Intellectual Property has become one of the most valuable assets in today’s rapidly changing world and knowledge based economies. Innovative and comprehensive legal advice will enable clients to realize the full potential of their Intellectual Property and shield themselves against the risk of competition, infringement, counterfeiting and loss of value. Our IP Group has recognized leaders in:
PATENTS
- preparing patentability, infringement, validity and design around opinions
- preparing and prosecuting patent applications directly in Canada and U.S. Patent Offices
- preparing and prosecuting international PCT, European, Japanese, Chinese and all other foreign patent applications around the world
- many of our patent agents are registered professional engineers
TRADE-MARKS
- preparing registrability, infringement and validity opinions
- preparing and prosecuting trade-mark applications directly in the Canadian and U.S. Trade-Marks Offices
- filing European, Japanese, Australian and all other foreign trade-mark applications through our network of international agents
- advising on trade-mark matters in relation to franchises
INDUSTRIAL DESIGN
- preparing registrability, infringement and validity opinions
- preparing and prosecuting industrial design applications directly in Canada and design patent applications directly in the United States Patent Office
- preparing and prosecuting European and other foreign design applications through our network of agents worldwide
COPYRIGHT
- preparing infringement and validity opinions
- preparing and registering copyright directly in Canada and the United States
TRADE SECRETS/KNOW-HOW
- providing advice and procedures to protect trade secrets and confidential information
INTELLECTUAL PROPERTY LITIGATION
- launching and defending against patent, trade-mark, copyright and industrial design infringement actions, passing off and unfair competition actions before the Provincial, Federal Court of Canada and Federal Court of Appeal as well as before the Supreme Court of Canada
- launching and defending against injunctive relief, Anton Pillar search and seizure orders, and all other IP relief and applications before the Provincial, Federal Court of Canada and Federal Court of Appeal as well as the Supreme Court of Canada
- optimizing client’s interest through skilful use of alternate dispute mechanisms including arbitration, mediation, licensing of IP, or design around strategies
INTELLECTUAL PROPERTY DISPUTES
- skilful application of re-examination, disclaimer and protest procedures before the Canadian and U.S. Patent Offices
- trade-mark oppositions before the Canadian and U.S. Trade-Mark Offices
- expungement proceedings before the Canadian Trade-Marks Office and petitions to cancel before the U.S. Trade-Marks Office
INTELLECTUAL PROPERTY AGREEMENTS
- drafting and negotiating Intellectual Property licensing agreements, technology transfers, joint venture agreements, and strategic alliances involving all aspects of patents, trade-marks, copyright, design, know-how and other proprietary interests throughout the world
- drafting and negotiating software, software development, computer related, e-commerce, and wireless technology agreements
MANAGEMENT OF IP
- using IP audits as a tool to add value consistent with business plans
SECURITIZING IP
- defining and registering patents, trade-marks, copyright, and designs as a prelude to public offering of shares
- registering IP as security for loans or debt
TECHNICAL EXPERTISE
- matching the subject matter to be protected with the expertise of registered patent and trade-mark agents
REPRESENTATIVE WORK
PATENTS
- act for many Canadian, U.S. and European based multi-national corporations in defining and protecting their Canadian patent portfolios
- successfully appealed a pharmaceutical patent case before the Supreme Court of Canada
- represented a medial device company in multi-million dollar litigation involving patent rights in Canada and worldwide
- represented a manufacturer of conveyor belt rollers in litigation involving infringement
- advise a chemical manufacturer regarding the licensing of its patented manufacturing process to a major pharmaceutical company
- co-ordinated U.S. patent infringement actions for several clients
TRADE-MARKS
- act for many Canadian, U.S. and European multi-national corporations in defining and protecting their Canadian trade-mark portfolios
- successfully appealed several trade-mark infringement and passing off actions before the Supreme Court of Canada
- manage extensive trade-mark portfolios for several major Canadian corporations including those in the telecommunications and food processing industries
COPYRIGHT AND CONFIDENTIALITY
- represented over 2000 authors worldwide in a class action lawsuit against Alberta based book publisher
- negotiated the resolution of copyright disputes involving grey market signals for satellite television company
- successfully negotiated the resolution of disputes involving the infringement of computer software in the oil and gas industries
- represented employers and employees in disputes involving theft of confidential information and breach of restrictive covenants
Senior lawyers in our IP Group have over 30 years of experience in serving businesses of all sizes on all aspects of IP enforcement, development and commercialization. The IP Group has developed a network of qualified legal and IP firms throughout the world to serve our Canadian and international clients seeking international growth through IP protection. Several of our lawyers are fluent in languages other than English and French.
Our Firm
Miller Thomson LLP is one of Canada’s largest national law firms, with offices in Toronto, Vancouver, Calgary, Edmonton, London, Kitchener-Waterloo, Guelph, Markham and Montréal. The firm provides a complete range of business law, advocacy and personal legal services to Canadian and international corporations, entrepreneurs, institutions, governments and not-for-profit organizations.
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