asset managers (including sovereign wealth funds) across a wide range of investment fund scenarios. His experience encompasses private equity funds, hedge funds and Islamic funds. He also has extensive corporate and finance experience, acting for many of the region’s banks on asset and leverage finance matters.​ Walkers Global Tim Buckley Managing Partner Tel: +1 345 814 4646 tim.buckley@walkersglobal.com Daniel Wood Partner Tel +971 4 363 7912 daniel.wood@walkersglobal.com www.walkersglobal.com


Sector Panel

End of Year 2013 / Jan 2014 Corporate INTL

23


PCT & Global IP Review

PCT & GLOBAL IP REVIEW FOREWORD FROM THE WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

World Intellectual Property Organization (WIPO) James Pooley

Deputy Director General Tel: +41-022-338-7355

james.pooley@wipo.int www.wipo.int The World Intellectual Property Organization (WIPO) is the global fo-

efficient and predictable.”

er IP offices and millions of applicants around the world. It supports an

them into multiple foreign markets. Technology companies like Qual-

rum for IP services, policy, information and cooperation, linking togethefficient and accessible IP system that provides benefits to all.

The roots of WIPO extend to the first treaty that bridged the national system of patent laws with the needs of international commerce – the Paris

comm, who are engaged in international standard-setting activities, find

the PCT to be an extremely practical and economic way to provide global protection for their innovations.

Mr Pooley also commented on the recent updates to the PCT process.

Convention for the Protection of Industrial Property of 1883. That treaty

He noted: “We are most excited about ‘ePCT’ – our web-based plat-

ing date for applications filed in others within one year. The Organization

applicants can file their PCT applications using this secure web portal,

allowed an applicant to file in one of the member states and keep that fil-

has come a long way since the Paris Convention first established a system that sought to reward investments in innovation. Today, WIPO administers 26 international intellectual property treaties.

James Pooley, WIPO deputy director general, noted: “Ultimately,

WIPO’s mission is to encourage innovation and creativity by promot-

ing the use of intellectual property, which rewards investments in new

form for handling PCT applications from start to finish. As of this year, can communicate with WIPO throughout the process via email and other

electronic communications, and can access their files at their convenience. We even offer applicants the capability of sharing access rights with re-

mote members of a team, such as legal counsel, who can interact with the relevant files quickly and securely.

“During 2014, we will complete the major features of ePCT for IP

technologies. We offer a unique approach to patent protection in multiple

Offices, allowing both applicants and offices to communicate and share

The PCT (Patent Cooperation Treaty) makes it possible to seek patent

inventions. This will greatly improve the efficiency of international pat-

countries. One that is cost-effective and efficient.”

protection for an invention in any of 148 countries, by filing a single

application in a single language. After this initial filing, the applicant can

wait up to 30 months before deciding which national patents to apply for.

documents regarding pending patent applications in the same family of enting. ePCT will become more accessible for users around the world – as we introduce multiple language platforms for the service.”

There is a clear demographic shift in the source of patentable inven-

During this time, the applicant receives a report about the possible patent-

tions, due to the explosive growth of Asian economies. PCT applications

the inventor can often better decide which markets will require patent

years, and filings from Japan and Korea have also surged. This reflects a

ability of the invention. Armed with this information and the extra time,

protection, and consider business partners and sources of financing. From a modest start in 1978, the PCT has grown rapidly and, this year, WIPO will process more than 200,000 international applications.

Mr Pooley said: “The most important advantage is getting a ’30-month

from China have averaged more than 25% annual growth in the last six

growing importance of those markets, as well as the emergence of strong domestic innovation capacity in those countries, whose inventors are

deploying the PCT as the vehicle to support their international business.

Regarding WIPO’s plans for the future expansion and evolution of the

option’ to consider the commercial value of an invention, before having

PCT system, Mr Pooley added: “We expect to expand our outreach to

filing for a national patent.

with the national and regional IP offices – our partners in this effort – to

to invest in the considerable cost, including legal fees and translation, of “The applicant also receives an International Search Report, providing

an objective analysis of the patentability of the invention. All of this gives innovators a chance to study market conditions and seek out partners or financing, making international commercialisation of innovation more 24

The heaviest users of the PCT are those whose business model takes

End of Year 2013 / Jan 2014 Corporate INTL

the growing global community of innovators. We will continue to work enhance the efficiency of the international patent system, and provide

robust access to information regarding cutting-edge technologies that can help solve global challenges.”


Sector Panel

FILING PCT? THE EPO COULD HELP YOU MAKE THE RIGHT CHOICES AT THE RIGHT TIME and Russian. The European Patent Register provides information on pending applications, revealing all the correspondence on a file.”

The advantage of the PCT is that it gives applicants more time to decide

where they would like to patent their inventions and build their filing

strategy – namely 30 months instead of 12 months in a classic route under the Paris Convention. Also, the PCT keeps patenting costs low during the critical early phases of invention development. Applicants file in just one

language at one office, and have their application searched and published in that language, using the services of just one patent attorney.

Only when an applicant has a thorough search report and reliable written

The European Patent Office searches, publishes, examines and grants patent applications on behalf of its 38 member states. Demand for European patents has been growing steadily, reaching around 63,000 European direct applications and 195,000 international applications designating the European Patent Office in 2012, making up to 258,000 filings in 2012 (+5.2% over 2011). Applicants choose which European countries they wish their granted patents to take effect in by filing translations and paying validation and annual

renewal fees. So, while the EPO will process a single application in English, German or French, the resulting patent is a ‘bundle’ of national rights to be licensed or litigated separately in each state where it has effect.

opinion on patentability, does he then need to invest in extending his PCT

application into multiple national patent applications. By this time, of course, his invention will be two-and-a-half years old and possibly attracting the necessary venture capital or revenue from sales or licensing to cover the costs in the markets that matter most to the inventor.

Mr Bogliolo explained: “The PCT has always evolved in response to users.

Since the mid-2000s, a written opinion on patentability is written by the

examiner at the same time as the international search report, thus better in-

forming the applicant, at an earlier stage, whether his application bears any chance of being granted. In a positive move towards greater transparency

for third parties, as of July 1, 2014, WIPO will publish these written opinions alongside the application and search report. Until now they were kept confidential until the end of the international phase.”

Another improvement foreseen for next year is the introduction of a top-

With respect to the role of the EPO in the framework of the PCT, Camille-

up search in the procedure for preliminary examination. The objective is to

PCT. In 2012, the EPO received more than 32,000 PCT applications – 17% of

time of the international search. The international preliminary examination

Rémy Bogliolo, EPO lawyer, noted: “First of all, the EPO is essential to the

the total worldwide – and issued approximately 77,000 international search

reports (38%) as well as 8,000 international preliminary examination reports (50%).

“Second, the PCT is also key for the EPO. When looking at the activities

of the EPO as PCT Authority and the volume of international applications

entering the European phase (82,000 in 2012) it appears that a majority of all

incoming work to the EPO came from the PCT. Similarly, applications which started as PCT filings make up the majority of patents we grant.

“These figures show that the European patent system and the PCT are

very much complementary and interdependent. From the EPO’s point of view, the PCT is clearly the best platform for international work-sharing. We know that EPO’s searches and written opinions on patentability are

highly regarded by other patent offices when deciding on granting their own

take into account any prior or intermediate art that was not available at the procedure at the EPO will therefore meet the highest levels of quality, and thus legal certainty. Applicants who obtain a positive preliminary exami-

nation report from the EPO have very high chances to get their application eventually granted.

Mr Bogliolo commented on his expectations for the next 12 months. He

said: “It appears that, despite the economic turmoil, many companies will

use innovation to aid their recovery and continue to file patent applications. “The EPO will continue to develop its services to users, in particular to

further improve the timeliness of search reports for PCT applicants and

to enhance its web-based services. Also, the EPO will continue to focus its

efforts regarding the quality of its work products, by developing the search tools and databases at the disposal of patent examiners.”

patents.”

The EPO is the biggest player in the PCT, acting as the International

Search Authority on around 38% of all cases. Applicants value the quality

European Patent Office

which gives them an early indication as to whether or not to proceed.

Camille-Rémy Bogliolo

mation. Its Espacenet database has more than 85 million documents from

international_pct_affairs@epo.org

and timeliness of the EPO search and the written opinion on patentability, Mr Bogliolo added: “The EPO also has a mission to provide patent infor-

nearly 100 countries accessible for free, linked to instant translation software

Lawyer

www.epo.org

to and from English for 19 European languages, as well as Chinese, Japanese End of Year 2013 / Jan 2014 Corporate INTL

25


PCT & Global IP Review

Cameroon

AKKUM, AKKUM & ASSOCIATES LLP AKKUM, AKKUM & ASSOCIATES LLP is a leading corporate, commercial and intellectual property limited liability

partnership in Cameroon, active within the African Intellectual Property Organization (OAPI) region. Its fundamental objective

is to provide outstanding legal advice in a dynamic environment. The firm’s practice

includes consulting, negotiating, prosecuting and litigating in substantially all areas of the law.

AKKUM, AKKUM & ASSOCIATES LLP

Carlton Fon Akkum Managing Partner

Tel: +237 22 21 80 43

akkumlaw@yahoo.co.uk

www.batiboweb.wix.com/ akkumlaw

China

Liu, Shen & Associates Liu, Shen & Associates is the first private

firm in China focusing intensively on patent and trademark procurement, strategic counselling on all aspects of intellectual

property, and enforcement of IP rights, in-

cluding litigation. As well as being a leading law firm, it is also a patent and trade-

mark agency. It has around 400 members of staff, including more than 70 attorneys at

Its staff and personnel are highly bilingual in spoken and written English and French. Carlton Fon Akkum, the firm’s managing partner, has more than 10 years of outstanding practice. He advises local and international clients in all aspects of corporate transactions and corporate law, as well as venture capital investments. He also has extensive experience in intellectual property law; mining and hydro-carbons; civil aviation; and labour and trade relations. As a modern innovative law firm, AKKUM, AKKUM & ASSOCIATES has set out policies and working practices to meet modern international standards, challenges and the needs of its extensive clientele. One of the firm’s major priorities is to actively build strong partnerships with leading financial institutions and corporate organisations. Its business activities are mainly in banking, financial institutions, transportation, telecommunications, energy, agriculture, tobacco and cigarette production, chemical, pharmaceutical, electronic and processed food industries, capital markets and general services. The firm’s Intellectual Property Practice Group provides legal services designed to protect clients’ patents, trademarks, trade names, copyrights, industrial designs, utility models and trade secrets. It handles the processing, registration and protection of all intellectual property-related matters and all post-registration procedures, including various types of IP disputes and litigation. The Trademark Department handles the preparation, filing and prosecution of trademark applications for registration, as well as the preparation and recording of modifications, assignments and contracts concerning regis-

tered trademarks. It also handles litigation on all aspects of trademarks, including infringement proceedings, opposition, passing-off, unlawful competition and anti-counterfeiting procedures. The Patent Department deals with all matters relating to patents and industrial designs, copyrights and unlawful competition. It takes an active part in the development of the technological sector in Cameroon. Both the Patent and Trademark Department have extensive expertise in the area of copyrights, and can provide services in regard to copyright protection; copyright disputes and litigation; drafting of assignment and licensed agreements; international copyright matters; and copyright protection of computer software, etc. In addition, AKKUM, AKKUM & ASSOCIATES provides professional advice on all infringements of clients’ IP rights. It also initiates infringement litigation and administrative claims when negotiations for mediation and other amicable approaches fail. Cameroon is a member of the OAPI or the African Union, also known as the African Intellectual Property Organization. Patents can be filed in Cameroon through a regional patent filed in the OAPI Patent Office as a designating country of the PCT. The term of the patent is 20 years from the date of filing. AKKUM, AKKUM & Associates LLP is licensed at the OAPI. It is also a member of the International Trademark Association (INTA), the International Bar Association (IBA), the International Young Lawyers Association (AIJA), and the Cameroon Bar Association.

