Understand Your Rights. Solve Your Legal Problems
Thomas J. Johnston concentrates his practice on the trial of personal injury, including catastrophic personal injury and wrongful death matters. He speaks with Lawyer Monthly about how vital civil jury trials are to his line of work.
What are the main challenges you face when representing clients that are against big corporations?
The civil jury trial is the great equalizer of power in the world. The jury trial places a private citizen on level playing field with the largest and most powerful corporations, or even the government. Once the trial starts, a jury of citizens hears two stories and decides, based on their collective judgement, what is just. And, they get it right almost every time. This is why the people at our Firm do what we do - we believe deeply in this system and are proud of what we do.
How do you use your expertise to overcome such challenges?
I really believe that lawyers and law firms who do what we do need to embrace this equal playing field and trust the juries with their cases. I think many times that lawyers and clients settle cases because they are under the influence of fear. Instead of making decisions based on fear of something bad happening, we look at courtrooms as a place where good things are about to happen, and this helps us get justice for our clients.
What changes do you advocate for in the insurance industry, for the betterment of your clients?
Along these lines, I think too many cases are being settled rather than tried, and generally speaking, the settlement process favours the insurance companies. If a lot of lawyers settle their cases for a certain amount of money, this creates a false value for cases. Now, we do not represent man kind and if our client gets a good settlement offer we will settle a case, but I am finding more and more that the jury trial is the best place to get justice, especially full justice.
How has technological advancements affected the field of personal injury law? What further changes are you expecting in the future, that will impact personal injury, and perhaps the healthcare sector?
Technology is important in that animations and graphics allow a jury to see better what probably happened in a wreck or a surgery or something similar along these lines. However, I think jurors make decisions based on how a lawyer and client has made him/her feel and there is no technological substitute for an honest lawyer who is showing a well discovered story to the jury.
Is there anything else you would like to add?
I think that is very important for all of us to realize the great things that jury verdicts have given society. We have seatbelts in all of our cars because of jury verdicts, airplanes are safer because of jury verdicts, insurance companies pay claims more reasonably because of jury verdicts. Sometimes, corporations need a jury verdict to help them do the right thing because their primary duty is to their shareholders and not to the public. Bottom line: if we ever lose the right to trial by jury, the corporations and the government will run the bases at the expense of the public.
THOMAS J. JOHNSTON, ESQ.
Partner
350 S. Grand Avenue
Suite 2220
Los Angeles, CA 90071
(213) 542-1978
Partner at Johnston & Hutchinson LLP, Thomas Johnston is a proud member of the American Board of Trial Advocates, an invitation only group of trial lawyers from both sides that practice civility and work to preserve the Constitutional right to a civil jury trial. He is also a graduate and staff instructor of the Trial Lawyers College in Dubois, Wyoming.
Johnston & Hutchinson LLP is a trial firm in downtown Los Angeles specializing in the trial of personal injury and wrongful death cases. Johnston & Hutchinson’s recent successes include a $23,000,000 jury verdict against the City of Los Angeles for a dangerous roadway, a $5,000,000 jury verdict arising out of a dangerous parking structure and State Roadway, and $9,500,000 settlement against a bus company after it struck a pedestrian.
Total entered into an agreement with the controlling shareholders of Direct Energie for the proposed acquisition of 74.33% of its share capital, at a price of €42 per share, ex-dividend of €0.35 per share, representing an aggregate acquisition price of approximately €1.4 billion. Once this acquisition has been completed, Total will file with the French Financial Market Authority (Autorité des marchés financiers) a mandatory tender offer on the securities of Direct Energie which are traded on Euronext Paris at the same price per share of €42, which represents a 30% premium above Direct Energie’s closing share price on April 17, 2018 and a 24% premium above the volume weighted average share price over the past three months and 13% above the volume weighted average share price over the past six months. The offer thereby values Direct Energie at approximately 12.5 times its 2018 projected EBITDA.
In the field of natural gas and electricity distribution to both consumers and professionals, Total is firmly establishing itself as a leading alternative supplier by combining its 1.5 million client portfolio with Direct Energie’s 2.6 million client portfolio. This combination will enable Total to pursue its ambitious development program to become a standard-setting player in electricity supply in France and Belgium, targeting over 6 million customers in France and more than 1 million customers in Belgium by 2022.
With this transaction, Total is also pursuing and expanding its development in the power generation market, with Direct Energie’s power generation activities offering an excellent complementarity with those of the Total group’s subsidiaries operating in these fields. Direct Energie’s installed capacity of 1.35 GW, including 800 MW of gas-fired power plant and 550 MW of renewable electricity, will supplement Total’s 900 MW installed capacity. Given Direct Energie’s project portfolio in this area (a 400 MW gas-fired power plant under construction and a 2 GW pipeline of renewable electricity projects in France), Total Eren in emerging countries and Sunpower in the United States, Total aims to have a global capacity of at least 10 GW of installed capacity within five years, either in the form of gas-fired power plants or in the form of renewable electricity capacities.
The transaction will be financed through Total’s available cash.
Interview with team at Ravetta Avocats
What plans did you set out prior beginning your work on this deal?
Our client and the other shareholders of Direct Energie had an ambitious schedule for the signing of the transaction. Our firm was solicited in a very short timing and we had to concentrate on the essentials of the deal, and not waste time on details. Since EBM Trirhena AG was selling a minority share, we had to check that the SPA terms were protective enough of its individual interests, keeping in mind the global economic balance, since other majority shareholders were involved simultaneously.
Along the way, what did not go to the plan you had set out? How did you work around this?
