Proactive patent portfolio management
Strategic patent portfolios, well-balanced for the short and long term.
Patents are not static rights. They require ongoing review and maintenance to maximize their value to a company. The key to success in a well-managed patent portfolio is alignment with business goals, and regular monitoring against changes in the market, competitive threats and emerging opportunities. A well-managed patent portfolio protects a company’s market position, generates revenue and blocks competitors from entering markets.
From conducting patent portfolio audits to analyzing the rights in current portfolios, we examine the strength of those rights and their usefulness to our clients’ businesses, as well as develop strategic plans to monetize rights and extract value from patent portfolios. The end result for our clients is a strategic and results-driven approach to managing their patent portfolio in Canada.
Unmatched patent experience and technical expertise
Smart & Biggar has the largest patent practice in Canada, preparing, filing and prosecuting more IP applications than any other firm. Our lawyers and patent agents are consistently recognized as industry leaders and trusted business partners, and are sought after for their deep technical expertise and vast experience in the field of Canadian patents.
Many of our lawyers and patent agents also have real-world experience working in-house in business roles, including product development, engineering or research and in legal roles managing IP strategies for leading companies. We are able to proactively guide clients through the process of carefully constructing and managing IP portfolios that are clearly aligned to business needs and priorities and market forces.
Services we provide in this area:
- Conducting IP audits
- Assessing competitive strengths and risks of the portfolio
- Extracting revenue from underutilized patent portfolios
- Coordinating and implementing enforcement activities
- Portfolio mining to identify and pursue commercialization and licensing opportunities
- Developing internal IP management policies to maximize innovation and competitive strength
- Educating management and employees on strategic IP issues
Key Contacts
Unparalleled Expertise in Patent Portfolio Management
-
IAM
Highly Recommended Firm for Patent Transactions
2023-2024IAM Patent 1000 - The World’s Leading Patent Professionals -
IAM
Gold Band Firm for Patent Prosecution & Litigation
2013-2024IAM Patent 1000 - The World’s Leading Patent Professionals -
MIP
Tier One Firm for Patent Law
2014-2024IP Stars: Patents -
IAM
25 leading patent practitioners
2023IAM Patent 1000 - The World’s Leading Patent Professionals -
Who's Who Legal
16 leading IP experts
2022Who's Who Legal: Canada -
Who's Who Legal
17 leading IP experts
2022Who's Who Legal: IP -
IAM
24 leading patent practitioners
2022IAM Patent 1000 - The World’s Leading Patent Professionals -
Who's Who Legal
17 leading IP experts
2020-2021Who's Who Legal: Canada -
Who's Who Legal
17 leading IP experts
2021Who's Who Legal: IP -
IAM
21 leading patent practitioners
2021IAM Patent 1000 - The World’s Leading Patent Professionals
Related Publications & Articles
-
Canadian Patent Law 2022: A Year in Review
2022 was an active year in Canadian patent law. Claim fees were introduced for the first time; changes were made to regulations providing remedies for excessive pricing of patented medicines; and a ra...Read More -
Safe and cost-effective divisional application filing strategies under Canada’s newest patent rules
This article reviews the requirements for filing a divisional patent application in Canada, the impact of the new claim fee and continued examination fee rules on divisional practice and provides stra...Read More -
Canada’s new patent claim fee rules: Alternative embodiments within a single claim
Historically, claim fees have not been payable at any time during the pendency of a Canadian patent application or term of the patent. This will change soon, and the present article discusses strategi...Read More -
New rules: Request examination of Canadian patent applications before October 3, 2022
Patent applicants should consider requesting examination of their Canadian patent application now or before October 3, 2022 to avoid potential excess claim fees and continued examination fees under th...Read More -
Canadian Patent Law 2021: A round-up of interesting developments and court decisions
2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and ne...Read More -
New year, new patent rules for excess claim fees and continued examination in Canada
This article outlines the proposed amendments to the Patent Rules and provides applicants with guidance on possible actions they can consider taking now, to avoid potential fees under the new rules.Read More -
IP and clean technology: Tips for companies focused on resource recovery in a circular economy
As the world accelerates its transition to a low-carbon, circular economy, Canadian companies developing resource recovery models need to consider how to integrate IP protection into their overall str...Read More -
Allowance of Choueifaty patent application provides insight into CIPO's future approach to patentable subject matter
In an apparent conclusion to the patent at the heart of the Federal Court of Canada’s decision in Yves Choueifaty v Attorney General of Canada, 2020 FC 837 [Choueifaty], Canadian patent application no...Read More
Related News & Media
-
Smart & Biggar tops the list with 5 patent professionals recognized as 2021 IAM Global Leaders
Smart & Biggar is pleased to share that five patent practitioners have been recognized as IAM Global Leaders, more than any other firm in Canada.Read More -
Sanjay Goorachurn and Daphne Lainson included in the 2020 edition of IAM Strategy 300: The World's Leading IP Strategists
Smart & Biggar is pleased to share that Montreal partner Sanjay Goorachurn, and Ottawa partner and Chair of the firm Daphne Lainson, are recognized in IAM Strategy 300: The World’s Leading IP Stra...Read More -
Smart & Biggar welcomes Natalie Galley as a new associate in Montreal
Smart & Biggar, Canada’s leading firm for intellectual property law and agency services, is pleased to share that Natalie Galley has joined our Montreal patent practice as a new associate.Read More -
Smart & Biggar hailed as a Tier 1 firm for patent contentious and prosecution matters in MIP IP Stars 2020 patent rankings
Smart & Biggar is pleased to share that the firm maintains its Tier 1 ranking for both Patent Contentious and Patent Prosecution categories in Managing Intellectual Property’s (MIP) IP Stars, 2020...Read More -
Smart & Biggar leads the field in Canada as a "gold-standard firm" that "lives up to its name" with sixteen leading lawyers and agents in the 2020 IAM Patent 1000
Smart & Biggar is pleased to be recognized once again as a gold tier firm in Canada for patent prosecution and litigation, and to be ‘recommended’ for patent transactions in the 2020 IAM Patent 10...Read More -
Smart & Biggar leads the field for patents in Canada in 2020 Who’s Who Legal: Patents
Smart & Biggar is pleased to share that twelve of our partners have been listed among Canada’s top patent agents and lawyers in the recently released Who’s Who Legal: Patents 2020 guide – more tha...Read More -
14 Smart & Biggar practitioners recognized in the 2020 edition of WIPR Leaders
Smart & Biggar is pleased to share that fourteen of the firm’s lawyers and agents have been recognized in the 2020 World IP Review (WIPR) Leaders, a comprehensive guide to the top intellectual pro...Read More -
Smart & Biggar shortlisted for seven North America awards by Managing Intellectual Property
Smart & Biggar is pleased to share that the firm has been shortlisted for an impressive and industry-leading seven Canadian IP awards at Managing Intellectual Property’s 2020 North America Awards.Read More