Michelle Ma, Liu, Shen & Associates partner,

number of PCT filings. In addition, The Trade-

noted: “The Patent Cooperation Treaty (PCT)

law will enter into force on May the 1st, 2014.

explained the Patent Cooperation Treaty. She

has been widely used by many Chinese com-

there has been a 20% increase in the filing of

may apply for funds to the government. If

added: “In terms of filing numbers, we do

and in foreign countries. Chinese companies approved, the company may obtain up to

500,000 RMB – approximately £80,000 – if the

PCT application enters into the national phase in foreign countries.

“Filing PCT applications is also considered

law and approximately 180 patent attorneys covers almost all technical fields.

20 of the Patent Law of China, which requests

curity examination’ requirement under Article

Partner

Tel: +86-10-62681616 mail@liu-shen.com www.liu-shen.com

26

End of Year 2013 / Jan 2014 Corporate INTL

not see a significant downturn in our country under the current depressed global economic market – the filing number keeps increasing.

Our firm’s clients file more PCTs in the areas of semiconductor, material science and tele-

communication. We believe the number will continue to increase.”

The firm’s impressive legacy of experienced

professionals, well-trained staff and strong

Whereas, filing a PCT application with SIPO

are rated by clients as its core values. In regards

is deemed to satisfy the requirement without

Michelle Ma

PCT applications (compared to 2012). Ms Ma

obtaining approval from the SIPO before the

application is to be filed in a foreign country.

Liu, Shen & Associates

Liu, Shen & Associates’ statistics show that

panies for filing patent applications in China

a strategy for the purpose of adopting the ‘se-

and patent engineers, with expertise that

mark Law of China was amended, and the new

filing a separate request for ‘security examination.’”

The Chinese government continues to en-

commitment to delivering high quality services to filing PCT applications, its major clients are

Sino joint venture companies and local Chinese companies.

Moreover, Liu, Shen & Associates represent-

courage self-innovation and provide funds to

ed Wistron Infocomm Manufacturing in one of

rights in China and overseas. The number of

of Guangdong Courts in 2012, selected by the

the industrials for filing and obtaining patent

patent filings keeps increasing, along with the

the Top Ten Typical Intellectual Property Cases Guangdong Higher People’s Court.


PCT & Global IP Review

Czech Republic PATENTSERVIS Praha a.s.

PATENTSERVIS Praha a.s. is an independent entity, founded in 1990, in the territory

of the Czech Republic. It provides services in the field of industrial rights. As legal

successor of the former professional body

of a state enterprise, it quickly transformed

into a private joint-stock company made up of patent attorneys and other employees of the firm.

PATENTSERVIS Praha a.s. Tel: +420 2 61 09 00 11

patmag@patentservis.com www.patentservis.cz

Ecuador

FABARA & COMPAÑÍA ABOGADOS FABARA & COMPAÑÍA ABOGADOS has

particular experience in patents, trademarks and licensing, and the enforceability of

those rights. It is one of the major law firms in Ecuador, with an important and very

well-recognised practice in IP. It has the most complete and accurate database of trademark registrations in Ecuador.

FABARA & COMPAÑÍA ABOGADOS

Ms Maria Rosa Fabara Vera Senior Partner /

General Manager

Tel: +593 2 2220550

mrfabara@fabara.ec www.fabara.ec

It has successfully developed in the last 20 years, with clients and foreign partners worldwide. It is registered in the list of companies of patent attorneys kept by the Chamber of Patent Attorneys of the Czech Republic, where the registration number is 2502, and with the European Patent Office at Munich (EPO), where the registration number is 195. The firm’s employees are first of all patent and trademark attorneys and barristers, with experience in the fields of machinery, chemistry, electrical engineering industry, mechanics and other technical industries, and in the prosecution against unfair competition. PATENTSERVIS Praha a.s. provides professional assistance to individuals and legal entities in matters relating to industrial property, including procuring and intermediation of such services. It advises in the field of licensing and copyright protection, and handles intermediary activities in copyright protection, as well as editing and publishing activities. It also organises courses and training in the field of industrial property, licensing, copyright protection and unfair competition. The European Patent Convention (EPC) forms common law of the member states for granting of patents for inventions. Patents granted according to this convention are called European patents. It is an objective of the EPC to make the protection of inventions in the member states easier, cheaper and more reliable by the exist-

ence of uniform European proceedings for the granting of patents on the basis of a uniform system of material patent law. The EPC is a special treaty according to the Paris Convention for the Protection of Industrial Property. Proceedings are carried out in one of the three official languages – English, German and French. European patents have the same effect in member states as where they were granted, and are subjected to the same regime as the national patent granted in this state. European patents can also be obtained by filing PCT (Euro-PCT) for all states of the European Patent Convention. Validity time of the European patent is 20 years from the day the application was filed. European proceedings regarding the granting of a patent take three to five years from the filing date of the patent application. The proceedings are two-phase. In the first phase formal examination is carried out and a search report with an opinion of patentability is prepared. In the second phase, material examination is carried out. This phase is communication-intensive between the office and the applicant or their patent attorney. The decision of granting comes into force on the day the information is published in the Gazette of the European Patent Office. An earlier publication of the announcement is possible on applicant’s request. At the same time, the European patent specification is also published, including a description, claims and, eventually, drawings.

The firm works with natural and legal persons, nationals and foreigners, including large companies, small companies, universities and independent inventors of diverse technical sectors. Its client base in the area of IP includes: Abbott Laboratories, Abbvie Inc., Allergan Inc., Basf AG, Bayer AG, Boehringer Ingelheim AG, Dunkin Brands Inc., Henkel AG., LAN TAM GROUP (LAN AIRLINES), MONDELEZ and TETRA PAK, among others. FABARA & COMPAÑÍA provides services for the filing of PCT applications and the prosecution in all the international phases, as well as the subsequent entry into national phase in designated countries. Its specialised services for patents annuity payments are well known. In addition, the firm renders services for patent search related to patent equivalents and active ingredients, among others. Ms Maria Rosa Fabara Vera, FABARA & COMPAÑÍA senior partner and general manager, commented on a recent case. She noted: “We have specialised professionals in this area, who provide our clients with a personalised service built upon principles of professionalism and excellence. We provide complete assistance in this area, which ranges from patent drafting and translations, to patent prosecution and surveillance. “We are in charge of appealing the refusal of patent related to Dabigatran etexilate, a prescription medication used to slow and inhibit the formation of blood clots, in our country. So far we have achieved that novelty be recognised, and now we are carrying out a judicial appeal in order for the inventive step

to be recognised too. “In addition, we represent a multinational pharmaceutical company in defending various petitions regarding compulsory patent licensing.” There is particular interest in the pharmaceutical sector for applications which enter into the National Phase in Ecuador. Patent applications related to the pharmaceutical field constitute between 65% and 75% of all patent applications filed annually. For PCT applications filed in Ecuador, pharmaceutical (17.80%) and civil engineering (11.65%) are the most frequent. Ms Fabara explained: “PCT provides the applicants with an easier way to file foreign patent applications, reducing costs. In addition, the Patent Cooperation Treaty results in an increase of the number of patent applications filed in our country. “Since our country signed the PCT in 2001, an increase in the filing of patent applications in Ecuador has been evident. However, due to the impact of the global economic downturn, there was a decrease in the number of PCT applications filed between 2007 and 2010.” Ecuador is member of the Andean Community Countries, and so Andean Decision 486 is applied. It also has a National Intellectual Property Law, and both laws are current and compatible in this jurisdiction. Regarding the next 12 months, Ms Fabara added: “We expect that the PCT system will be strengthened and continue to be disseminated in relevant sectors. We also expect that the number of applications filed in our country through this treaty will be increased.”

End of Year 2013 / Jan 2014 Corporate INTL

27


PCT & Global IP Review

Germany

Viering, Jentschura & Partner Viering, Jentschura & Partner provides IP services in all technical and legal fields and has offices in Germany, Singapore,

the US and Taiwan. Furthermore, the firm has various international members on

legal, paralegal and technical levels, such as German attorneys at law, German and

European patent attorneys, US patent attorneys, Singapore patent agents, a Japanese patent attorney, and various Chinese firm members.

With its international professional expertise,

regarding computer-implemented inventions

IP advice for domestic and international clients

Festl-Wietek.

VJP is able to provide profound international with strong focus on German and Singapore IP issues.

He noted that technical fields which are not in

As a result of its many international legal

state, tend to be the subjects of PCT applica-

representatives, VJP can provide international counselling for its clients from ‘internal’ VJP sources. The firm is large enough to handle

large patent portfolios and complex litigation cases, but small enough to provide personal

their full maturity, but rather in the research tions. He observed that start-up companies

tend to file PCT applications in order to delay the larger investments for the regional and national filings.

and individual services.

Commenting on his expectations for the next

VJP represents large Fortune 500 companies as

nomic crisis will not increase, Dr Festl-Wietek

well as mid-size companies, start-up companies and research institutes and universities. Dr Wolfgang Festl-Wietek, attorney at law,

12 months and with reservation that the eco-

predicted a positive development in the number of PCT filings as well as national German and regional European filings.

explained that German legislation and courts

“We expect that IP will develop further as a

Viering, Jentschura & Partner

litigation.

es and courts will be a part of the international

Dr Wolfgang Festl-Wietek Partner Tel: +49 89 2106970 wfest@vjp.de www.vjp.de

“Furthermore, we see a strong tendency of the

are very supportive to the patent owners in

India

S.Majumdar & Co S.Majumdar & Co (SMCO), established 20 years ago, has four offices in India. It provides services pertaining to all branches of IP. Regarding PCT, the firm has been filing a substantial number of applications and the number has steadily increased over the years. It offers the full range of services, from filing of the application at the International Bureau (IB), to nationalising in the member countries. Most of its clients are domestic, from various fields of technology, with a majority of pharmaceutical companies. SMCO is considered as one of the top firms in India in terms of patent work.

