IP LAW BUGLE DECEMBER 2017 | ISSUE 18 | |||||||||||||||||||
IN THIS ISSUE: By Laura Winston, Kim Winston LLP BREAKFAST AT INTA’S 2018 ANNUAL MEETING NEW LEGAL OBLIGATIONS FOR COMPANIES CONSTITUTE BY SHAREHOLDES IN PARAGUAY By Dr. Andrea Oliva & Dr. Maria Pia Altieri, Cervieri Monsuarez & Asociados ROBIC CELEBRATES 125 YEARS IN BUSINESS ANTEQUERA PARILLI & RODRIGUEZ RECOGNIZED IN THE LEGAL 500 | WELCOME, NEW MEMBER FIRMS! The AIPF is pleased to welcome the following member firms to the association:
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Pay, Win or Lose? – Parties appealing from TTAB/PTAB to Federal Court may be Required to pay USPTO’s costs, at least for now. By Laura J. Winston Kim Winston LLP Four years ago the USPTO made a new policy determination with regard to the award of fees in ex parte appeals to federal district courts. The USPTO’s long-standing rule, arising out of Section 21(b) of the Trademark Act and Section 145 of the Patent Act, has been that the expenses of an ex parte appeal from the Trademark Trial and Appeal Board or the Patent Trial and Appeal Board to district court shall be paid by the applicant, without regard to who prevails. Beginning in 2013, the USPTO began requesting reimbursement for the time spent by the attorneys and paralegals defending against the appeals. See Shammas v. Focarino, 990 F. Supp.2d 587 (E.D. Va. 2014).
Not surprisingly, this new position of the USPTO is controversial, to say the least, and is being challenged based on (1) the longstanding practice that the “American Rule”, under which litigants will pay their own attorneys’ fees in absence of a contrary statute or contract provision, applies, and (2) that the sections of the laws are vague as to what constitutes “expenses. In Nantkwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) a Federal Circuit panel held that Section 145 of the Patent Act allows the award of USPTO attorneys’ fees. The Federal Circuit sua sponte vacated the panel decision and ordered a hearing by the full Federal Circuit. Both the American Intellectual Property Law Association and the Federal Circuit Bar Association have filed briefs challenging the USPTO’s policy. The rehearing has not yet been scheduled.
In Shammas, the award was over $36,000. In Nantkwest, the award at issue is over $78,000. While the issue remains unsettled, it is important to advise clients contemplating ex parte appeals to federal court that they may be responsible for USPTO attorneys’ fees regardless of the outcome of the appeal.
Thanks to AIPF Trademark Committee members Erik Pelton and Blair Barbieri for their help with this article. | |||||||||||||||||||
NEW LEGAL OBLIGATIONS FOR COMPANIES CONSTITUTE BY SHAREHOLDERS IN PARAGUAY By Dr. Andrea Oliva and Dr. Maria Pia Altieri Cervieri, Monsuarez & Asociados On October 5th, 2017, in order to prevent money laundering and tax evasion, Paraguay has sanctioned Law N° 5895 “Which establishes rules of transparency in the regime of companies constituted by shareholders”. By this law, the possibility of having bearer shares is eliminated and consequently forbidden. This important change in Paraguayan legislation continues the trend and guidelines of the Money Laundering Prevention Secretariat (SEPRELAD), which has established money laundering and terrorist financing prevention regulations, based on risk management systems and preventive policies that must be applied by the obliged subjects (financial entities), under the supervision of the Central Bank of Paraguay (BCP). What is the main change incorporated by Law N° 5895? With the approval of this law, the articles of the Civil Code that mention the use of bearer shares are expressly modified. That is, the existence of bearer shares is eliminated and forbidden. As a result, the obligation of the companies to have registered shares is mandatory. This implies including in the company bylaws the name, nationality, professional status and domicile of the partners and the specific mention in the shares and provisional certificates of the shareholder’s name, stating expressly the nominative nature of the shares. Who are obligated to comply with the Law N° 5895? Corporations with bearer shares and their shareholders, since they have the obligation to modify their bearer shares for registered shares before the Board of Directors of the Company. How to proceed with the change of bearer shares for registered shares and what is the term to do it? In order to make the change, the shareholders must exchange their shares with the Board of Directors of the Corporation, within a maximum period of 24 months from the entry into force of the Law. After the Act has been made, the Company is obliged to notify the Public Office of the Treasury Advocacy (“Abogacía del Tesoro”). The requirements relating to the communication mentioned above have not been determined for now. Consequently, the preparation of its regulations is under the authority of the Executive Power through the Ministry of Finance. However, Resolution N° 345/2015 issued by the SEPRELAD remains in force. By this legal instrument, Financial Entities are obliged to have information regarding the final beneficiaries of their clients, the percentages of share participation, the personal data of each of them and data on who exercises and applies their final control. All of these must be communicated to the control authorities. | |||||||||||||||||||
