Norton Rose Fulbright

Global

Head Office Address:
Suite 3800, Royal Bank Plaza, South Tower
200 Bay Street, P.O. Box 84
Toronto
Canada
M5J 2Z4

+1 416 216 4000









Norton Rose Fulbright in Canada is unique in its ability to provide seamless IP advice on a truly national and global scale. We have one of the few IP practices with such a designation in Canada covering IP professionals in each of Québec City, Montréal, Ottawa, Toronto, Calgary and Vancouver. The integration of Bull Housser Tupper was completed on January 1, 2017 and has added a particular depth in trademark prosecution and litigation, anti-counterfeiting, and trade secrets.

Litigation practice:
The team of IP litigators at Norton Rose Fulbright is ranked among the best in Canada. We provide offensive and defensive litigation counsel in all areas of intellectual property, including patents infringement and impeachment actions under the Patent Act and pursuant prohibition proceedings and section 8 damages actions under the Patented Medicines (Notice of Compliance Regulations), copyrights, trade-marks, trade-mark oppositions, trade secrets, counterfeit enforcement, and industrial designs. The team is particularly well known and regarded for its patent litigation work for pharmaceutical clients. Our roster of innovative pharmaceutical clients for which we act in litigation is second to none in Canada. As pharmaceutical patent disputes represent a significant part of patent litigation in Canada, our team is extremely active in this area. The patent litigation practice also includes mechanical patents, medical devices and oil and gas patents, among other technologies. More recently, several new partners with leading practices in trademark and copyright litigation have increased our capabilities, successes and client base in this area.

Patent practice:
Norton Rose Fulbright's Canada patent attorneys and agents have highly specialized degrees and provide comprehensive intellectual property advice and global portfolio strategy. We handle the Canadian and global patent work for a stellar cross section of Canadian and international clients. Our Canadian Patent Centre of Excellence complements notably the patent expertise within Norton Rose Fulbright in the United States.

We are one of the largest patent filers in Canada with a particular emphasis on drafting original patents and global portfolio strategy, as evidenced by the fact that we are consistently one of the top PCT filers in Canada. We are often selected over our competitors because our patent prosecution expertise is unrivalled and works seamlessly with our disputes and regulatory lawyers to provide strategic and holistic approach to patent portfolio management.

Trademark practice:
We assist clients with all aspects of the branding process. This includes providing overall branding strategy, the drafting and prosecuting of trade-mark applications, the provision of advice regarding availability and registrability of marks in Canada and globally. Our team provides strategic trade-mark advice including portfolio review, infringement surveillance, and advice on legal issues connected with introducing products and services to the market, such as branding, product information and advertising. We assist clients with all aspects of brands expansion into social media including acquisition of domain names, and enforcement of brands on all social media channels globally. Our litigation team acts for clients in opposition proceedings, infringement proceedings and expungement proceedings and trade libel actions.

Copyright practice:
Our copyright team has expertise in all aspects of copyright law including clearance, acquisition and registration, infringement and litigation, due diligence, licenses, assignments and transactional issues. We act for copyright owners working in various industries such as film, television, video, music, art, fashion, literature, software and evolving media including telecommunications and the Internet. Similarly, our trade-marks team works with clients to acquire, commercialize and safeguard their brands, including logos, product or container shapes and packaging. We advise on all aspects of the selection, registration, commercialization and protection of rights related to trade-marks and brands. We are regularly called upon to advise on the copyright aspects of advertising and marketing campaigns. Clients consistently call upon our professionals for wide industry coverage, the shared experience between the team and our large panel of services. Our litigation lawyers are also active in copyright disputes at both the trial and appellate levels in the software, media, communications, and entertainment sectors with clients including film studios, software and gaming developers, telecommunications companies, the television industry and the music business. We have extensive experience representing rights holders before the Copyright Board and assisting in the enforcement of tariffs, as well as in anti-counterfeiting mandates for fashion enterprises and standards organizations, including border seizures and rapid enforcement campaigns.

Commercial IP practice:
The IP team handles a wide range of commercial transactions relating to all areas of intellectual property. For example, our commercial IP team has assisted a major financial institution in developing key collaboration agreements, developed and negotiated licensing agreements with other financial institutions, developed blockchain consortium agreements, and very complex IP co-existence and ownership issues.


Sector Expertise:

  • Aerospace & Defence
  • Agriculture
  • Artificial Intelligence
  • Automotive
  • Cannabis
  • Construction & Materials
  • E-Commerce
  • Engineering
  • Energy
  • Electronics & Semiconductors
  • Entertainment
  • Fintech
  • Publishing & Media
  • Fashion & Luxury Goods
  • FMCG & Retail
  • Financial Services
  • Food & Beverage
  • Furniture
  • Green Technology
  • Hospitality
  • ICT & Software
  • Instruments
  • Life Sciences & Chemistry
  • Manufacturing
  • Medical Devices
  • Natural Resources
  • Optics & Photonics
  • Pharmaceuticals
  • Robotics & Nanotechnology
  • Telecommunication
  • Tobacco

Network Memberships:
International Trademark Association (INTA), Canadian Bar Association (CBA), Innovative Medicines Canada (IMC), Canada's Medical Technology Companies (MEDEC), International Bar Association (IBA), Association of Corporate Counsel (ACC), American Association of Blood Banks (AABB), American Intellectual Property Law Association (AIPLA), Association of University Technology Managers (AUTM), Intellectual Property Institute of Canada (IPIC), Intellectual Property Owners Association (IPO), Licensing Executives Society (LES), Food and Drug Law Institute (FDLI), International Association of Privacy Professionals (IAPP), MaRS Discovery District (MaRS), Ontario Biosciences Innovation Organization (OBIO), BioteCanada, Association littéraire et artistique internationale (ALAI), Comsumer Health Products Canada (CHP), International Association for the Protection of Intellectual Property (AIPPI), Canadian Intellectual Property Office  (CIPO) , International Federation of Intellectual Property Attorneys (IFIPA), Ordre des ingénieurs du Québec (OIQ), Association des juristes pour l'avancement de la vie artistique (AJAVA)  AéroMontréal, Québec International, Groupement des Chefs d'entreprises, Women's Executive Network (WXN), Association of Women Lawyers, Black Law Students’ Association of Canada, PRIDE Canada, United Way Centraide Canada, Nelson Mandela Foundation, BP MS 150, Movember,





Last updated 31st July 2018