Eversheds Sutherland is pleased to announce the election of 11 new US counsel effective January 1, 2021.

The following attorneys have been elected counsel:

From our Corporate and Financial Services Practice Group:

Ronnie Dabbasi, resident in the Houston office, has a broad corporate and commercial practice and advises clients on all aspects of acquisitions, dispositions, joint ventures, and project development in the energy sector. His client base includes private equity firms, oilfield service companies, electric and gas utilities, renewable and oil & gas project developers and sponsors, commodity trading firms, mining companies, diversified public companies, chemical and petrochemical producers, and other strategic and passive investors. He advises on domestic and cross-border mergers and acquisitions, joint ventures and co-development structures, energy trading arrangements, project development and financing, and related corporate and commercial matters.

Dwaune Dupree, resident in the Washington DC office, counsels investment funds and business development companies (BDCs) on a broad range of corporate, regulatory, compliance and corporate governance matters. He also advises clients on various capital markets transactions, and ensures compliance with federal securities laws and regulations promulgated by the U.S. Securities and Exchange Commission (SEC).

Aaron Moody, resident in the Atlanta office, focuses his practice on critical business transactions, including mergers and acquisitions (M&A), joint ventures, financings, venture capital investments and private placements. He also routinely provides general corporate representation and advice to clients and negotiates complex commercial arrangements. He has represented clients in diverse industries, including private equity funds, payments, building products companies, insurance companies, and energy, technology and media companies. He also assists with many in-bound cross-border acquisitions.

Darius I. Ravangard, resident in the Washington DC office, represents issuers and investment banking firms in connection with public and private offerings of equity and debt securities, and counsels public companies on compliance with reporting obligations under the Securities Exchange Act of 1934 and listing standards and requirements of national securities exchanges. Darius also handles matters relating to the formation, operation and regulation of public and private investment funds, including business development companies, as well as strategic transactions. More generally, Darius counsels clients with respect to the Investment Company Act of 1940, the Investment Advisers Act of 1940 and corporate governance matters.

Jessica Rissmiller, resident in the Atlanta office, focuses on secured and unsecured commercial lending and finance. Jessica primarily represents lenders and borrowers in negotiating and documenting syndicated and single lender credit facilities.

From our Energy Group:

Jackson Allen, resident in the Atlanta office, represents clients in the power, natural gas and renewable energy sectors in connection with commercial transactions, project development, mergers and acquisitions, power purchase agreements, operations and maintenance agreements, engineering, procurement and construction agreements, and natural gas and power transactions.

Will Pickens, resident in the Atlanta office, advises clients on a variety of transactional matters, with a focus on energy- and infrastructure-related lending and capital markets transactions. Will’s practice primarily consists of representing borrowers entering into credit facilities, secured and unsecured, with both private and governmental lenders, and representing corporate issuers and their underwriters in the issuance of debt securities, through public offerings, Rule 144A and Regulation S placements and 4(2) private placements. Will also regularly represents clients in economic development incentives transactions for energy and industrial facilities, real estate developments and other major capital projects and has experience advising energy-industry clients on acquisitions, project development and various commercial transactions.

From our Intellectual Property Group:

Robert Ward, resident in the San Diego office, counsels both growth-stage innovative companies and global brands on intellectual property and technology related matters including strategic patent counseling, intellectual property due diligence, technology transactions and intellectual property disputes.

From our Litigation Practice Group:

Ulyana Bardyn, resident in the New York office, represents clients in complex cross-border disputes, including international commercial arbitrations, investor-state disputes and business litigation matters. Ulyana’s experience includes acting as counsel in arbitration cases governed by the rules of the International Centre for Settlement of Investment Disputes (ICSID), the International Chamber of Commerce (ICC), the London Court of International Arbitration (LCIA), the American Arbitration Association (AAA) and the United Nations Commission on International Trade Law (UNCITRAL). Ulyana also counsels clients in high-stakes complex commercial litigation matters in US federal and state courts, particularly in matters that traverse arbitration and litigation fora, including parallel proceedings, enforcement matters, interim relief and Section 1782 discovery.