S.Majumdar & Co Ms Amrita Majumdar Patent Attorney Tel: +9133 2455 7484 / 7485 / 7586 cal@patentindia.com www.patentindia.com

28

as well as inadmissible amendment,” said Dr

End of Year 2013 / Jan 2014 Corporate INTL

German national jurisdiction in patent practice to more and more harmonisation with the Eu-

business tool against competitors. Patent officcompetition for IP protection and litigation

and Germany and Singapore will take leading positions in IP,” he concluded.

ropean practice, e.g. with respect to decisions

Ms Amrita Majumdar, SMCO patent attorney, noted: “The filing and other procedural requirements of international applications are quite standard all over. However, when it comes to the ISRs, the majority of local clients seek our inputs, including technical inputs. The quality of our replies and amendments is of a high standard. It helps the applicant clear several adverse findings in the international stage itself, resulting in a straightforward national phase prosecution, which is less complicated and less expensive. “In a fairly recent case, a telephonic interview was conducted after adverse findings on anticipation and obviousness in the written opinions. Prior art taught that a stabilising agent and presence of oxygen in the headspace of an ampoule is essential for the stability of the formulation. Although the claims did not specifically mention the absence of a stabilising agent, we asserted that it was apparent upon reading the description with the claims; as the invention resides in achieving stability without an added stabilising agent, the examiner was convinced, and a positive International Preliminary Report on Patentability (IPRP) was issued with minor amendments.” The scope of the legislation in India regarding the substantive provisions is similar to oth-

er countries, including the US and EP, as they are all signatories to the TRIPS (The Agreement on Trade Related Aspects of Intellectual Property Rights). However, the procedural aspect is somewhat different. For instance, the Indian Patent Office (IPO) requires the filing of the claims as filed in the IB when an applicant enters India. This is very disadvantageous for the pharmaceutical / biotech companies as they have to make national phase entry in India with a large number of unallowable claims, which are not allowed to be deleted and result in a large amount of excess claim fees. Recently, on October 15, 2013, the IPO became an International Searching Authority (ISA). Ms Majumdar commented on the effect of signing the PCT on India. She said: “There has been a marginal increase in PCT filings by Indians, as well as nationalisations in India, over the last five years. According to the IPO report, the number was around 707 in 2007-08, and 873 in 2011-12.” Regarding the next 12 months, she added: “In terms of filings by Indians, in all likelihood there will not be a significant increase. However, foreign companies are considering India as a potential market – and there has been a growth of around 6% year-on-year, which is expected to continue.”


PCT & Global IP Review

Japan

Kobayashi and Todo Law Offices

Kobayashi and Todo Law Offices is located in the Chiyoda-Ku district in the heart of Tokyo. Toshio Kobayashi is founding partner and chief executive of the boutique firm, which has been specialising in contentious and non-contentious IP matters and antitrust since its formation in 1962.

rejected by the Japanese Patent Office (JPO), they

Over its 30 years of practice, the firm has devel-

ment are exclusively Tokyo district court or

oped a solid reputation specialising in the areas of domestic and international intellectual property

and antitrust law, as well as offering a wide range Kobayashi and Todo Law Offices Toshio Kobayashi

Founding Partner

Tel: +81-3-3580-2036 office@ktandi.org

of legal services to its Japanese and international

can take an action to the high court to challenge the JPO’s decision. But, in the current system,

the only jurisdiction where such an action can be taken is Tokyo.

Another problem in IP is infringement litigation.

The jurisdictions for litigation on patent infringeOsaka district court. This system leaves the minor manufactures in areas far from Tokyo or Osaka at a disadvantage.

clients. These include: general and international

Toshio Kobayashi believes that Kobayashi and

yrights, licensing, antitrust and litigation.

international firms on major cross-border matters,

practice, corporate law, patents, trademarks, cop-

The IP market in Japan is not much different from other advanced countries in the world. However, there are some unique attributes.

Many Japanese universities have produced a lot

of important and valuable inventions, which have

Todo is best suited to working alongside larger or offering a bespoke service in a special field

directly to local businesses in IP and antitrust. Its foreign clients are big companies in the US and

Europe, mainly coming from the medical indus-

try, sporting goods industry and food industry, as well as law firms in US and Europe.

not been practically and usefully used in global

Currently, the firm advises approximately 15

ed by patent, utility model or design registration,

and it is proud of having formed long term and

industry. Most of these inventions are not protectwhich is a problem particularly when they are brought into the worldwide market.

Recently, there has been a drive for more coop-

Japanese and 10 foreign clients on a regular basis, close relationship with its clients. It provides a

strong and personal legal service that clients have come to rely on.

eration between universities and the industrial

Most of the IP and rights protection work is

products. Application numbers for patent and

inventions coming out of university programmes.

companies who manufacture and distribute the other forms of IP protection have increased. These applications are filed in the name of either party

or in the names of both parties. The latter ensures closer relationships between universities and

industrial companies, not only in the cooperation during the IP application procedures, but also in

the licence agreement and subsequent economical relationship.

In addition, Japan has a lack of professionals

whose role is to estimate the monetary value of IP rights, such as patent, trademark and other

non-registered knowhow or brand. Other coun-

tries such as the US have a stronger system. Eco-

nomical evaluation of IP rights is very important

associated with new technology, particularly

Kobayashi and Todo does not have specialists

dedicated to specific areas, such as matters related only to computer systems. Able lawyers with

that degree of specialisation are rare in the Japan market.

Since 2003, Japan has been the second largest user of the PCT System. In 2011, the number of PCT

applications from Japan increased by 21%. Pana-

sonic Corporation was the second PCT applicant in 2011, with 2,463 PCT applications published. Sharp, Toyota, NEC and Mitsubishi were also

among the top 15 PCT applicants in 2011, with 15 more Japanese corporations in the top 50.

and Japan needs to make progress in this area.

Within the list of top applicants from the Uni-

Further, reforming legislation would galvanise

7th with 98 PCT applications published in 2011.

the IP market in areas outside of Tokyo. One

problem is the IP application procedure. In the Japanese IP application system, if an applicant who files a patent, utility model, design or a trademark application has that application

versity sector, the University of Tokyo ranked

Six other Japanese universities, including Kyoto

University, Osaka University, Tohoku University,

Tokyo Institute of Technology, Hokkaido University and Kyushu University were also among the

top 50 universities to use the PCT system in 2011.

End of Year 2013 / Jan 2014 Corporate INTL

29


PCT & Global IP Review

South Korea KBK & Associates

The firm’s clients include companies of various

sizes dealing with technical fields ranging from biotech to high-tech electronics. In addition to

Office, is also increasing.

“For example, the numbers of the appli-

the firm’s regular IP practices, KBK has also

cations filed in 2000 and 2010 are 15,133 and

lectual property (IP) laws and has a history

patents, such as MPEG, ATSC, and other

coming more and more important as a country

with services in all aspects of intellectual

mobile telecommunications.

copyrights, all IP-related trials, IP licensing,

plained that Korea is a country that mainly

fringement litigation, technology transfers,

and therefore heavily relies on international

and domestic patent applications.

rely on patents and protection of their intellec-

companies, they would like to maintain the

ther, most of the Korean companies have been

nomic downturn,” said Mr Bahng. “Accord-

KBK is a firm primarily focused on intel-

assisted its clients in obtaining many standard

over 30 years. The firm provides clients

standards involving television broadcasts and

property, including domain registrations,

Hae-Cheol Bahng, patent attorney, ex-

negotiations, technology searching, IP in-

focuses their economy on imports and exports,

and prosecution of PCT, trademark, design

trade. “As a result, more Korean companies

tual property rights,” noted Mr Bahng. “Fur-

realising the importance of filing foreign patent applications, since exporting their products internationally is a key to success.”

Mr Bahng noted that recently, the number of

KBK & Associates Hae-Cheol Bahng Patent Attorney Tel: +82-2 3453-6701 webmaster@kbkpat.com www.kbkpat.com

California, US Ladas & Parry LLP

Ladas & Parry LLP is a law firm primarily engaged in the practice of intellectual property law. Its practice is broad-ranging, from all aspects of patent, trademark and copyright law, to advice on security interests in intellectual property and related aspects of commercial law, and other legal areas dealing with technology.

Ladas & Parry LLP Mavis Gallenson Partner Tel: +1 323 934 2300 mgallenson@la.ladas.com www.ladas.com

30

Intellectual Property Office as a Designated

End of Year 2013 / Jan 2014 Corporate INTL

27,842, respectively, meaning that Korea is beto enter into as a national stage,” he added.

Mr Bahng stated that the global economic

downturn has had a significant effect on PCT filing applicants. The number of PCT-filings has increased despite the global economic downturn.

“Since most of the clients are multinational

number of foreign filings even under the ecoingly, there is a trend that applicants increase

the number of PCT filings instead of first filing domestically.”

Mr Bahng observed that recently, indus-

PCT applications filed with the Korean Intellec-

trial sectors that clients are interested in are

Office is sharply increasing. While the number

digital-signal processing fields.

tual Property Office (KIPO) as a Receiving

of the PCT applications filed with the Korean

telecommunication fields, display fields, and “The companies, which manufacture the

Intellectual Property Office as a Receiving Of-

electronic product and semiconductor product,

9,639 in 2010. In addition, the number of PCT

products are exported to many different coun-

fice in 2000 was 1,573, this number increased to applications, which entered with the Korean

The firm was established in New York, in 1912, to assist US firms in their international patent and trademark activities. Since then, it has grown to become one of the major US law firms involved in securing and enforcing intellectual property and related rights in the United States and throughout the world. With more than 75 attorneys in five offices, it has the capabilities to handle substantial legal projects and provide expertise in many specialised areas. Ladas & Parry’s clients range from individual inventors and start-up companies to some of the world’s largest multinational corporations. With offices in New York, Chicago, Los Angeles, London and Munich, as well as long-established relationships with local counsel throughout the world, the firm is well-positioned to serve its clients’ domestic and international needs in the field of intellectual property law. Mavis Gallenson, Ladas & Parry’s Los Angeles office managing partner, has more than 20 years of expertise in the field of intellectual property law and is experienced in the prosecution of patents and trademarks around the world. She has practised patent and trademark law both in the US and Germany. She is a member of the California State Bar and is a registered US patent attorney. Ms Gallenson has lectured on various aspects of intellectual property law, both in the

prefer filing the PCT applications, since these tries,” he concluded.

US and abroad. She is a past lecturer on PCT practice through Silicon Valley Seminars. She is also the author of the book ‘The PCT and The PCT Practice’. In addition, she is the past chair of the Intellectual Property Section of the State Bar of California Executive Committee, as well as being the past chair of, and liaison to, the California State Bar Patent Standing Committee, and past member of the California State Bar Council of Sections. Ladas & Parry prepares and files many patent and trademark applications throughout the world. The firm has its own offices in the United States, Great Britain and Germany for the filing of US, British and European patent and design applications. It also utilises carefully selected local counsel in other countries for the filing of patent and trademark applications in those jurisdictions where it does not have offices. Ladas & Parry is also one of the leading filers of International Patent Applications under the Patent Cooperation Treaty (PCT). Partners and associates in the firm’s US and Foreign Patent Practice Groups are often licensed to practise before one or more of the Patent Offices in Canada, Germany, Great Britain and the US, South Korea, China and/ or at the European Patent Office. They have technical backgrounds covering all aspects of modern technology.


