February has been a month of news. From ecological disasters to political turmoil, the devastation of the Turkey-Syria earthquake and the anniversary of Russia’s invasion of Ukraine, barely a day has passed without reports of new strife. There have also been several major shifts in the global legal space, which we at Lawyer Monthly have continued to track as they develop. In our front cover story, we examine a recent transaction: the completion of Turkish tech start-up Figopara’s $11 million investment round. This special transaction report features an interview with Görkem Gökçe, founder and managing partner of the firm Gökçe, which advised Figopara. He offers personal insight into how the investment round progressed, along with an incisive look at the Turkish tech climate. The report can be found on page 10. Other high-profile authors this month include Dr Anju Khanna (page 20), who has been gracious enough to share exclusive insights into her work as a leading patent lawyer in India, and Brett Rivkind (page 46), who has won acclaim in the US for his diligence as a maritime personal injury lawyer. Both guest authors share their expertise in incisive interviews exclusive to Lawyer Monthly. In addition, the March edition comes equipped with a full briefing of news and appointments in the legal sector, as well as a host of diverse editorials. The areas covered include estate planning, litigation, ADR and international debt collection, as well as deeper dives into popular law topics such as the rise of ‘true crime’ media and the growing attraction of legal apprenticeships. We are excited to present each of these features in one of our most wideranging issues to date. We hope that you enjoy this edition! LAWYER MONTHLY©2023 Universal Media Limited Lawyer Monthly is published by Universal Media Limited and is available on general subscription. Readership and circulation information can be found at: www.lawyer-monthly.com. The views expressed in the articles within Lawyer Monthly are the contributors’ own. All rights reserved. Material contained within this publication is not to be reproduced in whole or in part without prior permission. Permission may only be given in written form by the management board of Universal Media Limited. Approx. 302,000 net digital distribution. Oliver Sullivan Editor Lawyer Monthly Welcome to Lawyer Monthly Magazine MARCH 2023 EDITION @lawyermonthly @LawyerMonthly @lawyermonthly company/lawyer-monthly Universal Media Limited, PO Box 17858, Tamworth, B77 9QG, United Kingdom 0044 (0) 1543 255 537 Production Team: Emma Tansey, Luke Ostle, Nathan Athersmith email@example.com Sales Enquires: Jacob Mallinder Jacob.firstname.lastname@example.org
6 Monthly Round-Up 8 Lawyer Moves FEATURE OF THE MONTH 10 Enter the World of Tech Start-Ups and Investments In Turkey Görkem Gökçe, Gökçe Ayse Ülkü Yalaz & Nilay Goker Duran, NAZALI MY LEGAL LIFE 20 Dr Anju Khanna Excelling in Patent Prosecution in India SPECIAL FEATURES 28 The Triumph of True Crime Media Oliver Sullivan, Lawyer Monthly 32 What Are the Advantages of Legal Apprenticeships? Beth Brindley, Blacks Solicitors 36 Crime in Art Law: Digitalisation, Trafficking & Destruction Felicity Gerry KC & Fahrid Chishty, Libertas Chambers 40 The Threshold for Perversity When Challenging the Assignment of Claims Kate Rigby, Rosling King EXPERT INSIGHT 46 Unravelling Cruise Ship Injury Claims Brett Rivkind, Rivkind Margulies & Rivkind P.A. 50 Handling Estate Administration After Death Laura Nelson-Becker, Becker Nelson Center & James 54 Defending Swiss Companies in Antitrust Cases Dr Sébastien Gobat, Troller Hitz Troller THOUGHT LEADER 60 Overcoming Hurdles in International Debt Collection in Switzerland Marcel Frey, Prager Dreifuss 64 Approaching Insolvency in Jersey Alan Roberts, Grant Thornton 66 Strategically Using Legal Entities to Protect Assets Thomas VanNess III, VanNess Law, PLLC 70 The Growth of Japanese Dispute Resolution Yoshie Midorikawa, Miura & Partners EXPERT WITNESS 76 The Role of Forensic Analysis and Litigation Consulting Bill Acorn, Acorn Consulting Services, LLC TRANSACTIONS 82 What’s Happening in the World of M&As and IPOs? Contents 20 46
Monthly Round-Up MARCH 2023 Supreme Court Rules Northern Ireland Protocol is Lawful The UK Supreme Court has rejected a challenge to UK-EU trade arrangements by unionist leaders. British users. Liza Lovdahl Gormsen, a legal academic bringing the case, said that these users were not properly compensated for the value of personal data that the platform required them to provide. Gormsen’s lawyers last month asked the Competition Appeal Tribunal to certify the case under the UK's collective proceedings regime, leading to the February rejection as the tribunal ruled that Gormsen’s methodology of establishing users’ losses needed “rootand-branch evaluation” in order to continue. A spokesperson for Meta said the company welcomed the decision and referred to its previous statement that the lawsuit is "entirely without merit". (DUP) leader Jeffrey Donaldson said a solution to the protocol was “never going to be found in the courts”, adding that the Brexit trading arrangements remained “an existential threat to the future of Northern Ireland’s place within the union”. Speaking with the BBC, a UK government source added that there was “lots still to work through” in negotiations concerning the protocol. Instated as part of the Brexit deal, the Northern Ireland Protocol creates a trade border between Northern Ireland and Britain. It has been appealed by uninionist politicians who have claimed that this conflicts with the 1800 Act of Union, which states that all UK nations should be treated equally in matters of trade, and the Northern Ireland Act 1998, which prohibits the alteration of Northern Ireland’s constitutional status without a referendum. That appeal has now been unanimously rejected by the court, which agreed that the protocol did conflict with the Act of Union but added that it was Parliament’s will that any part of the Act that conflicted with the protocol be suspended. In response to the ruling, Democratic Unionist Party On 20 February, a London tribunal rejected a class action lawsuit against Facebook parent company Meta valued at up to $3.7 billion. The lawsuit alleged that the social media giant abused its dominant market position to monetise users’ personal data. However, the tribunal gave the proposed claimants’ legal counsel six months to “have another go” at establishing any alleged losses suffered by users. The class action lawsuit was brought against Meta on behalf of Facebook’s 45 million $3.7 Billion UK Class Action Against Meta Temporarily Rejected 6 LAWYERMONTHLYMARCH 2023