Alex Fuchs, resident in the New York office, advises insurance companies on complex, large-scale litigation matters. He focuses his practice on defending challenges to insurers’ business practices in class action cases and coverage disputes. He also assists clients with defense of tort, contract and subrogation matters in New York state and federal court.

Amanda Giffin, resident in the Atlanta office, counsels clients on a variety of complex business litigation. Her practice focuses on professional liability matters, with a particular emphasis on accounting liability.

Inventors often ask patent attorneys whether they should file a provisional patent application (which expires after one year and can never issue as a patent) or a non-provisional patent application (which is examined by the USPTO and can issue as patent).

To answer this question, it is first important to understand the history of provisional patent applications (PPAs) in the United States, why they were added to U.S. patent law, the differences between provisional and non-provisional patent applications, and how other provisions of U.S. patent law impact their use. Against this backdrop, we can lay out some scenarios when one might find it advantageous to file a provisional patent application, instead of proceeding directly to filing a non-provisional patent application.

To give you a brief preview, since the U.S. now has a “first to file” patent priority system, a provisional patent application should be filed as soon as an invention has been conceived, such as when it is memorialized in an invention disclosure or a patent search letter. You should continue to keep the invention secret (i.e., do not offer to sell, sell, use in public, or otherwise commercialize the invention) until an enabled patent application has been filed that claims benefit of the PPA and covers the full scope of what you wish to protect. Another situation when a provisional patent application can be useful is when an invention is about to be disclosed (e.g., at a tradeshow, in a presentation at a conference, to a customer, etc.).

It should be noted at the outset that both provisional and non-provisional patent applications are “utility” patent applications, in contrast to the other two types of patent applications, i.e., “design” and “plant”. In layman’s terms, a “utility” patent covers the way a product or process functions or the way it works, whereas a “design” patent covers ornamental features of a product or the way it looks. “Plant” patents, which are relatively rare in comparison to “utility” and “design” patents, obviously cover plants. To be clear, there is no such thing as a provisional “design” or “plant” patent application; only provisional “utility” applications.

The Birth of Provisional Patent Applications in the United States

The “provisional patent application” (or “PPA”) celebrated its 25th birthday this year in the United States. While provisional patent applications had long been part of many foreign patent laws, they first became part of the United States patent law on June 8,1995.

Following the Uruguay Round of negotiations on the General Agreement on Tariffs and Trade (GATT), President Bill Clinton signed into law the Uruguay Round Agreements Act (URAA) on December 8, 1994. The URAA made many changes to U.S. patent law that were designed to harmonize various U.S. intellectual property laws with international intellectual property laws. For example, the URAA changed the term of a U.S. patent from 17 years from issuance to 20 years from filing. The URAA also introduced provisional patent applications into U.S. patent law for the first time ever. These provisions took effect on June 8, 1995, six months after President Clinton signed the URAA into law.

One of the ways in which the URAA placed American inventors on common ground with foreign inventors related to the circumstances that can trigger the start of the new 20-year-from-filing patent term. Prior to June 8, 1995, foreign inventors could file a provisional patent application, then file a non-provisional patent application a year later, and enjoy a 20-year patent term that ran from filing of the non-provisional application, not the provisional application. This gave them an extra year of patent term. The URAA implemented the same rule for U.S. inventors.

When provisional patent applications became part of U.S. patent law in 1995, they were heralded as a low-cost alternative to filing a non-provisional patent application. This lulled, and still lulls, U.S. inventors into thinking a provisional patent application gives them the same level of protection as a non-provisional application, but for a lot less money. Not so. For reasons discussed below, the old adage “You get what you pay for” applies here.

The Basics of U.S. Provisional Patent Applications

At a high level, a provisional patent application “expires” after one year, is not examined by the United States Patent and Trademark Office (“USPTO”), and will never mature into an issued patent (i.e., a “provisional patent” can never exist). The PPA does, however, give you “patent pending” status, and a priority date that may or may not be helpful depending on how well the PPA is drafted (more on that below).

