Articles

Is AI a Component of Your Commercial Transaction? What You Need to Know

Artificial intelligence (AI) is proving central to many recent commercial transactions, such as asset or business acquisitions or licenses, and this will only increase as interest in AI explodes. Rachel Edwards, Helen Goldstein and Paul Johnson share four crucial considerations when making a deal, whether such commercial transactions concern an investment into AI-driven technology, competitive industries, or delivery of services that may be revolutionized with AI.

Sweeping California Clean-Energy Rules on Truck Fleets Put on Hold

Controversial and sweeping clean-air regulations California's CARB was moving to implement on trucking fleets in the state (Advanced Clean Fleets, or ACF) have been put on hold, with a new call for public feedback and the proposed creation of an industry working group. John Lormon and Miranda Barfield explain that this appears to be a welcome move for many expected to be impacted by the regulations, although this does not necessarily mean the rules won’t eventually be implemented along existing lines. 

The Dutch Route to Building a Cost-Effective Global Patent Portfolio

Keeping costs in check is critical when pursuing patent protection, in particular for small and mid-sized companies. In this podcast, Procopio Partner Ernest Huang of Silicon Valley and AOMB Partner Ernest Baeten of the Netherlands discuss an innovative way in the Dutch patent system to get a peek at what the prior art is going to look like when you submit a provisional or normal patent application. The two explore how this approach can be cost-effective in the patent prosecution process, and possible implications in litigation.

Many Private Entities Face New Federal Reporting Requirements

Many private companies will be subject to new federal reporting regulations at the start of 2024, risking civil or possibly criminal penalties for noncompliance, explain Dennis Doucette and Gabby Meyer. Under the Corporate Transparency Act, certain businesses must submit beneficial ownership reports through the U.S. Treasury Department’s Financial Crimes Enforcement Network (FinCEN).

Managing 3rd Party IP and Freedom to Operate in Drug Development

When it comes to product development, the management of third-party intellectual property (IP) to ensure freedom to operate is of paramount importance, Robert "Bob" Ramos explains in a new article. Drug development is no different. Imagine investing years of research, substantial resources, and unwavering dedication into creating an FDA-approved drug, only to have a third party’s patent prevent you from entering the market. Thus, successfully navigating the intricate landscape of third party IP is crucial to the commercial viability of drug development efforts.

California Supreme Court Issues Disappointing PAGA Decision

California employees can now seek representative Private Attorneys General Act (PAGA) penalties in court even when their individual PAGA claims are compelled to arbitration, thanks to a highly anticipated state Supreme Court decision. Marie Burke Kenny and Ashley Fasano explain why the decision in Adolph v. Uber Technologies, Inc., is a disappointing one for California employers and what to do going forward.

Awards

Law360 Honors Procopio for Diversity for 7th Consecutive Year

For the seventh consecutive year, Procopio has been recognized in Law360’s annual Diversity Snapshot for its attorney diversity. The annual survey of hundreds of firms focuses on racial and ethnic minority makeup among equity partners, non-equity partners, associates, and other attorneys. This year Procopio ranked #12 among all U.S. law firms with 101-250 attorneys. Of the 283 law firms surveyed by Law360, only 17% surpassed the publication’s benchmark, with Procopio one of those firms. Procopio led most mid-size firms in three diversity categories: Asian, Hispanic, and Native American.

San Diego Business Journal Names 3 Partners Leaders in Life Sciences

Three Procopio partners active in our Life Sciences practice who provide industry clients valuable corporate, intellectual property, licensing and other legal services have been named 2023 Leaders of Influence in Life Sciences by the San Diego Business Journal. The three recognized partners—Dennis Doucette, Jeff Morton and Xiaofan “Frank” Yang—are award-winning attorneys with distinctive backgrounds. Dennis focuses on buyers, sellers and investors in mergers, stock and asset purchases, management buyouts, reorganizations and related transactions. Jeff provides life sciences and medtech companies strategic intellectual property advice, including patent prosecution, and related transactional support. Frank provides comprehensive IP strategic counseling and patent prosecution to public and private biotechnology, pharmaceutical, digital health and medical device companies.

