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United States > Intellectual property > Patents: prosecution (including re-examination and post-grant proceedings) > Law firm and leading lawyer rankings

Editorial

Index of tables

  1. Patent: prosecution (including re-examination and post-grant proceedings)
  2. Leading lawyers

Leading lawyers

  1. 1

Finnegan, Henderson, Farabow, Garrett & Dunner LLP’s ‘outstanding’ IP practice includes experienced patent attorneys with deep knowledge of the complexities of patent office processes, from prosecution and re-examination, to reissue proceedings and appeals to the Patent Trial and Appeal Board (PTAB) at the USPTO. Since being the first to file a petition for and subsequently argue a post-grant review of a covered business method (CBM) case following the implementation of the America Invents Act (AIA), the team has acted for petitioners and patent owners in a number of high-profile post-grant proceedings. In 2015, it acted for clients such as Fidelity National Information Services, Biogen and Neste Oil in petitions for inter partes reviews (IPRs). Erika Harmon Arner heads the patent team from its Reston office and is a key contact for post-grant proceedings, as are of counsel James Boyle and PTAB specialists Michael Flibbert and Maureen Queler. Washington DC-based Mark Sweet leads a team in assisting NanoFlex Power Corporation with its worldwide patent portfolio relating to organic photovoltaic devices, including invention capture, drafting and prosecution of new applications in the US and abroad, and conducting due diligence regarding competitor activity. Boston-based Leslie McDonell is ‘one of the best in the field’ and handles a portfolio of several hundred patent applications for AbbVie filed around the world relating to dual-variable domain antibodies. Michele Bosch and Adriana Burgy are also recommended attorneys by clients.

Leveraging its strong patent litigation capabilities, Fish & Richardson P.C.’s dedicated full-service post-grant team has handled 147 post-grant proceedings, including a number of high-profile matters. Among its recent work, Karl Renner and Andrew Patrick successfully acted for InComm in an ex parte re-examination case. It also has a strong reputation for patent prosecution and providing opinions and strategic advice. Areas of particular expertise include IT, pharmaceuticals, life sciences and media. In Boston, Jeffrey Barclay and computer hardware and software expert Paul Pysher are recommended; in New York, Christopher Bowley has particular expertise in a variety of optical technologies. LG Electronics, 3M and Google are among its key clients.

Foley & Lardner LLP impresses with its ability to handle complex patent prosecution as well as re-examinations, interference, IPRs, and other PTAB proceedings. Washington DC-based Michele Simkin heads the IP department, which also includes George Quillin, Kristel Schorr and Chicago-based Michael Houston, who are key names for counseling, post-grant work and interference proceedings. Boston-based John Lanza is a member of the electronics practice and technology industry team; along with Matthew Lowrie, Lanza assisted a household-name client on a significant IPR re-examination, including an appeal to the PTAB. Stephen Maebius assisted United Therapeutics procure the product-by-process patent at issue in United Therapeutics v. Sandoz, which was found valid and infringed. Pavan Agarwal handles licensing and patent procurement in the hi-tech space, with a focus on electronics. Madison-based Mark Kassel, whose patent practice emphasizes biotechnical and chemical arts is another name to note. All individuals are based in Washington DC unless otherwise stated.

McDermott Will & Emery LLP is singled out for its ‘unique combination of strong technical background, brilliant legal skills specific to IP, and strong business acumen’, which ‘greatly facilitates business aspects of the entire set of IP ownership issues’. It has strong expertise in healthcare, life sciences and nanotechnology and is very accomplished in patent prosecution and post-grant proceedings. Carey Jordan, Iona Kaiser and Jeremy Harrison in Houston secured a favorable IPR settlement on behalf of Halliburton, which resulted in the dismissal of concurrent litigation against a subsidiary of Acacia. A longstanding client is Google, which it has advised on patent protection, dealing with potential infringement by competitors, patent validity and patentability issues, and prosecuting and managing its patent portfolio. The firm also has an established Asia practice, advising clients such as Takeda, Panasonic and Taiwan Semiconductor Manufacturing Company. The team is represented in the firm’s Washington DC, Chicago, New York, Los Angeles, Boston, Houston and Silicon Valley offices, and is led by Orange County-based Mark Itri. Stephen Becker and Robert Underwood are also key contacts.

