Articles

 3 Keys to Successful Corporate Collaborations 

What are the 3 key principles for building successful corporate partnering or collaboration relationships? Helen Goldstein and Xiaofan “Frank” Yang, leaders of our Technology Transactions and Licensing practice as well as our Life Sciences practice, explain how the right attorney team applying these principles can guide clients around pitfalls and toward success.

Awards and Accolades

Procopio Ranked Among Top Firms in U.S. for Diversity by Law360

Procopio was ranked #6 for diversity among all U.S. law firms with 101-250 attorneys in Law360’s annual Diversity Snapshot, and #17 among the nearly 300 law firms surveyed. This is the eighth straight year Law360 has recognized Procopio for the diversity of its attorneys. Of those surveyed, only 15.6% surpassed the publication’s diversity benchmarks, with Procopio being one of those firms. Procopio surpassed most mid-size firms in its percentages in five demographic categories: Hispanic partners and associates; Native American partners and associates; and Asian associates.

4 Procopio Partners Named Life Sciences Leaders of Influence

Kudos to our 4 partners named 2024 Leaders of Influence in Life Sciences by the San Diego Business Journal! David Crawford, Noel Gillespie, Paul Johnson and Xiaofan "Frank" Yang bring distinctive backgrounds to medical device designers and manufacturers, innovators in the biologics, genomic, diagnostic, e-health, digital health technologies, and other life sciences companies. 

David has negotiated numerous transactions involving life sciences-focused real estate, including the largest leasing transaction in San Diego history by dollar value. Noel advises both startup and mature life sciences and medtech clients on strategic patent portfolio development and implementation. Paul helps life sciences and medtech entrepreneurs and their investors get companies formed, funded and sold. Frank provides life sciences companies comprehensive IP strategic counseling from proof of concept to clinical development, regulatory approval and product launch.

News

Paul Johnson Assumes Leadership of Emerging Growth Practice

We’ve got a new leader of our Emerging Growth & Venture Capital practice! Paul Johnson, our M&A practice co-leader, brings decades of experience to the firm’s entrepreneurial startup clients, having long helped entrepreneurs and their investors get companies formed, funded and sold. He has formed a number of startups that received multiple rounds of financing and achieved profitable exits.

Our Emerging Growth and Venture Capital attorneys represent a wide variety of industries, including software and artificial intelligence, life sciences and med tech, clean tech, professional services, and consumer products. They provide counsel in corporate and securities law, angel and venture capital financing, mergers and acquisitions, intellectual property, compensation and benefits, and more. 

Brian Maxwell Joins Procopio as Chief Human Resources Officer

Procopio has welcomed a new Chief Human Resources Officer, Brian Maxwell. Brian joins us after a 25-year leadership career at Deloitte, where he guided C-suite executives through disruptions and leadership transitions while building a culture of inclusivity.

Brian led the development of culture-building initiatives, serving as a coach, mentor, and executive champion for leadership training programs. He also built a strong leadership pipeline through targeted coaching and mentoring, while conducting global analyses of worldwide talent operations to identify opportunities for global consistency and potential implementation of global technology solutions.

Events

Procopio International Litigation and Arbitration Retreat (PILAR)

PILAR brings litigation attorneys from the United States and Mexico together in San Diego, California, to discuss legal issues relevant to disputes involving foreign nationals, laws, and events on both sides of the border.

Keynote speakers include Alberto Pérez Dayán, Associate Minister of Mexico's Supreme Court of Justice of the Nation, and David M. Rubin, Justice of California's Court of Appeal, Fourth Appellate District. Topics include appellate and appeals practices, insurance complexities, bankruptcy and restructuring, cross-border labor issues, and the latest challenges related to immigration.

While the conference discussion will take place in Spanish, access to simultaneous translation into English will be made available.

Maquila 101: An Intro to Manufacturing in Mexico | 11:30 am – 1:00 pm PT | San Diego, CA

Juan Arau provides an overview of manufacturing in Mexico, addressing operational strategies, advantages and challenges; typical entity structures for U.S. companies manufacturing in Mexico; and differences in how setup typically works with China in this session for ACG San Diego. 

Patents 101: Demystifying the Process for Innovators | 4:30 – 5:20 pm PT | Phoenix, AZ

IP Partner Xiaofan “Frank” Yang, PhD, shares his patent prosecution and due diligence insights at the annual Biopreneur Network conference at Venture Café Phoenix.