‘Rust’ Producers Issued $100,000 Safety Fine Following Shooting Shamima Begum Loses Appeal Against Loss of UK Citizenship Producers of the movie ‘Rust’ have agreed to pay a $100,000 for “serious” workplace safety breaches following the fatal on-set shooting of cinematographer Halyna Hutchins in 2021. Shamima Begum’s challenge over the UK government’s decision to deprive her of citizenship has been rejected. decision unlawful. "There is some merit in the argument that those advising the secretary of state see this as a black and white issue, when many would say that there are shades of grey," Jay added. Begum’s legal team stated that the case was “nowhere near over” and that they intended to challenge the decision. were used on the set," the state's Occupational Health and Safety Bureau said in a statement. Hutchins was killed when actor Alec Baldwin discharged a live round from a gun he was wielding during a rehearsal. RMP armourer Hannah Gutierrez-Reed, who mistakenly loaded the round into Baldwin’s gun, has been charged with involuntary manslaughter. Inher first court appearance on 24 February, GutierrezReed’s lawyer said she would plead not guilty. Baldwin pleaded not guilty to the same charge on 23 February. Appeals Commission (SIAC) ruled in a judgement on 22 February that that decision was lawful. Mr Justice Jay, who wrote the judgement on behalf of the SIAC panel, said that although there was credible evidence that Begum “was recruited, transferred and then harboured for the purpose of sexual exploitation”, said evidence was “insufficient” for the commission to find the weapons mishandling and accidental discharge of firearms. "RMP violated workplace safety laws by exposing employees to being struck by discharged rounds or projectiles when firearms Begum, who left Britain at the age of 15 to join Islamic State (IS) in Syria, went on to have three children after marrying a fighter with the group. All three children have since died. She was stripped of her citizenship in February 2019 by then home secretary Sajid Javid after she was discovered in a refugee camp in northeast Syria. The Special Immigration New Mexico’s work safety bureau levied its maximum possible fine against Rust Movie Productions (RMP) in 2022. The bureau cited the studio’s “plain indifference” to the potential hazards of MONTHLYROUND-UP 7
Lawyer Moves RECENTAPPOINTMENTS FROMACROSS THEGLOBE Dentons has hired Richard Sharples as a partner in London, bolstering its UK Banking and Financing practice. Sharples previously served as a banking partner at Clifford Chance. With more than 30 years’ total experience as a banking and finance lawyer, his specialisations include leveraged finance, debt restructuring, acquisition finance, private equity, corporate and syndicated lending, and he is expected to work closely with the Private Equity and Corporate teams to develop specialised solutions for Dentons’ clients. Nick Hayday, partner and head of Dentons’ UK Banking and Finance team, welcomed Sharples to the firm. “Leveraged finance is a priority investment area as part of our five-year strategy and Richard is well known for operating at the top end of this market, having worked on many complex, cross-border deals for some of the UK’s largest banks, sponsors, funds and investment banks,” he said in a statement. “We are delighted to have someone of Richard’s calibre join us,” added Dentons UK and Middle East CEO Paul Jarvis. “His appointment, following the arrival of M&A partner James Vernon earlier this year, aligns exactly with the “Golden Thread” pillar of our strategy, which is about creating a strand of connectivity that runs throughout the firm’s practice areas, sector groups and geographies so that we develop deeper and wider client relationships.” Clarke Willmott has built on its success in 2022 with the appointment of Karen Higgins, Rachel Ramsay and Sarah Brickell to senior positions. Higgins has been appointed as Clarke Willmott’s Head of ESG (Environment, Social and Governance). She brings a wealth of experience to the role, having spent 12 of her 18 years at Grant Thornton UK as Head of Sustainability. She is also a board member of noted environmental consultancy Green Element. Ramsay has become the firm’s new internal communications manager, building upon more than 25 years’ worth of expertise in publishing, journalism and internal communications. Well-versed in strengthening employee experience and culture, she is also a member of the Institute of Internal Communications’ Professional Development Advisory Board, leaving her wellplaced in her new role. Finally, Brickell has joined the firm as Head of Communications. She brings 20 years of experience in marketing, mainly in the financial services sector, and has a board remit on all external communications at Mishcon de Reya. These appointments come on the back of the recent news that Peter Swinburn has been elected as the firm’s new CEO from 1 May 2023, succeeding Stephen Rosser, who will stop down following 13 years in the role. New Partner Joins Dentons’ UK Banking and Finance Team Three Appointments Boost Clarke Willmott’s Senior Staff London, United Kingdom Dentons Southampton, United Kingdom Clarke Willmott London, United Kingdom Mishcon de Reya 8 LAWYERMONTHLYMARCH 2023 National firm Mishcon de Reya announced the addition of Justin Lambert to its Intellectual Property team as Of Counsel on 20 February. Joining from boutique litigation firm Lambert Hornby, Lambert is a dual-qualified solicitor in the UK and Australia with more than 20 years’ worth of experience in IP matters internally. Recognised as a leading patent lawyer, he brings proven experience in contentious patent, copyright, trade mark and design cases. Lambert also boasts significant experience in commercial matters, including due diligence and freedom to operate advice, drafting research and development, collaboration and other IP agreements. Prior to co-founding Lambert Hornby, he also worked for Clifford Chance, going on to gain senior roles in K&L Gates and Griffith Hack, two of Australia’s highest-profile IP firms. “I am excited to be joining Mishcon de Reya,” said Lambert in a statement. “The firm has an excellent reputation, including for working closely with their clients, and I am very much looking forward to working in a dynamic and growing team of recognised experts in intellectual property and related fields." Mishcon de Reya Bolsters IP Team With New Hire