A provisional patent application can also form the basis for a non-provisional patent application, which can lead to issuance of a utility patent. But the non-provisional patent application must be filed within one year of the filing date of the provisional patent application and claim benefit of the provisional patent application. While in certain circumstances, you may be able to extend the 12-month deadline by up to two months, prudence dictates that you make it a best practice to file your non-provisional application within 12 months of the provisional filing date.

You should also be aware that any foreign counterpart patent applications must also be filed within that same one-year period if you wish to claim the benefit of the provisional patent application in foreign countries.

A provisional patent application does not include all of the formal requirements of a non-provisional patent application. For example, a provisional application does not need any “claims” or an oath or declaration. (A “claim” is a numbered paragraph at the end of an issued utility patent, which defines the legal “metes and bounds” of the protected invention.)

The requirements for a provisional patent application include: (1) a specification (e.g., written description of the invention) pursuant to 35 U.S.C. § 112 (note this is the important part that must adequately describe the invention you seek to protect with a later-filed non-provisional patent application); (2) a drawing “where necessary for the understanding of the subject matter sought to be patented” pursuant to 35 U.S.C. § 113; (3) the required USPTO filing fee, which is currently $150 for a small entity; and (4) a cover sheet (such as Form SB/16 available at www.uspto.gov) that identifies:

• The application as a provisional patent application;
• The name(s) of all inventors;
• The residence address for each inventor;
• The title of the invention;
• Any attorney or agent by name and registration number; and,
• The correspondence address.

How is a Non-Provisional Patent Application Different?

Non-provisional patent applications, on the other hand, are examined by the USPTO and, if allowed by the USPTO, will result in an issued utility patent. Non-provisional patent applications must also include an oath or declaration of the inventors, and at least one claim (i.e., the numbered paragraphs at the end of a patent that define the scope of the invention). The filing fee (including the search and examination fees) for a non-provisional is currently $830 for a small entity, which is much higher than the $150 fee for a PPA.

New Regime: “First to File” vs. “First to Invent”

For many years, U.S. patent law provided that priority disputes between inventors were decided in favor of the inventor who was the first to invent the invention. This is why it was important to keep records of the date of conception of the invention along with the inventor’s activities showing diligence from conception up to “reduction to practice,” whether that “reduction to practice” was actual (by actually building the invention) or constructive (by filing a patent application). That all changed when the American Invents Act (AIA) was signed into law. The AIA was enacted on September 16, 2011; its various provisions became effective in phases on different effective dates. The “first to file” provision discussed below became effective on March 16, 2013.

Under the AIA, Congress enacted a broad spectrum of changes to United States patent law. One thing Congress did in the AIA was to further harmonize United States patent law with the foreign patent laws by replacing the old “first to invent” system with the “first to file” system. Under the new “first to file” system, the first inventor to file a patent application wins priority. It’s as simple as comparing filing dates. There is no need for expensive litigation to depose inventors, produce documents showing conception, diligence and reduction to practice activities, determine each party’s conception date and reduction to practice date, etc. Under the new system, priority boils down to a “race to the Patent Office.”

This change in the law to “first to file” system created one of the most important uses of provisional patent applications. Under a “first to file” system, the sooner you file your patent application the better. So even if your invention is not fully developed, a good strategy is to file a provisional patent application as soon as you have conceived of your invention, even if you file a less-than-fully-developed PPA. A good time to do this is at the same time you send a patent search letter. Just continue to keep your invention secret – no public uses, no offers to sell, no sales, no commercial activities – until after you file your fully-developed/enabled PPA or non-provisional patent application. You can also file additional PPAs with incremental developments to the invention, and then claim benefit of all of the PPAs – just make sure to file the non-provisional within one year of the earliest PPA filing date.

The PPA “Emergency”

Another good use for a PPA is when a client rings up its patent lawyer and announces I’m getting ready to do X tomorrow, e.g., launch a new product at the leading annual industry trade show, make a presentation at an industry convention, or pitch a new offering to a key client. The client then follows up by asking: Is there anything we should do to protect the invention before tomorrow? At that point, the patent lawyer knows there is an emergency, and something must be filed with the USPTO today. At bare minimum, you should prepare a PPA cover sheet and file it with the USPTO along with whatever documentation the client plans on showing to the public. This will give you some level of protection, and depending on the level of detail, it may very well be that the PPA discloses everything you need to support enabled claims in a later-filed non-provisional patent application that claims benefit of the PPA.