IP boutique Cantor Colburn LLP’s clients are drawn from the US, Europe, Japan, South Korea and elsewhere, and range from hi-tech start-ups, mid-sized manufacturing companies, and universities, to Fortune 500 companies such as General Electric, Samsung and Baker Hughes. It also has a growing pharmaceutical practice, and advises the likes of Achillion Pharmaceuticals and Allergan. Name partners Michael Cantor and Philmore Colburn head the practice, which operates from five offices across the US. Leah Reimer and Pamela Curbelo are the main contacts for chemical, material and life sciences sector clients. Atlanta-based Jeffrey Waters has experience in GPS, internet, e-commerce, semiconductors and telecoms. Korea practice head James Merrick and post-grant proceedings specialist Andrew Ryan are further names to note. All individuals are based in Hartford unless otherwise stated.

Excellent on all counts’, Fitzpatrick, Cella, Harper & Scinto has over 50 attorneys in its patent prosecution team, which is led out of New York by Anthony Zupcic. The group includes many former USPTO examiners and has prosecuted patents across a wide range technologies, including electronics, biotechnology and mechanical arts. Its clients range from Fortune 100 companies to start-ups. Demonstrating its skill in post-grant proceedings, Raymond Mandra and litigators Dominick Conde and William Solander secured four IPR defense wins before the PTAB on behalf of drug company Ikaria. Electronic and computer technologies expert Michael Sandonato and Frank Delucia are also recommended, as are Washington DC-based Steven Warner, Justin Oliver and Brian Klock.

Knobbe Martens Olson & Bear LLP’s patent prosecution team works closely with its litigation attorneys to provide clients with assistance on broad range of IP issues. Salima Merani has notable experience in building patent portfolios for life sciences clients, including medical and biotech companies. Relievant Medsystems, Insera Therapeutics and Metavention are a few of its representative clients. Gerard Von Hoffmann focuses on the medical device industry and is assisting start-up companies Claret Medical and Direct Flow Medical on building patent portfolios. Brenton Babcock heads the post-grant proceedings practice and handles interference, re-examination, IPR and CBM review proceedings before the PTAB. Recent highlights include successfully defending patent owner Skyworks Solutions in three separate IPR petitions regarding integrated circuits and protecting all claims in all challenged patents. Steve Jensen is another name to note for post-grant proceedings work and, in 2015, Jensen and Jared Bunker successfully defended Gentherm against an IPR bought by IGB Automotive.

Morrison & Foerster LLP has a strong practice, with over 100 PTO-admitted trial lawyers and patent prosecutors, and it experienced representing both patent owners and petitioners in various types of proceedings. Its core strength is in California, with practitioners in San Francisco, Palo Alto, Los Angeles and San Diego counseling and representing clients drawn mainly from the hi-tech, life sciences, cleantech and consumer products sectors, including the likes of Genentech, Netlist and Yamaha. Los Angeles’ Mehran Arjomand co-heads the firm’s inter partes review and post-grant practice, and regularly handles adversarial proceedings at the PTO, including PTO proceedings co-pending with litigation. San Francisco-based Otis Littlefield counts Novartis among his clients and advises the company on a wide range of matters, including development of patent strategies, drafting and prosecuting patent applications, and performing IP due diligence assessments, as well as developing IP strategies for several of its vaccines and handling all of its personalized medicine IP work. Mika Reiner Mayer heads the medical device patent practice from Palo Alto, and is acting for Gilead Sciences on its high-profile oncology and HIV portfolios. James Mullen, Catherine Polizzi, Peter Yim, Michael Ward and Jie Zhou are also recommended.