Freshfields Bruckhaus Definger (‘Freshfields’) has announced its appointment of partners Allison Liff and Alex Mitchell as co-heads of the firm’s global leveraged finance group. These promotions will see Liff and Mitchell (based in Freshfields’ New York and London practices respectively) become joint heads of the global firm, furthering the firm’s expansion of its private capital practice and grow its international footprint. Their positions are effective immediately. Liff said in a statement on her appointment: “I’m excited for the opportunity to share the leadership of our leading global leveraged finance group with Alex. We look forward to supporting the strategic growth of our practice, and our private capital offering more broadly, and delivering for our clients around the world.” Mitchell added: “Allison and I are greatly looking forward to working together from both sides of the Atlantic to help deliver the success of our leveraged finance business across the globe.” Freshfields Appoints Global Co-Heads of Leveraged Finance Global law firm DLA Piper has taken on The Honourable John Middleton AM KC as a senior advisor. A former Justice of the Federal Court of Australia for 16 years, Middleton also served as the president of the Australian Competition Tribunal for the past six years. In addition, he is a former part-time commissioner of the Australian Law Reform Commission and has sat on several boards, including being a member of the Council of the University of Melbourne. He is also a fellow of the Australian Academy of Law. Having retired from the bench in December 2022, Middleton will join DLA Piper’s Melbourne office in March. His practice will involve advising large public and private sector clients on investigations, class actions and inquiries. Amber Matthews, Australia managing partner at the firm, welcomed Middleton’s arrival: “After decades of distinguished public service, we are thrilled The Hon. John Middleton has chosen DLA Piper for the next chapter of his incredible career.” “John will be a great asset to our clients on strategic litigation and class action advice.” DLA Piper Adds Federal Court Judge to Leadership Team London, United Kingdom & New York, USA Freshfields Melbourne, Australia DLA Piper LAWYERMOVES 9
10 LAWYERMONTHLYMARCH 2023 Görkem Gökçe Founding & Managing Partner of Gökçe In this month’s edition of Lawyer Monthly, we hear exclusive insight into Figopara’s $11 million investment round and expertise surrounding Turkey’s latest tech start-ups and investments from: Enter theWorld of Tech Start-Ups and Investments In Turkey
Görkem Gökçe Gökçe COVER FEATURE 11
12 LAWYERMONTHLYMARCH 2023 In 2021, more than 300 start-ups were established, receiving a total investment of $1.5 billion, from nearly a thousand investors. Turkish companies. I believe, however, that the most important reason for the surge is the increasing number of creative start-up ideas. As the world is moving away from conventionality towards a technologycentric understanding, the investments in Turkey are in line with this global trend if not faster. I can easily state that the large number of projects developed by Turkish entrepreneurs, especially in the past 5 years, and the number of incentives and support mechanisms provided by Turkish legislation for investments in start-ups, are the main driving forces behind the development of the start-up sector in Turkey. How is the Turkish government acting to encourage this investment? Turkish legislation provides many Is there a particular sector in Turkey that has attracted significant investment in recent years? It is easy for me to say that Turkey has risen to a new level and become a core investment area in many different sectors in recent years. In 2021, more than 300 start-ups were established, receiving a total investment of $1.5 billion from nearly a thousand investors. In the last two years, eCommerce, gaming and data analytics in finance (i.e. AI and machine learning) became the emerging sectors, receiving the most investments. I would like to highlight that most of these investments were made in start-ups that had just received their first investments, while almost half of these start-ups were founded in the last 2 years. As such, it is safe for me to state that eCommerce, gaming and data analytics have received significant investments and have shown greater development than in other areas in recent years, although their rankings (in terms of the number of transactions) vary. It is because conventional production ideas are being replaced by technology, software, and even blockchain-based applications in today’s world. I find these developments will have positive impacts and believe that the number of such initiatives will only increase in the upcoming years. What are the reasons behind the recent surge in investment in Turkish companies? Turkey is a regional hub. Having the potential to address a large market and having a young, dynamic, and educated population can be listed as the reasons for the recent increase in investments in The Turkish startup ecosystem has experienced a significant increase in the number of tech start-ups spearheaded by the gaming, finance, health and eCommerce sectors, which have attracted domestic and foreign investors and grabbed billion-dollar investments by reaching record valuations. At Gökçe Attorney Partnership, we provide legal expertise to a swath of tech start-ups at every stage of their journeys. Figopara, a pioneer fintech Turkish company, is one of the start-ups to which Gökçe provides its key legal expertise. Figopara offers solutions for cash flow problems arising from the discrepancy between the payments and collections of companies, acting as an intermediary between financial institutions and suppliers with the Figopara online platform. Since Figopara’s establishment, Gökçe has been aiding Figopara and its founders in all legal and financial processes with its years of experience in the start-up ecosystem. Figopara received an investment of $11 million at a valuation of $50 million in its latest investment round, which was closed in the last quarter of 2022. In this investment round, Figopara has secured investment from 11 local and international leading investors, including the International Finance Corporation, the private sector arm of the World Bank Group, and local and cross-border investment funds. Görkem Gökçe, the founding and managing partner of Gökçe, aims to transfer his deep knowledge of the start-up ecosystem to Turkish start-ups and to contribute to their aim of becoming influential regional and global actors. Investments in Turkey