The situation of our client was singular considering it has sold part of its minority share a few months ago and was bound by a placement agreement. In the course of the negotiation, we have had to analyse the legal commitment of our client vis-à-vis its financial contractor and perform the necessary diligences in record time, so as to proceed safely to the transaction.
How does this transaction shape the future of the energy industry?
The merger of Total and Direct Energie is an illustration of the concentration trends active in the French energy market. Total will embody a serious competitor to the biggest historic players which are ENGIE and EDF. After the acquisition of Lampiris (renamed Total Spring), this transaction is another sign of Total’s strong will to grow rapidly and reach its ambitious goals to get 6 million clients in gas and electricity in France within 5 years. For Direct Energy, the support of a solid player like Total will certainly give the means to develop innovative services. We can only hope this transaction will stimulate even more the competition in the segment of residential clients, which have been slow to switch to market offers.
With many years of experience, Laura Hall is not only a legal representative for her clients, but is also a business adviser on many transactions, from the letter of intent stage through and including a lease termination. She speaks more about her practice and role as a lawyer.
What is your typical working day?
Our leasing practice is primarily geared toward representation on the landlord side, including developers, insurance companies, pension funds, REITs, private investment companies, real estate development firms, as well as corporate clients engaging in every type of office, retail, and industrial lease transaction. We also represent sublandlords and subtenants, and assignors and assignees. While our practice has historically been on the owner side, we have significantly expanded our leasing practice to provide legal services to corporate and entrepreneurial tenants, particularly end-user corporate tenants.
On the end-user side, we represent an international multi-media corporation with interests in a variety of industries, an international hospitality corporation, one of North America’s largest bedding manufacturers, and a multi-community hospital system in the State of Georgia. My specific practice is primarily on the owner side, and my time is spent preparing and negotiating all types and sizes of leases, from ground leases to smaller suites to headquarter type full-building leases. My time is also spent on advising clients in numerous asset management issues from tenant disputes, property management issues to telecom licensing agreements. We pride ourselves on being a full-service firm offering business advice where warranted and being a good business partner to our clients.
What did you take from your experience at King & Spalding LLP that has informed your work today?
I learned a great deal at King & Spalding, primarily from my partner, Raymond Sheley, who hired me and then helped mold me into the attorney that I am today. Having come from an in-house corporate position to a position with an international law firm, it was quite an adjustment, but I learned a lot about client service and how to be efficient with my time and resources in order to better serve the client. There are certainly a lot of brilliant attorneys in the world, but it takes more than brain-power to be able to perform the legal work well while making the right kind of long-lasting connection with your client. I’ve learned from being an in-house attorney to working with very large and very small firms that clients want great legal work but they also want the human, personable side of their attorney. Clients want someone who can take a complicated and often times controversial legal problem and help solve it in a manner acceptable to both sides without resorting to the “scorched earth” approach. When my job is over, my client has to live with the tenant while I go on to the next matter, so making sure that the relationship starts off on the right foot is critical to my job as key business adviser to our clients. When the other parties to a transaction compliment my client and me on how well and professional the transaction was handled, it means I’ve done my job.
Tell us about the transactional side of your practice?
While my practice has evolved almost exclusively into a leasing practice, our firm is a full service commercial real estate firm offering expertise in the development, acquisition, sale, and financing of office, industrial, hotel, multifamily and mixed-used projects. We are often hired to be the “quarterback” firm on very large, complicated transactions navigating complex real estate issues and managing multiple law firms with disciplines in areas such as bond financing, environmental and tax matters. We are oftentimes asked to assist in putting together large “public-private” partnerships or developments whereby we bring together multiple stakeholders including local government, development authorities, equity participants and debt sources; these may include so called “PILOT” payment transactions.
What is the biggest challenge you face when advising/ representing developers with assets consisting of over 20 million square feet?
It is a great time to be a developer or seller of quality real estate. With that said, while real estate is “scalable”, every asset is different and assembling large portfolios of assets require great discipline and organisations and an attention to details across the board from acquisition associates, their counsel and asset managers. With every acquisition and lease we handle, we always have a view towards what the exit strategy is.
What would be your top advice to clients in regard to commercial property and leasing?
Our best advice to any client would be to be disciplined and principled but flexible and fair in your approach to everything. Given that leases drive the value of the asset, it is important to pick your battles as they say but be smart and reasonable in your negotiations. Not every point has to be won, so focus on the most important ones and allow your counsel to work on the less important and more legal issues. And develop strong lasting relationships with all of your constituents and advisors including your legal counsel. You should have high expectations from them but lean on them to help you navigate complex deals and complex times.
What do you anticipate in 2018 for yourself and Sheley, Hall & Williams?
If only I had a crystal ball! Our first priority is to continue to grow with our existing clients and hopefully add more clients during the course of 2018. We are always looking for new opportunities with existing and, of course, new clients that fit well within our areas of expertise.
Is there anything that you would like to add?
I love what I do. If I don’t laugh at least once a day at work, then it’s not been a good day. I thoroughly enjoy the people I work with and am very proud of what we have accomplished. We have very smart, talented attorneys and paralegals working for us, and it is our ultimate goal to continue to grow our practice, not only in size but also in client base. Whether that’s three more attorneys or 15 more attorneys, who knows. But from where we started to where we are today is really fantastic.
Laura C. Hall
Partner
Sheley, Hall &Williams, P.C.
(404) 880-1359
Laura Hall is Partner and one of the Co-Founders of Sheley, Hall & Williams, P.C., a boutique commercial real estate firm in Atlanta, Georgia. She leads the commercial leasing team.