A word of caution: Back in the “old” pre-AIA days, there was a one-year grace period after certain acts (e.g., sales, offers for sale, public uses) to file a patent application. That one-year grace period went away with the AIA, although it is not uncommon to still hear some patent lawyers talk as if that one-year grace period still exists. It doesn’t! True, the AIA includes a narrow one-year grace period; but you should know that if you try to avail yourself of that clause you are flirting with disaster. The prudent practice is to assume that you will not get any protection from the new one-year grace period, and act as if it does not exist.

Client Can’t Afford to file a Non-Provisional Patent Application

A common misconception or myth among inventors is that a PPA is cheaper than a non-provisional patent application, yet still provides the same level of protection as a non-provisional patent application. Not so. Part of what has fueled this myth is the way PPAs were promoted when they first came into being in the U.S. back in 1995, i.e., as a cheap alternative to a non-provisional patent application. It is true that a PPA can be prepared for less money than a non-provisional patent application. But the reason a PPA can be cheaper is because it can be prepared in much less time. The trade-off, however, is that while you can spend less, you likewise get less, i.e., you get less protection.

This problem often does not become apparent to the inventor until much later when the non-provisional patent application that claims benefit of the PPA is being examined in the USPTO, and the Examiner rejects claims in the non-provisional patent application based on prior art dated after the PPA was filed. The inventor says: How can this be? I have an earlier filing date. True, but the problem is the PPA does not include sufficient disclosure to enable the claims in the non-provisional patent application. Worse yet is the situation, which could arise in litigation, where the inventor’s own commercial activities after filing the PPA and before filing the non-provisional application are used to invalidate the claims of the non-provisional patent application. This is why it is important to make sure you have a patent application on file that includes sufficient disclosure to enable the claims you want to protect by a patent, and that you do so before any public use, sale or offer to sell your invention.

So if you are faced with a situation where the client does not have the funds to file a non-provisional patent application, and wants to file a “cheap” or inexpensive PPA, just make sure the client understands the risks of doing so, and that even if a less-than-complete PPA is filed, the best course of action is to avoid potentially invalidating acts until after a complete / enabled patent application is filed.

Effect on Patent Term – PPAs Do Not Start the 20-year Term

The general rule is that the term or “life” of a utility patent is 20 years from the filing date of the non-provisional patent application from which it issued. The patent law further says that the 20-year life span can begin earlier if the patent application from which the patent issued claimed priority to certain types of earlier patent applications (e.g., a parent non-provisional patent application, an intervening continuation non-provisional patent application, etc.). Significantly, however, excluded from those earlier types of patent applications are provisional patent applications. In other words, a provisional patent application does not start the 20-year patent term. As mentioned above, the law changed in this respect when PPAs were added to U.S. patent law to place U.S. inventors on equal footing with foreign inventors.

Key Takeaways

A provisional patent application should be filed as soon as an invention is conceived to establish an early filing date under the first-to-file priority system. Keep everything secret with no commercial activities until a fully-enabled patent application is filed. PPAs are also useful in “emergencies” to quickly file on subject matter about to be disclosed. PPAs can also be used in low-budget situations to establish a filing date, but make sure the client understands the risks of doing so.

About the author

C. Dale Quisenberry is an AV Preeminent-Rated intellectual property and registered patent attorney based in Houston, Texas with 28+ years of experience in the practice of intellectual property law. He is the Founder and Managing Shareholder of Quisenberry Law PLLC. If you have any questions about protecting your intellectual property rights, contact Dale for a no-charge initial consultation at (832) 680-1000 or dale@quisenberrylaw.com. For more about Dale and the firm, please visit www.quisenberrylaw.com.