incentives and supporting mechanisms for all investments in Turkey, and in particular for investments in start-ups. For instance, if the share certificates related to the shares acquired through an investment in a joint stock company are held by the investor for at least two years, the income from the sale of such share certificates is completely exempt from tax for real persons and substantially exempt for legal entities. Further, the start-ups and companies carrying out R&D activities have more tax exemptions. As for the venture capital market, the Turkish capital market legislation regulates various financial institutions such as venture capital investment trusts (VCITs) and venture capital investment funds (VCIFs) have many advantages over venture capital investments and, thus, over start-ups. Firstly, the earnings of VCITs and VCIFs arising from their activities, including the purchase and sale of shares, are exempt from corporate and income tax. Secondly, they can provide a mix of debt and equity financing to start-ups, which is a method provided only for the shareholders under Turkish legislation and VCITs and VCIFs. Lastly, carried interest and management fees, which are remuneration incentive mechanisms for the managers, are introduced to enable start-ups to receive professional management support for investment processes from experts in their fields. What do you perceive to be the main challenges for foreign investors looking to invest in Turkish tech start-ups? It would be best to answer this question from a financial and a legal perspective. One of the main challenges that foreign investors may face in Turkey is finding business partners with deep knowledge and expertise in the start-up sector and TRANSACTION INTERVIEW 13 As the world is moving away from conventionality towards a technologycentric understanding, the investments in Turkey are in line with this global trend if not faster.
14 LAWYERMONTHLYMARCH 2023 professionals who can provide brokerage and advisory services for the investment. Unlike traditional businesses, start-ups have their own set of dynamics and it is therefore critical to work with advisors who understand the structure, nature, functioning and basic motivations of start-ups, rather than with advisors having a conventional perspective. In this regard, as a firm that always aims to meet the needs of its clients, we provide legal support and expertise for foreign investors new to Turkey through our membership in international platforms and institutions operating in various countries around the world. What role do you and your team play in helping investors overcome these challenges? As Gökçe, we have deep knowledge and know-how gained from years of working with start-ups. Since our establishment, we have provided legal consultancy in all stages of a start-up journey, from their establishment to potentially their exits. Further, as we operate on a full-service basis, having Corporate, TMC&Privacy and Litigation departments, we can easily meet the needs of our start-up and tech clients. One of the very unique features of the Gökçe team is having the ability to structure the legal deal in the most appropriate way for the financial outcome that the parties intend to reach. We always prioritise understanding the financial dynamics between the investor and the investee to design the legal relationship. Last but not least, the long-established and high-quality network that Gökçe has developed in both legal and financial circles over the years plays an active role through its business partners competent in their respective fields, in providing the expertise that foreign investors and startups may need in different fields. Are you seeing any notable trends in the way these tech companies operate and the impact they are having on the Turkish economy? The main goal of tech companies is to provide products and services in a more practical, cost-effective and accessible way. Tech start-ups provide more accurate, faster, and more affordable solutions than conventional tools in areas in need of development ranging from the daily needs of people to the financial analysis necessities of the business world. It is much clearer what the core activities of tech startups are and how they can advance these activities through the lens of this determination. In this context, the main tendency of tech companies to provide more accurate, fast and affordable services and to automate these services is to collect more data. To achieve this objective, data analytics, artificial intelligence and machine learning activities may be listed as the main trends observed in the activities of tech companies. The second issue that I can address at this point is ’confidentiality‘. In a globalising world, access to all kinds of information is becoming easier and easier day by day and this has disadvantages as well as advantages. Data analysis has reached the sophistication level to enable personality analysis, and personality analysis is a tool that can be used to direct masses. Consequently, even though data analysis is essential for the advancement of service industries these days, confidentiality and privacy concerns embedded in data analysis are more relevant than ever. However, the solution for these issues is, in turn, technology itself. Whilst there have been several high-profile privacy violation cases and tracking of cryptocurrency transactions, blockchainbased solutions such as decentralised identity and zero-knowledge proof prove to be useful in allowing individuals to have control over their data and privacy. It is clear that this will be at the forefront of the considerations of most financial actors in the upcoming years.
