Intellectual Property

Intellectual property is increasingly becoming part of a company’s competitive advantage and is an asset that requires careful management and protection. For technology start-ups, IP is likely the core business asset, and its commercialization the foundation for the company's business plan. We assist clients throughout the lifecycle of technology development, from capture, through de-risking and scale up, to commercialization, and including technology transfer. Our intellectual property lawyers advise clients on all aspects of IP portfolio development, management and exploitation, from creating baseline industry or sector patent-based technology landscapes, to identifying core vs. non-core IP assets. 

We assist clients in devising offensive, defensive or hybrid IP strategies that align with and support their business priorities, plans and budgets.  In addition, our lawyers recommend and provide advice with respect to the design and creation of IP monitoring approaches and IP enforcement/defense strategies in relation to misappropriation and infringement. Specifically, we help clients develop business strategies around core IP assets by assessing industry and market sector landscapes, including  competitors' market positions, and IP strengths and weaknesses. This understanding allows us to help clients focus their research, development, and IP protection efforts and to determine the best commercialization pathways to market.  

Our lawyers assist clients in relation to the IP aspects of corporate policy development and implementation of appropriate IP governance and associated forms, systems and protocols, while balancing the business, commercial and legal risks and interests. We help clients leverage and protect their IP in relation to matters involving trade secrets and confidential information, trade-marks, passing off, copyrights and registered designs. Our lawyers have experience advising companies with respect to registering both word-marks and design-marks that identify a company’s brand, product or service. 

We assist clients with licensing intellectual property as a core business driver and outcome and also to leverage their intellectual property assets for growth and revenue generation. In the course of preparing start-ups and companies to raise financing, and in contemplation of mergers, acquisitions and significant transactions, we conduct all manner of IP due diligence assessments, from lab book protocol to asset, including the invention disclosure process and all of the steps along the way. Our IP lawyers draw upon the expertise of colleagues who have worked on technology transactions and have advised in relation to privacy law issues. We also advise clients with respect to contamination and confidential information management protocols.  

Lawson Lundell’s litigation team has experience working with clients across a range of sectors and industries, advising them in devising enforcement and litigation strategies to help protect and expand their intellectual property, as well as in defending against allegations of misuse or infringement. Areas in which our IP team has experience includes:

  • Agreements related to intellectual property, including:  
o Assignment and transfer;
o Joint development agreements;
o Joint Industry Projects ("JIP");
o Licensing and Sublicensing;
o Industrial Research Chair ;
o Sponsored or merchant research ;
o Software development;
o Confidentiality and non-disclosure; and
o Employment and consulting;
  • Anti-counterfeiting
  • Breach of confidence, and litigation over trade secrets and misuse of confidential information;
  • Copyright litigation
  • Cybersquatting and domain name litigation
  • Copyright Board hearings
  • False advertising
  • Intellectual property licensing and related contractual disputes
  • Intellectual property validity and ownership disputes
  • Intellectual property competitive intelligence landscaping and monitoring;
  • Intellectual property valuations;
  • Intellectual property enforcement strategies;
  • Intellectual property strategic planning and implementation;
  • Media litigation and disputes
  • Mediation, arbitration and alternative dispute resolution of intellectual property disputes
  • Privacy policy development and implementation;
  • Rights of publicity litigation
  • Technology, telecommunications and outsourcing disputes
  • Terms of Use/Terms of Service;
  • Trade-mark infringement, passing off, and trade-mark dilution
  • Trade-mark Opposition Board hearings
  • Design, build and roll-out of a corporate IP strategy complete with alternatives and examples for an enforcement philosophy, for a major energy player.
  • Performed a FTO exercise for a first of its kind commercial scale industrial technology in the energy industry.
  • Initiated and co-contributed to driving $4 million in (lifecycle) costs out of the global patent  portfolio of a technology start-up.
  • Successfully defended a visual effects studio and its principals against claims for breach of fiduciary duty, conspiracy, conversion, breach of confidence, and solicitation of employees, arising from the provision of visual effects for a network science fiction television show (Zoic Studios BC Inc. v. Gannon, 2012 BCSC 1322; 2015 BCCA 334).
  • Successfully defended against claims by a junior mining company against a major for breach of confidence in a case involving significant nickel deposits in the Cape Smith Belt, obtaining dismissal of all claims after summary trial (Novawest Resources Inc. v. Anglo American Exploration (Canada) Ltd. et al., 2006 BCSC 769).
  •  Successfully obtained an injunction restraining passing off and sale of counterfeit luxury handbags, and an order to seize all inventory (Hermes Canada Inc. v. Henry High Class Kelly Retail Store, 2004 BCSC 1694).
  • Represented a website owner in the first case in Canada and the Commonwealth to enforce passive (or “browse wrap”) online terms of use and related copyright claims (Century 21 Canada LP v. Rogers Communications Inc., 2011 BCSC 1196).
  • Successfully defended an international publishing company and its author in a copyright infringement action (Thumbnail Creative Group Inc. v. Blu Concept, 2009 BCSC 1833).

Team Members

Name Office Phone Email
Boyd, Thomas604.631.9132
Coates, Tamela403.218.7534
Fancourt-Smith, Mark604.631.9110
Matthews, P.Eng. (AB), Paul250.300.8574
604.631.9159
403.218.7550
Vesely, Marko604.631.9260