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Intellectual Property & Technology
Practice

Practice Profile

Alexander Holburn Beaudin & Lang LLP's Intellectual Property & Technology Practice advises clients on multiple aspects of intellectual property law, including: trade-marks, copyrights, licensing, industrial design, trade secrets, confidential information, biotechnology, software, and other technology issues. We provide proven solutions to our clients' issues in a timely manner, and are proactive in our approach. 

Our clients come from both the public and private sectors, and are actively engaged in diverse industries including the software, music, film, manufacturing, service, and travel sectors. Passionate about their innovative products and services, our clients provide the creative energy necessary to make their businesses successful.  We provide sophisticated legal tools and services so that our clients' products and services are protected and secure. We also work extensively with foreign legal counsel to assist clients with international issues.

We monitor trends in emerging media and technology for any potential legal impact on our clients, and seek to apply innovative approaches in solving their business challenges. Practice members also form client teams with other Alexander Holburn lawyers, as appropriate, to provide a full range of legal services to our clients.

Trade-marks

We are registered Canadian Trade-mark Agents and regularly prepare and prosecute trade-mark applications, represent clients in trade-mark litigation, conduct trade-mark and name searches, obtain clearance and pre-clearance both nationally and internationally, and conduct trade-mark licensing. For clients involved in globalized name and mark arrangements, we draw upon our established relationships with a wide network of trade-mark agents in other jurisdictions to ensure smooth delivery on an inter-jurisdictional basis. We also assist clients in enforcing trade-mark rights and in resolving disputes in administrative forums and the courts.  

Copyright

Our Practice members provide advice on Canadian copyright legislation and international copyright conventions. We advise copyright holders on infringement and enforcement, and draft and review licence arrangements. We also assist clients to register and protect their copyright both in Canada and internationally.  

Technology

Our clients develop and commercialize new technologies,  software, and innovative products and services.  They include: video game developers and publishers; hospitals; biotechnology, pharmaceutical, and nutraceutical companies; and software designers and publishers. Our Practice is dedicated to helping established companies and organizations in these fields grow their operations, and to assist new and emerging companies establish themselves with a solid foundation. We advise clients on software use issues including use of “open source” code, licensing, technology transfer, systems acquisitions, technology aspects of commercial transactions and mergers, distribution agreements, joint ventures, corporate structure and financing, strategic alliances, and the Internet and e-business.
 

Patents

While our Practice members do not serve as patent agents, we do advise clients on the licensing and acquisition of patent rights, and other contractual issues related to patents.

Industrial Design

We assist clients in preparing and in prosecuting industrial design registrations in Canada. We also provide appropriate referrals to U.S. agents in connection with design patents in the United States.  

Litigation

We work with our clients to develop comprehensive litigation strategies.  We regularly act for clients in matters relating to disputes involving confidentiality agreements, copyright, industrial design, licensing, trade­-marks, trade secrets, patents, and passing off. 

Representative Matters

From start-up ventures to well-established corporations, members of the Intellectual Property & Technology Practice have worked with many clients who develop and manufacture products in the software, music, film, high-tech, manufacturing, services, travel, pharmaceutical, and nutraceutical industries. Members of the Intellectual Property Practice have:

• Extensive experience negotiating and preparing confidentiality agreements, supplier agreements, clinical phase two testing agreements, and intellectual property and information technology design, licence, and ownership agreements.
• Worked with clients involved in the commercialization of innovative products and services including providing advice on corporate structure, authorized capital, debt and equity financing, stock option agreements, product liability, management remuneration, and strategic planning.
• Acted for Canadian- and U.S.-based video game developers and producers, securing, protecting, and enforcing Canadian and international trade-marks and protecting, licensing, and commercializing video game software.
• Assisted North American-based franchise operations to secure, protect and enforce trade-marks, domain names and trade dress rights.
• Counselled Canadian-based corporations on the acquisition and development of multilateral software and information technology systems.
• Acted for Canadian and U.S. biotech companies in drafting and negotiating product licensing agreements in Asia, North America, and Europe.
• Negotiated and drafted patent transfer and licence agreements for Canadian, U.S., and European clients.
• Performed intellectual property audits and made recommendations to our clients to improve their intellectual property procedures and protective measures.
• Acted for a variety of authors, artists, photographers, web designers, agents, promoters, and musicians, negotiating and preparing artistic rights licence agreements, and publishing agreements, and advising on all matters pertaining to the protection of artistic proprietary intellectual property.
• Reviewed and commented upon pharmaceutical supply and manufacturing agreements.
• Negotiated interactive software licensing agreements for video game developers.