balancing the demands of the parties to the transaction. Considering multilateral and cross-border transactions, achieving a common consensus can be characterised as an objective challenge in any transaction. As Gökçe, we also analyse the financial demands of the parties to the transaction and strive to ensure that the demands of the parties are reasonable and in line with market conditions and that the transaction is carried out in accordance with the joint and mutual will of all parties. With the expertise we have accumulated over the years, we try to reflect the economic demands of the transaction parties to the legal realm, both through the tools already regulated in the legislation and through new legal fiction to the extent permitted by the legal order. Therefore, this situation, which can be characterised as an objective difficulty, is subjectively manifested as an added value for us when considered together with Gökçe’s depth of experience. TRANSACTION INTERVIEW 15 The fundamental challenge faced by all start-ups is the same as the basic assumption of economics: the demands of financial actors are unlimited; however, the resources are limited. problem faced by market actors. This idea was happily welcomed by investors as a solution to the current crisis and led to one of the largest investment rounds in Turkey in 2022. Apart from this, the other start-ups that we provide consultancy have developed solutions to shift physical services to online mediums responding to a pressing necessity during the pandemic; therefore, they were able to grow fast amidst the crisis. Finally, due to the impact of the economic crisis on investors’ risk perception and behavioural finance attitudes, many investors have shifted from traditional investment instruments to start-up investments. These realities have shown that shifting circumstances create new business areas with new challenges and opportunities for expansion within existing business areas. I would like to underline that, by providing consultancy services to our clients operating in various fields, we can easily adapt to the new conjuncture brought by the rapidly changing and sometimes shrinking market and, in the meantime, be affected minimally by the floating structure of the economy. What are the most common challenges you encounter in advising start-ups on their investment rounds? The fundamental challenge faced by all start-ups is the same as the basic assumption of economics: the demands of financial actors are unlimited; however, the resources are limited. This fundamental assumption is present in all aspects of everyday and commercial life. The situation of investors and start-ups participating in investment rounds can also be perceived through this assumption. At this point, the main challenge in all start-up investments is Do you foresee your team working on other significant transactions in Turkey in the coming years? Since our establishment, as Gökçe, we have played a key role in the investment rounds and exit transactions of our clients’ start-ups as well as the ongoing operational advisory services. Even in 2022 we were involved in several transactions of similar size to the investment round of Figopara or even larger, whether publicly announced or not. The number of investments we provide our legal expertise has been rapidly increasing in the past few years. It is no surprise that we continue to play a key role in transactions of such sizes considering the number of startups to which we have provided our expertise in the past, be it in the stage of establishment, pre-seed investment round or seed investment round. Have you seen any shift in your practice in response to the global economic downturn? Since our establishment, we always had a diverse client portfolio including both conventional companies and start-ups. The ongoing worldwide crisis and manoeuvres of financial actors, including central banks, to curtail cash flows have made it difficult to access funds in many sectors. As a principle relevant to the markets and economy in general, every crisis contains the seed of an opportunity. In recent years, both the economic crisis and other crises, such as the pandemic, have led to a contraction in some conventional sectors, while paving the way for others. Figopara is a great embodiment of this principle. Figopara, as a fintech company mediating solutions for cash flow problems, has been able to bring in a solution to the cash flow Life at
NAZALI is an international full-service law firm that provides a broad spectrum of advisory services to its clients with a qualified team of lawyers and other experts in different practice areas. These practice areas comprise tax, competition lawantitrust, IP, finance, privacy, customs, social security and audit. The Corporate and M&A team at NAZALI is co-led by partners Nilay Göker Duran and Ayşe Ülkü Yalaz. With more than 15 years of combined experience, the team provides advisory services to its international and local clients on all stages of buy-side and sell-side M&A transactions and represents investors, entrepreneurs, and startups in growth finance deals as well as fund raising and structuring. Considering highly interdisciplinary processes, such deals are evaluated by a wide range of other experts led by highly reputable partners, making NAZALI the best fit for such transactions. NAZALI reflects its deep sectoral knowledge in sector-specific M&A transactions in the healthcare, energy, fintech and automotive sectors, along with others. NAZALI’s core objective is to establish a long-term and trust-based relation with its clients. What distinguishes NAZALI is its ability to evaluate matters from all related aspects under one roof to create comprehensive solutions and to develop solid strategies by virtue of interdepartmental communication. 16 LAWYERMONTHLYMARCH 2023 Ayse Ülkü Yalaz NAZALI Nilay Goker Duran NAZALI Acted as Legal Advisors to Figopara Legal Advisors to L2G Ventures