Laura Hall’s practice is primarily focused on commercial leasing of office, retail and industrial properties and related asset management matters and the development, financing, acquisition and disposition of office, retail and industrial properties. She represents many national and international developers and institutional portfolio owners with assets consisting of over 20 million square feet in locations throughout the United States. She also represents national end-user tenant clients in the leasing of large industrial warehouse and industrial buildings.
Sheley, Hall & Williams, P.C., firm specialises in all things commercial real estate from leasing, development, acquisitions, dispositions, joint ventures, to real estate finance. The firm was formed in 2003 by Partner, Raymond Sheley, and Laura, and represents institutional portfolio owners, private equity real estate funds, development companies, corporate owners and real estate investors, including opportunistic buyers, throughout the United States.
MIMETAS, leader in organ-on-a-chip products and tissue models, has secured 20.5 million USD in financing from an international syndicate from Asia and Europe. Mimetas will use the proceeds of this Series B financing round to expand its global commercial footprint with the OrganoPlate® organ-on-a-chip platform. In addition, the company will broaden its product portfolio, establish tissue production facilities, develop novel OrganoPlate® products and expand into clinical market segments, including personalised medicine. The company has operations in the Netherlands, USA and Japan.
Investors are European Life Sciences Growth Fund (ELSGF, Singapore), Aglaia Oncology Fund II (the Netherlands), Korys (Belgium), Cathay Venture (Taiwan), InnovationQuarter and Oost NL (the Netherlands).
Ginger Hsiao, fund manager of ELSGF, acting as spokeswoman for the syndicate: “From the start, we were impressed by MIMETAS’s technology and highly talented team. We consider the company as today’s leader in the organ-on-a-chip space with tremendous growth potential in the coming years. Its customer base already includes leading multinationals from Europe, US and Asia and the adoption of the platform ranges from academic users to high-throughput screening facilities for pharmaceuticals. We are looking forward to supporting the MIMETAS team with their commercial expansion and addressing new markets.”
“This strong investor base ticks all the boxes for MIMETAS in this phase of corporate development.”, according to founders Jos Joore and Paul Vulto, “Korys has solid expertise in product commercialization at the interface of hardware and biology, while Aglaia brings a wealth of clinical and oncology expertise to the company. ELSGF and Cathay will support the company in expanding in the Asian market. This is complemented with local support from Oost NL and InnovationQuarter.”
Meriam Al-Rashid is a member of Dentons' Litigation and Dispute Resolution practice group, and head the US investment arbitration group, where she focuses on international investment and commercial arbitration and risk management, covering various industries across the globe, including infrastructure, oil and gas, mineral resources, hospitality and real estate. She speaks on matters regarding human rights, cryptocurrencies, all the way to infrastructure and arbitration.
What unique challenges are presented when you have worked matters regarding post conflict peace negotiations?
Where a state or part of a state is emerging from a conflict situation, there are of course a huge range of competing concerns and interests that have to be balanced. It is critical that legal advisers involved in any capacity are cognisant of the political backdrop, the particular concerns of the respective groups involved, and of the overarching goal of securing sustainable peace.
Litigation or arbitration can form an important part of achieving this goal – for instance, in the division of state property where that is disputed, resolving boundary disputes, ensuring the protection of cultural heritage, and holding those who may have committed wrongs during the conflict to account. However, dispute settlement mechanisms alone are unlikely to solve post-conflict issues, and lawyers advising negotiating parties should bear this in mind when taking strategic decisions. Is pursuing a particular right or issue too aggressively likely to de-rail another part of the settlement? Or are there sensitivities on the part of certain negotiating groups that should inform how particular matters are addressed?
Lawyers may also be called upon to recommend or agree upon independent experts or mediators to help the parties work through certain issues. The post-conflict dynamics mean the selection of such persons requires even more careful consideration than in a commercial context – their personality, style and ability to engage the parties can be instrumental in whether negotiations succeed or fail.
How important do you think pro bono work is in situations involving having to provide legal assistance to those involved in peace negotiations?
There are many ways in which lawyers can assist those involved in peace negotiations on a pro bono basis, and we see this as something incredibly important we can offer. By definition, following a conflict there is a real urgency to negotiations, and the timetable is tight. We want the negotiating parties - and their immediate legal advisers, where there are (for instance) government lawyers involved - to be able to focus their efforts on the key decisions and resolutions to be made. Having pro bono lawyers on hand to advise on issues that arise in the course of those – who can then progress those issues while the key players continue the negotiations in parallel – creates great efficiency. For instance, pro bono lawyers can carry out legal research in international law questions, use our fact-finding skills to investigate particular matters on the ground and gather necessary evidence to inform a party's negotiating position, review documents towards the same goal, and manage active litigation. In so doing, we can bring to bear our experience of advising in the context of other post-conflict situations, which the parties themselves and their local or in-house advisers may not have.
Moreover, the pro bono support of a full-service firm like ours means that whatever area legal questions arise in, negotiators will have immediate access to a network of specialist lawyers with the necessary expertise.
On the other hand, in what ways are cases involving human right violations similar to litigation involving infrastructure and real estate?
There are certain features that all contentious cases share, whether they relate to human rights, property, or other legal areas. Advising clients on the conduct of litigation always requires: the investigation of the facts; the assessment of the merits of a case at an early stage; devising and implementing a clear strategy for the dispute, whilst always bearing in mind the overall goal of obtaining the particular relief the client wants (be it through a final determination or settlement).
There may be considerable substantive overlap between the areas of human rights and infrastructure/real estate, since the right to property has gained increasing recognition on national and international stages as something that is to be protected. For instance, Article 1 of Protocol 1 to the European Convention on Human Rights protects the right to peaceful enjoyment of property. Violations of this article have been found in cases brought before the European Court of Human Rights ("ECtHR") as well as national courts; for instance, in Pye v UK, the ECtHR found that the English law on adverse possession, by which two companies had lost valuable land to a squatter, breached the Convention because the companies had been deprived of their land without warning and without compensation.
