Understand Your Rights. Solve Your Legal Problems
Marek Bury is Managing Partner in Bury & Bury; he previously spoke to Lawyer Monthly about problems he faces in the patent world. This month we get in touch with Marek again, to discuss utility models in his ever-developing jurisdiction.
What is the current scope for utility models in Poland? What is special for prosecution and when should a client apply for a patent instead?
The scope of protection of a utility model in Poland is quite similar to the scope of protection of a regular patent. The maximum duration of the protection is limited to 10 years since filing, as opposed to 20 in case of patents. Also, only devices with 3D determined form (electric or hydraulic systems are not considered to meet this condition) can be protected as utility models. It is also quite universally acknowledged that utility model claims should be interpreted in a narrower manner than in case of patent claims. Nevertheless, as infringement cases are decided by common courts without specialized judges, this can hardly be observed in practice.
Utility models are examined, but only for novelty. Prosecution is therefore simpler and faster. Lack of inventive step requirements makes it very difficult for infringers to invalidate the utility model by filing nullity action when the right is enforced.
How does this compare to nearby jurisdictions and what do you think could change to ensure better patent protection?
The German patent system is both nearby and a pretty fair choice for reference. Utility models in Germany are registered and not examined for novelty and inventive step unless enforced. But when enforced, both criteria apply. Inventive step objection cannot also be used to file nullity action, therefore utility models are fairly indestructible in Poland.
The German patent system offers possibility to branch utility models from German (or European) to patent applications. This is not possible in Poland. Conversion of Polish patent applications to utility models irrevocably closes any chances to obtain a patent. The conversion can be requested up to two months after the patent application is refused; a change here would be welcomed.
When is an invention suitable for conversion from European patent application to Polish utility model? Do you think this criterion should change?
European patent applications, which are refused or withdrawn or deemed to be withdrawn, can be converted to a national patent application in circumstances which are provided for in the national regulations. Poland has no restrictions in this respect and provides that both conversion to a Polish patent application and Polish utility model is possible. Consequently, it is effectively possible to branch Polish utility model application from the European patent application. Currently, you:
This mechanism can be more efficient than provisional protection.
Clearly, Polish regulations are rather favourable to the applicants in this respect and inherently patent attorneys, including ourselves, appreciate it.
Do you think the Polish legal system should change in order to ensure a better ‘flow’ and ease of utility model protection?
In my opinion, utility model protection in Poland is very efficient in prosecution and definitely safer in enforcement than patent protection. Also, conversion from European patent applications is as smooth as the EPC allows.
In 2016, almost 10 000 European patents were validated in Poland by foreign entities while only 67 applications for utility models were filed. As the EPO grant rate is less than 50%, it is a clear sign that the conversion to a utility model is severely underused.
Marek Bury
Managing Partner
https://www.linkedin.com/in/marek-bury/
Marek Bury deals mainly with the cases concerning patents, particularly in the field of electrotechnics, mechanics, telecommunication and information technology. He is an author and co-author of approximately 30 scientific publications concerning radio electronics and 5 works concerning industrial property. He provides advice regarding optimal IP protection and assistance in patent and UM drafting, prosecution and litigation as well as invalidation of inaccurately granted patents and rights under utility models.
Bury & Bury have been patent attorneys for generations. In our work, we put strong emphasis on sound technical knowledge and engineering education. We take care to be well-versed not only in the procedural nuances of the industrial property law, but also in how entrepreneurs can use the industrial property and how it can be translated into their profit. As a result, we can understand the needs of our clients and advise them well.
What do you need to consider when expanding internationally? Prof. Antonino Longo offers three pieces of advice and changes the EU must implement.
What are your three pieces of advice for clients who want to commercially expand internationally?
My three pieces of advice for clients who aim for expanding internationally their enterprise are:
As Professor of European Union Law, what are changes you think ought to be imminently implemented?
We need to implement, quickly and effectively, a system that includes:
1) The elimination of tax asymmetries that determine advantages of some member countries over others in attracting foreign direct investments;
2) A single banking and military defence policy;
3) The authoritative and univocal development of bilateral and multilateral trade agreements that protect all the member countries of the European Union compared to the big global players.
What do you think is the most challenging aspect of being a Supreme Court lawyer? How do you overcome this challenge?
In Italy, the Supreme Court is at the top of the ordinary jurisdiction; between the main functions is to ensure “the exact observance and uniform interpretation of the law, the unity of the national objective law, compliance with the limits of the various jurisdictions."
Exercising the profession as a Supreme Court lawyer gives me the opportunity to confront with the highest judicial body, entrusted with the role of guaranteeing uniformity at national level in the interpretation and application of the rules that form the Italian legal system.
One of the key features of its mission and unifying nomophylactic essentially aimed at ensuring certainty in the interpretation of the law is the fact that, in principle, the current rules do not allow the Supreme Court to know the facts of a case unless they prove by deeds already obtained in proceedings in the pre-trial stages, and only to the extent that it is necessary to know in order to assess the remedies that the law allows you to use to motivate an application at the Court.
According to article 111 of the Constitution every citizen may appeal to the Supreme Court for violation of the law against any decision of the judicial authority, without issuing any appeal in civil or criminal, or against any measure restricting personal freedom.
The Court of Cassation is also assigned the task of establishing jurisdiction (indicates, when you create a conflict between the ordinary courts and the special, Italian or foreign ones, which has the power to treat the cause) and the competence (to resolve a conflict between two lower courts).
The Supreme Court also performs non-judicial functions relating to elections and referendum for the repeal of laws.