Sterne, Kessler, Goldstein & Fox PLLC’s Washington DC-based team has been preparing and prosecuting patent applications for over 35 years, and is experienced working with clients ranging from startups to companies with large and active portfolios. A team led by Michael Specht and the firm's managing director Michael Ray, is assisting GTL on developing and implementing a strategy to file post-grant reviews (PGRs), IPRs and CBMs against Securus patents. Robert Sterne has been advising ParkerVision since 1998 on patent prosecution and, more recently, on IPRs, both domestically and internationally. Recent work highlight saw Sterne handling IPRs covering the patents in an on-going dispute between ParkerVision and Qualcomm. Eldora Ellison has extensive experience in post-grant proceedings, building on a strong foundation in patent prosecution; in 2015, Ellison led a team defending two IPRs that were filed against ImmunoGen’s patents relating to a breast cancer drug. Eric Steffe and Robert Sokohl are also key attorneys.

Baker Botts L.L.P. has an impressive roster of clients in the patent prosecution arena, including MasterCard International, Halliburton, Hitachi and Columbia University. The team has been particularly active in post-grant proceedings, having handled over 130 IPRs and over ten CBMs. Dallas-based Bart Showalter is the firm-wide chair of IP department, and has particular expertise in the electronics, telecoms and software fields. Showalter was part of a cross-office team that advised Cisco Systems on a number of patent matters, including worldwide patent portfolio management, licensing and transactional matters. Palo Alto-based Travis Thomas continues to provide a wide range of IP services to Facebook, including the development and management of its worldwide patent portfolio, which continues to grow through the patenting of its own innovations and the acquisition of key patent portfolios. Hopkins Guy and Eliot Williams in Palo Alto, Robert Scheinfeld in New York and Roger Fulghum in Houston are further names to note.

Birch, Stewart, Kolasch & Birch, LLP operates a broad patent prosecution and review practice out of Falls Church, Virginia, covering both utility and design patents. In addition to working on behalf of major US-based clients, it also frequently works for non-US clients with international operations, and especially electronics companies based in Japan and Korea. Other industry expertise includes life sciences, biotechnology, cleantech and mechanical engineering, with clients including the likes of Google, Honda, LG and Mitsubishi Electric. Recent highlights include its successful representation of BioMarin in IPR proceedings at the PTAB challenging three patents relating to the treatment of Pompe disease. MaryAnne Armstrong and Michael Mutter are further names to note for IPR matters. Michael Cammarata, Gerald Murphy, Charles Gorenstein and Richard Anderson are also main contacts.

Headquartered in and focused on Silicon Valley, Fenwick & West LLP’s 36-strong team of patent prosecution attorneys has particular experience acting for technology companies, which span the life cycle from start-up to publicly traded, household names, such as GoPro, Spotify, Amazon and Xiaomi Technology. Robert Hulse continues lead advice to key client Facebook, and assists the social media giant with patent applications in jurisdictions throughout the world, including, recently, obtaining patents for Sponsored Stories type of ad units and a design patent on the Facebook ‘friend’ icon. Rajiv Patel is another name to note, and counts Twitter and Basic Science among his clients. The practice also has a strong post-grant proceedings practice and, in 2015, Stuart Meyer successfully invalidated 14 claims of a patent asserted by well-known ‘patent troll’ MPHJ Technology Investments against a large number of users of Hewlett-Packard’s multi-function devices. Litigator Michael Sacksteder and Michael Farn are also keys names to note.

