The Gardiner Roberts Intellectual Property group offers intellectual property services in the following areas:
- Intellectual Property Transactions and Due Diligence
We act for a number of large national and multinational companies and provide a variety of patent-related services. Our IP lawyers have extensive experience in preparing freedom to operate/infringement opinions and patent validity opinions involving technologies across several industries. We assist our clients in making the best business decision possible regarding whether to proceed with patent litigation and we have expertise in litigating patent cases before the Federal Court of Canada and the Federal Court of Appeal with the objective of obtaining the best possible results for our clients. We stay attuned to Federal Court trends and tendencies and are able to provide our clients with an objective evaluation of the prospects of their case. We also represent clients in commercial IP transactions including preparing and negotiating patent licensing and technology transfer agreements.
Our Patent Services include:
- patent infringement (freedom to operate) opinions
- patent validity opinions
- preparing and filing protests before the Canadian Patent Office
- infringement and validity actions
- impeachment proceedings
- Patented Medicines (Notice of Compliance) proceedings
- patent litigation, alternative dispute resolution and settlement
- patent licensing (including cross-licensing of patents), mergers and acquisitions, asset purchase, agreements, technology transfer agreements, confidentiality and non-disclosure agreements for inventions and trade secrets, assignment agreements with employees, contractors and other parties, and other transactions involving IP assets
- managing patent portfolios worldwide
We understand the value of our client’ trademarks which may be the company’s most valuable assets. We work with our clients to ensure that they have an effective trademark strategy consistent with their business strategy. We have a global network of trademark associates with extensive experience and we can assist you in any jurisdiction.
Our Trademark Services include:
- trademark portfolio management in Canada and worldwide to create effective trademark strategies
- trademark validity and infringement opinions
- opposition and cancellation proceedings
- trademark infringement and passing off litigation, negotiation and settlement
- trademark registrability and availability searches in Canada and internationally
- preparation, filing, prosecution, registration and maintenance of trademarks
- trademark enforcement and settlement
- trademark assignment, licensing, due diligence, audits and other transactional work
We can assist you in protecting and monetizing your creative works including (“literary works”: books, pamphlets, computer programs and other works consisting of text; “dramatic works”: motion picture films, plays, screenplays, scripts, etc.; “musical works”: musical compositions with or without words; and “artistic works”: paintings, drawings, maps, photographs, sculptures, plans, etc.). We also have expertise in litigation involving copyrighted works.
Our Copyright Services include:
- Copyright due diligence and registration of copyright
- Copyright ownership issues
- Preparation of copyright assignments and licences
- Copyright litigation, dispute resolution and settlement
- Social media issues and copyright
- Collective administration of copyright including acting on behalf of copyright collectives in actions for the collection of tariffs under the Canadian Copyright Act
- Copyright liability opinions
Regardless of the type of intellectual property (e.g. a brand, an invention, a trade secret, a creative work), intellectual property is often one of the most significant elements in a commercial transaction.
We provide advice on issues of IP ownership, development, use, sale, license and acquisition. We can assist you in achieving your business objectives while maintaining or increasing the value of your intellectual property.
Our IP Transactions and Due Diligence Services include:
- Ownership issues. We advise clients on the acquisition, assignment and transfer of rights, joint development and co-ownership of intellectual property, employee inventions and other IP-related employment issues and assist in the drafting of non-disclosure agreements.
- Commercial Transactions. We advise clients on IP rights transfer as well as negotiating and drafting joint venture and joint development agreements, mergers, acquisitions and other transactional agreements.
- Due Diligence. We ensure that our clients’ interests in IP transactions, whether acquiring or transferring IP rights and portfolios, are protected by conducting an intellectual property audit. Our thorough IP audits help to assess the quality and quantity of intellectual property assets owned by, or licensed to an entity or individual. Our IP audits include an assessment of how the intellectual property rights are protected and whether the chain of title of the intellectual property is accurate.
Key IP cases involving Lawyers at Gardiner Roberts include:
- Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77
- Pharmascience Inc. v. Canada (Health), 2014 FCA 133
- Pfizer Canada Inc. v. Pharmascience Inc., 2013 FC 120
- Babis (Domenic Pub) v. Premium Sports Broadcasting Inc., 2013 FCA 288
- Apotex Inc. v. Canada (Registrar of Trade-Marks), (2010), 81 C.P.R. (4th) 459 (FC); aff’d (2010) 91 C.P.R. (4th) 320 (FCA); leave to appeal dismissed, 2011 CanLII 28464 (SCC)
- Setanta Sports Canada Limited v. Gentile Enterprises Inc. (Aceti Pizzeria & Pasta), 2011 FC 64
- Setanta Sports Canada Limited v. 1053007 Ontario Inc. (Endzone Bar & Grill), 2011 FC 99
- Setanta Sports Canada Limited v. 840341 Alberta Ltd. (Bres'in Taphouse), 2011 FC 709
- Premium Sports Broadcasting Inc. v. 1682211 Ontario Inc. (Studio 10), 2010 FC 1267
- BMW Canada Inc. v. Nissan Canada Inc., 2007 FCA 255
- Princess Group Inc. v. Canadian Standards Association, 2009 FC 926
- Canadian Generic Pharmaceutical Association v. Glaxo Group Limited, 2013 TMOB 36
- Canadian Private Copying Collective v. Gogh Wholesale Inc. 2006 FC 1449
- 1395047 Ontario Inc. v. 1548951 Ontario Ltd., 2006 FC 339
Kevin W. Fisher