Avv. Prof. Antonino Longo
LONDON
1 Canada Sq. - E14 5DY
Tel. +44 (0) 2077121500
ROME
Viale Liegi, 58 - 00198
Tel. +39 06 4551194
Graduated with honours at the University of Catania, Prof. Antonino Longo continued his studies abroad, specializing in Administrative Penal Law at the Catholic University of Tilburg (NL), in International Commercial Law at King’s College, London (UK) and Suffolk University Law School of Boston (MA – USA), in European Private Law at Humboldt Universitaet in Berlin and in Energy Law at LUISS Guido Carli, Rome.
Author of more than sixty scientific publications and six books, he is professor of Town Planning Law and Public Contracts and he has been professor of European Union Law, Labour Legislation and Energy Law at the University of Catania.
As Supreme Court lawyer, he is one of the founding partners of the Firm FLA (Floresta, Longo e Associati).
FLA is a professional association of lawyers, tax and labour consultants, characterised by the competence to offer assistance and consultancy, both extrajudicial and in court, in criminal, civil, administrative, tax and labour cases, to Italian and foreign companies, and public bodies.
By being offered a multidisciplinary approach and a complete and integrated range of highly professional services, our clients are able to concentrate all the requirements regarding the management of their enterprise in a sole entity.
Bankruptcy surfaces fear in any business persons’ eyes. But is it always the option at hand? How can you save your business, your legacy, in the most efficient, law-abiding manner? Selwyn Whitehead, an expert in bankruptcy law, reveals the best way to address such issues.
What would you say are the main risks of filing for bankruptcy too late?
Filing a bankruptcy too late (and sometimes filing too early or too often without competent business and legal counsel) limits the debtor’s chances for economic recovery. By filing a bankruptcy too late, the debtor limits her options of finding a solution to her financial situation outside bankruptcy, such as by negotiating a voluntary restructuring agreement with creditor(s) before or shortly after an initial default becomes a potential reality. If done properly or at least realistically, and before an adverse action has occurred, the debtor will gain more time to look at all her options, including filing for bankruptcy at the optimal time. Also, the additional time will give her bankruptcy counsel and financial analysts the time they need discover more facts about why the business is in financial distress and how these symptoms can be addressed prospectively.
What are the myths that need to be dispelled surrounding bankruptcy?
The primary myth: small business owners filing for bankruptcy is a sign of a moral failing and should be undertaken only as a last resort after all other avenues have been exhausted.
However, according to the US Small Business Administration, nearly 70% of small businesses in the United States will fail before their 10th anniversary:
As such, I say to not at least consider bankruptcy as a possible solution to help save a business in financial distress; in order to save the income it creates for its owners, employees and communities would be the true moral failing. And as stated above, waiting and filing too late will likely limit the remedial effects of filing.
What is the best and worst part of bankruptcy law?
The thing I love most about practicing bankruptcy law is that it intersects with all the other areas of the law, both state and federal statutory and case law. And as it is constantly evolving and changing on an almost daily basis; I must constantly study bankruptcy law so that I can keep abreast of what’s new in order to better serve my clients and my community.
The thing I like least about my practice area is the lack of diversity, racially and regarding gender. Even though I live and practice bankruptcy law in one of the most progressive states in the Union: California, I do not see enough female and ethnic bankruptcy attorneys or trustees and although I am admitted in multiple federal districts in the state, to my knowledge, I have never appeared before a single ethnic bankruptcy judge. Because of the unique perspective lawyers of colour bring to any practice area, especially in areas dealing with finance and business development in communities of colour, I firmly believe there is a severely unmet need for female bankruptcy judges of colour. Due to this, I unfortunately sometimes see a limited view and misunderstanding of the practical financial needs and ways to address the needs of distressed business and families seeking the protection of the bankruptcy court who come from communities of colour.
Who are the types of clients you mostly deal with in bankruptcy matters?
I love to assist small businesses owners, including pass through entitles such as sole proprietorships, partnerships, LLCs, closely held C corporations, subchapter S corporations and real estate professionals, both agents and brokers. My job is to help these entrepreneurs not only figure out a way to salvage what they can from their stalled enterprises, in order to have some assets with which to start over if they must liquidate the business, but more importantly, I can hopefully help them put in place the business plans, systems and practices they will need to keep their business going and help them make it through the arduous court-controlled and very public reorganisation process and find a way to thrive after putting forth a realistic and confirmable plan of reorganisation and then exiting the bankruptcy as a viable and refreshed enterprise.
I also help consumer debtors who on the one hand, seek the protection of the bankruptcy court in order to put in place plans of reorganisation, that may give them a real chance to save their homes or other major assets facing foreclosure by one or more of their secured creditors. I also help consumers who I assist in coming to the realisation that they need to liquidate their debt in exchange for the surrender of their non-exempt assets as soon as practicable, so they can obtain a fresh start and get on with their lives.
As I also practice estates and trusts law, I assist individuals who may find themselves in the untenable position of being both a successor trustee and/or beneficiary of a loved one’s trust and also a debtor in a bankruptcy case. This unfortunate situation may come into being either as the result of extremely poor planning on the part of the trust’s settlor(s) or sometimes as the result of confusion as to the law (or just plain old greed coupled with the bad advice to file a bankruptcy) on the part of the debtor. What I mean by extremely poor planning by the trust’s settlor(s), is where the settlor(s) believe that a spendthrift provision in the trust document alone will save the vast majority of settlor’s legacy from a court-appointed bankruptcy trustee, if the spendthrift decides to file for bankruptcy; after all, most spendthrift trusts say the magic words that purportedly limit a bankrupt trustee’s access to the corpus of the trust or at least the vast majority of the corpus of the trust.
Finally, as I also practice tax law, I assist debtors who may also have federal, state or local income tax issues and/or property tax issues with one or more of the taxing authorities.
What are the main challenges these clients bring?