There may be intrinsic similarities between clients' concerns in litigation regarding human rights violations and those involving infrastructure and real estate, since (depending on the context) both have the potential to involve matters of deep attachment and significance for clients. In many cases, real estate (whether commercial or residential) holds a special place in the mind and focus of our clients, as human rights violations clearly also would. As such, managing clients' expectations and considering the best way to achieve the result they want requires particular skill and sensitivity.
With a sheer amount of experience in arbitration, how have you seen the International Centre for Dispute Resolution and other jurisdictions’ centres for ADR develop over the past few years? How has this affected lawsuits that involve infrastructure and real estate?
It is undoubtedly the case that alternative dispute resolution mechanisms are increasing in popularity and becoming a more commonly used method of resolving disputes between parties. This is due in part to the increased globalisation of the economy, but furthermore, the role of these centres (such as the International Centre for Dispute Resolution) having the regimes that commercial parties often look for – particularly in infrastructure and real estate.
The MENA region is a prime example of how these centres play an increasingly important role in determining the physical and legal landscape. With Expo 2020 taking place in Dubai, and Saudi Arabia's Vision 2030 which plans to put in place regional development plans across the country and in a variety of sectors, there is a real push to build and construct. These are just two examples across the GCC region, which expects to triple its population in 50 years. Whilst this drives to move the region into pushing for increasingly better infrastructure, smart government and development of real estate, the rate of growth and expansion inevitably means that disputes will arise. Such projects are often extremely complicated, take a number of years to complete and will generally have great numbers of sub-contractors (from across the world) involved. When disputes arise, the role of ADR centres becomes paramount in assisting parties to arriving at a resolution that allows plans to continue (where they may have halted), or to put parties in the position they ought to have been in where contractual obligations have not always been properly executed.
How do you see cryptocurrency affecting the investment scope in the following year?
Whilst cryptocurrencies certainly add uncertainty and excitement to the investment landscape via the threat of disruption, a significantly higher level of maturity is required in both the underlying technologies and adoption before they can meaningfully affect the investment scope. The most likely avenue through which the investment scope will be affected is likely to be as a replacement of fiat currencies.
However, the secondary effects will be felt in the legal sphere as regulation of investments via new mechanisms will become increasingly difficult, given the decentralised and encrypted nature of cryptocurrencies. Given the status quo will remain a continuing and viable option (that is, investment through traditional financing), it would be reasonable to assume that eventually cryptocurrencies will increase the demand for investments. It is likely that this eventuality will take a long time to come to fruition, so whilst preparation is always key and understanding how cryptocurrencies work is important, it is highly probable that in reality there will be little impact in the following year. What could indeed have an impact on the investment scope in the coming year, particularly when viewing this through a legal lens, is the translation of the blockchain technology underpinning cryptocurrencies, its application in contracts, legal documents, ledgers etc., as this is what technology firms are likely looking to attack first.
Meriam Al-Rashid
Partner
My experience includes participation in arbitrations before the International Centre for Dispute Resolution (ICDR), London Court of International Arbitration (LCIA), United Nations Commission on International Trade Law (UNCITRAL), International Chamber of Commerce (ICC), and the International Centre for the Settlement of Investment Disputes (ICSID) and the Permanent Court of Arbitration (PCA) at The Hague.
I also work on matters surrounding post conflict peace negotiations and governance, and war crimes, including but not limited to matters involving: Iraqi civil society organisations to train and build their capacity to document human rights violations; the Government of Kenya and civil society organisations to support their efforts with domestic accountability for election-related violence and politically motivated human rights abuses; legal and policy planning assistance to the High Negotiations Commission in Syria, assisting pro bono organisations to provide legal and policy assistance to Syrian civil society activists to assist them with their advocacy efforts on key issues in peace building and negotiation processes.
I am an adjunct professor of law at Fordham University in international investment law. I have taught as adjunct faculty for graduate-level courses in international law and international organisations at the George Washington University. I often speak at conferences and writes articles on issues related to international investment arbitration and international law.
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By Ramni Taneja, Advocate, Supreme Court of India, New Delhi, India
India is a country with an advanced and sophisticated legal and judicial system. Important legal issues arising under private international law, including the recognition and enforcement of foreign judgments and foreign awards have been judicially considered by the Supreme Court of India, which is India’s highest court of appeal, and which is also considered as one of the finest constitutional courts in the world.
The concept of recognition of foreign judgments is found in Section 13 of the Code of Civil Procedure, 1908. This Section is quoted hereafter:
“13. When foreign judgment not conclusive – A foreign judgment shall not be conclusive as to any matter thereby directly adjudicated upon between the same parties or between parties under whom they or any of them claim litigating under the same title except –
(a) where it has not been pronounced by a Court of competent jurisdiction;
(b) where it has not been given on the merits of the case;
(c) where it appears on the face of the proceedings to be founded on an incorrect view of the international law or a refusal to recognise the law of India in cases in which such law is applicable;
(d) where the proceedings in which the judgment is obtained are opposed to natural justice;
(e) where it has been obtained by fraud;
(f) where it sustains a claim founded on breach of any law in force in India.”
Section 44A of the Code of Civil Procedure, 1908 sets out provisions concerning the execution of decrees passed by Courts in a reciprocating territory.