“Eight acrobats severely injured when the rigging suspending them by their hair plummeted to the floor during a circus performance in Rhode Island in 2014 have reached a $52.5 million settlement with the ownership and management of the arena where the circus was held, their lawyer confirmed Monday,” posted in AP News.

“A metal clip that held the acrobats 20 feet (6 meters) above the floor of the Dunkin’ Donuts Center snapped during the May 2014 performance, causing the women to suffer broken bones and spinal injuries. A ninth worker on the ground was also hurt.”

“Some of the women still suffer from ‘life-altering’ injuries, according to Mandell, who said he could not get into specifics because of medical privacy laws.”

Read the article.

“The attorney-client privilege is one of the bedrocks of the legal profession,” write James Dawson and Kevin E. Packman in Holland & Knight’s Insights.

“It permits communications between a client and an attorney to remain privileged. The U.S. Supreme Court has stated that by assuring confidentiality, the privilege encourages clients to make ‘full and frank’ disclosures to their attorneys, who are then better able to provide candid advice and effective representation. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). On the other hand, courts sometimes view the attorney-client privilege as preventing full disclosure. As a result of these conflicting views, the attorney-client privilege ‘protects only those disclosures necessary to obtain informed legal advice which might not have been made absent the privilege.’ Fisher v. United States, 425 U.S. 391, 403 (1976).”

This article discusses Taylor Lohmeyer Law Firm P.L.L.C. v. United States and the prior decision.

Read the article.

“Earlier this month, both houses of Congress passed the 2021 National Defense Authorization Act (‘2021 NDAA’),” write Pooja Shah Kothari and Michael M. Lloyd in Covington’s Information Reporting.

“Included in Title LXIV of the 2021 NDAA (Title 64 for those of us rusty on Roman numerals), are new information reporting requirements intended to identify individual beneficial owners of certain business entities. Subject to a number of exceptions, the bill requires certain U.S. and foreign entities to file annual reports with the U.S. Treasury Department’s Financial Crimes Enforcement Network (“FinCEN”) that will disclose information regarding the beneficial owners of reporting companies. Overall, the reporting will identify those individuals exercising “control,” as the term is defined, over those entities required to report. According to the legislation, over two million corporations, LLCs, and similar entities are formed under state law in the United States each year, and many “malign actors seek to conceal their ownership” of various entities intended to facilitate illegal activity. Accordingly, the reporting mandated by the legislation is intended to help protect national security interests and interstate and foreign commerce, as well as counter the financing of terrorism.”

Read the article.

“Marquette University named the former top attorney at Harley-Davidson Inc. as its new vice president and general counsel,” reports Sari Lesk in Milwaukee Business Journal’s Education.

“Paul Jones starts Jan. 4 in his new position. He spent 10 years as an executive officer for the Milwaukee-based motorcycle manufacturer. There, he managed Harley’s global legal risk and oversaw the company’s legal matters, according to the Milwaukee university.”

“The Milwaukee Business Journal named Jones a top corporate counsel in 2019. Jones left Harley-Davidson last year as its chief legal officer and chief compliance officer.”

Read the article.

“This year, Biglaw bonus season generally consists of two components — the traditional year-end bonus and special bonuses given in appreciation of associates’ hard work during this particularly challenging time. And if the total bonuses don’t add up to those combined numbers, well, then a firm is below market,” reports Kathryn Rubino in Above the Law’s Biglaw.

“At Alston & Bird, the year-end bonuses are individualized and tied to hours, not class year, as at most Biglaw firms. But even beyond that issue, tipsters at the firm are reporting that the bonuses are only year-end money with no special bonus money.”

Read the article.

“Non-compete agreements may all but disappear from the Washington, D.C. employment landscape in 2021,” discuss Garen E. Dodge, Nathaniel M. Glasser, Brian W. Steinbach, Maxine Adams & Eric Emanuelson in Epstein Becker Green’s Non-Compete Agreements.