Many, if not most, of these small business clients display a real lack of basic business acumen, including having poor or non-existent records keeping systems and practices, or sometimes not even knowing why there is a need for these business tools. These basic tools, along with access to capital and credit, are the life’s blood of each and every small business. Without these tools, the business will enviably lose track of its capital and its contracted debt repayment timelines, and as a result, the business will lack the ability to properly monitor and manage its cash flows. This lack of proper cash flow monitoring and management will likely result a mismatch in timing between a payment due date and the accumulation of sufficient cash to timely make the required payment, which will result in a demand for payment from one or more creditors that cannot be met. This will cause one or more defaults that lead to the need for bankruptcy court protection, or worse. These clients also sometimes have a very unrealistic view of their products and/or services, where their businesses fit into the marketplace and how their businesses meet a marketplace need, if at all.
How do you navigate these issues?
I help my clients deal with these challenges by first insisting that we take a very hard and realistic look at their business, its products and services, its niche in the marketplace, who its customers are now and who they will be, and where its customers will come from in the future. This information is necessary to formulate even the most rudimentary business plan, which must be constantly updated and explained to the bankruptcy court and the other parties-in-interest in the debtor’s case, such as its secured creditors and the Office of the United States Trustee. This constant scanning of the debtor’s marketplace and the concomitant updating the debtor’s business plan and plan of action while under the protection of the bankruptcy court is required. Marketplaces are constantly changing in today’s age of AI the IoTs and customer bases are made up more and more of consumers who are no longer employees of companies with relatively stable disposable income, but instead are often employed as contractors without steady reliable incomes of any kind. As such, it is only by developing a realistic, yet flexible, business plan along with the appropriate reporting mechanisms, can a debtor even expect to make it through the bankruptcy gauntlet and come out the other side as a viable business enterprise.
How do you help your clients differently compared with other firms?
I use my weekly radio show, Selwyn’s Law to help educate my listening audience about bankruptcy and the other pressing issues confronting the financial services industry and its consumers. I also give presentations to church and community groups on business development and personal finance and tax issues.
LAW OFFICES OF SELWYN D. WHITEHEAD
4650 Scotia Avenue, Oakland, California 94605
Phone: 510.632.7444
Fax: 510.856.5180
Email: selwynwhitehead@yahoo.com
Web Site: www.selwynwhitehead.com
Selwyn D. Whitehead Esq. [JD, LLM Tax Law, LLM IP Law, California Bar Bankruptcy Law Certified Specialist] is a San Francisco Bay Area bankruptcy and tax attorney whose practice focuses on helping her clients manage their wealth through effective estate and tax planning and/or manage their debt through debt restructuring or bankruptcy. Selwyn also helps her clients facing foreclosure and represents clients with emotionally and financially “taxing” issues before the Franchise Tax Board, the IRS and the U.S. Tax Court.
Prior to going into private practice, Selwyn managed a group of attorneys and paraprofessionals in Fireman's Fund Insurance Company's Claims Department, where she was responsible for auditing the claims and case handling practices, performance, fees, and expenses of outside defence counsel.
To Be or Not To Be... an Expert Witness
In all developed systems of law, the evidence of expert witnesses can be crucial to the outcome of a dispute. Nowhere is this more so than in the UK, where expert evidence has been used in court cases since at least the 15th century. Nowadays it may be required in civil, family and criminal proceedings, as well as in arbitrations, before specialist tribunals, and for public or parliamentary inquiries.
Experts and expert witnesses
An expert is anyone with knowledge or experience of a particular field or discipline beyond that to be expected of a layman. An expert witness is an expert who makes this knowledge and experience available to a court to help it understand the issues of a case and thereby reach a sound and just decision. There is, currently, no precondition imposed by English law on the qualities required of an expert witness. It is for the courts, on a case by case basis, to make a judgment of the individual’s qualities and to weigh the expert’s evidence in accordance with this judgment.
What is expert evidence?
The fundamental characteristic of expert evidence is that it is opinion evidence. Good quality expert evidence must provide as much detail as is necessary to allow the judge to determine that the expert’s opinions are well founded. It follows, then, that it will often include:
Duties of an expert witness
The overriding duty of an expert witness is to the court – to be truthful as to fact, thorough in technical reasoning, honest as to opinion and complete in the coverage of relevant matters. This applies to written reports as much as to evidence given in court. At the same time, the expert assumes a responsibility to the client to exercise due care with regard to the investigations carried out and to provide opinion evidence that is soundly based.
To fulfil these duties adequately, it is vital that the expert should also have:
Qualities required of an expert witness
Expert evidence should be – and should be seen to be – independent, objective and unbiased. In particular, an expert witness must not be biased towards the party responsible for paying the bills. An expert’s evidence should be the same regardless of who is paying for it.
Clearly, too, an expert witness should have:
Lastly, an expert should be wary of expressing any opinion on allegations of negligence on the part of anyone, professional or otherwise, who may be involved in a dispute. The opinions given should relate solely to the facts of the case: it is for others to apportion blame.
Fees
The fees experts charge are, in large part, market driven. What’s more, fees charged in cases that are paid for from public funds are subject to Ministry of Justice caps. This means they are around half those charged habitually in civil cases. The UK Register of Expert Witnesses conducts a biannual survey on expert fees (next survey due summer 2017) amongst its members. Its current average hourly report writing rates for non-legal aid work (2015 data) are:
| Professional group
|
Report writing (£/hour) |
| Medicine (n = 198)
|
218 |
| Paramedicine (n = 51)
|
135 |
| Engineering (n = 51)
|
142 |
| Accountancy & Banking (n = 27)
|
241 |
| Science & Agriculture (n = 30)
|
118 |
| Surveying & Valuation (n = 20) | 188 |
| Architecture & Building (n = 23)
|
150 |
Conclusion
Expert witness work can be a rewarding adjunct, both intellectually and financially, to an existing professional workload. However, anyone considering entering the fray should take care to understand the nature of the role and the expert’s duties and ethical considerations therein.
www.ukrew.org.uk
About the author
Dr Chris Pamplin has been Editor of the UK Register of Expert Witnesses since its start in 1988. Most of his time is now spent on the professional support and education of expert witnesses. He is a regular contributor to meetings and publications that consider aspects of expert evidence in the UK.