Competition Law Who’s Who

Competition Law Who’s Who

Antitrust and Trade Law Section of the International Bar Association www.ibanet.org Monitoring and maintaining competition in global markets has become an integral part of the global business environment and a mainstay of the business pages worldwide. In recent years, this pressure and scrutiny on global conglomerates has given rise to some landmark competition cases. In 2009, microchip maker Intel was given a record breaking fine of EUR 1.06 billion for anti-competitive behaviour by the European Commission. Competition law differs from country to country around the world; however, all regimes are based on the same fundamental issues of controlling collusion and anti-competitive practices, such as cartels and price-fixing, that can lead to falsely dominant positions in the market and an unfair advantage over other companies. The idea, in a capitalist society, is to work towards a perfect market which is self-regulating – meaning consumers make choices and use their discretion to ensure they get the best pricing and quality available. Competition Law in Europe European Community competition law is one of the areas of authority of the European Union (EU). The EU is one of the largest economic blocks in the world and thus EU competition law is particularly influential. It is regarded by the European Commission as an integral part of ensuring the completion of the internal market, meaning the free flow of working people, goods, services and capital in a borderless Europe. The European Court of Justice has endeavoured to give the term ‘trade between member states’ a broad definition, in order to make it applicable to as many scenarios as possible. The four main policy areas of EU competition law include: •

• •

Control of collusion and other anti-competitive practices involving two or more companies, the most serious of which are horizontal cartels. In the EU, this is covered under Article 81 of the Treaty of the European Community (TEC). Preventing the abuse of firms’ dominant market positions. Control of proposed mergers, acquisitions and other joint ventures involving companies that have a certain, defined amount of turnover in the EU. This is governed by Council Regulation 139/2004, European Commission (EC). State aid control of direct and indirect aid given by Member States of the European Union to companies, covered under Article 87 EC.

Competence for applying EU competition law rests with the European Commission and its Directorate General for Competition. On the 1st of May 2004, a decentralised regime for competition law came into force, to increase the application of EU competition law by national competition authorities and national courts. Competence for enforcing EU competition law is now shared between the Commission and the national authorities. Antitrust Law in the US The American term antitrust arose not because the US statutes had anything to do with ordinary trust law, but because the large American corporations used trusts to conceal the nature of their business arrangements. Big trusts became synonymous with big monopolies. The perceived threat to democracy and the free market these trusts represented led to the Sherman and Clayton Acts. These laws, in part, codified past American and English common law of restraints of trade. Senator Hoar, an author of the Sherman Act, said in a debate: “We have affirmed the old doctrine of the common law in regard to all inter-state and international commercial transactions and have clothed the United States courts with authority to enforce that doctrine by injunction.” Competition law has already been substantially internationalised along the lines of the US model by nation states themselves; however, the involvement of international organisations has been growing. Increasingly active at all international conferences are the United Nations Conference on Trade and Development (UNCTAD), as well as the Organisation for Economic Co-operation and Development (OECD). Further, while it is incapable of enforcement itself, the recently established International Competition Network (ICN) is a way for national authorities to coordinate their own enforcement activities. End of Year 2013 / Jan 2014 Corporate INTL

31


Competition Law Who’s Who

Australia The members of Thirty Nine Essex Street Chambers possess a wide range of expertise, both as advocates and advisers. The firm’s diverse client base includes public and private companies, government departments and agencies, utilities, NGOs, insurance companies, professional indemnity insurers, local authorities, trade unions, educational bodies, health authorities and trusts and individual litigants. The members also undertake pro bono work and act for public interest organisations. The firm practises in the following areas: ADR, aviation, banking, commercial, commercial arbitration, commercial litigation, company & insolvency, competition law, construction & engineering, corporate restructuring, employment, energy and natural resources, financial services, fraud, information & telecoms, information technology, infrastructure, insurance & reinsurance, intellectual property, media and entertainment, procurement & PFI, professional negligence, project finance and sport. Members of Thirty Nine Essex Street have acted regularly before domestic and European courts and competition authorities, including the CAT, the High Court, the Court of Appeal, the Competition Commission and European Commission, the OFT and other UK concurrent regulators. A number of its practitioners of public law, for instance, act on matters at the interface between sectoral regulation (and EC competition law), e.g. in the energy, transport and postal sectors. Many have experience of working for, or with, either regulatory bodies or competition authorities. In addition, a member of the firm, when parliamentary counsel, wrote the Competition Act 1998 before it was debated in parliament. A further area of related specialist practice is public procurement law. Members of the firm have worked on the interface between procurement rules and State Aid (London Underground PPP - decision by the European Commission), as well as the application of the rules of the European Treaty in the Defence sector. Rashda Rana, Thirty Nine Essex Street barrister, arbitrator and media-

tor, has practised as an advocate for more than 20 years, in London, Asia and various states in Australia. She has advised on and conducted major commercial, maritime and construction, oil and energy & infrastructure litigation, arbitration and mediation involving wide ranging issues. As well as her litigious practice, Ms Rana has undertaken non-contentious work in drafting, reviewing and settling major project documentation, including defence contracts (Class 1 submarines); infrastructure (roads and tunnels) and banking and finance documentation (prospectuses and insurance policies); and Public Private Partnership (PPP) transactional documentation. She is an active member of a number of significant industry associations – president of the Australian branch of the Chartered Institute of Arbitrators (CIArb); the founding member, director and the current vice chair of the Society of Construction Law Australia; a fellow and director of the Australian Centre for International Commercial Arbitration (ACICA); fellow of Institute of Arbitrators & Mediators Australia (IAMA); fellow of Commercial Law Association of Australia (CLAA); and the Australian representative to the ICC Taskforce on Subcontracting and the ICC Taskforce on Public Procurement. Further, Ms Rana is a CEDR accredited mediator and has been appointed as arbitrator in a number of Australian domestic arbitrations as well as international arbitrations, primarily in the Asia Pacific region. Thirty Nine Essex Street Chambers Rashda Rana Barrister / Arbitrator / Mediator Tel: +65 6634 1336 rashda.rana@39essex.com www.39essex.com

Belgium DLA Piper’s Brussels-based competition team advises large corporate clients in all areas of competition law, including merger control, defence in competition investigations and private damage claims, state aid and general advice on competition law. Dr Bertold Bär-Bouyssière, DLA Piper partner, noted: “What distinguishes us from other firms is our global network – one of the largest – that allows us to advise our clients in all jurisdictions that matter to them. Thanks to the integrated nature of our network, we can offer seamless services in very short time. In addition, our large pool of competition law experts worldwide allows us to draw from our colleagues’ experience to the benefit of our clients. We provide highest quality in limited time at a reasonable price. Clients appreciate the way in which we help them find solutions to their problems.” Bertold has the privilege to represent a pharmaceutical company in the two first ever reverse patent settlement cases at EU and UK level. Generics companies sometimes enter into so-called reverse payment patent settlements with originators – patent holders – to end or prevent lengthy and costly infringement litigation with an uncertain outcome. “The competition authorities consider that these settlements buy certainty and delay generic entry; they label them ‘pay for delay’. This is wholly undeserved. The authorities act as if the companies shared markets, not taking account of disputed patents. As far as I am concerned, a reverse patent settlement is a legitimate use of the patent, as there is uncertainty about the patent validity, the infringement and the outcome of litigation. Companies should not be prevented by competition law from settling patent disputes.” The EU’s ever-increasing encouragement of private damage actions will change competition law dramatically. In the past, companies were eager to 32

End of Year 2013 / Jan 2014 Corporate INTL

cooperate with the authorities to have their fines reduced by 20% or more. Today this is a much more difficult call to make. In light of the ever-increasing disclosure requirements in private damage actions, a company might ‘shoot itself in the foot’ if it self-incriminates itself for a reduction of the fine. Dr Bär-Bouyssière added: “The price for non-compliance is these days unaffordable. Fines become almost second compared to the threat of private damage claims. The benefits of an effective compliance culture are immense. However, the current economic climate induces some companies to limit investment in compliance. This saves money in the short term, but may turn out to be very pricey in the long term. “Paradoxically, it is in economically tight periods that company representatives are particularly tempted to go beyond the limits of the permissible to achieve positive year-end results. Not out of greed but in despair, but that is no excuse. Thus, the antitrust risk for companies increases dramatically at the very time when they may wish to limit expenditure in compliance. “Finally, it is noteworthy that EU competition law has developed quite some subtleties and, frequently, marketers do not even realise that they infringe the rules.” DLA Piper Dr Bertold Bär-Bouyssière, LL.M. Rechtsanwalt & Attorney-at-Law (New York) / Partner Tel: +32 500 15 35 bbb@dlapiper.com www.dlapiper.com/bertold_bar_bouyssiere


Competition Law Who’s Who

Bulgaria Velchev & Co. Law Office provides complete solutions and legal services in the fields of corporate and commercial law, M&A and competition law, telecommunications, regulatory affairs, public procurement, and administrative law. Its M&A practice offers timely comprehensive services addressing clients’ specific needs. Attorney at law Pavel Velchev, Velchev & Co. managing partner, noted: “From dealing with the earliest stages of a transaction, through the complexities of the negotiations, until the actual closing of the deal, our experienced team of lawyers supports and navigates each client throughout the whole M&A process.” The firm specialises in protection against abuse of dominant position in transactions involving national and / or European elements. It also provides legal assistance and representation before the Commission on Protection of Competition. Mr Velchev commented on some of the key issues for companies operating in Bulgaria regarding competition law from an M&A perspective. He said: “The parties to a potential transaction need to know in advance the specifics of the local competition legislation, as well as all substantial risks which may affect their businesses. Timely preparation of the required documentation in full compliance with the statutory requirements might be crucial in such situations. “For example, Art. 24 of the Competition Protection Act envisages that a concentration of undertakings is subject to notification to the competent authorities, if the total amount of the turnover of all undertakings – participants in the concentration on the territory of the Republic of Bulgaria for the preceding financial year – exceeds BGN 25 million, and if the turnover of one of at least two undertakings, or of

the undertaking, subject to acquisition, exceeds BGN 3 million. “The Competition Protection Commission is the competent regulatory authority to decide on breaches of the competition rules. However, the Commission usually decides on a case-by-case basis by analysing the relevant market, the stability of the market share of the undertaking in the past and the market shares of other competitors, the specifics of each case, as well as any aggravating or mitigating factors, if present. “In the event of breach of any of the provisions of the Bulgarian Competition Protection Act, including the obligation for prior notification, reviewed above, the Commission may impose fines that may reach up to 10% of the total turnover of an undertaking or group of undertakings for the preceding financial year.” Recently, there was a legislative proposal for stricter regulation of large supermarket chains operating on the territory of the Republic of Bulgaria, and introduction of new measures for protection of buyers and suppliers from abuse of dominant position. However, discussions are still ongoing at this time, and the proposal is still at a conceptual stage. Velchev & Co. Law Office Attorney at Law Pavel Velchev Managing Partner Tel: +359 888774056 pavel.velchev@vlaw.bg www.vlaw.bg

