Strategic IP counsel and advice built on a framework of technical and legal expertise
Whether our client is a global leader, an emerging business or a startup building an IP portfolio central to their financing needs or exit strategy, our lawyers are trusted advisors who provide focused and strategic intellectual property (IP) counselling, opinions and advice.
IP is a vital resource and asset to any company across any industry. Our lawyers and patent and trademark agents draw on their deep technical and legal experience to provide opinions on the use of intellectual property as an integral part of an overall business strategy. We provide our clients with sophisticated experience and expertise, includingreal-world experience of individuals who spent years as in-house IP managers, counsel and strategic consultants for internationally recognized R&D based companies.
Our lawyers are nationally and internationally recognized IP leaders, staying on the cutting edge of information relevant to each of our client’s needs, including potential partnerships or competitors, opportunities for growth or increased profits, changes in market conditions, and the evolving IP framework in Canada and worldwide. Our extensive experience working with international clients and affiliate law firms around the worldallows us to provide clients with a view on a full range of intellectual property matters and related global issues.
We provide strategic counsel on how to move forward with the decision to secure patent, trademark, copyright, and industrial design rights, and when they may be at risk of infringement. Our strategic expertise, combined with our strength and experience representing clients in litigation matters, allows us toprovide a clear and concise view of the potential risks and returns involved with pursuing or defending claims of IP infringement or misuse. We are committed to providing focused IP counselling and advice consistent with our clients’ economic and business goals.
Our services in this area include:
- Developing internal IP management policies to maximize innovation and competitive strength
- Conducting IP audits
- Educating management and employees on strategic IP issues
- Portfolio mining to identify and pursue licensing opportunities
- Assessing competitive strengths and risks
- Extracting revenue from underutilized patent portfolios
- Coordinating and implementing enforcement activities
- Selecting valuable trademarks and developing a protection strategy based upon a product's distribution scheme
- Increasing the value of brands through promotional and marketing efforts as well as by proper trademark usage and marking
Key Contacts
Client Success
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IP audit and strategy development for nuclear science company
IP audit and IP strategy for a global recognized leader in nuclear science and technology.Read More -
IP audit for Quebec-based multinational
IP audit for a major Quebec-based multinational to provide recommendations to improve IP management function, role and responsibilities.Read More -
Investment advisory for software start-ups
IP counsel on behalf of a Canadian VC investor in several software, industrial and Internet start-ups.Read More -
IP audit of cosmeceutical company
IP audit of a major North America cosmeceutical company to implement an IP management and IP strategy to enhance overall corporate value and exit strategy.Read More -
IP audit of US-based industrial manufacturer
IP audit of US based industrial manufacturer in support / collaboration with a leading accounting firm for a strategic US/Canada transfer pricing project.Read More -
Strategic IP document for cleantech company
Strategic IP document for a Canadian-based venture-backed clean tech company and to assist in implementation.Read More -
IP audit of Quebec-based pharmaceutical compounding company
IP audit of a Quebec-based pharmaceutical compounding company in support / collaboration with a leading accounting firm for a strategic US/Canada transfer pricing project.Read More -
IP audit for global industrial manufacturer
IP audit for a global and major industrial manufacturer to provide recommendations to implement an IP management structure and to assist in implementation to enhance overall corporate value and busine...Read More
Related Publications & Articles
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Double Patenting: A comparative guide between U.S. & Canadian practice
Double patenting has become a common challenge to patent validity in Canada since the decision rendered by the Supreme Court of Canada in Whirlpool Corp. v Camco Inc in 2000.Read More -
New details on the Government of Canada’s IP Strategy
In the global knowledge economy of the 21st century, governments are becoming aware of the importance of intellectual property (IP) and are putting in place strategies to encourage innovative business...Read More -
New Program for Québec companies rewards innovation with financial assistance
The province of Quebec’s Ministry of Economy and Innovation launched a new Innovation Program (Programme Innovation) to provide Québec-based companies with up to $500 000 of financial assistance in su...Read More -
Danger in the Korean Peninsula: Ambush marketing and the Olympic Games
For a few weeks every two years, the Summer and Winter Olympic Games offer brand owners and advertisers the opportunity to reach billions of people in hundreds of countries. The Summer Games in Rio 2...Read More -
Competition Bureau releases updated Intellectual Property Enforcement Guidelines
On March 31, 2016, the Competition Bureau released a final updated version of its Intellectual Property Enforcement Guidelines (“IPEGs”) following an extensive public consultation process. The IPEGs ...Read More -
Competition Bureau releases draft update of Intellectual Property Enforcement Guidelines addressing conduct involving patent assertion entities and industry standard patents
On June 9, 2015, the Competition Bureau released an update to its draft Intellectual Property Enforcement Guidelines for comment.Read More -
Competition considerations in IP settlement agreements
Historically, anti-trust issues associated with the exercise of intellectual property rights have been of lesser concern in Canada than in other jurisdictions, most notably the United States and Europ...Read More -
China-Canada FIPA (中加投资保护协定) coming into force
Canada has recently ratified the Foreign Investment Promotion and Protection Agreement ("FIPA”) with China. The agreement (referred to as 中加投资保护协定 in China) was signed in September 2012, and Chin...Read More
Related News & Media
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Smart & Biggar welcomes Francesca Roy as a new associate in Montréal
Smart & Biggar is pleased to announce that Francesca Roy has joined the firm as an associate in Montreal. Francesca has been hired back following her articles with the firm and her call to the Que...Read More -
Smart & Biggar named IP 'Law Firm of the Year' and leads the rankings with 31 lawyers recognized in The Best Lawyers in Canada 2021 edition
Smart & Biggar is pleased to share that we have been named 'Law Firm of the Year' for expertise in Intellectual Property Law in the 2021 Edition of The Best Lawyers in Canada.Read More -
Smart & Biggar welcomes Denise Felsztyna as a new associate in Montreal
Smart & Biggar is pleased to announce that Denise Felsztyna has joined the firm as an associate in Montreal.Read More -
Andrea Berenbaum joins Smart & Biggar bringing her patent expertise to Vancouver
Smart & Biggar is pleased to announce that Andrea Berenbaum has joined the firm as a senior associate in Vancouver.Read More -
Smart & Biggar builds on strength as an IP litigation powerhouse with the additions of Noelle Engle-Hardy and Ryan Evans in Toronto
We are proud to welcome Noelle Engle-Hardy and Ryan Evans as the newest members of Smart & Biggar’s highly skilled IP litigation team.Read More -
Smart & Biggar names Matthew Zischka as Managing Partner
Smart & Biggar is pleased to announce that Matthew Zischka has succeeded Steven Garland as Chair of the firms’ Executive Committee and Managing Partner of the Firm.Read More -
Smart & Biggar receives praise as ‘best-in-class for high stakes IP litigation and counseling’ in 2020 edition of The Legal 500 Canada
Smart & Biggar is pleased to share its distinction as a ‘Tier 1’ firm for Intellectual Property in the 2020 edition of The Legal 500 Canada.Read More -
5 Smart & Biggar lawyers attend IPO Annual Meeting in Washington, D.C.
Smart & Biggar partners, Daphne Lainson, Nancy Pei, Matthew Zischka and Jean-Sébastien Dupont, with associate, Artemis Lai, will travel to Washington, D.C. to attend the 47th Annual Meeting of the...Read More