Key Considerations When Licensing Intellectual Property
There are many times you might wish to license your IP, whether seeking new revenue streams, new markets or new strategic partnerships. As licensing is usually more complicated than a simple sale, Helen Goldstein, Gabriela Turner and Jeff Morton offer in a new article some key considerations when building a successful licensor-licensee relationship.
IRS Has No Statutory Authority to Assess Penalties for IRS Form 5471
In a decision critical to taxpayers with cross-border business interests, the U.S. Tax Court ruled recently that the IRS has no statutory authority to assess or collect civil penalties for failure to file or filing the “Information Return of U.S. Persons With Respect to Certain Foreign Corporations” form. Eric Swenson, John Miles and Luis Arturo Zendejas Ruiz have the details.
Deadline Approaching for Some U.S. Companies with Foreign Direct Investment to File with BEA
Every five years, certain U.S. companies with foreign direct investment from companies or individuals are required to file a Benchmark Report with the U.S. Bureau of Economic Analysis, providing some operating, accounting and financial information. The next deadline is approaching, note Pedro E. Corona de la Fuente and Juan Arau.
Accomplished Real Estate and Finance Partner Joins Procopio from Cooley
Accomplished real estate and finance attorney David Crawford has joined Procopio as a Partner from Cooley LLP. He’s represented many public company clients in the life sciences, tech and other industries on a wide array of complex real estate and strategic joint venture transactions in the U.S. and globally. His legal services are so broad he likes to say he assists “anything connected to dirt, bricks and sticks.”
David has represented over 150 life sciences companies, technology companies and venture investors in securing leases for new headquarters, GMP manufacturing facilities, laboratory space and other specialty spaces across the United States, including tenant-side representation of a life science company in securing the largest office/laboratory lease (by transaction amount) in San Diego history.
IP Rights Are A Key Economic Asset: Is Your IP Strategy Ready & Why It Matters | 4:30 - 7:30 pm PT | San Diego, CA
Jeff Morton and other distinguished panelists in this Biocom California event will share the key steps to optimize your patent portfolio and the importance of doing so. They will discuss what goes into a deal, key considerations in the decision-making process, and how your patent strategy plays into the financial health of your company.
Latest Developments in Privacy Law – What’s Happening Now & What to Expect in the Near Future (Part 1) | San Diego, CA | 5:00 - 7:00 p.m. PT
Elaine Harwell will co-present in this ACC San Diego event (limited to in-house counsel) on the current state of the global privacy and cybersecurity landscape, including changes in California such as new regulations and the status of enforcement, potential for federal privacy legislation, and an overview of the recent activity by state agencies. Part 2 will be June 8.
Lessons for CA Employers from the Litigation Frontlines | 8:00 – 9:15 am PT | webinar
Marie Burke Kenny and Clint Engleson address key employment litigation developments including wage & hour claims, disability accommodation, pay transparency, and retaliation/whistleblower claims in this latest Breakfast Bytes webinar.
Understanding and Negotiating the "Terms" in Term Sheets | 5:00 - 9:00 pm PT | Palo Alto and San Diego, CA
This standalone workshop is the third in the Access Silicon Valley Startup Fundamental Series for startup founders, startup executives, entrepreneurs, innovators and developers featuring Roger Rappoport in Procopio’s Silicon Valley office. A viewing party will also be held in Procopio's Del Mar Heights office for those in Southern California.
2023 Procopio International Tax Institute | Hilton Bayfront Hotel, San Diego, CA
For the past 18 years, the Procopio International Tax Institute (PITI) has attracted internationally recognized leaders in the field of international tax, providing an educational platform and an opportunity to connect with industry colleagues. This year’s conference boasts a lineup of experts from the U.S. Treasury and the Internal Revenue Service, as well as their counterparts from Secretaría de Hacienda y Crédito Público and SAT, responsible for cross-border accountability operations.
PITI is specifically designed for tax practitioners, U.S. and Mexican attorneys, accountants, corporate tax directors, managers, controllers, banking and financial advisors, and executives to remain up-to-date on the cutting edge of international tax matters.
8 Procopio Clients Named 2023 Cool Companies by Connect
Eight Procopio clients—five life sciences companies and three tech companies—have been named to Connect’s Class of 2023 Cool Companies. Connect, a prominent San Diego accelerator, each year collects hundreds of applications from innovative companies, selects the most compelling, and introduces them to over 100 venture capitalists. Since 2015, Cool Companies have raised over $850 million in Series A alone.
2 Corporate Attorneys Named to 2023 San Diego Top Attorneys List
Corporate law attorneys Bill Eigner and Jennifer Trowbridge were recognized by SDMetro Magazine as 2023 San Diego Top Attorneys. Only 21 attorneys were named in this year’s list.
Bill is a Partner and has made the SDMetro list every year since 2013. He counsels clients in the areas of venture capital, angel financing, seed capital and financing, governing, operating, buying, selling and merging (M&A) of growing technology and other businesses. Jennifer is a Senior Counsel and was an SDMetro 40 Under 40 honoree in 2022. She focuses on a wide array of corporate law, including securities law, corporate finance, mergers & acquisitions, and Exchange Act reporting and compliance.