Vineet Aneja divides his time between managing his practice as well as steering the overall management of his firm.
“With the nature of corporate practice being sector neutral, my team and I are regularly called upon to address matters relating to corporate law by sector specialist teams.”
Having said that, leading a firm is a full-time job: “The bulk of my time is spent on forging strategic partnerships with global firms, considering business expansion and growth, managing client relationships, laying the roadmap for the firm, staffing needs, being available for my lawyers and clients whenever they need me and at times taking certain hard decisions.”
Regardless of how pressured Vineet may be, he still has taken the time to share interesting insights into the investment scope in India. We ask: should we invest in India? Vineet shares his thoughts with us below.
When working with foreign organisations, what is a common misconception when it comes to working in India?
There is a very strong perception that statutory approvals and processes take a long time in India and that the system inherently slows down the entire process of setting up a business or doing an acquisition. In our experience, the foreign clients are also very apprehensive about the general compliance burden and more specifically labour and employment, as well as corporate compliances that a company is expected to adhere to.
While it is true that foreign organisations do find the regulatory environment in India to be one of the most difficult to navigate, in my view, this is partly because of the certain inherent challenges in the system and partly due to the fact that the foreign companies often tend to compare it to their jurisdictions, where things are largely streamlined.
I won’t deny that India is a complex jurisdiction with overlapping laws due to its federal structure, however, the right kind of legal adviser can help the companies tide over the systemic inefficiencies. The initial process of doing business in India requires patience and once the business is set up, India is a great place to do business.
How are you hoping the M&A sphere will change in 2018 which will shape the country’s future in investment?
The M&A opportunities in 2018 would remain robust riding on the back of a large number of stressed assets with several big ticket projects referred to the NCLT (National Company Law Tribunal) under the Insolvency and Bankruptcy Code, which are likely to see change in promoters. Given that these stressed assets would be on offer at tempting valuations, an uptick in the M&A deal activity is expected. Additionally, this government’s continued thrust on economic, regulatory and fiscal reforms with the abolition of FIPB, liberalisation of FDI in single brand retail, pharma and real estate services, introduction of Insolvency and Bankruptcy Code and GST are likely to catalyse more M&A deals. The government’s efforts to improve the overall business ecosystem will also go a long way in incentivising investments in India.
How do you ensure that legal requirements are met, alongside the commercial needs?
Not meeting legal requirements sufficiently for commercial considerations is never an option. Therefore, we as commercial lawyers have to constantly strive to maintain that delicate balance between legal compliance and commercial prudence. While advising on any transaction, we ensure that the commercial structure falls within the four corners of the applicable legal framework and that the commercial interests of the clients are largely protected through contractual covenants. We offer our clients holistic advice and ensure that we diligently evaluate and foresee issues under various laws and regulations so that clients’ commercial needs are addressed in complete compliance with the applicable laws.
What challenges do you often face when trying to accommodate both legal and commercial demands and how do you overcome this?
The key challenge that we face is when at times clients approach a structure initially from a financial and commercial perspective and later assess its legal validity. In our experience it is always advisable to have the lawyers and financial advisers on board simultaneously so that a legally viable structure could be achieved at the very outset.
In terms of accommodating legal and commercial demands, I would say that in this day and age clients do not need to be told the law because they know it already. They need commercially sound legal advice that fits into their vision for their business. It is imperative for us to understand the nuances and challenges of the client’s business so that the advice offered is so done with the background of the business environment that the client operates in. The role of a legal adviser is no more that of an external adviser, sermonising on law, but that of a business partner who walks with the client, toe to toe, to help it achieve harmony between law and business goals in the best possible manner.
You have been awarded for your corporate advisory expertise; can you share some expertise that you think accounts towards this award?
Well, it is always good to be recognised for one’s professional expertise. If I look back I would say that I have been fortunate to witness the evolution of laws impacting trade, business and investments in India. In fact, my career in law has coincided with major developments in commercial laws that India has seen, be it economic liberalisation in 1991; introduction of Foreign Exchange Management Act in 1999; industrial delicensing; de-regulation of the industrial sector; public sector policy; abolition of MRTP Act; introduction of the new Companies Act in 2013; the passage of Real Estate Regulation Act 2016, and more. Having advised the clients from a period that saw volatility in regulations, barriers in trade, heavy foreign exchange regulation, to now, when the focus is to improve investor sentiment and remove business barriers, I have come a long way and have witnessed the changing needs and demands of the clients. My experience has given me a deep and invaluable insight into the philosophical underpinnings of each business regulation which has helped me in advising my clients in a holistic manner, that has delivered them the desired results; because the ultimate litmus test of a lawyer is the result he can achieve for his clients. An important factor in advising a client is to understand the business of the client and its objectives.
Is there anything else you would like to add?
India is witnessing another surge of change in laws, regulations and policies with the advent of Insolvency and Bankruptcy Code, GST, development of bond market, availability of long-term funding, increase in government spending and launch of large infrastructure projects. The government is committed on hard selling India as a viable investment destination through a slew of trade and economic measures to attract foreign investment. This is an opportune time for companies to develop their outlook on India, but at the same time this is also the time of evolving regulations with newer notifications being issued at frequent intervals, creating an air of confusion and uncertainty; therefore, it is in order for foreign companies to commission experienced legal, financial and tax advisers well in advance, to guide them through the Indian regulatory landscape.