Understanding Your Liquidity Options – What’s Best For Your Business? | 10:45 – 11:45 am PT | San Diego, CA

M&A Partner Paul Johnson shares his insights on a panel at the Business Transitions Forum. He’ll focus on the difference between business growth and scaling and how entrepreneurs can develop a strategy for growth.

2024 Construction Forum | 10:00 am – 1:30 pm PT | Webinar

In this annual event, Procopio Construction & Infrastructure Law attorneys and guest industry speakers will focus on the most pressing California construction law issues facing contractors, developers and owners today.  

2024 Procopio International Tax Institute (PITI) | San Diego, CA

The 19th annual PITI conference, organized with the Graduate Tax Program of Georgetown University, will again attract internationally recognized leaders in the field of international tax, providing an educational platform and an opportunity to connect with industry colleagues. PITI is designed for tax practitioners, U.S. and Mexican attorneys, accountants, corporate tax directors, managers, controllers, banking and financial advisors, and executives.

Client News

Biotech Scores Big Win with U.S. Patent Office Judges

Kudos to Shanghai Hongene Biotech Corp. on its successful challenge of a competitor’s patent before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB)! After extensive briefing and depositions by Procopio’s team, the trial board found in favor of Hongene. The PTAB judges ruled that all claims of a patent by ChemGenes Corp., No. 9,884,885, were unpatentable.

Washington, D.C.-based Life Sciences Intellectual Property Litigation Partner Jeremy Edwards presented the case at the oral hearing, and was supported in the litigation by Senior Counsel Brett Garrison and Partners Steve Maddox, Raymond Chan, Frank Yang, and Jack Shaw.

Canadian Mining Company Secures NYSE Dual Listing

Congratulations to Canada-based client Collective Mining on securing a listing on the New York Stock Exchange (NYSE) American, expanding its reach in U.S. markets! The NYSE ticker symbol for Collective Mining is CNL, and trading has commenced. It will remain listed on the Toronto Stock Exchange (TSX) as CNL and on the Frankfurt Stock Exchange under the symbol GG1.

The team securing this cross-border national exchange listing was led by Capital Markets and Securities practice leader Christopher Tinen with assistance from Natalie Dundas and Michael Tiab. 

Mobility Solutions Provider Secures Significant Tolling Contracts in Colorado and Georgia 

Let’s hear it for our longtime client, mobility solutions innovator Neology, on securing its largest tolling-as-a-service contract in company history to provide tolling along Colorado’s US 36 and I-25 facilities for at least ten years! This follows on the heels of another success, securing a ten-year contract with Georgia’s State Road and Tollway Authority’s Toll Integration Service Contractor to take responsibility for all four of the contractor’s current tolling facilities.

Intellectual Property Partner Noel Gillespie has supported the patent needs of Neology from the beginning, and now holds a robust portfolio of over 200 granted and pending patents. Noel is assisted in his patent prosecution pursuits by Alejandro Echeverria. Procopio provides Neology other legal services, including patent litigation (Bob Sloss, Victor Felix and Raymond Chan); trademark services (Neil Salyards); corporate litigation (John Alessio, Alex Brizolis and Eric Plourde); data privacy (Elaine Harwell); government contracts (Laurence Phillips); and corporate law (John Cleary and Trent Andrews).

Women’s Health Innovator Secures New FDA-Approved Drug

Shout-out to client and women’s contraceptive health innovator Evofem Biosciences (OTCQB: EVFM) on acquiring the women’s health specialty business of global pharma Lupin Limited! This secures Evofem the FDA-approved single-dose antimicrobial agent Solosec®, which provides a complete course of therapy for two common sexual health infections. Evofem already markets Phexxi®, an FDA-approved hormone-free, on-demand prescription contraceptive vaginal gel.

Jennifer Trowbridge led the Solosec® deal for Evofem with the assistance of Paul Johnson. Handling complex IP due diligence was Frank Yang, assisted by Raph Kim. Representing Evofem in the licensing negotiations was Helen Goldstein.

Social Media

Please welcome the latest addition to our Education practice, Dan Soar! Dan counsels educational institutions including school districts and charter schools on compliance with the latest laws and regulations. His focus is on special education matters, including student assessments and Individualized Education Programs. Dan advises on student services issues, including discipline, student records, and data privacy. He represents educational institutions through all phases of special education and Section 504 processes, including due process hearings, mediation, and resolution sessions. Dan has experience as an educator, serving as a teaching fellow at the Schools Without Walls High School in Washington, D.C.