A foreign judgment which is conclusive under Section 13 of the Code of Civil Procedure, 1908, can be enforced in India:
A suit on a foreign judgment must be filed within a period of three years from the date of the judgment.[1]
The Supreme Court of India has pronounced many significant judgments in the field of private international law including the present subject, i.e. recognition and enforcement of foreign judgments. While it is beyond the scope of this article to summarise each of these judgments, some of the important principles that have been enunciated by the Supreme Court of India are briefly considered hereafter.
The most recent judgment of this Court is Alcon Electronics Private Limited vs Celem SA and another 2017 2 SCC 253, in which the Supreme Court of India has ruled that the Order of the English Court [which was being enforced in India] is a judgment on the merits of the case. In the words of the Supreme Court of India: “The principles of comity of nation demand us to respect the order of English Court. Even in regard to an interlocutory order, Indian Courts have to give due weight to such order unless if falls under any of the exceptions under Section 13 CPC.” The Supreme Court has ruled that the Judgment of the English Court is a conclusive one. It has also ruled that the Order passed by the English Court is executable in India under Section 44A Code of Civil Procedure, and that England is a reciprocating territory within the meaning of Section 44A mentioned above. In this decision, the Supreme Court of India has, relied on the ratio of the judgment of this Court in International Woollen Mills vs Standard Wool (UK) Ltd. 2001 5 SCC 265.
In 1996, India enacted the Arbitration and Conciliation Act, 1996. This law is based on what is popularly known as the UNCITRAL model[2]. With foreign direct investment flowing into India, international commercial arbitration with an India-centric focus has gained momentum. In this context, the question of the enforcement of foreign awards has formed the subject of comprehensive judgments by the Supreme Court of India. The Indian Legislature in its wisdom has statutorily incorporated international covenants into domestic law. These are contained in Part II of the Arbitration and Conciliation Act, 1996 and include Chapter I being the New York Convention Awards and Chapter II being the Geneva Convention Awards.
As India is poised as a major leader in the global commercial world, the wealth of jurisprudence contributed by the Supreme Court of India in the field of private international law is both valuable and timely. It is hoped that this rich jurisprudence continues to blossom and bloom in the years to come.
Pull from previous articles (Nov 2017)
[1]Article 101 of the Limitation Act, 1963
[2] The United Nations Commission on International Trade Law (UNCITRAL) adopted in 1985 the Model Law on International Commercial Arbitration
The patent work and adviser work has changed in the last five years. Cases are more complex, with less time to resolve them.
Nils Schmid, Partner at Boehmert & Boehmert says: “I think that being a partner at a law firm is no longer a one-man show. It is very important that the team under you is chosen well; the partner must consider if the attorneys working under them are good at what they do and consider the recruitment of those involved at the law firm. It is time to end the one-man shows and think about how to construct a good strong team.”
He speaks more below about important considerations behind developing global design patent strategies how the UPC will change the IP sector.
You develop both German and global patent strategies; what further considerations must you make for the global strategy?
The most important issue, for all my clients, is the conflict of interest regarding costs on the one side, and on the other, multinational protection for companies based in several jurisdictions. Ideally you want worldwide protection, but this comes with enormous costs for each invention.
Usually the clients, or people working in the patent field, think that the most important question is: 'where is the market and where can I sell my products?', which is a costly strategy to take on. There are other issues to address first, the first question to ask is: 'How long is the product on the market?'; some products are on the market for more than 10 - 15 years, and this is already a good parameter to judge to which countries you should apply for protection. For example, In Germany there are utility models which are much cheaper and have the same protection scope which last up to ten years. For short term products, this is a good strategy to avoid costs, therefore it is worth checking if this would better apply for the client beforehand.
The second most important part is telling my clients what a patent actually is. Patents are not just to do with ‘rights’ but can prohibit your competitor to ‘do’ something; so actually, I am not interested in getting protection for something which my client may use in some countries, but rather, to check where their competitors are sitting. This is very important for developing a global strategy. You find the competitor’s headquarters: find out the production sites and check the headquarters of distribution, because if you want to use patents for either as a defence or offence, you have to attack your competitors on the actions that they are doing, not what you think they may do. This is very important when fixing your global patent strategy.
Last but not least, is taking into account to how reliable the jurisdiction's legal system is. You should ask: 'do I really need to get protection in countries where I know I can find it difficult to enforce my patent rights?’. For example, the UK and Germany are traditionally very reliable; so even if there is no market or competitor in those countries, it is worth to consider them as part of the global strategy. The same, of course, goes for the US, which is a reliable system outside of the EU, as well as China, which is getting more interesting and is becoming more a reliable system for companies to develop innovation.
What do you think is the most difficult aspect of building up design patent portfolios?
Regarding my larger and midsized clients nationally, either in France, Germany or UK, I think it is very important to guide and teach the clients awareness about the strength of a design patent. Usually if you are considering technical innovation you should always have in mind patent protection, but this can take years, especially regarding prosecution. However, design patents can be very useful and a strong weapon to avoid copies. This is not in the awareness of even large companies.
The second aspect is being aware of the fact that your design patent – if, for example, is fixed by a drawing -, has its limits towards protection. How can you make the patent protection abstract, global and broad? This is something that is very important for the patent attorney; they need to establish patent design portfolio to use the tools of their design to get, not only the global protection, but rather finer details of the design protected.
The further difficulties involve the international filing system. There is of course the unified system, but there are other countries which might be important for the client’s global design patent portfolio. The legal systems are very different, and it is very important for a design patent lawyer knows these systems, in order to make a design patent application which works for all of those national systems.
From your experience, what do you think is the most common issue your clients deal with? What can be done for them to avoid such an issue?