The technically savvy team at Kenyon & Kenyon LLP is strong across the gamut of post-grant proceedings, and has filed numerous requests for ex parte and inter partes re-examination, and post-grant and inter partes review on behalf of a range of clients, including Volkswagen Group of America. Within the team, Patrick Birde handles portfolio development and disputes involving commercially significant patents, including re-examinations, reissues and interferences, as well as foreign opposition and invalidity proceedings; Clifford Ulrich focuses on the mechanical, electrical and electro-mechanical fields, as well as design patents, and has substantial experience in various post-grant proceedings, including IPRs and ex parte re-examinations. Washington DC-based Daniel Shanley has expertise in automotives, medical devices, oil and gas, marine engines and consumer products. Other notable clients include Toyota Motor Corporation, Nippon Steel & Sumitomo Metal, and ExxonMobil. All individuals are based in New York unless otherwise stated.

Kilpatrick Townsend & Stockton is praised for its ‘well-rounded patent practice’, which covers the prosecution of patents and post-grant work for both patent owners and petitioners. It has an impressive geographical reach to its practice, with a sizeable team spread across ten offices. Atlanta-based Wab Kadaba chairs the IP department and is a key name for post-grant proceedings, as is electronics and software specialist William Shaffer in San Diego. A recent highlight was acting for Motorola in IPR proceedings before the USPTO involving two related patents for displaying website content on mobile devices, which are also the subject of litigation in Delaware. Charles Calkins in Winston-Salem, Darin Gibby in Denver and Babak Sani in San Francisco are also recommended.

IP boutique Oblon provides deep technical expertise and operates a very active patent prosecution service as well as a highly capable and growing review practice from its single US office in Alexandria, Virginia, which is supported by an overseas office in Tokyo. The post-grant proceedings practice, led by the well-regarded Stephen Kunin and Scott McKeown, regularly recovers patent portfolios made subject to post-grant disputes as a result of high-profile concurrent litigation. In 2015, the team filed 14 IPRs for Google against Rockstar Consortium relating to telecoms methodologies and interfaces. LG Display, L’Oréal, eBay and Paypal are all clients. Todd Baker and Greg Gardella are further names to note.

Pillsbury Winthrop Shaw Pittman LLP’s client roster features both individual inventors and large corporations headquartered in US and overseas. Jack Barufka, co-head of the firm-wide IP practice, has extensive experience in prosecution and post-grant proceedings, and has handles matters for several Fortune 500 companies. Recent highlights include successfully representing MotionPoint in invalidating a patent that a district court had previously found valid and infringed. The team saw the arrival of a number of patent attorneys and IP litigators in 2015, further boosting its post-grant proceedings practice. Josh Tucker, who splits his time between Austin and Silicon Valley, was among the new arrivals, and he earns praise as an attorney who ‘drafts and prosecutes patent applications with an eye towards how patents issuing from those applications may be viewed in future litigation’. Bryan Collins and Patrick Doody are also recommended. James Gatto, Ben Esplin and Bradford Blaise departed for Sheppard, Mullin, Richter & Hampton LLP in June 2015, and Mark Danielson went to Foley & Lardner LLP in August 2015. Named attorneys are based in Northern Virginia unless otherwise stated.

Renowned for its high-volume patent filing practice, especially for foreign clients, Sughrue Mion has a wealth of industry-specific expertise, including in relation to nanotechnology, software, electrics and biosimilars. John Callahan focuses on post-grant proceedings and district court litigation. The US practice is based in Washington DC, but the firm has a significant presence in Tokyo also. Within the team, Richard Turner, Andrew Taska, Brett Sylvester, Abraham Rosner, Travis Ribar and former patent examiner John Bird are the main contacts.

A market leader in patent litigation, WilmerHale is very active also in post-grant proceedings, and earns praise for its ‘excellent quality of work and responsiveness’. The team is spread across the firm’s nationwide network of offices, and is led out of Washington DC by David Cavanaugh. Cavanaugh and fellow Washington DC lawyer Amy Wigmore achieved a significant victory for Permobil in two IPRs cancelling all the claims of two asserted patents. Another highlight saw the team assist Genentech and City of Hope as patent owner in an IPR filed against the Cabilly 415 patent by Sanofi-Aventis and Regeneron. Boston-based Monica Grewal has ‘outstanding mastery of technical details’ and is acting for General Electric in strategic re-examination proceedings. The practice also has a presence in New York, Denver and Palo Alto.