It's another accolade for Real Estate Partner Sara Neva! The San Diego Business Journal has named her a 40 Next Top Business Leaders Under 40 finalist for 2024. This is only the latest recognition by the magazine. Among the others: In 2023 she was named a Leader of Influence in Law; Sara has made the Women of Influence in Law list the last three years; she also made the 40 Under 40 list in 2020; and in 2019 she was named a Leader in Law Rising Star.

Congrats to Procopio Trusts & Estates (T&E) attorney Xiyu “Cecilia” Wan on her recent swearing in to the state of California at the Ronald Reagan Federal Court House in Santa Ana by the Honorable David O. Carter! Attending the event were Procopio T&E partners Renee Gabbard and Charles Lin, Procopio Legal Secretary Claudia Gilmartin, and Procopio Paralegal Jon O'Neil.

Kudos to client DeepWater Exploration Inc. on its profile in the San Diego Business Journal by Gary Warth, who notes the startup is on track to double its revenue in 2024. CEO Jiajer Ho, COO Warren Chang and CTO Kunal Singla shared their inspiring story of creating a breakthrough deepwater camera while part of a UC San Diego robotic competition, which has led to their successful business. Procopio Partner Bill Eigner provides the company corporate law services and also serves on the company’s board of advisors.

Don't miss a compelling podcast with International Tax Partners Enrique Hernandez-Pulido and Raul Villarreal Garza, “Mexican Clients With Wealth Protection,” in which they wre interviewed by David Warren of the Bridgeford Trust Company. They know what they're talking about when it comes to legal developments in Mexico.

In a detailed article for The AIPPI Japanese Journal, IP Team Leader Miku Mehta provides an overview of claim interpretation and prosecution history estoppel under U.S. design patent law, and the role of the “article of manufacture” requirement in prosecution and infringement analyses. With respect to two key federal court cases—Curver Luxembourg, SARL, v. Home Expressions Inc., and In re: Surgisil, L.L.P., Peter Raphael, Scott Harris –he explains the subject design patent, prior art, and procedural history. The article is in Japanese.

The Next Level Up is seeking impressive candidates for an inaugural 2024 cohort of the Life Sciences Women Founders Connection. We are a proud supporter of this program, which offers an unparalleled opportunity for up to 20 early-stage life science women founders to engage in a vibrant, progressive, peer-to-peer forum focused on achieving capital raising objectives. We will host Next Level Up’s highly selective cohort members monthly in San Diego, with our Life Sciences practice co-leader Helen Goldstein engaged in the discussions. 

ACG San Diego is seeking CEO nominations for the latest ACG CEO Circle, a moderated monthly meeting with local CEOs in an engaging peer-to-peer format focused on M&A, capital raising and growing company value. Procopio is proud to sponsor this latest Circle, in which our M&A practice Co-Chair Jason Femrite actively participates in these thoughtful and creative discussions. CEO Circle members are carefully vetted to avoid competitors becoming part of the same group. Sales pitches and solicitation are not allowed, and everything shared is held in the strictest confidence.

"We have a strong group of life sciences IP litigators" at Procopio, IP Litigation Partner Jeremy Edwards told Rani Mehta of Managing IP. "My colleagues and I are deeply experienced in life sciences litigation – some of them more on counseling – but this was the core group and there was never really any question because this is the team that leads the life sciences litigation practice at our firm." Jeremy provided Rani a step-by-step process on how he and his colleagues won a significant case before the USPTO's Patent Trial and Appeal Board.

Did you know the San Diego-Tijuana region has been recognized by the World Design Organization as the 2024 World Design Capital? This is the first time a cross-border region has been selected for this prestigious recognition, as well as the first time a U.S. city has been chosen. The designation celebrates a region's dynamic and innovative culture and is only awarded every two years. Learn more at the World Design Policy Conference Nov. 12-13 in San Diego. Perhaps you'll run into Procopio Managing Partner John Alessio. He serves on this year's World Design Capital Advisory Board.

We were happy to sponsor an exclusive event with the Advisory Board of San Diego Sport Innovators, answering questions from the gathering with SDSI founder Joe Kudla. Our Sports and Active Lifestyle attorneys led by Lisel Ferguson and Neil Salyards love our partnership with SDSI.

If you’re interested in the latest insights on law firm economics, you won’t want to miss Varun Bahl discuss the evolution of pricing on the latest Nexl podcast episode. Our CFO has extensive experience helping law firms grow, bringing a global perspective from an educational and professional background in the U.S., Canada, the U.K., and India.

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