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Patents

Contacts

Meet the team

We understand the critical importance of patents in an organization’s continuing growth and success. Our Patent team has a high degree of technical skills that enables a swift and thorough understanding of technical complexities. Our experience combined with acute business acumen helps clients achieve optimal patent asset value from the negotiation of technology transfer and licensing agreements through to the enforcement of intellectual property rights.

Clients rely on our professionals to protect, secure and manage their patent assets for the following reasons:

  • Leading team – Our team includes patent professionals such as lawyers, agents and technical consultants with engineering and scientific backgrounds, including several at the Ph.D. level. With one of Canada’s largest and most respected patent prosecution teams filing more than 3,100 applications each year, including over 400 originating applications that are drafted by our own patent professionals, we are leaders in patent procurement and protection in the Canadian marketplace and have developed significant experience in helping clients leverage patent assets.
  • Wide industry and practice area coverage – We work with clients in a vast range of industries such as energy; transportation; infrastructure, mining and commodities; communications, media and technology; aerospace; life sciences and healthcare; and financial institutions. Our practice areas include amongst others, mechanical, electrical, information technologies, chemistry, biotechnology, optics and photonics.
  • Full service support – Our patent professionals have unparalleled knowledge and experience in the following areas : drafting originating patent applications; filing and prosecuting of patent applications in Canada and in the United States; providing freedom-to-operate infringement and patent invalidity searches and opinions as well as considering the validity of existing patent rights. We also offer other patent-related services, such as: patent portfolio audits and management; prior art searches; due diligence in commercial transactions; advice and representation in regard to court proceedings under the Patent Act and Patented Medicines (Notice of Compliance) Regulations; patent litigation and other dispute resolution mechanisms, including extensive practical experience in litigation prevention and multijurisdictional litigation strategy.
  • Global practice – We put the collective talent and resources of our global practice at the disposal of our clients when necessary. We have an established and extensive network of foreign associates around the world with whom we work closely to ensure effective and efficient protection of our clients’ interests in various countries.

Rankings and accolades

  • Chambers Global (2013): Intellectual Property
  • LEXPERT (2012): Leading US/Canada Cross-Border Litigation Lawyer – Intellectual Property
  • Canadian Legal Lexpert Directory (2012): Intellectual Property and Litigation – Intellectual Property
  • The international Who’s Who of Patent Lawyers (2012)
  • IAM Patent 1000 (2013)

Select client work

Life sciences and healthcare

  • Represented Distrimedic Inc. in a lawsuit against Richards Packaging Inc. relating to pill dispensers. Richards alleged infringement of its claimed patent, copyright and trade-mark rights as well as false and misleading statements upon launch of Distrimedic’s pill dispenser. All claims were dismissed by the Federal Court.
  • Represented large international pharmaceutical companies in patent prosecution and related strategic advice and opinion work across a variety of technology sectors.
  • Exclusively handle international pharmaceutical companies’ Canadian and international patent portfolios.

Energy

  • Patenting of oil sands extraction and upgrading technologies.
  • Provided IP advice to an oil sands producer regarding non-patented, proprietary technology relating to horizontal injection well pad configuration.
  • Representing an oil services company holding patents on inventions to separate solids from fluids at the well site, and obtain injunctive relief preventing patent infringement by a former employee and co-inventor of the technology.
  • Patenting of various clean technologies, including water purification, carbon sequestration, biofuels, solar, nuclear, wind, geothermal, syngas and coal gasification.
  • Provided freedom-to-operate analyses on exploitation of a carbon sequestration technology, and related patent validity opinions.
  • Represented a leading provider of proprietary and patented reservoir description, production enhancement and reservoir management services in patent infringement proceedings.
  • Advised on patent infringement and validity issues for a water technology company.

Financial institutions

  • Represented several financial institutions in a proposed intervention on the Amazon.com case, which is widely regarded as the leading case on the patentability of business method patents in Canada.
  • Drafting patents for financial institutions.

Technology and innovation

  • Generating significant returns from a large telecommunications company’s intellectual property assets in the context of its restructuring proceedings, including assisting in the identification and review of its intellectual property assets and their allocation to the business units to be divested, the transfer of an extensive portfolio of patents and other intellectual property in connection with the divestiture of each business unit, licensing back to other business units, and licensing of their retained intellectual property to divested business units.
  • Preparing, filing, prosecuting and managing worldwide patent portfolio for various technologies for a large telecommunication company. Providing strategic advice relating to patent enforcement in Canada and around the world.

Transport

  • Preparing, filing, prosecuting and the North American portfolio of patents for various technologies for a large aerospace manufacturer.
  • Preparing, filing, prosecuting and managing the North American portfolio of patents for various technologies for one of Canada’s largest aviation manufacturers. Providing clearance opinions of new technologies.