Banner & Witcoff, Ltd. is a ‘powerhouse for design patents’ and acts for Fortune 500 companies as well as smaller companies and individual inventors. The group has a specialized design team led by Robert Katz, a highly regarded figure who leads the way in the procurement and enforcement of design patents. The prosecution team counts Nike and Microsoft as its longstanding clients and, in 2015, it procured a number of design patents for both clients. It has also been increasingly active in AIA post-issuance review and, in 2015, acted for Seagate Technology in four IPRs challenging two of Enova Technology’s patent relating to disk drive data encryption. Michael Cuviello, Bradley Wright and Joseph Potenza are further names to note. All individuals are based in either Washington DC or Chicago.

Clients of Buchanan Ingersoll & Rooneyrely on its work with respect to its knowledge of the technology, its accuracy and its consideration of the time limits’. The group’s expertise covers a wide range of industry sectors, including medical devices, financial services, automotive components and consumer products. Representative clients include Bayer HealthCare, Alstom Technology, MasterCard Worldwide and a number of universities. Practice head Todd Walters focuses on IPRs, and has experience in the biotechnology, chemical, electrical, mechanical and pharmaceutical fields. Erin Dunston also focuses on IPRs, as well as interferences, opinions, and prosecution, primarily in the fields of biotechnology, pharmaceuticals and medical devices. Travis Boone, Patrick Keane, Matthew Schneider, James LaBarre and Robert Mukai are also names to note. All attorneys are based in Alexandria, Virginia.

Leydig, Voit & Mayer Ltd. focuses on advising clients from the pharmaceutical, software and telecoms sectors, including the likes of Huawei Technologies, Fresenius Medical Care and Caterpillar. Charles Mottier is a key contact, as are John Conklin, who is experienced in computer engineering sector, and John Kilyk, who specializes in IPRs, interferences, and oppositions. Walnut Creek-based John Gase has extensive experience in formulating patent strategies and managing patent portfolios, as well as in counseling and rendering opinions on patent validity and infringement. All individuals are based in Chicago unless otherwise stated.

Headquartered in Minneapolis, IP boutique Merchant & Gould PC covers a number of different industries, including electrical, software, mechanical and biotechnology, and is highly recommended for its experience in IPR proceedings. Andrew Lagatta is experienced in all aspects of post-grant proceedings, as well as PTAB appeals and reissue applications; mechanical specialist Steven Bruess and chemical engineering expert Jefferson Boggs are also recommended. On the prosecution front, Robert Kalinsky focuses on the electrical and mechanical arts, with an emphasis on software and biomedical device patents; Washington DC-based Joseph Gess and Denver-based Gregory Leibold are further names to note. Representative clients include Lush Fresh Handmade Cosmetics, ATopTech and BMC Medical.

Arent Fox LLP’s practice was strengthened in February 2015 by the arrival of two highly regarded partners, Steven Weisburd and Richard LaCava, from the now defunct Dickstein Shapiro. The team, which is led by the Washington DC-based James Bindseil and Los Angeles-based Craig Gelfound, is assisting Qualcomm, Western Digital and Vale on patent prosecution work. It also has a presence in New York, where Marylee Jenkins is the key contact.

Although particularly renowned within the life sciences sector, Arnold & Porter Kaye Scholer LLP’s team also acts for clients from the aerospace, semiconductor and chemicals sectors. David Marsh and litigator Matthew Wolf head the IP practice from its Washington DC office, and both have notable experience in patent prosecution matters, especially interferences, inter partes and ex parte reviews, and European opposition proceedings. San Francisco-based Ginger Dreger focuses on advising companies in the biotechnology, medical device and pharmaceutical industries. Kristan Lansbery is another name to note and assisted Boston Scientific with a number of contentious matters, including initiating IPRs of five patents. Other representative clients include Monsanto, Genentech and Biogen.