For my larger clients, I think an issue is a lack of education regarding strategical patent positions. What does the client need to know in order to take the correct decision? The attorney needs to have a very good overview of what the patent portfolio is, its weaknesses and its strengths; on the other hand, they must know their clients and get to know their deciding person(s), as they know the economical background. It is very important that my knowledge is transferred, in a very effective way, to the deciding person(s). This person is not always the inventor so it is vital they too know the portfolio. Further to this the patent portfolio of the competitor(s) must be known by the CEOs. This is a big issue for patent attorneys, they must create a clear and effective line of communication, which allows the deciding person(s) to make the best decisions. It is hard work ensuring everyone is on the same page, but it is something I believe is very important for larger clients
For smaller clients, a common problem is that their deciding person(s) is not aware of the level of innovation in the company. They will not always be fully aware of the vast amount of innovative growth, thus not making the most sound decisions.
As thought leader in your field, can you share changes you are hoping to witness in your sector in 2018?
What is very important for those in the EU is the UPC. This is something that is very in the focus, because the future of IP depends on how it develops. It seems that it is not an accelerated project, for the time being, but it could be quickly implemented. The task is for all IP advisers to prepare everybody.
I am an honourable president of the union IP, which is an association of European patent attorney, and I am now in a position where I am invited by the UPC parliament. I gain insights into how the UPC are progressing and the advantages they could have.
Aside from the development of the UPC, the other issue is Brexit. I wonder how the UPC will involve a multinational entity post Brexit; I do not think I have one client that is not linked to the UK. I think that the UPC will have a positive impact and I hope that Brexit does not prohibit the UK from being a part of the impact.
I would also say how the EPO are tackling issues regarding efficiency discussions and are slowly raising the bar; I do hope the quality gets better in order for the betterment of the future.
You lecture at the University of Strasbourg for those preparing to qualify as a European Patent Attorney: what are three things you think are vital in order to be the best patent attorney in this given climate?
The European Qualification Examination (EQE) is quite close to the reality of practising law. The cases you handle there, are daily life cases and this is something I think is great.
Honestly, a young patent attorney should constantly question their skill. Because all of the candidates either have a PhD, or a master degree and they have a very good academic background. The years undertaken to be admitted for the exam are not sufficient enough to give you all the skills and even though the exam is relatively close to what they should expect post qualifying, I think it is very good the candidate remains humble regarding the profession, in order to check themselves to ensure they are really right. If they have this attitude, you are ready to become a patent attorney.
Nils T. F. Schmid
German Patent Attorney
European Patent and Trade Mark Attorney
Pettenkoferstraße 22
80336 Munich
Germany
T +49 (89) 55 96 80
21 Boulevard Haussmann
75009 Paris
France
T +33 (1) 5603 6591
www.boehmert.de
Nils T.F. Schmid specializes in traditional mechanical engineering. For his clients, especially medium-sized companies in Germany/Europe and Asian and American big corporations, he develops both German and global patent strategies and sees to their implementation with regard to the building up and management of patent and design patent portfolios.
As one of the largest and best-known law firms for Intellectual Property (IP) in Europe, we offer our clients any and all services relating to IP. Our company is proficient with assisting clients with patents pertaining to technical inventions and the protection of designs and trademarks. We offer support in copyright, antitrust and competition law in all fields of applied and engineering sciences.
Criminal law is no longer a matter of finding the person that stole your car; as our lives are being enriched with technology and the advantages of globalisation, the complexity of criminal law is rising.
We have gotten back in touch with Dennis Miralis, who has previously spoken about the issues of regulating cryptocurrencies and how to determine whether an incentive is a hidden bribe.
This month he touches on how criminal law is expanding globally, and how it is no longer a jurisdiction-by-jurisdiction problem. Dennis reveals why criminal law and human rights go hand in hand, and what pushed him to specialise in
criminal law.
Now at the top of you game, what made you want to become a lawyer?
My reasons for becoming a lawyer were largely instinctive and I daresay I was primarily driven by a desire to help those who were facing serious criminal law problems. I saw my role as that of being an advocate ensuring that the criminal law process operated fairly, that my clients’ rights were protected, and that they had comprehensive and robust representation. This continues to remain my motivation, although the circumstances in which legal problems present themselves to individuals and entities have become more complex and international. Whilst globalisation has had an enormous impact on the practice of law and being a lawyer, the underpinning concept of justice remains as relevant today as when the classical Greek philosophers were grappling with the essence of that term.
What in particular led you to specialise in criminal law?
I was drawn to criminal law for a multiplicity of reasons, but chief amongst them, was an interest in the way in which Governments sought to use criminal law to try and deal with societal problems through incarceration, punishment, deterrence and rehabilitation. In my view, criminal law alone is inept at permanently solving many of the underlining reasons that continue to be the key drivers for criminal behaviour, including poverty, mental illness, addictions and institutionalised disadvantage. In my practice of criminal law, I have had to challenge Governmental powers where they seem to have been exceeded. I believe that criminal law is intimately connected to the protection of human rights.
How would you define the motto behind your work? What drives you to win?
The heart of criminal law with a focus on a court practice, is a complex tension between societies’ need to protect itself from harm by punishing offenders, and the need to focus on reasons for the offenders’ behaviour and allow for their reintroduction into the society. Within this context, the administration of justice benefits from skilled advocates advancing their client’s case. In the adversarial system of justice, this is the key role of a criminal lawyer, and this applies whether the client is an individual or a legal entity, whether they have been indicted, are going to trial or are pleading guilty. Winning for me means that a client has emerged from their entanglement with the legal system with a sense that their legal rights have been fiercely protected and advanced; they have had a fair trial and the Courts have acknowledged their side of the story, irrespective of outcome.