Real Estate Partner Recognized by Super Lawyers in Southwest for 4th Straight Year
Partner Andrew Yocopis has again been recognized by his peers as a Super Lawyers® Rising Star for Real Estate Law in the Southwest (Arizona and New Mexico). Based in Procopio’s Scottsdale, Arizona, office, this is his fourth straight year earning the recognition.
Recently 17 Procopio attorneys were recognized as Super Lawyers or Rising Stars in San Diego, and other attorneys have been recognized in Northern California (Silicon Valley) and Southern California (Orange County). Thomson Reuters announces Super Lawyers and Rising Stars throughout the year in various geographic regions. Each year, no more than 5% of attorneys are named a Super Lawyer and no more than 2.5% are named a Rising Star.
Kudos to Ken Weixel on his new position! Focused on growing our corporate consulting subsidiary Procopio Business Advisors (PBA) since January 2022 as a Senior Advisor, Ken has been named PBA's Managing Director. Formerly the Managing Partner at the San Diego office of Deloitte, he is a CPA and highly accomplished life sciences industry leader. Since joining PBA he's helped relaunch post-COVID our startup incubator LaunchPad, and consults frequently with clients on business and accounting issues. Learn more about Ken and PBA.
Learn how former college athlete Dominyck Bullard became an entrepreneur helping others like him through the assistance of Corporate Law Partner Bill Eigner. Rather than giving up after a devastating health discovery curtailed his sports future, Dominyck launched Athletiverse Inc., helping non-superstar college athletes obtain name, image and likeness #NIL sponsorships. Also helpful in his journey has been Professor Michael Burendse of the University of San Diego - Knauss School of Business. Learn more in this University of San Diego article.
We're proud to be part of this Chambers "Top Ranked Global Elite Law Firm Network" as the official Meritas Law Firms Worldwide firm for Silicon Valley and San Diego. Kudos to our many fellow Meritas firms in 253 markets worldwide!
What should patent applicants do to prepare for the historic shift by the U.S. Patent and Trademark Office to issuing patents electronically starting April 18? Miku Mehta offers guidance regarding this largely welcome news in an article for Law360. (link leads to PDF)
In D.C. May 11? Join us at the opening of our new downtown Washington office in a fun and casual complimentary event with gorgeous rooftop views, delicious food and drinks, and wonderful company. Our D.C. attorneys include Pedro E. Corona de la Fuente, Jeremy Edwards, Brett Garrison, Raph Y. Kim, Steven Maddox and Kristin Smith, and others from California will be there as well.
What's the future for community banks in SoCal? Learn May 10 in Newport Beach at a robust discussion moderated by Procopio's Steve Casselberry focused on bank lending practices and trends given the current economic climate and recent bank regulatory activities, and hear what opportunities will be available to community banks in this coming market cycle. Hosted by Risk Management Association of Orange County Chapter at The Pacific Club, the panel features 3 Chief Banking Officers: Sam Kunianski of Bank of Southern California, Donald Satiroff of Sunwest Bank, and Kathy Gonzales of Legacy Bank.
On May 7 Adriana Ochoa addresses legal red flags for California public agencies at the 2023 California Society for Healthcare Attorneys (CSHA) annual meeting. Topics include how to properly hold virtual meetings under the Brown Act in a post-Covid landscape and other new public meeting requirements; which records are public records and how to avoid disclosure of exempt records; how to create new opportunities through Joint Powers Authorities; and how public officials can comply with conflict of interest rules.
Our Family Law leader Michele B. Brown was busy in Sacramento last week as the California Lawyers Association Governmental Affairs Commitee chair at CLA's annual Legislative Day. Michele has also been a longtime leader in CLA's Family Law Section, which was a cosponsor for the day's events.
Hear Miku Mehta discuss IP challenges in the medical device industry in an IP Counsel Cafe podcast with Cochlear VP-R&D Derek Minihane, moderated by Sandy Chan.
We loved hosting an event on data privacy in our Palo Alto office last week with Keizai Silicon Valley. Our Privacy & Cybersecurity leader Elaine Harwell and others discussed how various state, federal and intergovernmental bodies are regulating "data sovereignty" in an age where data is critical to profit while industries are being disrupted by AI. Others in the discussion were Khaled Ahmed of Samsung Semiconductor, Pierre R. Wolff of InCountry, and Phillip Keys of Intertrust, also a Nikkei columnist.
Life Sciences IP attorneys Jeff Morton and Raph Y. Kim enjoyed an engaging discussion last week in College Park, MD, on keys to setting up and growing a biotech company in an event organized by the AIChE - American Institute of Chemical Engineers National Capital Section.
April 24th is Alec Cory Day in California, established by then-Governor Gray Davis to honor a longtime social justice warrior and leader in San Diego’s legal community. A co-founder of what is now Procopio, Cory, Hargreaves and Savitch LLP, Alec began his career in the San Diego Public Attorney’s Office, what later became the Legal Aid Society. He practiced law for 47 years before retiring from Procopio in 1993, serving as Managing Partner during most of his tenure with the firm. He passed in 2010. Learn more.
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