Vineet Aneja
Managing Partner, Clasis Law
Email ID: vineet.aneja@clasislaw.com
M: +91-9810405782 (India)
Vineet Aneja is the Managing Partner and Head of the Corporate Practice at Clasis Law. He is also a Founding Partner of the firm. Clasis Law is a full service Indian law firm with offices in New Delhi and Mumbai that provides advice on matters relating to Indian law and jurisdiction. On account of the confidence built with the clients, clients have also entrusted them with transactions relating to other jurisdictions including UAE, Finland, Nepal, Bangladesh, Pakistan, UK, USA.
Expertise within the firm spans a range of practice areas including corporate and commercial, aviation & aerospace, banking & finance, insurance, retail, hospitality, infrastructure, real estate, intellectual property, employment law, competition, compliance & auditing, shipping & international trade law, TMT, litigation & dispute resolution. The firm acts for a diverse Indian and international client base across a number of sectors.
Over the past two decades, mining has steadily grown in Argentina. With the country facing difficulties during the global economic crisis which impacted the mining industry, they have an increased amount of mining opportunities. We speak with Jorge Vargas Gei, who sheds some light into what the mining industry is like in his jurisdiction.
What are the common legal disputes you deal with in regards to mining? Have these cases increased from when you first started out in the legal sector?
In Argentina, the mining code states that the miner can force the surface owner to sell their land, in order to develop a mining project. However, sometimes it is very difficult to get to an agreement, usually over the price of the land. In recent years, disputes with surface owners have increased. In the past, getting to agreements with surface owners for the purchase of land, where mine sites and mining facilities are built was not as straightforward; there was rarely any specific demands, however, since the mining sector has become well known, surface owners have become more tough.
For example, we are currently dealing with fifteen owners of a property that a client needs for the development of their project in the province of San Juan, and each of them have their own expectations and requests.
What difficulties do you face when trying to settle disputes – how can the regulations develop in order to minimalise this?
We are sometimes faced with the issue that the mining authority of any province, does not want to make a decision that is against local individuals. Politically, it is ‘unfriendly’ that a local authority rules against a local individual in favour of a foreign miner. For example, we recently had to get permission to enter a property in Santa Cruz province, and, even though the mining code is clear in this aspect, the authority does not rule in favour of the miner.
I believe the regulations are clear, and that it is the local provincial authorities that need to interpret and actually apply them.
What is the most challenging aspect of mining law and how do you overcome these challenges?
In my opinion, the most challenging aspect of mining law are the differences that exist among the provincial governments and how to deal with the mining activity. Some provinces allow mining activity and others do not. It is important that the provincial governments understand that the mining sector complies with the highest international mining and environmental standards, and that it is an activity that requires passion and dedication.
With disputes involving ‘who owns minerals’, what is the general overview on how to settle such a dispute?
In Argentina there is a federal structure, whereby the provinces are the owners of the natural resources, such as oil, minerals, water.
We are currently dealing with a dispute of this kind in the province of Chubut, where a company challenged the mining rights of our client. The dispute is going through its fourth year now. Ideally, at our law firm we would try to settle such dispute with an agreement with the counterparty, but sometimes there are political interests behind disputes, which make an agreement almost impossible to reach.
How is mining law addressing environmental protection in Argentina?
Environmental law in Argentina is tough, probably tougher than any other sector. In addition, environmental groups put pressure on provincial governments to strengthen regulations. There is a federal law, which sets the minimum standards, and provincial governments that regulate on top of that. A good example is how in Mendoza, a province that has several potential projects, environmental regulations have eliminated the possibility of any mining activity in such province.
Jorge Vargas Gei
Peru 930, 2nd Floor, Mendoza
M5500FAW
Argentina
+54 261 429 37 37
abogados@vargasgalindez.com.ar
Jorge joined the firm in 2001 and has since then completed a Master in Business Law at the University of Wales (UK) in 2003, an MBA in 2006 and has undertaken a postgraduate study in partnerships and corporate law in 2005.
Since its beginning, Vargas Galíndez Abogados has developed its expertise in several law areas mainly civil, commercial, corporate, mining, labour and administrative, delivering services to national and international corporate clients. The firm counts on the experience, suitability and capacity of our people, who are permanently attending and actively participating in local, as well as national and international courses and seminars, in order to be in the vanguard of the professional practice.
With corporate law being her expertise, Minerva Bellorin shares her thoughts on the importance of transparent transactions in law.
What do you think is the best way to determine the balance between compliance and upholding value, in regard to company tax?
According to my perception, in the last decade we have been changing and transforming our way of thinking about the duties and obligations that we as taxpayers must fulfill as stated by our legislation for the payment of our taxes. The culture and awareness of the duty to comply with the payment of taxes is increasingly positive. We have seen a positive balance between the payment of our taxes versus the utility and reinvestment. It can be seen at a glance in which our taxes have been reinvested. This makes us more aware and satisfied, that there is a return of state services: we see investment in infrastructure, water and sanitation, electricity, telecommunications, hospitals, health services, education and all over the social area.
Are there any particular changes or ventures you are excited to witness in 2018?
Yes, BEPS: Base Erotion and Profit Shifting, against the erosion of the tax base and the transfer of benefits is the current issue. It will be in March this year that companies must submit for the first time their TP studies along with their declaration and annual payment of taxes for the year 2017.
With all agreements at the OCDE level, it will be possible to eventually harmonise tax regulations from a global perspective to solve the needs and concerns of international tax and cross border tax, which will bring positive results, benefiting taxpayers fairly, such as avoiding double taxation, being able to access greater knowledge, exchange of experiences among tax administrations with the consequent achievement of strengthening the actors that implement and execute the application of substantive rules on tax matters; to acquire and strengthen an application of the norm in a standardised, equitable, compatible and fair manner.
What aspects must be considering when re-organising cross border transactions? What challenges arise during this?