“On December 15, 2020, the District of Columbia Council voted 12-0 to approve the Ban on Non-Compete Agreements Amendment Act of 2020 (B23-0494) (the ‘Bill’), which would prohibit the use and enforcement of non-compete agreements for all employees except certain highly paid physicians. If enacted into law, Washington, D.C. will have adopted a much stricter policy than several other states that have recently restricted the use of non-compete agreements—including its neighbors Maryland and Virginia. The Bill is currently awaiting approval by the Mayor before, absent a veto, it is sent to Congress for the required 30-days of session Congressional review period.

Read the article.

“As a general rule, courts do not save sophisticated parties from bad deals; instead, courts enforce both good deals and bad deals between sophisticated parties according to the express terms set forth in a written contract,” writes Glenn D. West in Global Private Equity Watch’s Insights.

“New York is particularly prone to upholding these freedom of contract principles because freedom of contract avoids ‘judicial upending of the balance struck at the conclusion of the parties’ negotiations,’ as well as ‘promotes certainty and predictability and respects the autonomy of commercial parties in ordering their own business arrangements.'[2] But most general rules have their exceptions. And a recent decision by New York’s highest court, The Trustees of Columbia University v. D’Agostino Supermarkets, Inc., 2020 WL 6875988 (N.Y. Nov. 24, 2020), illustrates the application of one of those exceptions to the otherwise strong policy favoring freedom of contract—unenforceable penalties for breach of contract.”

Read the article.

“On Monday, December 21, 2020, the United States Congress passed a second large stimulus bill[1] (the ‘Relief Bill’) aimed at curtailing the economic disruptions caused by COVID-19. The Relief Bill, among other things, extends renewable energy tax credits for wind projects, solar projects and carbon capture and sequestration and contains specific provisions addressing offshore wind farms. These extensions include a one-year extension for wind projects, a two-year extension for solar projects and a two-year extension for carbon capture and sequestration projects. President Trump is expected to sign the Relief Bill and has until December 28, 2020 to do so, when the current stopgap funding measure expires,” write Jeffrey G. Davis, Daniel T. Kiely, George K. Haines, Isaac L. Maron & Andre M. Smith II in Mayer Brown’s Tax Equity Times.

Read the article to learn about the credits.

As part of the launch of the Barnes & Thornburg Racial and Social Justice Foundation, the firm’s lawyers and staff have donated more than $200,000 to promote, advocate and effect racial and social justice in the firm’s local communities.

The foundation, a 501(c)(3) organization, was established in 2020 with financial support coming entirely through personal donations from the lawyers and staff in each of the firm’s 19 offices. To start, four organizations have received $50,000 each in grants in four of Barnes & Thornburg’s markets – Atlanta, Indianapolis, Los Angeles and Minneapolis. As the foundation continues to grow in 2021, additional nonprofits and markets will be added to the mix.

‘No Gift Too Small’

The firm has undertaken fundraising efforts driven by the firm’s employees to generate broad participation under the mantra “no gift is too small.” The $50,000 grants were presented this month to the following organizations:

• All Square, located in Minneapolis, provides individuals impacted by the criminal justice system with opportunities to become future leaders, business owners, legal practitioners and entrepreneurs. Barnes & Thornburg’s donations will contribute to All Square’s Prison-to-Law Pipeline program, which offers ABA-accredited and ABA-approved paralegal and legal degrees within Minnesota prisons. One of its unique fundraising and skills development vehicles is a grilled cheese restaurant in Minneapolis.
• Project Pinnacle, located in Atlanta, provides nonviolent offenders under the age of 25 with life skills training, legal rights and responsibilities education, and career development opportunities. The 10-year-old organization is dedicated to restoring young people to respectful positions in the community.
• Social Justice Learning Institute, located in Los Angeles, is dedicated to improving the education, health and well-being of youth and communities of color by empowering them to enact social change through research, training and community mobilization. The institute partners with organizations and businesses to provide academic support services, transform neighborhood conditions, and rectify injustice.
• Public Advocates in Community re-Entry (PACE), located in Indianapolis, provides currently and previously incarcerated individuals and their family members with transitional and pre-release services, employment and job placement services, and addiction support services. PACE also provides care-coordinated case management to assist with family reunification, transitional housing, substance use disorder treatment groups, mental health treatment, recovery support services, and education.