News

Tax Team Continues to Grow with Experienced International Additions

Procopio’s award-winning international tax practice continues to grow, with two new attorney hires—one licensed in Bolivia and the other in Italy—and an international exchange attorney from a leading law firm in Spain. Based in Procopio’s Scottsdale, Arizona, office, Elettra Menarini provides clients international tax planning and related international services, particularly in the U.S., Mexico and Italy. She is fluent in Italian and Spanish and licensed to practice in California, New York and Italy. Carolina Bustillo counsels multinationals on an array of international tax matters, including efficient tax structuring, restructurings, cross-border transactions and IP migrations. Based in Procopio’s downtown San Diego office, she is fluent in Spanish, Italian and German, and licensed to practice in California and Bolivia. Paula Beneitez is working side-by-side with Procopio tax attorneys as an International Exchange attorney on a 6-month assignment from the Spanish law firm of Cuatrecasas, advising corporate clients on international tax matters in Europe and Latin America, including foreign investments and cross-border M&A transactions.

Meet Noel Gillespie: An IP Attorney Focused on Entrepreneurs and Family

Meet Noel Gillespie, an IP Partner for startups and emerging growth companies who values family and faith. Learn tips Noel provides life sciences, medtech and other clients as they're growing their IP portfolios and raising capital. Also learn about Noel's deep roots in San Diego and his engagement with family and community. He's a youth sports coach, a husband and father, and an independent spirit who went rogue on a tricycle when he was two years old. This is part of an ongoing series profiling Procopio attorneys.

Events

Key Real Estate Issues for Life Science Companies | webinar | 12:00 pm PT

Life science companies face crucial issues when leasing, developing, purchasing or financing facilities. David Crawford discusses strategies to take and key issues to consider in lease negotiations; purchasing, developing and/or constructing life sciences facilities; and types of financing to consider for life science facilities and the key issues that arise in negotiating them.

Procopio International Litigation & Arbitration Retreat | Procopio's downtown San Diego office

Regístrate hoy mismo a la conferencia Procopio International Litigation and Arbitration Retreat, en la cual los abogados litigantes en Estados Unidos y México se discutirán conceptos legales y problemas en el ámbito legal de los Estados Unidos relevantes en controversias que involucran a personas y leyes extranjeras, y hechos ocurridos o que causan efectos ambos dos o más países. Este evento es la plataforma perfecta para que los litigantes que asesoran y representan a clientes respecto a controversias con repercusiones transfronterizas expandan sus conocimientos en sus respectivas prácticas profesionales, incluyendo disputas corporativas y mercantiles, litigios relacionados con propiedad intelectual, mediación, arbitraje, controversias inmobiliarias, cuestiones en materia familiar y asuntos que involucran derechos de privacidad y transmisión de información.

Client News

Leading Healthcare Staffing and Solutions Provider Acquires Two AI and Data Analysis Innovators

Kudos to longtime client Aya Healthcare, the largest healthcare talent software and staffing company in the U.S., on its recent acquisitions of two separate software companies that further bolsters the company’s AI capabilities and expands its ability to help healthcare organizations. Aya’s first acquisition was Flexwise Health, with technology that forecasts gaps in patient demand and staffing levels to assist hospitals in optimizing resource allocation and cost. Aya’s second acquisition was Polaris AI, a machine learning platform that predicts future patient volume and staffing levels in clinical settings, leading to greater efficiency and cost savings for healthcare organizations. Dennis Doucette oversaw both acquisitions aided by Trent Andrews and Kaitlyn Jensen. Helen Goldstein led the Flexwise deal and Takeshi Sumida the Polaris deal.

Award-Winning Smart-Energy Solutions Provider Acquires Leading AI Innovator 

Congratulations to client and award-winning smart-energy solutions provider GridBeyond on its acquisition of Veritone Energy, a leader in artificial intelligence (AI) solutions. GridBeyond, based in Ireland, is incorporating Veritone’s industry expertise and innovation into its comprehensive suite of energy management solutions offered to businesses across a range of industries. As the globe transitions to a Net Zero economy, GridBeyond focuses on providing scalable and real-time solutions to manage the energy system of tomorrow. Representing GridBeyond in the acquisition was Dennis Doucette and Helen Goldstein, both members of Procopio’s Mergers & Acquisitions and Strategic Joint Ventures practice.

Social Media

Procopio Partners Dennis Doucette and Jeff Morton sat down recently with Jeff Clemetson of the San Diego Business Journal to offer insights on how critical it is in today's economy for life sciences companies to bring strategic thinking to building and managing an intellectual property portfolio, securing funding, and planning for a possible exit. Recently named to the San Diego Business Journal Leaders of Influence in Life Sciences list, Dennis and Jeff address licensing, advisory boards, raising capital, the question of whether to develop IP or acquire it, and more. 