Hungary Baker & McKenzie was the first international law firm to open an office in Budapest and has been one of the leading law firms in Hungary for more than 25 years. While building on Baker & McKenzie’s global experience and reach, the Budapest office has developed an exceptional understanding of local legal procedures and business practices in Hungary. The market-leading competition law practice of the firm in Budapest is lead by Zoltán Hegymegi-Barakonyi, who also acts as the managing partner of the firm. Dr Barakonyi is a Hungarian non-governmental adviser to the International Competition Network. He has been named as the most recommended competition lawyer in Hungary and his team has been consistently ranked in the elite category for a number of years. The competition law practice of the firm provides a full range of legal services to clients. The team represents clients in cartel and dominant position cases before the Hungarian and EU competition authorities and courts, as well as in competition litigation relating to damages claims. In addition, it acts in national and cross-border merger control procedures before the Hungarian Competition Office and the European Commission. The team also assists in compliance work, including the preparation of competition compliance policies and dawn-raid procedures, along with the delivery of related trainings. The practice offers in-depth understanding of competition issues, innovative solutions and a client-friendly approach, which helps clients to succeed in their businesses. Recent major cases of the team have included obtaining merger clearance for the acquisition of the Hungarian gas trading and storage business of a German energy giant by the Hungarian incumbent electricity company, and achieving the annulment of the mobile cartel decision of the Competi-

tion Office after years of litigation that led through all instances of judicial review. The team is also currently acting on a large number of ongoing cartel investigations affecting various industries, from the banking sector to the healthcare business. In addition to regulatory work, Mr Barakonyi’s litigation team successfully fenced off record damages claims against road construction companies initiated on the basis of a cartel decision by the Hungarian Competition Office, which has seen one of the highest cartel fines ever imposed in Hungary. In the compliance arena the team regularly holds fully customised compliance seminars and dawn-raid simulations to multinational clients in the financial industry and retail sector. As well as providing cutting-edge legal advice, the competition team is closely following and commenting legislative changes, such as the latest amendments of the Competition Act, which have introduced a mandatory waiting period in merger control cases. It has also granted the government powers to exempt certain mergers from domestic merger control notification requirements. Such legislative changes should also be taken into account from an M&A perspective as they may significantly affect the structuring of transactions that trigger the Hungarian notification thresholds. Kajtár Takács Hegymegi-Barakonyi Baker & McKenzie Dr Zoltán Hegymegi-Barakonyi, M.A., LL.M. Managing Partner Tel: +36 1 302 3330 zoltan.barakonyi@bakermckenzie.com www.bakermckenzie.com/hungary End of Year 2013 / Jan 2014 Corporate INTL

33


Route to Greece

Route to Greece OECD data for November 2013 suggests that growth is expected to turn positive in the course of 2014. It is also suggested that it will strengthen in the following year as competitiveness improves further, world trade expands and investment rises. However, the required fiscal consolidation and weak bank balance sheets will restrain domestic demand; meanwhile, high unemployment will persist, keeping inflation negative. Fiscal consolidation needs to continue as planned, given high debt levels, but automatic stabilisers should be allowed to work if activity turns out to be weaker than projected. The need for further debt relief to achieve fiscal sustainability cannot be excluded. Bank balance sheets need to be restructured to allow credit growth to resume. Product market reforms already undertaken should improve price competitiveness and reallocation of resources towards internationally-orientated activities, although further reform will be needed. A more efficient and fair tax system is also required for growth and social inclusion. Moreover, a recent OECD economic survey suggests that Greece, which has been under an internationally coordinated adjustment programme since 2010, has made impressive headway in cutting its fiscal and external imbalances, and implementing structural reforms to raise labour market flexibility and improve labour competitiveness. The depression has, however, been much deeper than expected, which has undermined debt sustainability and induced a dramatic rise in unem-

Hellenic Venture Capital & Private Equity Association info@hvca.gr www.hvca.gr ployment, which affected more than 27% of the labour force at mid-2013. Economic growth is held back by weak domestic and global demand, difficult access to credit and limited macroeconomic policy room for manoeuvre. Slow product market reforms restrained price competitiveness and exports in the recent past – but there are signs that the fall in unit labour costs has started to pass through to export prices and competitiveness. But recovery is in sight. Encouraging economic developments in mid2013 related, inter alia, to a good tourism season are expected to continue through 2014. However, risks are still on the downside. The fiscal stance will remain restrictive, although less so in 2014 than in the past few years. Together with the additional adjustment needed on the fiscal side and for boosting price competitiveness, the need for further assistance to achieve fiscal sustainability cannot be excluded. The OECD goes on to note that major structural reforms have been introduced in several domains, but more needs to be done. Major restructuring and recapitalisation of banks have provided the basis for credit provision to the economy; however, large portfolios of bad assets continue to weigh on credit supply, particularly to SMEs. Although administrative burdens have been already somewhat reduced, remaining product market impediments continue to hinder further improvements in price competitiveness – and further reallocation of resources towards exports is required.

Corporate Law C.PAPACOSTOPOULOS & ASSOCIATES Law Firm Constantine Papacostopoulos Managing Partner / Lawyer Tel: +30 210 6062159 cpapacostopoulos@cpalaw.gr www.cpalaw.gr

C.PAPACOSTOPOULOS & ASSOCIATES Law Firm provides legal services in the areas of corporate restructuring, including M&A; formation of entities; corporate governance; legal issues of corporate finance; legal due diligence; dissolution / liquidation; compulsory administration of companies; bankruptcy procedures; and employment law policies and procedures. Constantine Papacostopoulos, C.PAPACOSTOPOULOS & ASSOCIATES managing partner, commented: “We dedicate our time, knowledge and experience to the continuous support of our clients, both in Greece as well as in other jurisdictions, so that they can successfully manage the challenges of current Greek and international reality. Having extensive experience in corporate law, we can evaluate the long-term needs as well as the everyday requirements of businesses. We work closely with our clients and offer clear and comprehensive legal advice, which, taking into consideration their bespoke needs, helps them achieve their business goals.” The firm provides creative contemporary legal services through the supply of practical and complete business orientated legal recommendations and solutions, not only at a local level, but also at an international

34

End of Year 2013 / Jan 2014 Corporate INTL

level. Its contact with KPMG’s international tax and legal network ensures high quality services and immediate support in any situation by reputable professionals internationally. Mr Papacostopoulos noted: “The legal complexities associated with corporate law in cross-border issues have to do with the involvement of several different jurisdictions, as well as the need for multidisciplinary cooperation. We can overcome these complexities through our close cooperation with KPMG’s international tax and legal network, of which our law firm is an independent member, as well as our close cooperation with KPMG professionals – accountants, tax consultants, certified auditors, among others – whenever required, to offer our clients complete solutions. “The global and local economic crisis has influenced the amount of our work from 2010 and onwards; however, in the past 12 months we have had better results than during 2011 and 2012.” Due to the continuously changing economic and legal environment, because of the economic crisis in Greece, the following areas of corporate law have been particularly active: mergers and acquisitions, dissolutions / liquidations, bankruptcy procedures, and employment law policies and procedures. Mr Papacostopoulos commented on new legislation in Greece. He said: “New laws were enacted, which have simplified the procedures required to be followed for the establishment and operation of partnerships and legal entities in Greece. Furthermore, changes have been made in bankruptcy law. “Given that the public authorities involved in the new incorporation procedures were not very familiar with the corporate legislation, it is necessary to explain and/or negotiate any initiative taken in this regard, which may not be specifically addressed in the new law but it is in compliance with it, based on the corporate law principles which are in force.”


Route to Greece

Data Protection Law Timagenis Law Firm Yiannis Timagenis Partner Tel: +30 210 4220001 ygtimagenis@timagenislaw.com www.timagenislaw.com Timagenis Law Firm has a dedicated team that deals with data protection and privacy law matters on a regular basis. It has broad experience in almost every possible compliance matter relating to data protection in Greece. The firm has assisted a number of multinational organisations in a vast range of data protection and privacy law matters, including advice on employee data storing, monitoring and all other HR related matters; internal procedures, such as privacy policies, notices and consent forms; data breaches; whistleblowing hotlines; website structure, including terms and conditions and cookie policies; strategies for transfer of data outside the EEA, including model clauses, safe harbour and Binding Corporate Rules; litigation discovery requests, primarily from the US. Yiannis Timagenis, partner, noted: “Our experience with multinational corporations with establishment in Greece allows us to understand the complexities of achieving compliance in multiple jurisdictions and the need to adopt, as much as possible, uniform and easy-to-implement practices around the world.” Along with its compliance and advisory work, the team’s expertise in data protection has expanded, assisting the firm’s prominent litigation

practice whenever a data protection matter arises in litigation cases. This includes: employment disputes, defamation and acquisition of (primarily sensitive) data from governmental organisations and hospitals, among others Mr Timagenis commented: “The international nature of data protection regulations, along with our clients’ needs, provides us with the opportunity to not only deal with everyday privacy issues, but also to regularly deal with issues that only rarely come before the Greek authorities, such as whistle-blowing hotlines, litigation discovery requests, etc. “Our team’s lawyers always stay at the forefront of the developments and maintain strong ties with a network of expert lawyers around the world, as well as with the relevant regulators in Greece in order to assist clients to navigate safely through the challenges that national and international data protection regimes entail.” Any foreign investor needs to be aware that data protection and privacy affect any business, whether in Greece or abroad. Greece, being part of the EU, is subject to mixed national and supranational regulations. In addition, EU regulations have been interpreted in various ways in each EU jurisdiction. Therefore, any investor or foreign business with establishment in Greece is faced with a twofold (Greek / EU) interactive regulatory regime that it has to comply with; otherwise, it may be subject to civil, administrative and, in some cases, even criminal sanctions. However, the need to comply with privacy and data protection does not necessarily mean that the organisation should be subject to onerous procedures or to implement practices hard to follow on its day-to-day operations. Mr Timagenis added: “The breadth of our data protection team’s expertise, coupled with the general commercial expertise and business acumen of our firm – being one of the sizeable commercial law firms in Greece – gives us the ability to balance client needs and provide pragmatic and commercially sound solutions.”

