Intellectual Property + Technology

We advise clients on multiple aspects of intellectual property law, including trade-marks, copyrights, licensing, industrial design, information technology and data centre management, trade secrets, confidential information, biotechnology, software and other technology issues.

Our clients come from both the public and private sectors,and are actively engaged in diverse industries including the software, music, film, health, information technology, manufacturing, publishing, service and travel sectors. Such clients include information technology service providers, hospitals, biotechnology, pharmaceutical and nutraceutical companies, software developers, licensors and vendors, smartphone application and mobile device application developers, video game developers and publishers,and C-level executives, directors and other professionals within these organizations.

Passionate about their innovative products and services, our clients provide the creative energy necessary to make their businesses successful. Our lawyers provide sophisticated legal tools and services so that our clients’ products and services are protected and secure.

Our lawyers conduct a significant amount of work with institutional and small business enterprises in acquisition of IP assets, system integration, system implementation and software licensing. We also work extensively with foreign attorneys to assist clients with issues outside of Canada.

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.

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 a wide network 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. Our practice is dedicated to helping established companies and organizations in these fields grow their operations,and to assisting 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, information technology, service level agreements, managed services 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 law 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 United States 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.

Industry Involvement

International Trade-mark Association (INTA)

itSMF Canada

Representative Matters

We 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.

We have 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.

We have acted for leading Canadian and United States-based information technology service providers preparing and negotiating complex managed services agreements, service levels agreements and data centre management agreements.

We have acted for Canadian and United States-based video game developers and producers, securing, protecting, and enforcing Canadian and international trade-marks and protecting, licensing and commercializing video game software.

We have assisted North American-based franchise operations to secure, protect and enforce trade-marks, domain names and trade dress rights.

We have counselled Canadian-based corporations on the acquisition and development of multilateral software and information technology systems.

We have acted for Canadian and American biotech companies in drafting and negotiating product licensing agreements in Asia, North America and Europe.

We have negotiated and drafted patent transfer and licence agreements for Canadian, American and European clients.

We have performed intellectual property audits and made recommendations to our clients to improve their intellectual property procedures and protective measures.

We have 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.

We have reviewed and commented upon pharmaceutical supply and manufacturing agreements.

We have negotiated interactive software licensing agreements for video game developers.