How have you seen the practice of criminal law change and what is your take on that?
Criminal law is becoming increasingly international and there is a global trend towards countries trying to address emerging international crimes such as cybercrime, money laundering, bribery, corruption, and economic crime, through multilateral treaties and international conventions. One of the key areas where there will be significant development will be in the area of extradition, as globalisation has made people hyper mobile and nation states need to utilise many more tools to bring offenders to justice, such as Interpol red notices. A good example of this internationalisation is the application of the Budapest Convention which seeks to combat cybercrime, a truly borderless type of crime. The convention provides for countries to share data, execute search warrants, issue arrest warrants and provides for extradition in combatting international cybercrime. Similar conventions play important roles in the area of bribery, corruption and money laundering. These developments raise increasingly important questions of human rights as data is being exchanged across borders quicker than ever before affecting individual’s privacy rights. There has been a lack of international consensus, however, about how human rights are to be protected within this dynamic, and in particular in the areas of privacy, dual criminality, jurisdictional shopping and the right to a fair trial. Further complicating the process, is the increasing phenomenon of parallel criminal investigations in one or more jurisdictions as well as civil prosecutions. In my opinion, criminal lawyers will need to quickly develop skills to adequately protect their clients in this dynamically changing landscape.
Where do you see your firm in this changing landscape?
We define our firm as an international criminal law firm due to the significant practice we have in this area. There are many other firms, in the UK and the USA, which have developed similar practices and we are looking to develop even deeper links and connections across the globe in the emerging market of international criminal law, in particular in the Asia Pacific region, where we have many years’ experience in conducting cross border investigations. I think that in the future we will see the emergence of a truly global criminal law firm which acts across all jurisdictions in the areas of economic crime, bribery and corruption, international security law, espionage, cybercrime, freezing orders and proceeds of crime, extradition and Interpol. The drivers for such a development already exist and will continue to grow within the next two to three years as more legal markets try and harmonise their laws in these areas.
Dennis Miralis is a leading Australian defence lawyer who practices in the following areas of complex domestic and international criminal law; white-collar and corporate crime; bribery and corruption; cybercrime; money laundering; serious fraud; worldwide asset forfeiture; transnational crime; extradition; Interpol Red Notices; anti-terrorism law; national security law and encryption law.
He appears in all courts throughout Australia and regularly travels outside of Australia to advise in complex international criminal law matters.
Dennis Miralis
Partner, Nyman Gibson Miralis, Criminal Defence Lawyers
Level 9, 299 Elizabeth Street, Sydney NSW 2000, PO BOX 21147, World Square, NSW 2002,
DX 11543, SYDNEY DOWNTOWN
Tel: +61 2 9264 8884, Fax: 9264 9797, Mob: 0414 933 168, Web: ngm.com.au
We get back in touch with medical expert Richard Scott-Watson, who has previously touched on problems he faces in medico-legal cases. Our previous catch-up revealed if agencies should be used when looking for an expert, and this month, we delve deeper into the issue, speaking on why reports are rushed and its effect on a medico-legal case.
Over the past six months, what cases have pushed further the boundaries of your expertise and how? Did any focus particularly on Orthopaedic Therapy?
The main problem I find is that most experts are not qualified in disability and yet that is the central part of many cases. I recently had a case where there was a severe nerve injury causing areas of numbness and loss of joint position sense (he did not know where his arm was without looking at it). In disability terms this is serious and renders the arm almost unusable, but two neurologists, while commenting on the neurological loss in detail failed to note the disability from this part of the injury and in fact, failed to measure it at all.
In terms of Orthopaedic Therapy, how often is rehabilitation part of your remit as a medical expert and how often do cases surrounding therapy crop up in your legal work?
The aim of the expert is, in effect, to minimize the size of the case by ensuring the maximal recovery. Therapy, as specialised physiotherapy, chiropractic or other types, is central to the role, where therapy has been sub-optimal or absent prior to the report (normal).
Do you have any prime examples of past cases where you have served as an expert witness focused on Orthopaedic Therapy?
Discussions about therapy rarely come up, but some experts will let a claimant continue with a disability that could be treated without recommending treatment, which can cause difficulties.
As an industry veteran in Orthopaedic Therapy, and a to expert witness in the field, how do these cases compare with historical Orthopaedic Therapy centred cases you have studied?
These things have not changed greatly over time. Clearly the surgical options have changed with time, as well as the recognition that some things are best left alone, even if not fully recovered as the risk of worsening can be high. The introduction of defendant offered physiotherapy at an early stage has helped a lot of claimants (except one I dealt with recently who refused on two occasions). The problem with this system is that if resolution does not occur action to assess the case is far too slow, which loses valuable time and prolongs the disability.
Last time we talked you mentioned errors in medical reports being commonplace. How do you deal with such errors, especially when they may gravely affect the case at hand?
The main problem with errors comes in the initial GP expert reports on MedCo (of which I see a lot). These are often rushed (claimants often state in 5-minute or less, appointments) and errors creep in all the time. If the reports are sent back to the claimant to be checked these can be rectified, but I frequently come across cases where experts refuse to alter errors. Common errors are wrong occupation, errors in description of the accident, errors in what the injuries were and the most common one is how severe they were and how they progressed.
You also mentioned ways MedCo reports could be improved. What steps would you say have been taken so far?