Energy Law GERASSIMOU & PARTNERS LAW OFFICES, a boutique law firm, operates its offices under international standards, providing its Greek and foreign clientele with the highest quality legal services and expertise. It is one of the leading boutique business and commercial law firms in Greece, situated in the heart of shipping and business industry, Piraeus. The firm is dedicated to providing a professional, responsive, personalised, attentive and cost-effective range of services to its clients in the ever-changing business environment in Greece and abroad. Close long-term business relationships have been developed with a large number of the world’s leading international law firms, institutions and academics, endeavouring to always be internationally updated, scientifically reliable and professionally effective. Nicholas Gerassimou, GERASSIMOU & PARTNERS partner, is acting as a legal counsel in major ship owning, management, energy and insurance companies in Greece, and an active solicitor in the everyday practice before the courts. He has extensive litigation experience in all fields of marine and transportation claims (sea, road and air); commercial and corporate disputes; and is representing local and foreign clients in vessels and yachts acquisition financing, mergers and acquisitions, energy and environmental law matters. Mr Gerassimou also has vast experience in foreign investment programmes under the existing Greek developing laws, attending Private Public Partnerships (PPP) and advising on local investment projects in foreign countries. GERASSIMOU & PARTNERS has expertise in administrative law; aviation; corporate and commercial; energy and environment; foreign investment; labour law; litigation; arbitration and dispute resolution; mergers and acquisitions; Private Public Partnerships (PPP); real estate, land and private islands acquisitions; shipping, tax law; and transportation. In the field of energy and environment, the firm has grown rapidly in

GERASSIMOU & PARTNERS LAW OFFICES Nicholas G Gerassimou Partner Tel: +30 210 428 57 22 info@gerassimou.gr www.gerassimou.gr the last five years. It provides a global range of activities and consultation, advising on all aspects of the energy related projects, with particular emphasis on the renewable energy field – solar, wind, hydro, biomass and geothermal – with great success to local and international investors. GERASSIMOU & PARTNERS particularly covers all issues of the regulatory framework, compliance and project finance related legal work and transactions. It has been actively involved in many cross-border energy projects of national importance. In addition, the firm is proud to note that it was one of the leading law firms in Greece that provided full and comprehensive services on the solar energy projects at the very early stage of the then-new law 3468/2006 RES legislation. Its past experience has included advising and monitoring the project finance procedure in connection with the installation of 174MW wind parks in Evia, Greece, for a major Greek joint venture corporation; monitoring and finalising the licensing procedure for the installation of 34MW, 20MW, 15x100KW respectively, solar parks in Greece for a major player in the Greek RES project market; and advising a listed company in connection with the sale of its wind portfolio. Further, GERASSIMOU & PARTNERS has advised, monitored and completed the licensing procedure for a Greek RES energy leader for the installation of 48x80KW pieces of photovoltaic parks in Crete. End of Year 2013 / Jan 2014 Corporate INTL

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Route to Greece

Intellectual Property Law The Law Office of Dr. P.D. Theodorides – Dr. H.G. Papaconstantinou Dr. Helen G. Papaconstantinou Senior Attorney / Head of the Office Tel: +30 210 3626624 mail@hplaw.biz www.hplaw.biz The Law Office of Dr. P.D. Theodorides – Dr. H.G. Papaconstantinou (originally established in 1920 by Dr. Theodorides), along with its affiliate branch Dr. Helen Papaconstantinou, John Filias & Associates, is one of the largest specialist IP practices in Greece. The firm specialises in all aspects of IP law, including the portfolio management of patents, trademarks, domain names, designs and SPCs. It undertakes all contentious and non-contentious legal work in these areas, as well as in copyright, anti-trust, anti-piracy/ anti-counterfeiting/ customs procedures, Internet law, franchising & contract law, commercial law, trade regulation, competition law, consumer protection & advertising law and ADRP procedures. Its teams of specialists also provide related detailed consultancy. Dr. Helen G. Papaconstantinou, senior attorney and head of the Law Office Dr. P.D. Theodorides – Dr. H.G. Papaconstantinou, noted: “Our IP specialist teams not only have very significant experience and expertise, but also the flexibility and ability to adapt in the most efficient manner to new demands that arise in both the traditional, as well as in the modern, sectors of IP. “Our firm’s attorneys, being familiar with the intricacies of the Greek

legal and business environment, are not only accomplished legal ‘technicians’, but are committed to helping the clients by making every effort to understand their needs and business and by providing them with individual, personalised attention. They have the ability to respond quickly and efficiently to the changing needs of corporate and individual clients from all over the world, and to adapt to changes in the market and the regulatory environment. Further, our offices have adopted a sensible approach to cost-effectiveness, and we do our best to control costs without compromising our high-quality services in any way.” In view of the established and continuous presence of global brands in the Greek market, the protection of IP rights, as well as addressing any infringement thereof, is of paramount importance. Pharmaceutical industries, electronics, fashion and food and beverages are the main sectors where IP rights protection is a prime objective. Dr. Papaconstantinou commented: “For Greece, the last years have been a period of economic turmoil. The economic crisis, also resulting in public sector cuts, has contributed to an increase in counterfeiting and to a decrease in related law enforcement activities. In this respect, in view of the lack of public sector resources, we encourage our clients to adopt a proactive approach. “Specifically, we have provided them with tailored advice, developed and implemented effective anti-counterfeiting strategies and, having an excellent network of investigators and other experts, we have ensured that such programmes really work. While we strategically and effectively litigate such cases through trial, we are very experienced in devising and establishing policies leading to both successful and cost-effective outcomes, short of litigation.” A new trademark law (Law 4072/2012, as amended by Law 4155/2013) has recently radically changed the trademark registration procedure and various aspects of trademark law in Greece. The new law intends to harmonise the related legislation with the IP Enforcement Directive 2004/48 and the CTM procedure.

Labour & Employment Law Platis - Anastassiadis & Associates Law Partnership is part of the Law Specialty Practice, which operates in 20 countries within Europe, comprised of 700 people, 66 of which are partners. It is an independent law office with a core team of 10 lawyers. The office provides high quality legal services across the full range of commercial and financial transactions. Its focus is on providing high quality services, giving prominence to the client’s best interests and needs, irrespective of geography or culture. Platis - Anastassiadis & Associates Law Partnership’s employment law team is part of EY’s Labour & Employment Law Specialty Practice, which is active in more than 30 jurisdictions. The firm’s employment law offerings cover areas such as: HR legal advisory, HR legal transactional services, downsizing and restructuring, corporate governance, privacy and discrimination issues, compliance and risk advisory, dispute resolution and litigation. Maria Rigaki, Platis - Anastassiadis & Associates senior manager, is an associate specialising in employment and social security law. Her dedicated labour practice includes advising clients on employment contracts, relationship with employees’ representatives, structuring human resources management, as well as providing advisory services in connection with collective and individual remuneration policy, corporate reorganisations, individual and collective dismissal procedures, working hours and conditions of employment. In addition, Ms Rigaki has been involved in projects related to due diligence, focusing on human resource matters, as well as workplace audits for use by employers to identify areas of risk and improvement in human resource management. She has extensive experience in employment law litigation. 36

End of Year 2013 / Jan 2014 Corporate INTL

Platis - Anastassiadis & Associates Law Partnership Maria Rigaki Senior Manager Tel: +30 210 2886 528 maria.rigaki@gr.ey.com www.platis-anastassiadis.com

She noted: “The Greek immigration legal environment is quite complex as regards employing non-EU nationals. Our firm has experience in achieving a stable immigration procedure for executive employees invited to work within the Greek territory.” Platis - Anastassiadis & Associates also has extensive experience in advising employers in cases of employees’ strikes and procedures related to establishment of companies’ collective labour agreements. Ms Rigaki commented: “The main areas of legal complexities are related to legal requirements applicable in cases of collective redundancies, since up to now the administration has a decisive role in the relevant procedure. Legislation to collective redundancies is expected to be amended in the following months.” Following recent legal developments, the employment law environment in Greece has become more flexible and, therefore, more attractive for doing business.


Arbitration, Dispute Resolution & Litigation Guide

ARBITRATION, DISPUTE RESOLUTION & LITIGATION GUIDE Key Contacts: Antonio Bravo, Dispute Resolution Law Committee Chair at the International Bar Association / Mark Friedman, Arbitration Committee Chair at the International Bar Association

Alternative Dispute Resolution

the charge, determine underlying interests

able to re-train as arbitrators or mediators;

strife is that businesses now face more

finally reach resolutions. A mediator does

dispute resolution specialists form a grow-

One consequence of recent economic

litigious times. An increasing complaint

of businesses is that it is cheaper to settle a dispute than risk the current high costs associated with defending a writ in the courts.

Reforms and simplifications of civil law

procedures have been attempted for many

years, but they remain costly, complex and beyond the means of many businesses.

Alternative dispute resolution (ADR) is

a process designed to help two opposing

parties reach an agreement outside of the courts.

In recent years, ADR has also gained

or concerns, find areas of agreement, and not resolve the charge or impose a deci-

sion on the parties. Instead, the mediator helps the parties to agree on a mutually acceptable resolution.

tried. The rising popularity of ADR can

be attributed to the increasing caseload of courts, the lower cost of ADR in compari-

son with litigation, and emphasis on client confidentiality.

ADR is generally classified into four

types: negotiation, mediation, collaborative law, and arbitration. Negotiation

Negotiation is a dialogue intended to

resolve disputes, to produce an agreement upon courses of action, to bargain for

advantage, or to reach outcomes to satisfy

The parties reach agreement with support of the attorneys and mutually-agreed ex-

perts, though no one imposes a resolution on the parties.

In arbitration, participation is usually volposes a resolution. Arbitrations often occur because parties to contracts agree that any future dispute concerning the agreement

will be resolved by impartial individuals. This is known as a “Scott-Avery Clause”,

named after the case Scott v Avery (1865),

which reads: “neither party [...] shall bring any action or other legal proceedings

against the other of them in respect of any

the arbitrator(s) [ ... ] shall be a condition

precedent to [ ... ] any action or other legal proceedings [ ... ]”.

Mediation/arbitration is a hybrid where

stance to a position of more authority if

There are other methods of ADR, such

Mediation

as early neutral evaluation, where an

mediator who facilitates the resolution

accountant gives their opinion on the

who does not impose a resolution on the parties. Mediation gives the parties the

opportunity to discuss the issues raised in

of the civil law system in England. The

aim was to simplify the system and reduce the backlog of pending and unresolved

civil litigation cases. In his 1995 Interim

Report on Access to Justice, he highlighted three interrelated problems of cost, delay and complexity as central to the changes that needed to be made to the civil law system. This enquiry formed the basis

of the new civil procedure rules brought into English civil law in 1999. The civil procedure rules included references to ADR in rules of court and introduced

pre-action protocols, with their emphasis on settlement outside of court.

resolution techniques continue to gain

Arbitration Rules and [ ... ] an award from

the parties cannot find a solution.

(known as a mediator’s proposal) but

and implement a root and branch review

arbitrator(s) [ ... ], in accordance with the

party to facilitate the process.

process and may even suggest a resolution

civil justice system, attempting to create

Global Popularity

have been heard and determined by the

a third party can move from a mediating

In mediation, there is a third party

Between 1993 and 1996, Lord Woolf con-

such dispute until such dispute shall first

key interests. In negotiation, participation is voluntary and there is no official third

to facilitate settlement of lawsuits.

ducted a wide-ranging enquiry into the

cess within specifically contracted terms.

untary and there is a third party who im-

before permitting the parties’ cases to be

ADR programmes joined with the courts,

attorney who facilitates the resolution pro-

techniques that fall outside of government parties to conduct ADR of some kind

many states now have mediation or other

ADR in the UK

In collaborative law, each party has an

Arbitration

judicial process. Some courts now require

ing body within the ADR field. In the US,

Collaborative Law

acceptance worldwide. The process

of ADR comprises dispute resolution

however, trained and qualified non-legal

Away from litigation, alternative dispute popularity worldwide. The boom of mediation as a means of resolving disputes outside the courts has been impressive,

and is confirmed by an expanding list of

respected mediators. Increasingly there is a push towards mediation and pre-litiga-

tion investigative work – as a preventative measure against settling disputes in the civil courts.