Two essential elements must be kept in mind from my perspective:
1. How the world looks at these transactions that involve different jurisdictions, what the gaps are in the local norm, and that in some cases the taxpayers take advantage of that gap to find a way to evade taxes or do not pay what corresponds; and
2. Analyse the fiscal impact and legal implications, economic links in the different jurisdictions where the transaction will have fiscal and financial impact, since it should not be forgotten that there are many mechanisms and tools and even controls ranging from regulations in banking institutions and financial, agreements and treaties between countries on tax issues for information exchange.
The BEPS issue that although they are voluntary agreements, when a reorganisation and cross-border transaction takes place, will involve one or more jurisdictions that have probably adopted these agreements to combat the displacement of benefits and erosion in relation to taxes whose declaration and transparent payment you want to hide or minimize to reduce the burden of the tax or not pay in the corresponding jurisdiction.
I would recommend setting up a transaction that is the least onerous but transparent and defensible fiscally based on the applicable legal system without taking advantage of the gap that may exist in each legal system.
As Thought Leader, can you share key aspects every company must consider when merging or acquiring another company?
The following are important to consider: The BEPS; the fiscal impact in the jurisdictions that it involves; transactions and financial results; transfer prices between related parties; legal implications according to the jurisdictions that are considered transparent and to comply with the agreements, and involving entities considered transparent in fulfilling their obligations among other important aspects.
In addition to the elements that I have already mentioned in the previous answers, transparency in the structuring of the merger should be taken into account, from the fiscal point of view and in relation to the controls of fund management and legal implications. New controls are increasingly emerging for other reasons, such as the prevention and laundering of money (source of funds), etc. Therefore, a merger must be based and structured on solid and transparent bases from every angle.
Minerva Bellorin
Colonial Los Robles, V Etapa #26. Plaza El Sol 2c. al Sur y 1c. al este. Managua, Nicaragua
(505) 22705976 – 22705186
Minerva.bellorin@aczalaw.com; nicaragua@aczalaw.com
Minerva Bellorin specialises in Corporate and Business Law, Tax and labour structures, joint ventures and franchising, real estate, telecommunications (regulatory matters, permits, negotiations with regulatory authorities), intellectual and industrial property. She was Cofounder and Partner of Aczalaw Abogados Centroamericanos.
Domenick Di Cicco is the Global General Counsel at Cunningham Lindsey. Responsible for legal and compliance of the group and its various business units, Domenick has a vast amount of experience and knowledge to help him conquer the corporate world. With 23 years of success leading the creation and execution of corporate strategies that improved performance and market position of large financial services companies as well companies that serve that industry, Domenick speaks to Lawyer Monthly about his journey. He reveals what he has learnt with his unique experience with private equity funded M&A strategies, law department leadership & management, and business acumen including an MBA, an MPA and experience as an adjunct professor of Corporate Finance and Insurance Law & Regulation.
Regarding leadership and strategy roles, what three things have you learnt from your previous roles as General Counsel (GC) at Zurich and AGH?
I would say the following things, that:
Can you share more about creating and executing strategies for cases such as “Bet the Company” (BTC) class action litigation?
Each piece of BTC litigation presents unique challenges. The key is to understand the risk on a deep level, communicate that risk to the business along with several approaches to ending the litigation, and recommending your strategy with clear and concise reasoning. When your defence is good, be prepared to defend it through appeal.
How has your time serving in the New Jersey General Assembly benefitted you in your current role?
Yes, it certainly did benefit me. That experience gave me a chance to meet a wide variety of leaders in many different realms, from the CEOs of major Pharmaceutical companies, to the leaders of trade unions. This helped me develop an understating of multilayers complex issues and their impact on many different constituents.
Have you taken any cases that were particularly challenging and why?
Yes, of course. We once took a very high exposure, elevated risk international arbitration on a path different from the market. We did so because the market defence had too much ‘Groupthink’ going on and that led to very routine and costly strategies. We felt the case needed a different approach. Our foresight and risk taking paid off for us.
What processes or strategies do you stand by to achieve the best for you and your clients?
Seek the counsel of people who are intelligent, creative, and when needed, leaders in their field. Our best strategies were developed with the robust discussion among the teams we formulated. I am a firm believer in the power of robust debate among intelligent people who have a diverse view.
What are common inquiries that your clients wish to be advised on, in relation to commercial law?
I often offer advice concerning joint ventures and how to best construct them with an eye towards the eventual dissolution of the venture. It’s a challenge to have a blunt discussion with joint venture partners on how to end the venture when the beginning of the joint venture is always through rose coloured glasses. I refer to this as the “First year in love” problem.
How has the industry and procedures changed over the last decade? Where do you see it going in the future?
The increase in regulatory oversight around the globe has come in both complexity as well as volume of regulations. I only see it increasing further.
How have your degrees from Rowan University, Pennsylvania State University, University of Pennsylvania and Delaware Law School impacted your expertise? Which would you say was most beneficial in the world of commercial law?
I am a firm believer in education and in continuing your education process. Accordingly, all of my education experience has been beneficial to me. However, if I had to pick one, it was my MBA education at Penn State University. The professors were top notch with many coming from the industry which gave us valuable insight into the real world of business.
Which branch of commercial law do you find the most prevalent in the current environment?
I would say that compliance is the most prevalent. It has become such a broad area that it now encompasses everything from privacy to cyber security.
Are any more complicated than others?
I think that cyber issues are the most complicated, as it is constantly evolving on both the defensive and offensive front.
Is there anything else you would like to add?
I have had the benefit of working with many top-flight leaders who were kind enough to mentor me and help me develop into a global leader. I enjoy the opportunity to do the same to the next crop of leaders.
Domenick Di Cicco
+1 813 830 7100
Domenick joined Cunningham Lindsey in June of 2015 as Global General Counsel & Chief Compliance Officer from AIG, where he served as Senior Vice President, Global Head of Litigation Management.