Is it necessary to make changes to the social statutes when there are bearer shares? With the entry into force of the new law, the social statutes of the companies with bearer shares are automatic modified by law. As a result, it is not necessary to hold any Extraordinary Shareholders’ Meeting to fulfill this new legal obligation. What happens in case of transfer or sale of shares? The buyer must communicate the transfer of shares to the company within the following 5 business days, notwithstanding that the communication is made by the seller. For this purpose, it must be record the full name, identity card (I.D.) and/or Unique Taxpayer Registry (RUC) and the address of the new buyer. | |||||||||||||||||||
Subsequently, the company has the obligation to communicate this transfer to the Public Office of the Treasury Advocacy within a maximum period of 5 working days from the date of receipt of the communication by the buyer. The obligation to make the communication to the Treasury Advocacy is not applicable to issuing corporations that operate in the stock market, as they are subject to different provisions in this matter. What are the tax implications on the exchange of shares? The exchange of bearer shares to nominative is exempt from all types of taxes as provided in the law. What penalties are provided in case of non-compliance? Shareholders who do not comply with the provisions of the law within a period of 24 months will automatically be suspended. As a result, they will not be able to receive their dividends. Additionally, they will be liable to be sanctioned with penalty fee from 50 to 500 minimum wages (USD 680 to 6800 approximately). On the other hand, Companies that have not made the conversion of at least 90% of their shares within the period foreseen, will be subject to the following legal consequences:
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ROBIC CELEBRATES 125 YEARS IN BUSINESS The AIPF congratulates long-standing member firm, ROBIC, for celebrating its 125th | |||||||||||||||||||
Anniversary in September 2017. ROBIC was founded in Montreal in 1892 and has since expanded its offices in Montreal and Quebec City. The firm includes a team of over 180 support staff and professionals specialized in intellectual property and business law. Distinguished members from ROBIC include Isabelle Girard, Immediate Past President and Patent Committee Chair; Jeremy Lawson, Membership Committee; Alexandra Steele, Patent Committee; and Marcel Naud, WebIPHour Speaker.
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ANTEQUERA PARILLI & RODRIGUEZ RECOGNIZED IN THE LEGAL 500 The AIPF congratulates Antequera Parilli & Rodriguez for their recognition in The Legal 500 as a Top Tier Firm in Intellectual Property Law. This ranking also includes Ricardo | |||||||||||||||||||
Alberto Antequera on its list of “Leading Lawyers.” | |||||||||||||||||||
FEATURED MEMBER BLOGS What is a USPTO Trademark “Office Action”? IPelton Blog November 30, 2017 by Erik M. Pelton Patent Priorities Blog November 27, 2017 by Elissa N. Knoff BR at INTA: Changing Landscape of Latin America B&R Latin America Blog October 13, 2017 by B&R Latin America Team | |||||||||||||||||||
Does your firm have a blog? Send your information over to admin@aipf.com to see your blog on our MEMBERS BLOG webpage at aipf.com/memberblogs. | |||||||||||||||||||
CURRENT MEMBER FIRMS Aird & McBurney LP | Allen Dyer Doppelt Milbrath & Gilchrist PA | Antequera Parilli & Rodriguez | Aperio IP Attorneys | B&R Latin America IP LLC | Backstrom & Co. Attorneys | Barger, Piso & Partner | Batavia Patentservice Asia | Bennett & Philp Lawyers | Bookoff McAndrews PLLC | Breiner & Breiner LLC | Caesar Rivise PC | Cervieri, Monsuarez & Asociados | Citemark International IP | Chofn Intellectual Property | de Chalains | Deeth Williams Wall LLP | Dumont | Elan IP Inc. | Erik M. Pelton & Associates PLLC | Erise IP | FB Rice | Ferraiuoli LLC | Finnian & Columba | Fireball Patents | Furgang & Adwar LLP | Goudreau Gage Dubuc | Guerra IP | Halitligil & Ark Patent and Trademark Consultancy | Hepworth Browne | Hofbauer Professional Corporation | Hovey Williams LLP | Iberbrand | IP Watchdog | Jonas Rechtsanwaltsgesellschaft mbH | Kelly IP LLP | KETNER, Legal Consultancy, Representation and Protection LTD | Kim Winston LLP | Lang & Rahmann | Law Office of Karen Dana Oster | Law Office of Albert Wai-Kit Chan PLLC | Letters & Thoo | Lext Propriedade Intelectual | LSP Partnership | Martegani & Partners | Maiwald Patentanwalts GmbH | MBM Intellectual Property | McClure, Qualey & Rodack | Michael Buck IP | Mirandah Asia | O’Conor & Power | Olarte Moure | Platinum IP | Price Heneveld LLP | Robic LLP | Rothwell, Figg, Ernst & Manbeck PC | Sughrue Mion PLLC | Sugimura International Patent and Trademark Attorneys | Thomas/Horstemeyer LLP | Thrive IP | Trung Thuc JSC | United Trademark and Patent Services | Valadares Law Professional Corporation | Vanrell IP | Watson Intellectual Property Group PLC | NOT A MEMBER? Register at aipf.com/Join-AIPF and join the AIPF today*! To be eligible for AIPF membership, the applicant law firm must specialize in intellectual property law according to one of the following criteria:
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*AIPF annual membership runs from January 1 to December 31 and is prorated from January 1. Membership is by firm, not by individual. | ||||||||||||||||||