Barry Bretschneider at Baker & Hostetler LLP is recommended for his experience in all forms of post-grant proceedings. The team acted for Saudi Basic Industries Corporation in a number of matters before the PTAB, including patent appeals and an IPR proceeding. On the patent prosecution front, a recent highlight saw Steven Samuels handling the worldwide patent prosecution for one Microsoft patents and applications portfolio, related to its exFAT file system technology. Seattle-based Michael Stein and Philadelphia-based Joseph Lucci are also key names to note. The group has a presence in Atlanta, Chicago, Cincinnati, Orange Country and Washington DC.

Baker McKenzie LLP’s patent team advises US and foreign clients on prosecution and post-grant matters, and, in 2015, it has handled numerous IPRs. In a recent highlight, it acted for Kinik Company in an IPR petition, including the final oral argument before the PTAB, and successfully obtained a final decision holding all instituted claims unpatentable. It also successfully defended RealD against institution of a series of IPR petitions. Dallas-based Brian McCormack and William McSpadden, and Houston-based Lisa Meyerhoff are the key contacts.

Brinks Gilson & Lione has particular technical expertise in areas including telecoms, pharmaceuticals, semiconductors and medical devices. From its Ann Arbor office, Jon Beaupré heads the firm’s post-grant patent practice, while John Nethery in Chicago co-chairs the patent group and is a leader in prosecuting complex electrical and computer technology patents. Recent highlights include handling a petition for IPR filed for a client in the automobile industry, and successfully invalidating the majority of claims of a patent covering tire pressure monitoring systems for automobiles. Its client roster also features Yahoo!, LG Electronics and BASF.

Cooley LLP’s patent counseling and prosecution team has particular strength in the healthcare sector, where it advises clients such as Abaxis, Auris Medical and CytomX Therapeutics. The team also advises and represents clients in all types of post-grant proceedings, and in particular IPRs, and is currently acting for industry leading companies such as Facebook, Google and Gevo in IPR and CBM proceedings. San Francisco-based Nan Wu is ‘savvy and highly skilled, both in terms of understanding complicated scientific issues and designing and executing complex patent strategies’. Ivor Elrifi in New York and Joe Teja in Boston are also main contacts.

Jones Day has particular experience acting for pharmaceutical companies and is regularly retained by household-name clients to assist with patent prosecution and post-grant reviews. San Diego-based Anthony Insogna chairs the global IP practice and is experience in biotech and pharmaceutical patents. His team assists Celgene with global patent strategies for the entire range of the company’s small molecule and biopharmaceutical drug therapies. Cleveland-based David Cochran and John Biernacki represent Jazz Pharmaceuticals in post-grant matters involving attacks by generic pharmaceutical companies and hedge funds hoping to undermine Jazz Pharmaceuticals’ patent portfolio related to Xyrem. Adriane Antler and recently promoted partner Michael Bruner, based in New York and Atlanta respectively, are also names to note in the life sciences sector. Tamera Weisser has experience in IPR proceedings and has successfully defended AbbVie in two IPRs brought by Amgen in connection with patents related to AbbVie’s blockbuster antibody therapeutic, Humira.

Ropes & Gray LLP acts for cutting-edge companies in electronics, pharmaceuticals, medical devices, finance and branded product, including the likes of Bayer HealthCare, Altera and Rovi Corporation. The team is led by Anita Varma and Joseph Guiliano, based in Boston and New York respectively. James Haley is another name to note and has notable experience in US and worldwide patent prosecution in all areas of biotechnology and biopharmaceuticals. Washington DC-based Steven Baughman chairs the firm’s post-grant patent office invalidity challenge practice, and has handled more than 100 CBM and IPR proceedings, including in more than 20 proceedings that have been argued through to final oral hearing before the PTAB.

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