He had previous General Counsel, leadership and strategy roles for such organizations as Xchanging plc, CNA Insurance, Zurich Financial Services and Alexander Gallo Holdings. In these roles, Domenick created and executed strategies for cases such as “Bet the Company” class action litigation, Climate Change Coverage Litigation, Mass Pharmaceutical matters, Katrina and the World Trade Centre.
Domenick has served on the Board of Directors of the ARC Association and a mid-cap technology company, as Chairman Emeritus of the Claims and Litigation Management Alliance, Board Member of the Claims and Litigation Management Alliance, Adjunct Professor of Insurance Law and Regulation at Temple Law School, Member of the Board of the Business School of NJIT, where he also serves as an Adjunct Professor of Corporate Finance, Member of the Association of Corporate Growth and Member of the American Bar Association Mergers and Acquisitions Committee.
Domenick holds a Juris Doctor Degree from Delaware Law School, a Master of Business Administration Degree from Pennsylvania State University, a Masters of Public Administration (Economic Development) from the University of Pennsylvania, a Certified Corporate Compliance and Ethics Professional and a NACVA designation as a Chartered Merger and Acquisition Professional. Domenick also served as an elected legislator of the New Jersey State Assembly.
For over a hundred years, Cunningham Lindsey have worked on a daily basis with people who find themselves in highly stressful situations. They have learned that, when it comes to customer service, there is no one-size fits all approach.
The firm works with clients to identify risk management approaches appropriate for your business, before a loss occurs. When losses occur, they use their expertise immediately and support clients throughout the life of their claims – communicating regularly and adapting the level and type of expertise as needed.
Cunningham Lindsey tailors their products and services based on clients’ needs. So whether you’re a small corporate, requiring guidance on your risk management systems, or a large insurer with a complex, global loss, they use their experience to find a customised and cost effective solution.
Leaving your current workplace is always a big decision to make, but in the healthcare sector, your change in employer could drastically affect patients’ care. Brandon Schwartz speaks on the different contracts, the importance of them and what to do if they are breached.
You specialise in contract law for the healthcare industry, what are common reasons for a non-compete clause to be included in the contract?
The healthcare industry has become extremely competitive in the delivery of high quality and cost-efficient care to patients, in the recruitment of physicians by clinics and hospitals, and the development of referral sources by physicians, clinics, and hospitals. Once on board and for the first couple of years thereafter, the physician is often paid more money than he or she generates for the clinic or hospital while they are becoming familiar with: the hospital/clinic, with the area, the administration of the hospital/clinic, the referral sources (other physicians), and while they are completing any additional specialised training. Put simply, the clinic or hospital is investing in the physician for long-term growth, both in terms of quality patient care and financially.
Thus, for the hospital or clinic, a non-compete, restrictive covenant, or liquidated damage provision in the employment contract with the physician helps protect the investment that the hospital or clinic is making in the physician, the substantial financial risk they take on the physician, the future treatment of patients, and the future revenue stream.
An often overlooked aspect of a non-compete, restrictive covenant, or liquidated damage provision is also the protection that the contractual provision provides to the community and patients as a whole. If such provisions were unenforceable or not implemented, clinics or hospitals would have a hard time recruiting the best available physicians to their area and would be reluctant to invest the time and money into those physicians, due to fear of the physician simply leaving and starting a competing practice.
Additionally, there often is a limit as to the number of a particular type of physician a community can support. For instance, a community of 100,000 people may only need one cardio thoracic surgeon to provide the requisite cardio thoracic surgeries for that community. If that cardio thoracic surgeon breaches his or her contractual provision, it will make it very difficult for the clinic or hospital to recruit a replacement. The patients then are left only with the choice of following the breaching physician, costing the non-breaching clinic or hospital revenue and potentially interfering with the continuity of care for that patient. The primary focus in the healthcare industry must be on patient care which is furthered by reasonably tailored contractual obligations, on both the physician and the clinic/hospital to make sure all parties are on the same page and working together towards bettering patient care.
What are common reasons to why this may be breached? Is there any leeway for clients once this has occurred?
Common reasons for non-competes, restrictive covenants or liquidated damage provisions being violated by a physician, include financial incentives for both the physician, as well as the competing clinic or hospital, malcontent with the employing clinic or hospital, and/or bad legal advice to the physician.
With regards to the financial incentive, the delivery of high quality healthcare is often lucrative. The physician sees the revenue that they are generating versus the portion that is paid to administration, overhead, other physicians, etc. and decides to set up a competing practice. Due to the relationships established in the community, the physician would rather stay in the community and pay a liquidated damage provision or fight against a breach of contract claim rather than move to a new community and start over. The physician sees the legal battle as a cost of doing business versus starting over.
Competing hospitals or clinics, particularly in smaller communities, are often aware of the revenue being generated by certain physicians and will offer to pay the physician more money, give bigger bonuses, or some other incentive for the physician to leave their present employment and commence employment with the competing hospital or clinic. In certain instances, the competing hospital or clinic may also agree to fund the defence of any lawsuit or pay the liquidated damages for that physician, because the financial benefit in hiring the physician is that substantial.
Physicians and administration from time-to-time do not see eye-to-eye on certain issues within the practice of medicine. This can cause tension and may give rise to the physician leaving, even if it means violating a non-compete, restrictive covenant or liquidated damage provision.
There also, unfortunately, are simply instances of a physician receiving bad legal advice regarding the enforceability of such a provision. Not every attorney is familiar with the intricacies of this highly fact dependent area of law and may not provide the sagest advice.
