Canada

Firm overview

Osler acts as an integral business partner by developing and executing global intellectual property strategies in prosecution and litigation that align with our client’s objectives. Our firm represents a vast client base in complex litigation in every field of IP, before every level of the Canadian courts and before international tribunals. We have coordinated and managed prosecution and litigation strategies throughout multiple jurisdictions, and our international reputation for excellence in Canadian IP patent litigation has been built on our winning record. We also supervise the filing and prosecution of patent applications outside of North America on behalf of our clients through our network of foreign associate law firms.

We have extensive experience in drafting, filing, prosecuting and maintaining patent and industrial design applications in Canada, including for leading Canadian and multinational companies. Our patent agents, most of whom are PhD or Masters qualified, are highly proficient in dealing with patent protection and patent avoidance issues in the design, engineering and manufacturing of products, and particularly products to be distributed simultaneously in multiple jurisdictions. We regularly conduct freedom-to-operate studies and render opinions in respect of Canadian patents for our clients.

Our firm routinely acts as counsel to the world’s largest and leading generic pharmaceutical companies, including Mylan Pharmaceuticals, Teva Canada, Samsung Bioepsis, Pharmascience, Celltrion Inc, and many others, and we have particular expertise in representing and advising international and domestic innovators in areas of technology, biotech, life sciences, electronics and consumer products.

Osler has in-depth experience in clearing, registering, maintaining and enforcing trade-mark rights in Canada and internationally, on managing domestic and international portfolios for leading Canadian and global corporations and in successfully representing clients’ interests before the courts and intellectual property administrative tribunals. We also service an extensive network of foreign law and agency firms, assisting those firms in protecting the Canadian rights of their clients. For many consecutive years, Osler has been among the top filers of trade-mark applications with the Canadian Intellectual Property Office (“CIPO”).

A selection of Osler’s trade-mark clients and clients we service through our network of firms include 3M Company, Air Products Canada, Ltd., American Eagle Outfitters, Bass Pro Shops, Bausch & Lomb Inc., Caterpillar, H.D. Lee, Eddie Bauer, Estée Lauder, Fisher–Price, Hugo Boss Canada, LinkedIn Corporation, Live Nation Worldwide, Mattel, Inc., Matsushita, NBA, National Women's Hockey League, Phillips 66, Sullivan Entertainment Inc., WNBA and Wrangler Apparel.

Osler’s Intellectual Property team also represents clients in disputes and litigation involving copyright (including infringement claims, ownership disputes and Copyright Board tariff proceedings), trade-marks (including infringement claims, expungement proceedings and Trade-Mark Opposition Board proceedings), domain names, trade secrets/confidential information, anti-counterfeiting and misleading advertising. Our clients include Re:Sound Music Licensing Company and Universities Canada.

Last updated 12th August 2020

Firm overview

Marks & Clerk is one of the UK’s largest, and longest established, intellectual property firms. Our expert teams of patent and trade mark attorneys and lawyers are wired directly into the UK’s innovation economies via our offices in London, Birmingham, Manchester, Oxford, Cambridge, Edinburgh, Glasgow and Aberdeen. Alongside our presence in the UK, we also have offices in nine international locations covering the EU, Canada and Asia, meaning we can tap into local expertise, globally. 

Our team provides a full-service IP offering, from the initial filing of IP, through to litigation and commercial exploitation. Having seen the benefits that our clients derive from our full-service model, a number of patent attorney firms have since sought to follow a similar approach by adding solicitors to their teams. However, our well-established and highly regarded litigation and commercial transactions practices continue to set us apart from other firms.

We are experts not only in intellectual property law, but also in the science and technology that underpins our clients’ businesses. Our ability to draw upon this specialist technical expertise, not just in the context of patent prosecution but also in the context of litigation and commercial transactions, enables us to provide clients with a level of service and reach unmatched by other firms.

Last updated 2nd April 2020

Firm overview

Our bench strength as a global firm allows us to service clients through all stages of growth and across jurisdictions. With more than 250 lawyers, patent attorneys and trademark agents across five continents, our global intellectual property team has extensive experience providing comprehensive, multidisciplinary IP law services to clients worldwide.