TRANSACTION INTERVIEW 17 and tailored separately in a way that could be legally enforced. How did you work with Gökçe Attorney Partnership and other firms to ensure a satisfactory outcome for all parties involved? Representatives of Figopara and Gökçe Attorney Partnership as well as other parties’ counsels made invaluable contributions to the process with their cooperative, constructive and open approach. We had previously worked with our colleagues on different transactions, which allowed us to overcome challenges in a more amicable and prompt manner. Such a big deal with so many parties involved would not have been possible without the support of all parties involved with great harmony and teamwork. Are there any other comments that you would like to make about the operation? Growth finance deals are not shortterm transactions. Processes following the closing are also vital as ensuring stability is imperative. We also prepare a ’closing bible‘ that outlines what needs to be considered after a deal is sealed. Accordingly, we continue to assist and support our clients for the post-closing actions. Last but not least, we also observe that sometimes the legislation falls behind emerging technology-related markets. As legal practitioners we are keen to understand the dynamics of these technologies, be a little less conservative by finding a balance, and determine an appropriate perspective for innovative and dynamic sectors with a solution-oriented approach. Thanks to our client, we also adopted an entrepreneur-friendly approach with an open dialogue by sharing our due diligence findings with the Figopara team, allowing them to clarify such issues in a prompt manner ahead of closing. With the valuable cooperation of Figopara and their legal counsels, we were able to run such a complex process swiftly. We believe that such an approach provided significant benefits for the other investors as well. Finalisation of the SHA was quite intricate considering Figopara’s relatively complicated shareholder structure and complex clauses accustomed to growth finance deals including liquidation preference, anti-dilution and others. Since SHA was subject to English law, we had to prevent conflicts to make it compatible with directly applicable rules under Turkish law. Finding a balance and reaching a viable SHA and articles of incorporation was vital and challenging. We overcame these challenges and tailored the SHA by working together with the counsels of all parties, making invaluable contributions. Furthermore, tech M&As are under scrutiny in Türkiye. The Turkish Competition Authority, which has amended its communiqué concerning mergers and acquisitions recently, is particularly interested in such deals. We established that obtaining approval from the Authority was also vital for this deal. Accordingly, the deal was tailored to allow certain control change clauses to be enforced following such approval and hence those were dealt with, designed Can you tell us more about the work performed by yourself and your team during this investment round? We represented the leading investor, L2G Ventures, who was referred to us by our existing client and one of the investors of this deal, ScaleX. We always feel privileged to work with highly reputable and experienced clients. We conducted a thorough legal and tax due diligence and advised L2G Ventures on drafting and negotiating the deal documents. We also assisted our client during the signing, closing and post-closing stages. What obstacles did you overcome in the course of the round, if any? This was an in-depth legal due diligence process that required analysing numerous regulations entangled with one another, including banking and finance, eCommerce and privacy. Yet there are some non-regulated aspects to markets supported by fintech and technology. In that respect, legal due diligence was quite challenging as it also involved certain unregulated matters. To refrain from disrupting the innovative and dynamic nature of this sector and to overcome problems encountered, we liaised on such issues with the Figopara team to systemise and understand their operations, which allowed us to identify advantages and risks accurately with a business-minded approach. As the legislation may fall behind emerging technology markets, we are keen to understand such dynamics, be less conservative by finding a balanced, innovative and solution-oriented approach.
Each month, Lawyer Monthly Magazine has the privilege of interviewing the brightest and most ambitious movers in the legal space. In these conversations we dig into their areas of expertise, learning more about their practice and the stories behind their pursuit of excellence. Our featured My Legal Life story for March follows Dr Anju Khanna, Lall & Sethi’s managing partner and Patent Department head. A highly experienced IP lawyer, she delves into the intricacies of patent prosecution in India and shares her perspective on how the country’s IP landscape will be shaped in the months to come. MY LEGAL LIFE
20 LAWYERMONTHLYMARCH 2023 Dr Anju Khanna heads the Patent Department at Lall & Sethi and has also been the firm’s managing partner from 2019-2021. With more than 20 years of work experience and 18 years in the field of patents, she handles both patent prosecution and patent litigation at the firm. Dr Khanna oversees and handles work in various technology domains including chemistry, pharmaceuticals, telecommunications, medical devices, electrical and mechanical inventions, and she is actively involved with the Patent Office and the Department for Promotion of Industry and Internal Trade (DPIIT) regarding policy decisions. Lall & Sethi is a boutique IP firm that provides a complete range of services relating to contentious and noncontentious IP issues. Its areas of practice include trademarks, copyright, designs, patents, confidential information and trade secrets, information technology and entertainment and sports law.