Information may be critical to your company but it can also pose a great risk in this era of heightened privacy protection. Elaine Harwell notes organizations should have a consistently implemented document retention and destruction policy, and offers 10 tips on how to do so in this Association of Corporate Counsel article sponsored by Meritas Law Firms Worldwide.

How do the U.S. and Brazil compare in life sciences patenting, in particular for new medical uses and antibodies? Jeff Morton, Procopio IP Partner and Life Sciences sector leader, and Gabriela Neves Salerno of Montaury Pimenta, Machado & Vieira de Mello provide critical details in an article in the latest issue of The Life Sciences Lawyer.

What a lovely evening July 12 at our Orange County office open house in Irvine! Blue skies and engaging conversation with some of the county's leading executives and innovators. Among Procopio attorneys in attendance were John Alessio, Steve Casselberry, Raymond Chan, Eric Figueroa, Jonas Hodges, Enrique Hernandez-Pulido, Raph Y. Kim, Rosie Kim, Alaina Persinger, Charles Lin, Andrew Mar, Emily Marsh, Rosemary Nunn, Nicholas Fortino, Craig Ramseyer, Mary Salamone and Tim Salter.

Procopio was honored to sponsor the San Diego Business Journal Leaders in Life Sciences program, including an engaging awards event hosted by President and Publisher Barbara Chodos in Torrey Pines, the heart of San Diego's life sciences community. Jeff Morton, Bill Eigner and Kevin Wilson presented recognized leaders with their trophies, which included Xiaofan "Frank" Yang, and the evening included dynamic networking over tasty food and beverages. Kudos to all of this year's Leaders in Life Sciences!

Our Capital Markets & Securities practice leader Christopher Tinen provided an in-depth analysis of the SEC's rulemaking agenda and its potential impact on public companies in an engaging Summer SEC Roundtable organized by Haskell & White LLP, a leading accounting firm providing audit, tax planning and compliance, and strategic consulting services. It was an informed and robust conversation with an engaged audience.

We absolutely loved sponsoring the California Life Sciences (CLS) CLSAdvantage Solutions Showcase July 25 at the Alexandria Tech Center in San Diego's Torrey Pines, mingling with clients and others passionate about life sciences! Great food, lively music and inspiring conversations were enjoyed by many of our Life Sciences IP and corporate attorneys, including Jeff Morton, Noel Gillespie, Bob Ramos, Raymond Chan, Kristin Smith and Bill Eigner.

We were honored to serve as a Platinum sponsor for this year's Installation Dinner by the Orange County Asian American Bar Association (OCAABA) July 6 in Newport Beach. What an event! CA Attorney General Rob Bonta participated in the event honoring Asian American leaders in law. Justice Joanne Motoike was awarded the Judicial Trailblazer Award in recognition of her lasting impact on the judiciary. Judge Kazuharu Makino was recognized with the Lifetime Achievement Award, celebrating his decades-long career and unwavering service to the Orange County Superior Court. In attendance for Procopio were attorneys Charles Lin, Mindy Morton, Rosie Kim, Andrew Mar, Raymond Chan and Jonathan Cheng.

We were happy to host the first-ever Binational Life Sciences Roundtable July 14, bringing together industry thought leaders from SoCal and Baja California. Our Life Sciences leader Jeff Morton was one of the presenters during a robust and vigorous exchange of views and insights.

We're always looking for ways to assist entrepreneurs. Recently IP Partner Jeff Morton and Corporate Law Senior Associate Shai Larkin served as advisors to life sciences startup founders in an engaging "speed-dating" format. Held at the California State University San Marcos Innovation Hub and organized by Connect, the entrepreneurs were able to gain valuable feedback on their enterprises as well as enjoy a networking event afterward. Jeff and Shai thoroughly enjoyed the experience!

When our Family Law practice leader Michele B. Brown isn't serving her clients or providing leadership within our firm, she's advocating on behalf of California attorneys and their clients with the California Lawyers Association. Michele, frequently in Sacramento, played a key role a few years ago in the historic spinoff of CLA from the State Bar of California.

We loved hosting startup founders July 27 at our Del Mar Heights office, all entrepreneurs who have gone through various Connect programs over the years. It was a great opportunity to network and grow the emerging growth ecosystem here in San Diego. Enthusiastically engaging in the meetup were Procopio attorneys who regularly assist entrepreneurs with corporate and IP legal services: Noel Gillespie, Paul Johnson, Michael Kinkelaar and Christopher Tinen.

Let's Work Together.