Many lawyers and solicitors are positive

expert third party such as a surveyor or

about ADR and mediation in particular.

strength of a case. A more formal proce-

continuing to expand in the future. Court

dure is expert determination, where the

disputing parties agree to be bound by the decision of a neutral expert.

Retired judges or private lawyers are

The majority see the role of mediation

time is being freed up, and although judges have been losing business in the courts, they have been gaining business and recognition separately as mediators.

End of Year 2013 / Jan 2014 Corporate INTL

37


Arbitration, Dispute Resolution & Litigation Guide

Denmark - Litigation / Arbitration Kristian Dreyer, Svejgaard | Galst | Qwist Advokataktieselskab partner, is a well-known advocate, often working on cases that hit the headlines and are of general public importance. He specialises in advising various players in the property sector on issues related to real property, construction law and commercial leasing. Mr Dreyer undertakes both ordinary and large-scale, complex litigation, including a broad range of contractual-related work. He noted: “Most commercial disputes in Denmark are resolved via the courts, which function effectively and where users have great confidence, even though waiting times can be long. The 24 district courts handle all types of cases at first instance, with the possibility to appeal to the country’s two high courts. Cases that are a matter of principle may, with special authorisation, be brought before the Supreme Court. There are also a number of special courts, such as the Maritime and Commercial Court. “Due to the waiting time and the public nature of court hearings, some companies resolve their disputes via arbitration. The arbitration tribunal may be institutional. A good example is the Danish Arbitration Board for the Construction Industry. The decision will be final, with no possibility of appeal. In reality, the arbitration institutions are not usually faster than the courts, and are more likely than the courts to involve consideration of what is fair and reasonable. Private arbitration can take place quickly and effectively, but decisions in these cases cannot be appealed either. Our experi-

ence is that it is often the best solution to resolve disputes before the courts, since the costs are known in advance, the decisions are legally clear and adverse decisions can be appealed.“ Mr Dreyer has extensive experience with Alternative Dispute Resolution (ADR). He resolves 80% of all cases for which the parties voluntarily choose ADR before the courts. He explained that in principle, the party that believes it has a justifiable claim holds the burden of proof. Clients must therefore make sure that they secure the required evidence. The presentation of evidence is relatively free in Denmark. Expert statements are obtained via the courts. In addition, the parties must be aware that any claims may be lost due to passivity or limitation. Mr Dreyer is recognised for his ability to identify all of the issues of a case at a very early stage, making a precise assessment of the possible outcome, and guiding his clients during the case in the best possible way. He added: “The professional expertise of the Danish courts, which now also offer ADR, means that the number of private arbitration cases has probably decreased. Within the construction sector, however, the approach is still to resolve construction disputes primarily by arbitration, because the arbitrators hold special expertise. The courts have recognised that in certain cases special expertise is required. As a consequence, rules were introduced in the Danish Administration of Justice Act – which enables the courts to supplement the panel of judges with special expert judges, such as architects or engineers.”

Svejgaard | Galst |

Qwist Advokataktieselskab Attorney (LL.M), Kristian Dreyer Partner

Tel: +45 33 63 74 00 kd@svega.dk

www.svega.dk

France - Litigation / Arbitration Cabinet WEIL & Associés, established in 1974, is dedicated to the service of international companies. It is devoted to assisting companies, international or small and medium-sized, in their commercial or industrial activities in France or abroad through proactive legal advice, as well as in litigations before national courts and arbitral tribunals.

Cabinet WEIL & Associés Eric Weil

Avocat à la Cour / Rechtsanwalt /

Attorney at Law

Tel: +33 (1) 44 15 98 98 eweil@weil-paris.fr www.weil-paris.fr 38

End of Year 2013 / Jan 2014 Corporate INTL

Business relationships with German and English-speaking countries have always been a major part of the firm’s activity. Therefore, our lawyers are admitted to practise in France, Germany, the US and Canada. Its involvement in the advice to, and representation of, international clients means that all lawyers write and speak fluent German, French and English. Over the years, its activity has led to representing companies from countries such as Japan, Korea and China. From standard commercial litigation to complex strategic disputes with substantial amounts at stake, Cabinet WEIL & Associés has successfully acquired a broad range of litigation skills – from national courts to international arbitration. The firm’s experience enables it to provide a fairly precise assessment of the pros and cons to litigate a matter. WEIL & Associés litigators have a long-standing knowledge of the formal subtleties that sometimes allow the defence of a case without even addressing the merits before court. The litigators know how a matter should be presented to the courts or an arbitration tribunal, and their expertise is recognised by these authorities. In some specific matters, Cabinet WEIL & Associés also has experience in handling the media to use this

important communication aspect as part of the overall strategy. Furthermore, the firm always bears in mind, at any stage of the proceedings, that its clients are not in the business of doing litigation, and that litigation is always a substantial source of distraction. Therefore, it always considers its settlement options along the way. Eric Weil, Cabinet WEIL & Associés, Avocat à la Cour, is highly recognised for his extensive experience in sophisticated litigation of national and international importance. Eric Weil has handled high-profiled, complex litigation matters on behalf of large global corporations. Eric Weil offers quality and reactivity across a wide array of disputes, including: high-stakes breaches of contract, unfair competition, product liability, fraud and corporate post-acquisition litigation. Eric Weil’s comprehensive tailor-made approach makes him a go-to choice for companies faced with complex litigation. He also has extensive experience in white-collar crimes involving a wide variety of cases such as deceptive labelling of pharmaceutical products, misappropriation of trade secrets, forgery, misuse of corporate assets, hindrance to the rights of employees’ representatives, or discrimination. Moreover, Eric Weil’s top trial skills – enhanced knowledge of international arbitration law and procedure, expertise across a broad range of industries and substantive areas of law, and the ability to work fluently in English, French and German – are also important for international arbitration. The combination of skills, expertise and experience, together with a multicultural approach, has enabled his team to obtain outstanding results for WEIL & Associés’ clients.


Arbitration, Dispute Resolution & Litigation Guide

England - Litigation Mandeep Kaur Virdee, head of insolvency &

ful what you read from Internet blogs. If you

vency practitioners on all types of appoint-

afraid to ask your proposed solicitor for where

restructuring at Neumans LLP, acts for insolments, including contentious action against

directors for antecedent transactions, such as unlawful dividends and preference claims.

– matrimonial, contract, commercial, etc. The

tions against banks and high level commercial transactions.

Miss Virdee noted: “I am a solicitor advocate

with Higher Rights of Audience qualification, which entitles me to conduct advocacy in the

High Court in the same way as a barrister. I am

Tel: +44 (0) 20 7429 3900

mandeep.virdee@neumansllp.com www.neumansllp.com

Miss Virdee’s specialisation is in insolvency

acting for individuals who are being pursued handles other types of litigation, such as ac-

Head of Insolvency & Restructuring

such as government websites.”

litigation. She comments: “It is a fascinating

by insolvency practitioners. In addition, she

Mandeep Kaur Virdee

to go to read further or go reputable websites

She also advises companies on restructuring

and insolvency routes if necessary, as well as

Neumans LLP

want to research or read up further, do not be

a member of SAHCA (Solicitors Association of Higher Court Advocates), The Junior Lawyers

area of law which seeps in to all areas of law word insolvency is somewhat misleading. While most understand it to mean that it

involves an individual or company that has no money, it actually is not quite so simple. Insolvency branches out to those chasing money,

those who have lost money through various

‘schemes’, and those that have businesses that

are struggling with cash flow. Mechanisms are available to assist in most circumstances, but the first step is admitting there is an issue.” In a recent case, Miss Virdee acted for an

Division and an associate member of the R3.”

individual (asset base of circa £8 million)

jurisdiction. CEDR Solve is a leading inde-

Voluntary Arrangement due to a contentious

There are various ADR providers in this

pendent commercial ADR provider in Europe

that conducts mediations. Other providers are

available, depending on which area of expertise is required.

Miss Virdee explained: “I cannot generalise a

who was advised to enter into an Individual

divorce (assets in joint names). She defended his bankruptcy petition for more than a year

and assisted in the exchange of his property to release equity to pay off his creditors.

She noted: “I approach problems from a com-

particular client to be more suited for litigation

mercial viewpoint in order to get to the root of

which the instructing solicitor would need to

client’s objective and provide realistic options

than ADR. It is a subjective decision and one

take. Any client with a case of merit considering pursuing an action needs to really think

about what it is they actually want. Once that is established, it is a process to work backwards,

i.e. if they want to publicise the wrongdoing of

the problem. I work towards understanding the to achieve the desired outcome. I work with a hands-on approach, and am always happy to

discuss the matter in confidence to establish if I am the right person to assist you.”

She has also acted for a property company

an entity or individual, then dispute resolution

against a bank in mis-selling SWAP agree-

confidential in nature.

chain of French restaurants, all of which are

routes will not be fruitful as they are usually

“Clients need to understand from the outset

that litigation is a journey; once started, there

may be various junctures which are unexpected

ments, as well as successfully restructuring a now trading at a profit and retaining the brand name.

In regards to recent developments regarding

along the way. The most important task for me

litigation, Miss Virdee added: “The Jackson

Whether it be acting for claimant or defendant,

been hailed as the ‘big bang’ in English civil

as a litigator is to get to the root of the issues.

it is important to understand the fundamental

points, manage the client’s expectations, and be realistic with prospects.

“Clients often get led down a garden path

with lawyers that tell them what they want to

hear and then let them down. When clients are

looking for lawyers to litigate, they should find a reputable lawyer and meet up with them. It

is so important for you to understand the firm and, most importantly, the individual you are

instructing. After all, they are representing you. “When looking for a good lawyer or even

Reforms took effect as of April 1, 2013. This has litigation, and is considered one of the biggest shake-ups since the Woolf Reforms in 1999.

“While they were primarily aimed at person-

al injury litigation, they do affect commercial litigation – for example, rules on disclosure,

funding, conditional fee agreements and others, such as the Damages Based Agreements, which were only permitted in non-contentious and

employment matters, are now available in relation to all types of litigation. Time will tell how

the reforms have changed the way we litigate.”

guidence, my primary advice is be really care-

End of Year 2013 / Jan 2014 Corporate INTL

39


Arbitration, Dispute Resolution & Litigation Guide

Romania - Dispute Resolution Zamfirescu Racoti & Partners Attorneys at

thus created a specific mechanism that would

accounting for more than half of its work. It

through mediation. A law was therefore enact-

Law’s key practice area is dispute resolution, offers fully integrated advice in: litigation;

contractual disputes; banking litigation; insolvency / restructuring; public and administra-

tive law; arbitration; mediation; competition; intellectual property; tax litigation; employment disputes; and enforcements and debt recovery.

An undisputed leader on the Romanian market, the firm offers local and international litigation and arbitration practice. Its prestigious

litigators and arbitrators have tried-and-tested experience, keeping the firm at the very top of its profession. It works in integrated multidisciplinary teams and is always well informed about all aspects of its clients’ business.

Cosmin Vasile, Zamfirescu Racoti & Partners

managing partner, noted: “Companies choose Zamfirescu Racoti & Partners to manage their

disputes because we consistently deliver flaw-

theoretically lead to the settlement of disputes

ed that compels litigants to follow a compulso-

ry preliminary procedure in front of a mediator before going to court, for several types of disputes up to a certain value.