IP Litigation practice

The national team of IP litigators at Norton Rose Fulbright is consistently ranked among the best in Canada. We are trusted counsel in all areas of intellectual property, including patents (infringement and impeachment actions, prohibition proceedings and section 8 damages actions under the Patented Medicines (Notice of Compliance) Regulations, copyrights, trademarks, trade secrets, counterfeit enforcement, and industrial designs. Our IP litigation team successfully appears on a regular basis before the Supreme Court of Canada, the Federal Court and Federal Court of Appeal, provincial superior courts, and tribunals across the country.

We are best known for decades of leadership in Canadian life sciences intellectual property litigation. We have creatively designed and applied successful trial strategies that have shaped life sciences patent litigation. We have replicated that success in other technological sectors including medical devices, aerospace, food and agri-business, financial services and energy among other technologies.

Patent practice

Norton Rose Fulbright Canada’s patent attorneys and agents have highly specialized degrees and provide comprehensive intellectual property advice and global portfolio strategy. We do 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.
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 a 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 prosecution of trademark applications, the provision of advice regarding availability and registrability of marks in Canada and globally. Our team provides strategic trademark 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 brand expansion into social media, including acquisition of domain names and enforcement of brands on all social media channels globally.

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 entertainment, music, art, fashion, literature, software and evolving media including telecommunications and the Internet. Similarly, our trademarks team works with clients to acquire, commercialize and safeguard their brands, including logos, product or container shapes and packaging. 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.

Commercial IP practice

The IP team handles a wide range of commercial transactions relating to all areas of intellectual property including but not limited to, issues pertaining to data, data governance and IP strategy.

Firm overview

DWW is a Toronto law firm specializing in Intellectual Property (“IP”), Information Technology (“IT”) and Privacy and Cybersecurity (“P&C”). Our team of lawyers is as large as the corresponding groups of many full-service firms, and our specialized practices means we have an exceptional depth of experience. Founded over 25 years ago, the firm has grown from seven lawyers to close to 20, covering all aspects of IP prosecution, commercialization and enforcement; technology law; emerging technology protection and commercialization; privacy and data breach protection, management and coaching; litigation; and regulatory law. We provide a full range of services relating to trademarks, copyright, patents, industrial designs, confidential information, and other forms of intellectual property. 

We act for a number of large businesses, including an international oilfield services company, a provincial government, municipalities, an automotive manufacturer and an automotive products company, speciality chemical company, pharmaceutical companies, a major inter-bank data network, a top-tier hospital, an international soft drink company, and a number of Canadian tech start-ups. We have acted for several international drug companies on patent litigation, PM(NOC), and regulatory matters and we also provide day-to-day patent and trademark advice for major food, chemical, automotive and retail companies. 

DWW’s expertise in widely recognized. We are currently designated as one of the Top 10 IP boutiques in Canada by Canadian Lawyer Magazine. Our lawyers have been recognized by Best Lawyers in Canada and recognized in the Canadian Legal Lexpert Directory, the Chambers and Partners Canada Guide, the Chambers and Partners Global Guide, and the Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada. 

The founding partners at DWW were partners at major national law firms and successfully transferred their large, complex and varied "big firm" experiences to a specialized boutique firm that offers clients the breadth of experience and IP, IT and P&C expertise of a major firm with a hands-on, flexible, service-oriented approach to client care. We strive at all times to ensure that we have added value to our clients’ organization, in addition to ensuring that their legal rights are protected.

We understand that a pure, technical, legal solution is not always the only or best solution. We deliver fast, responsive, relevant legal advice that meets the tight timelines that organizations face. We believe that our hands-on, business-focused practice sets us apart from many other firms practicing IP, IT and P&C law. We understand the technologies and we understand the businesses our clients are in. We appreciate the need for timely, practical and relevant legal advice. Sometimes, all a client needs is a quick answer to a question; not a 40 page memo.

Last updated 4th December 2020