Our Canadian lawyers and patent agents are at the forefront of issues relating to the obtainment, sale and enforcement of business method patents, a term that is typically applied to a broad class of patents for inventions relating in some non-trivial respect to manners of conducting business or commercial activity.
This is a developing area of law and one that the Courts and Canadian Intellectual Patent Office have provided only minimal guidance on. With the confirmation that business methods are patentable subject matter in Canada, the need for qualified experience has never been greater to navigate the metes and bounds of patentability and either enforce or defend business method patent rights.
Our areas of work include
- Amazon.com - We represented the Canadian Bankers Association and the Canadian Life and Health Insurance Association in the case of Canada (Attorney General) v. Amazon.com, Inc., 2011 FCA 127 This case is widely regarded as the leading case on business method patents in Canada. Our team successfully obtained intervener status and took part in the appeal before the Federal Court of Appeal.
- DataTreasury - We successfully defended The Bank of Nova Scotia in a patent infringement action brought by DataTreasury Corporation of Plano, Texas. DataTreasury alleged infringement of its patent related to the scanning and imaging of cheques. DataTreasury sued numerous banks and their service providers in Canada and the United States. After three years of litigation, the action was discontinued in Canada in October 2010.
Procurement, valuation and sale of business method patents
- We have assisted clients with the prosecution, valuation, protection and commercialization of business method patents including BlackBerry, Royal Bank of Canada, Cantor Fitzgerald, Visa and Interprovincial Lottery Corporation. One of our senior lawyers, Malcolm McLeod, was instrumental in obtaining the first business method patents in the United States for a Canadian bank.
- Nortel – We represented Nortel Networks Limited (NNL) in the strategic assessment, valuation and, ultimately, sale of Nortel’s patent assets, which included business method patents, for a record-breaking US$4.5 billion. Our team in Canada acted as intellectual property counsel to NNL for this transaction. We also represented NNL in the intellectual property aspects of NNL’s many divestments, providing licensing and corporate advice.
Teaching and client education seminars
- Our Canadian lawyers and patent agents have given seminars and lectures on business method patents to clients including the Bank of Montreal, bioMerieux, Université de Sherbrooke, l’Université du Québec à Montréal (UQAM), and l’Université de Sherbrooke (ETS) as well as to industry organizations such as the International Federation of Intellectual Property Attorneys (FICPI), the Licensing Executives Society (LES), and the Academy of Canadian Cinema and Television (ACCT).
Rankings and accolades
- Chambers Canada, Nationwide: Intellectual Property (Band 1), Chambers and Partners, 2019
- Legal 500, Canada: Intellectual Property, The Legal 500, 2018
- Chambers Global, Canada: Intellectual Property (Band 1), Chambers and Partners, 2018