Dr Anju Khanna To begin with, can you describe the process involved in patent prosecution in India and the key pieces of legislation that regulate it? Patent prosecution is regulated by the Patents Act 1970 in India. The inventions covered by patents in India pertain to only utility inventions. Industrial designs are protected under the ambit of the Designs Act. The Patents Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972 (after replacing the Patent Act 1911). Since then, various amendments in the Patents Act (hereinafter referred to as the Act) and Rules have been brought about from time to time. The Patents Act 1970 was last amended by the Patents (Amendment) Act 2002 (38 of 2002). It is read together with the Patents (Amendment) Rules 2021. The patent prosecution process My Legal Life Excelling in Patent Prosecution in India India has seen significant recent updates to its patent law, with data to suggest that the country is fast becoming a favoured destination for patent litigation. Below, we take a deeper look at the process of patent prosecution in India with Dr Anju Khanna, partner and head of the Patent Department at Lall & Sethi. Drawing upon more than 20 years’ worth of experience in the sector, she shares her insights as to the most effective patent application techniques and likely developments for the future of patent law in her jurisdiction. MY LEGAL LIFE 21 begins with the filing of a patent application (provisional/complete specification) at the Indian Patent Office (IPO). In case a provisional is filed, a complete specification is required to be filed within 12 months of filing the provisional, failing which the provisional automatically gets abandoned. A foreign filing license is required for an invention for which the inventor resided in India at the time of the invention, if the first application is to be filed outside India. An application submitted to the Patent Office with a complete specification is published 18 months from the earliest priority date under section 11A of the Act. A request for examination under section 11 B can be filed within 48 months from the earliest priority date. Thereafter, the application is referred to an examiner for technical examination with respect to the patentability of the subject matter of the invention. Following a detailed examination, a First Examination Report (FER) is issued containing both formal and technical objections. The applicant
has six months’ time from the date of issuance of the examination report to put the application in order for grant, with a one-time extension of one, two or three months. A second examination report and/or an oral hearing may be issued for further clarifications and overcoming objections. New art may be cited in these reports. Also, an application, once published, can be opposed by any person by filing a pre-grant opposition until the date of grant under the provisions of section 25(1) of the Act. An application cannot be granted prior to six months from the date of publication. A patent can be opposed by any interested person within one year of grant under the provisions of section 25(2) of the Act. A patent can be revoked any time after grant by an interested person under section 64 until the life of patent either by filing a revocation petition or in a counter claim in a suit for infringement. India is signatory to various international treaties like the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty and the TRIPS agreement. Hence an application can be filed either as an ordinary or convention or national phase of a PCT application. Under rule 24C of the Act, an applicant may file for early or expedited examination. The following applicants are eligible to file for expedited examination under the Indian Patent Act: • An applicant who has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application; • If the applicant is: a start-up as defined in rule 2(fb) of the Patent Rules, 2003; or a small entity as defined in rule 2(fa) of the Patent Rules, 2003; or a female natural person; or a government undertaking in accordance with section 2(1) (h) of the Act, in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or if an applicant is eligible under an arrangement for processing an international application pursuant to an agreement between the IPO with another participating patent office. The Patents Act 1970 is the primary legislation that governs patent filing and prosecution in India. Being a signatory to the various international treaties, India is compliant with all its obligations under the treaties. How long does the patent application process ordinarily take, and what measures is the Indian Patent Office (IPO) taking to expedite patent applications? Ordinarily, the time to grant a patent depends upon time taken in different stages, which may vary from around three to five years, depending upon the case. 22 LAWYERMONTHLYMARCH 2023 India is becoming the jurisdiction of choice for Standard Essential Patent (SEP) litigation.
How can an applicant best increase their odds of having their application accepted by the IPO? In order to increase chances of a patent application being accepted by the IPO, some general considerations that must be kept in mind are as follows: Many inventions are rejected on the basis of the subject matter of the invention, which should not fall under sections 3 and 4 of the Patent Act, i.e. must fulfil the criteria of eligibility. For example, pharmaceutical inventions are generally objected under sections 3(d) and 3(e); sufficient data must be provided in the specification to justify the technical advancement over the prior art for 3(d) and synergy in case of a composition, combination or formulation comprising multiple ingredients for 3(e). As mentioned above, CRIs are objected under section 3(k). It is important to show technical effect of the software to overcome 3(k). It is also important to show a hardware component. For devices that are likely to be objected under section 3(f), it must be ensured that it is not a mere arrangement or re-arrangement of a known device. The device must be new and also all its components must act together to produce the desired technical effect. With respect to inventions where biological material is used, a common objection raised is with respect to NBA (National Biodiversity Act) permission. An applicant must ensure that if the subject matter involves use of any biological resource obtained from India, its complete details are provided in the specification and NBA permission is taken, if required, to avoid an objection during the examination stage that normally delays grant. Enablement is also a very common ground for objection. The claims must be supported with sufficient data and information in the specification. Use claims and method of treatment claims are not allowed in India and must be avoided. An applicant must ensure that all the formal requirements of an application are complied with and that there is strict adherence to the various timelines. Requirement under section 8 ‘Statement and Undertaking’ must be taken care of by providing the details of the corresponding foreign applications within the stipulated time. Strict adherence to the stipulated timelines with respect to each of the procedures involved must be observed to avoid formality objections. What are the most common mistakes that you see made during patent prosecution, and how do you help your clients to address these? One of the most common mistakes committed by applicants is that they do not disclose sufficient data while filing the complete specification. It must be The time period for filing request for examination (RFE) is 48 months from the earliest priority date. Once an RFE is filed, the application is examined between six months’ to one year’s time. The first step towards expediting the process is to file for RFE as soon as possible. The IPO has taken several measures to increase transparency in the process and decrease delays in prosecution. The entire process from filing to grant is now conducted online, including oral hearings and also opposition hearings that are held through video conferencing. File wrappers of published applications are available online for public to access. Dynamic online utility services provide updated information about the status of an application. Vide noticed as of 16 January 2023 that the IPO is undertaking hearings in pending matters in an expedited manner. In addition to these, there are certain categories of applicants who can avail of expedited examination provisions as mentioned above. One of the most common mistakes committed by applicants is that they do not disclose sufficient data while filing the complete specification. MY LEGAL LIFE 23