In addition to Lahn, who serves as president, Barnes & Thornburg’s Racial and Social Justice Foundation’s board members are Allen Baum, partner-in-charge of the Raleigh office; Michael Carrillo, managing partner of the Chicago office; and Roscoe Howard, managing partner of the Washington, D.C., office. Ex officio members are Steven Merkel, chief operating officer and the foundation’s treasurer, Robert Grand, firm managing partner, and Dawn Rosemond, firm diversity partner.

The foundation will work hand in hand with Barnes & Thornburg’s Racial Justice Committee, which is tasked with continually looking at how the firm works to address racial justice, both externally and internally.

In addition to the foundation’s grants, Barnes & Thornburg attorneys plan to contribute time and professional experience in support of the above organizations.

To choose grantees, the foundation employed a rigorous scoring system to vet charitable organizations against specific criteria that align with its mission and goals.

Bitmovin, a world leader in online streaming video technology, announced today that it has created an open-source universal nondisclosure agreement (uNDA) specifically designed to speed up startup transactions and may also be used by any company for the purchase or sale of goods and services. The new uNDA was developed by Bitmovin’s General Counsel and a team of researchers from the UC Hastings Startup Legal Garage, a leading university-based program that provides pro bono services to nascent entrepreneurial companies in the technology and biotech industries.

Plug and Play Contracting
The uNDA was created to eliminate the time spent reading and negotiating NDA’s for routine commercial transactions by standardizing the NDA clauses across companies. The development team first looked at hundreds of NDA’s to determine the most commonly used and salient clauses. The uNDA was then evaluated by nearly 30 general counselors representing small startups to larger multinational corporations.

Standardized Contracting
The uNDA can be customized to suit a variety of different business purposes with 13 standardized clauses and permutations customizable to specific transactions. Signers to the uNDA agree to disclose the presence of these clauses and any permutations or additional language. If the NDA contains clauses beyond those in the uNDA, the drafter must disclose those clauses. Users of the uNDA expressly agree that they do not consider the uNDA legal advice in any way and are required to seek independent legal counsel. Given that the clauses are now standardized, the uNDA is a read-once document. When negotiations are required, it would be a paint by numbers approach.

Barnes & Thornburg has elected 10 attorneys as partners, effective Jan. 1, 2021. The new partners, their office location and practice areas are:

Chicago

• Genevieve E. Charlton, Intellectual Property
• James R. Vergara, Intellectual Property

Columbus

• Laing P. Akers, Real Estate

Dallas

• Juanita DeLoach, Intellectual Property

Indianapolis

• Neal A. Brackett, Litigation
• Angela B. Freeman, Intellectual Property
• J.T. Larson Jr., Litigation

Los Angeles

• Joshua B. Rosenberg, Litigation

Elkhart/South Bend

• Michael Fenech, Corporate

Washington, D.C.

• Renee A. Danega, Intellectual Property

DALLAS – Michael K. Hurst, name partner at the highly respected Dallas trial boutique Lynn Pinker Hurst & Schwegmann, has been named as a member of The International Society of Barristers.  

The Society was formed in 1965 to recognize the legal profession’s top attorneys in supporting such principles as retaining the jury trial as the foundation for justice; offering training in trial advocacy; encouraging civility in an adversarial system; and protecting the rights of citizens, the independence of the judiciary and the integrity of the Bar.  

Membership to the Society is by invitation only, following a rigorous screening process that considers the lawyer’s ability, experience, accomplishments and ethical standards as assessed by trial lawyers and judges. 

Hurst has consistently been recognized as one of the top trial lawyers in the nation for large and high-stakes commercial and intellectual property litigation. Board Certified in Civil Trial Law by the Texas Board of Legal Specialization, he has served as President of the Dallas Bar Association and has been recognized as an Outstanding Mentor by both the Dallas Association of Young Lawyers and the Texas Young Lawyers Association. 

Hurst earned his law degree from the South Texas College of Law in Houston in 1990, and his undergraduate degree from The University of Texas in 1987. 