Mr Vasile commented on the advantages of

ADR. He said: “One of the most important ad-

vantages is obviously the time saving, since litigation tends to be rather lengthy. Also, where

arbitration is concerned, there is a higher level of specialisation of the arbitrators that enables the parties to enjoy the advantage of having their case analysed by someone who under-

Attorneys at Law

Also, the decisions rendered in arbitration are

Cosmin Vasile

orientated than in litigation, where the judges

Tel: +40 21 311 05 17

rather frequent that the decisions are ‘all or

www.zrp.ro

stands much better the field in which they act. generally more balanced and commercially

Managing Partner

have a much more formal approach and it is

cosmin.vasile@zrp.ro

nothing’.

less and outstanding results. Clients generally

“When it comes to mediation, besides time

in litigation, lawyers who understand their

obviously the main advantage, since the parties

look for law firms with extensive experience

business thoroughly and always find the best legal solution that solves their case.

saving and cost cutting, the ‘win-win’ result is basically make their own settlement and there is no losing party.”

“Strategy, tactics, clearly identified goals and

The ongoing economic downturn has led to an

fidence, trust and loyalty are among the most

the ‘winner’ being the insolvency field. Mr

the experience to achieve them, courtroom conimportant qualities clients seek in a litigation

lawyer. We act for a broad spectrum of clients, particularly in the corporate and financial sec-

tors, but also for government and state-owned entities.”

Over the past few years, the Romanian

legislator has made it a priority to encourage

the use of ADR, especially mediation, and has 40

End of Year 2013 / Jan 2014 Corporate INTL

Zamfirescu Racoti & Partners

increase in commercial disputes and litigation,

Vasile added: “Since the economic and financial realities that were taken into consideration

when entering into commercial relations have

changed dramatically, more and more companies find it difficult to continue their activity and observe their contractual obligations.

Therefore, the relief comes from entering into

insolvency, either at the debtor’s own will or at the creditor’s request.”


Arbitration, Dispute Resolution & Litigation Guide

Taiwan - Litigation / Arbitration Formosa Transnational, Attorneys at Law (FT) is

have been filed to the court for revocation under

both in scale and by reputation. All four partners

rarely revoke an arbitration decision. However, an

the top law firm for dispute resolution practice, have extensive experience in various types of Formosa Transnational Attorneys at Law

www.taiwanlaw.com

litigation, including construction, antitrust, envi-

ronmental law, consumer complaints, intellectual property, contract, commercial, torts, family law

specialises in construction disputes and BOT

Taiwan Public Construction Commission issued a

ruptcy cases.

Formosa Transnational has one of the strongest

and most well-known arbitration teams in Taiwan and specialises in assisting foreign and local

clients in filing or defending against claims in arbimediation and finally arbitration.

Formosa Transnational is well equipped to,

and specialises in, representing English and

Japanese-speaking clients with the most difficult and complicated legal and factual cases, such as

shuai-sheng.huang@taiwanlaw.com

has recently won a significant case in connection

At the local government level, mediation is

available for all kinds of civil matters, certain

misdemeanour disputes, consumer complaints

and labour disputes. The court system also has

mechanisms to accommodate mediation in civil matters and cases that are being litigated.

The Arbitration Association of the Republic

of China is the primary arbitration institution in

yafen.lin@taiwanlaw.com

that a settlement though mediation is an appropriate option. It is also very popular for parties

operating in the private sector to go to mediation

at the PCC or local procurement offices for government construction contract disputes. It is common in government procurement agreements that mediation is required before arbitration.

Mediation is also widely used in labour dis-

are respectively mediated by labour or consumer level.

Litigation is more suitable for clients who are on

Certainly, clients should have the financial means

matters, such as the Intellectual Property Court.

Tel: +886-2-2755-7366

or prosecutor often generally advises the parties

million.

ing claim amounts reached approximately $200

There are also special courts that deal with specific

Partner

Mediation is also commonly used in Taiwan. In

both civil and low profile criminal cases, the judge

strong legal grounds in law / contract or who hold

cases can only be appealed to the second instance.

Ya-Fen Lin

disputes.

with a construction project where the prevail-

courts and the Supreme Court; however, certain

jui-hua.fan@taiwanlaw.com

as an effective ADR for government procurement

protection authorities at the local government

ment entities in Taiwan. Formosa Transnational

contains three tiers of courts – district courts, high

Tel: +886-2-2755-7366

entities / institutes to consider using arbitration

multinational or Taiwan-based, as well as govern-

for dispute resolution is the court system, which

Partner

letter in January 2013 encouraging all government

putes or consumer complaints where the disputes

For litigation in Taiwan, the primary institution

Ivy Jui-Hua Fan

disputes, especially in construction matters, as the

construction and commercial disputes. Formosa

Transnational represents many major businesses,

Tel: +886-2-2755-7366

Arbitration is regaining its popularity for

matters regarding government procurement

tration from the outset of consulting, negotiations,

Partner

appeal to the court and request the court to revoke

Georgia Chang specialises in antitrust, construc-

disputes, labour disputes and insolvency/bank-

Jackson Shuai-Sheng Huang

Within 30 days after a tribunal has rendered its

the arbitration decision.

tion. Ivy Jui-Hua Fan specialises in investment

georgia.chang@taiwanlaw.com

approval from the court for enforcement.

known arbitration teams in Taiwan.

firm also has one of the strongest and most well-

cross-border disputes and international arbitra-

Tel: +886-2-2755-7366

arbitral award, may have difficulty in obtaining

final decision, the dissatisfied party may make an

projects. Jackson Shuai-Sheng Huang specialises in

Partner

ad hoc arbitral award, rather than an institutional

and criminal cases, among others. Further, the

tion, and environmental disputes. Ya-Fen Lin

Georgia Chang

the Arbitration Act, the courts are reluctant to and

probative evidence that supports their positions. to go through the lengthy litigation procedures,

which may take from at least one year to as many

as five or more years to complete trials at all of the three tiers of the courts.

Arbitration is more flexible in proceedings and

with respect to evidence rules. Both parties may

expressly agree to authorise the arbitral tribunal to adjudicate per the rules of equity rather than

of law or according to contract provisions. Thus,

arbitration is more effective than litigation in principle, as the arbitral award must, unless otherwise agreed to by both parties, be rendered within nine

months from formation of the arbitral tribunal per the Taiwan Arbitration Act.

Arbitration is suitable for international trade

Taiwan.

because both parties can agree to the arbitration

pervised mediation even when the case has

award is more likely to be enforced by a foreign

The courts encourage parties to go to court-su-

reached the High Court – the second level. If both

parties reach a settlement through mediation, two thirds of the court fees would be refunded.

Although many institutional arbitral awards

location and language in advance. An arbitration country than a court decision, in some cases.

Arbitration is also suitable for construction cases, as special knowledge and experiences are often

required to understand and adjudicate such cases.

End of Year 2013 / Jan 2014 Corporate INTL

41


Arbitration, Dispute Resolution & Litigation Guide

3 4 9

6 5

10

1

2

1. ANGUILLA - Webster Dryud Pam Webster Tel: +1 264 461 2060 pwebster@websterlawbwi.com www.websterlawbwi.com

2. BRAZIL - Basilio Advogados Ana Tereza Basilio Tel: +55 (21) 2277 4200 abasilio@basilioadvogados.com.br www.basilioadvogados.com.br

3. DENMARK - SVEJGAARD | GALST | QWIST ADVOKATAKTIESELSKAB Kristian Dreyer, Senior Partner Tel: (+45) 33 63 74 00 kd@svega.dk www.svega.dk 42

End of Year 2013 / Jan 2014 Corporate INTL

4. ENGLAND - Neumans LLP Mandeep Kaur Virdee, Head of Insolvency & Restructuring Tel: +44 (0) 20 7429 3900 mandeep.virdee@neumansllp.com www.neumansllp.com

5. FRANCE - Cabinet WEIL & Associés Eric Weil, Avocat à la Cour / Rechtsanwalt / Attorney at Law Tel: +33 (1) 44 15 98 98 eweil@weil-paris.fr www.weil-paris.fr

6. GUERNSEY - Babbé Legal Ian Swan Tel: +44 (0)1481 746176 i.swan@babbelegal.com www.babbelegal.com


Arbitration, Dispute Resolution & Litigation Guide

12 7

11

8

7. INDIA - Amarchand & Mangaldas & Suresh A. Shroff & Co. Ms Pallavi Shroff Tel: +(91-11) 41590700, 40606060, 41000541 Direct: +(91-11) 41614093 pallavi.shroff@amarchand.com

8. INDONESIA - LUBIS GANIE SUROWIDJOJO Dr M Idwan Ganie Tel: +62-21 831 5005, 831 5025 ganie@lgslaw.co.id www.lgsonline.com

9. LUXEMBOURG – MNKS Marielle Stevenot Tel: +352 26 48 42 1 stevenot@mnks.com www.mnks.com

10. ROMANIA - Zamfirescu Racoti & Partners Attorneys at Law Cosmin Vasile, Managing Partner Tel: +40 21 311 05 17 cosmin.vasile@zrp.ro www.zrp.ro

11. SINGAPORE - Tan Kok Quan Partnership Mr Kannan Ramesh Tel: +65 6496 9508 kannanramesh@tkqp.com.sg www.tkqp.com.sg

12. TAIWAN - Formosa Transnational Attorneys at Law Ya-Fen Lin, Partner Tel: +886-2-2755-7366 yafen.lin@taiwanlaw.com www.taiwanlaw.com End of Year 2013 / Jan 2014 Corporate INTL

43


A D V O C AT E S & L E G A L C O N S U LTA N T S

Y O U R F U L L S E R V I C E I N T E R N AT I O N A L LAW FIRM IN CYPR US L P A N D C O O F F E R S L E G A L S E R V I C E S T O B U S I N E S S E S , I N D I V I D U A L S , P U B L I C O R G A N I Z AT I O N S A N D G O V E R N M E N T S . T H E F I R M H A S A S T R O N G L I T I G AT I O N T E A M , H A N D L I N G A L S O A L L F O R M S O F C O M M E R C I A L D I S P U T E R E S O L U T I O N A N D H A S C O N S I D E R A B L E E X P E R I E N C E I N A R B I T R AT I O N S . A N U M B E R O F P R O F E S S I O N A L C O N TA C T S I N N O R T H A M E R I C A , E U R O P E , M I D D L E E A S T A N D T H E FA R E A S T A R E AT T H E F I R M ’ S D I S P O S A L A N D W E A R E C O M M I T T E D T O P R O V I D I N G A R A N G E O F L E G A L S E R V I C E S T O O U R C L I E N T S W H O A R E A C T I V E I N I N T E R N AT I O N A L B U S I N E S S .

L . P A P A P H I L I P P O U & C O , 1 , C O S TA K I S P A N T E L I D E S S T R E E T, 3 R D F L O O R , 1 0 1 0 N I C O S I A , C Y P R U S PHONE: (+357) 22 67 41 41

FA X : ( + 3 5 7 ) 2 2 6 7 3 3 8 8

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