The whole way Med Co reports is set up is fundamentally flawed and probably not repairable. Some GP Experts will see up to a hundred cases in a day (many are much more conscientious) but they will all be claimed as 10 – 15 minute appointments, which is an achievement. There is no control as to how the report is written. I recently had to go to one myself and was handed a two-page form to fill in. The discussion of its contents was very brief but in the end the report was entirely written by me with no input from the expert – fortunately in this case it was an expert report, but it was the only one that day. The biggest problem apart from the timing is lack of use of contemporaneous records. I see this when doing secondary reports, usually at 18 months post accident. Initial reports frequently claim severe initial symptoms (usually in all areas) but the notes (which I will not do a report without) contradict this, nine out of ten times. Frequently the initial claim falls to pieces because the initial report was written without any evidence as to its voracity.
The problem is exacerbated by the use of agencies, as they take the lion’s share of the fee (for very little work) leaving little for the expert and tempting them into ever shorter appointment times. The use of the DME system on MedCo would give solicitors much more control and should lead to much higher quality reports (and if they aren’t, send them back).
When do solicitors get an initial report?
Within MedCo that is fairly fixed, but if you use the DME system you at least have some control. It is worth remembering that MedCo is for vehicle occupants whose main injury is soft tissue, so does not include fractures, motor cyclists, pedestrians, cyclists or anyone else who falls out of the description. I regularly get reports where the claimant has been put through the MedCo system when they should not.
The starting point is that if there is a serious injury, get as early a report as possible. If necessary get a home visit – that way everyone knows where the case is starting, how much treatment, time off work (etc.) is likely. In a big case that can be invaluable, especially if it is obvious that the claimant is unlikely to return to work for many months; this then allows for early interim payments, provided there are no complications with liability. A lesser injury with no significant disruption to work is best left for a few months. If it recovers within six months, get a report at around nine. If it fails to recover at six months, get one at that point, so that therapy can be organized.
Is there anything you would like to add?
Above all always, where possible, instruct experts directly. Agencies will take 50 – 60% of every fee solicitors pay. That may make them happy, but the expert gets short changed and so does the solicitor – do you want to pay £500 plus for a report worth £200? It also makes for better communication, especially if adjustments are needed.
Moreover, Part 35 questions are for clarification and are not a fishing exercise or a point to ask hypothetical questions (those sent to me do not get answered). The court order relating to Part 35 should be sent to the expert immediately, as should orders relating to joint reports. And if dates are missed, questions will not be answered.
Where liability is conceded, expert fees are a disbursement, yes – they do not have to wait for the end of case.
Ursula Bartel is passionate about helping clients out of risky situations and fighting for justice in the interest of her clients.
“It is of special importance for me to have a direct and continuing connection with my clients to provide immediate advice and support. I strive for advising my clients on a very high level and with great care, but also in a very comprehensible manner. Fortunately, my clients highly appreciate the pleasant and very straightforward way I’m managing their trademark matters and disputes.”, says Ursula.
She speaks with Lawyer Monthly about her role as an IP lawyer.
Have there been any notable trademark cases that you’ve managed? What was the outcome?
I have recently supported a client in a very complex trademark issue concerning the name of their very popular cultural event. We had to act with great sensitivity in an effort to avoid any image damage of the client’s brand and the respective event. I recommended a personal meeting between my client and the opposite party in a first step to discuss the trademark matter amicably. I have perfectly prepared my client for this meeting and we reached a great outcome in this very first meeting! Another client no longer has any worries regarding the name of their business; they had already been on the market for many years and had become a well-known company in the medical sector. However, they did not carefully search for similar trademarks when starting the business. Indeed, there have been several prior brands which constituted a high risk for the use of my client’s name. We have developed a strategy on how to overcome these obstacles and initiated all necessary steps, for example: nullity proceedings based on non-use with a straw man as claimant. Finally, also worth telling, I have helped a client in a very complex trademark infringement case between Christmas and New Year. I have reached a perfect settlement of this dispute in a very short time.
In your experience, what are the most prominent differences between creating international and national brand portfolios?
On the one hand, the applicable law and the registration practice in the respective jurisdiction is important, on the other hand, the coordination of local specialized attorneys in an effort to achieve a consistent trademark strategy is vital. National brand portfolios require only one expert who is responsible for the portfolio management and a consistent trademark strategy. International brand portfolios require the management of all brands- hand in hand. Moreover, the expert has to work with and coordinate with various local attorneys, always having in mind a consistent trademark strategy and the exchange of knowledge and experience concerning the brand portfolio between all attorneys.
How difficult is it to register with the German Patent and Trade Mark Office (or DPMA)? How does it compare to the European Union Intellectual Property Office (EUIPO)?
In general, the applicable laws concerning the registration practice of the DPMA and the EUIPO are almost identical. However, according to my experience, the chances to successfully register a trademark with a rather descriptive meaning are slightly higher before the EUIPO compared to the DPMA.
What challenges do you face on the job that are particularly rewarding to overcome?
A major challenge is creating awareness to small businesses for the importance of having a strong trademark (from an IP law perspective) which is essential in trademark disputes. This means, amongst others, that they have to monitor the market and the trademark register for similar brands and to act against infringements. Small businesses are very often confronted with, for example, very aggressive cease-and-desist letters sent by bigger companies. These situations are frightening for the owners and even existence-threatening. I’m passionately fighting for these smaller companies and I love the surprise effect the opposite parties have when my clients are suddenly gaining advantage over them.
Ursula Bartel
Lawyer
Kirchenstr. 60
81675 Munich
Ursula Bartel provides excellent advice in trademark law. She has extensive experience in the strategic consulting and administration of both international and national brand portfolios. In addition, she is an expert in complex trademark infringement litigation as well as cancellation and nullity proceedings. Prior to founding her law firm Bartel Legal in 2016, Ursula Bartel spent many years with the international law firm Bird & Bird LLP, which enjoys an excellent reputation in the field of intellectual property.