“University of North Georgia President Bonita Jacobs has announced Reggie Lampkin as the new university general counsel, effective Jan. 1,” reports Sylvia Carson of UNG in WGAU Radio’s Local News.

“He brings varied experience to the role of general counsel, including litigation, compliance with federal educational laws, contract review, licensing and intellectual property rights agreements, and personnel and policy matters.”

“Lampkin joins UNG from the Georgia Department of Education, where he has served as the lead attorney for finance and business administration since 2014. In addition, from 2012 to 2014 he served as assistant legal counsel for Kennesaw State University supporting the areas of student affairs, athletics and contracts and assisting with employee matters.”

Read the article.

“Law firms rushed to secure government aid early in the coronavirus pandemic, borrowing nearly $12 billion from the U.S. Small Business Administration’s Paycheck Protection Program as their revenues were threatened by court closures and a freeze in corporate deals,” write Rick Linsk and Caroline Spiezio in Reuters’ Big Story 10.

“The program, created by Congress in March to save jobs and help small employers weather the COVID-19 crisis, has faced criticism that too much of the $525 billion in approved aid went to big businesses in high-wage industries like law. Not only did law firms obtain billions of dollars through the program, but the loans didn’t always ensure jobs and paychecks would be protected, a Reuters analysis found. At least 10 firms that took in a combined $68.5 million in forgivable, government-guaranteed loans under the program went on to cut positions, salaries or both.”

Read the article.

“Robinhood Markets has agreed to pay $65 million to settle Securities and Exchange Commission allegations that the broker failed to properly inform clients that it sold their stock orders to high-frequency traders and other financial firms,” reports Bloomberg in Fortune’s Finance.

“Robinhood, known for its popular smart-phone app that offers commission-free trading, also agreed to have an outside consultant monitor its compliance with rules that require firms to provide best execution for trades. Robinhood has gained notoriety during the pandemic by attracting a massive customer base of younger investors.”

Read the article.

“A federal grand jury has charged prominent attorney Joshua Treem and a private investigator in the racketeering case against defense attorney Kenneth Ravenell, alleging that they helped conceal Ravenell’s conduct by obtaining false statements to protect him,” reports Justin Fenton in The Baltimore Sun’s Crime.

“Ravenell, 61, has been under indictment since last fall, when he was charged with conspiracy to commit racketeering, money laundering and drug distribution for allegedly covering up and aiding the crimes of a Jamaican marijuana kingpin, Richard Byrd.”

Read the article.

“Including a contractual dispute resolution provision in an agreement may reduce costs, expedite resolution, and potentially lead to a more favorable outcome. But a poorly crafted provision can do just the opposite.” Philip M. Guess, Elizabeth H. White and Meredith D. Bateman discuss the following key recommendations in K&L Gates’ Latest Thinking.

• If requiring arbitration, specify the particular rules for selecting an arbitrator.
• Do not include mandatory mediation clauses.
• Include all relevant dispute resolutions provisions in the same section.
• Pay attention to choice-of-forum and choice-of-law changes when drafting agreement amendments.
• Do not split subject matter into separate forums (without being very careful).
• Understand the pluses and minuses of bench trials, jury trials, arbitration, and other alternative dispute resolution.
• Do not ignore restrictions related to the waiver of a jury trial for certain jurisdictions and certain claims.
• Understand the importance of selecting a court to enforce arbitration and arbitration awards.

Read the article.

“Many business divorce practitioners are familiar with a phenomenon one might call ‘petitioner’s remorse’ – an often abrupt abandonment of one’s desire to dissolve a closely-held business entity when the opposing party unexpectedly declines to oppose or consents to dissolution. The dissolution petitioner’s rationale in bringing the claim may have been an expectation that the opposing party would fear the prospect of dissolution, oppose it mightily on the merits, and ultimately be forced into some sort of negotiated or compelled buyout. In that case, when the response is lack of opposition or consent to dissolve, the in terrorem effect and leverage is lost,” writes Franklin C. McRoberts in Farrell Fritz’ Dissolution Basics.

Read the article.