With regards to whether there is any leeway if a physician breaches one of these provisions, I would say there certainly is. Any attorney who guarantees that a certain outcome will occur 100% of the time is not being straight. The enforcement of non-competes, restrictive covenants and liquidated damage provisions are highly fact dependent upon the particular situation, thus to state that there is never any leeway would be inaccurate. For instance, perhaps there is only one oncologist within a 100 square mile radius. And the contractual provision prohibits the physician from practicing within 30 miles of his or her clinic for a period of 10 years. There would be a strong argument that 10 years is too long and not reasonably necessary to protect the clinic or hospital. There would also be a public policy argument that the community needs the oncologist to ensure continuity of care for those patients with cancer and that having to drive 100 miles for treatment would be a hardship. Thus, the well-informed practitioner will review these types of facts in any situation involving the enforcement of a non-compete, restrictive covenant or liquidated damage provision.
Do you think anything needs to be changed in regard to liquidated damages in the healthcare industry?
In the healthcare industry, I personally prefer the use of a liquidated damage provision, versus a restrictive covenant or non-compete. With a liquidated damage provision, the physician can still practice medicine within the defined area or during the defined time, but pays a defined amount to their prior employer (six months’ salary or some set amount). This allows the physician to keep practicing and treating patients, while at the same time protecting the substantial investment the clinic or hospital made in recruiting and training the physician by receiving reimbursement. Further, it often limits costly and time-consuming litigation as the liquidated damage amount is already defined.
What are common facts in this field which you find your clients are often unaware about?
Generally speaking, in most industries, non-competes, restrictive covenants or liquidated damage provisions are looked at with disfavor by courts as limiting an employee’s options, competition, and the free market. Physicians often believe the same is true in healthcare. But courts regularly enforce these provisions in the healthcare industry for a number of reasons:
1) Physicians are highly educated, knowledgeable individuals with substantial bargaining power and less likely to get taken advantage of by an employer during the negotiation of one of these provisions.
2) The protection to the community the provisions provide in recruitment of new or replacement physicians is substantial. As discussed, clinics and hospitals invest substantial funds in recruiting to the area and training the physicians after hiring. Clinics and hospitals may not invest such funds if they knew after taking the time and funds to introduce the physician to the community, referral sources, administration, etc., the physician simply set up a competing clinic without reimbursement from the physician or a contractual provision to prevent such competition.
3) The provisions are usually better drafted and more tailored to the specific situation involving the physician, whereas oftentimes in other industries, the same restrictive covenant was used for a high level manager and a low level employee. Utilising a form contractual provision irrespective of the level of employee provides a good argument that the provision is not reasonably necessary to protect the legitimate business interests of the employee. These circumstances are often not at the front of a physician’s mind as they are rightfully focused on patient care concerns.
Brandon M. Schwartz, Esq.
Schwartz Law Firm
600 Inwood Avenue N.
Suite 130
Oakdale, MN 55128
651.528.6800
Brandon Schwartz is a trial attorney at Schwartz Law Firm working with his father, law partner and mentor, Michael Schwartz. Brandon has been at Schwartz Law Firm for 10-years following his Division 1 college hockey and pro hockey career. Brandon loves being a litigator and helping people and businesses through very difficult times and very complex issues. He is extremely competitive and the pressure of being a trial attorney, with substantial money or life changing outcomes on the line in each case, fuels his competitive nature.
Schwartz Law Firm represents entrepreneurs and businesses throughout Minnesota, Wisconsin and Iowa in matters of business law and commercial litigation.
The Bermondsey Square Hotel is located in the heart of ever evolving Bermondsey, with its thriving restaurant, bar and club scene, art galleries, design studios and boutique shops.
Quaintly designed, the lounge area is an inviting space offering all day dining for guests and passing visitors; the perfect spot for you to reunite with an old friend or catch up on business after a busy day.
Getting your fuel for the day in the morning is important, and the Bermondsey Hotel put on a good spread, from a vegetarian fry up to fluffy pancakes. With a fantastic modern British inspired all day menu, a pantry area offering home-made cakes, pastries and hot & cold soft beverages to pick up at your leisure, you will be welcomed like an old friend to the lounge every time you visit.
Surrounding the hotel, you will see boutique shops showcasing the unique flair London never fails to offer. Bermondsey itself is a short distance from the city, the Design Museum, Borough Market, The Shard, Tate Modern and Tower Bridge; the hotel is ideally located for easy access to some of London’s finest sights whilst staying in an engaging neighbourhood.
Depending on the reason for your stay, the Bermondsey Square Hotel has a room for you. For those on a short, or long business break, the rooms are stylish and simplistic and offer a space for you to sit and work, as well as a balcony to admire the city views and evening hustle and bustle.
Their new state of the art meeting room can accommodate up to 20 people in a fixed boardroom layout, for those all important business conferences. Abbey has natural daylight, access to a shared outside terrace and all the newest technology to have a productive and successful meeting.
More features include:
-55inch LED screen
-Ceiling mounted projector and a drop down screen
-Click share technology
-Complimentary super-fast 100mb fibre-optic Wi-Fi and hardwire access
-Additional AV technology can be supplied
On a romantic trip? Stay in their Lucy in the Sky room. On the private outdoor terrace, you can gawp over the stunning city skyline, whilst enjoying a glass of champagne when relaxing in their Jacuzzi. Lucy is perfect for any special occasion or those looking to stay and live it up in London from the comfort of their own apart-style suite.
Travelling with your beloved family and don’t want to leave your furry child at home? Bermondsey also have pet friendly rooms and will advise you the best places to take your dog for a lively walk in central London, after welcoming your four legged travel companion a top up on treats.
Really staying true to what London is all about, you will be sure to meet people across the globe and from all walks of life at the Bermondsey Hotel; from families wanting to experience the city, to business people needing to get to their meeting on time, this boutique hotel is a wonderful place to rest your head at night.
Visit: www.bermondseysquarehotel.co.uk for more information.