borne in mind that if the invention is not sufficiently disclosed and the subject matter of the claims is not enabled, it may lead to rejection of the application. Therefore, a balance must be struck. Voluntary amendment of the as-filed specification after filing is not always allowed. The scope of amendments that may be allowed is restricted by section 59 of the Act. Therefore, care must be taken at the time of filing of the specification to ensure that it is carefully drafted. Another common error is disclosure of information related to corresponding applications filed in other jurisdictions that applicants fail to provide. Material information not disclosed can lead to refusal of an application and is a ground for opposition and revocation of patent. Another matter of concern is the strict adherence to timelines, failure of which may lead to fatal consequences. In your view, what skills and technologies are most useful when it comes to bolstering the odds of success during patent prosecution? Once a patent application enters into the examination stage, its fate depends in the hands of the examiner concerned. Therefore, it is very crucial for an applicant or patent attorney to handle the examination/hearing stage of an application skilfully. Communication skills play a very important role in patent prosecution. Clear, to-the-point and effective communication is a must. Each of the objections raised in the examination report must be carefully addressed. The prior arts must be properly studied so as to be able to clearly differentiate the subject matter of the invention in question from the cited prior arts. The differences and the arguments must be clearly represented without leaving scope for any ambiguity. It is also important that no statement be made, in writing, at any stage of the prosecution that may act as an estoppel at a later stage, such as during litigation. During hearings, the objections raised must be clearly understood before presenting a reply. Replies must be precise and to-the point unless a detailed answer is sought by the Controller. The applicant or attorney must utilise the opportunity efficiently. Keeping a tab on all the timelines once a patent application is filed until grant is very important to ensure that they are strictly adhered to. Continuous follow-ups with the IPO and self-audit of files on the IPO website are also important. During your time as a practising IP lawyer, what significant changes have you observed in the way that patent prosecution is handled? Two decades ago, only processes were patentable in respect of inventions relating to pharmaceuticals, food, drugs and substances produced by chemical process. Since 1 January 2005, patents are open to grant in all categories of inventions, which has made a significant impact in India. Comprehensive e-filing services, including hearings through video conferencing, have facilitated inventors and applicants, which have in turn enhanced patent filing in India. Recording of hearings also help avoid misuse of the system. Early disposal of the applications has changed the whole working of IPO and has reduced the grant time. The search engine InPass has vastly improved and every document filed with the IPO gets uploaded in the concerned file wrapper within the same day . Several kinds of applicants can avail discounted official fees and expedited examination as mentioned above. This has given a boost to filings by start-ups and educational institutes. The IPO has published guidelines for Computer Related Inventions (CRIs), pharmaceutical and biotechnologyrelated inventions and inventions based on traditional knowledge. It has also published an updated Manual for Patent Practice and Procedures. The Act requires approval from the National Biodiversity Authority for any biological material obtained from India, obtaining which used to delay the grant of the application. This process has now been streamlined by the IPO. In recent times, the IPO has allowed grant of patent right to a right holder even when the approval from NBA has been under process. 24 LAWYERMONTHLYMARCH 2023 India is an IP friendly nation and has shaped and defined its laws and standards as per its global obligations under various treaties.
Do you foresee any major developments on the horizon for patent enforcement in 2023? India is an IP friendly nation and has shaped and defined its laws and standards as per its global obligations under various treaties. Establishment of the IPD (Intellectual Property Division) in the High Court of Delhi in 2022 and other High Courts (under process) in India has aligned the country with similar global practices to deal with IPR-related matters. This will help facilitate the efficient disposal of IP matters, as well as bringing consistency in the precedents set by the Courts in the areas of IP law. The IPD deals with all matters which are in the nature of original, appellate or any other proceedings related to IPR, which includes cancellation, revocation applications, other original proceedings, appeals and petitions from the various Intellectual Property Offices. 2022 saw the notification of the High Court of Delhi Rules Governing Patent Suits, which provides procedures and mechanisms for simpler, effective and efficient adjudication of patent infringement cases. It also prescribes various procedures related to pleadings, hearings etc. Implementation of these rules has led to the setting up of standard procedures that will certainly help in adjudication of infringement suits. Jurisprudence in patent domain has significantly evolved in the past decade and a half. India is becoming the jurisdiction of choice for Standard Essential Patent (SEP) litigation. In virtually every SEP case, the patentee has received favourable orders from the Court either in the form of an interim injunction (that leads to settlement between parties) or deposition of interim royalties or bank guarantees with the Court. With the advent of 5G technology in the telecommunication space, this is likely to increase further. Similarly, the formation of specialised IP courts in the IPD has seen rapid advancement in development of jurisprudence, at least in the Delhi High Court. With formation of IPDs in other High Courts, the time frame of patent litigation is expected to see a further significant reduction. Contact Dr Anju Khanna Partner & Head, Patents D-17, South Extension II, New Delhi -110 049, India Tel: +91 11-4289-9988 +91 11-4289-9999 (Ext: 124) M. +91 99-7168-1696 E: email@example.com www.indiaip.com MY LEGAL LIFE 25