Noted for both its depth of knowledge and its breadth of experience, the Cassels Intellectual Property team is widely recognized as one of the largest and strongest in Canada. We advise and act for domestic and international clients in a wide range of industries on all types of intellectual property. That includes all three core IP areas – copyright, trademarks, and patents – as well as strategic guidance on registration and commercialization of IP, conducting IP audits, and developing IP policies.
COPYRIGHT
Our leading-edge IP lawyers don’t just advise on copyright law – they help shape it. We’ve been involved in many of the key copyright developments in Canada over the last decade. Just a few of our recent engagements include:
- Seven appeals to the Supreme Court of Canada – SOCAN v. Bell Canada, Entertainment Software Association v. SOCAN, Rogers Communications v. SOCAN, Alberta v. Access Copyright, Canadian Broadcasting Corporation v. SODRAC, York University v. Access Copyright, and, most recently, Entertainment Software Association v. SOCAN – that have collectively reshaped the Canadian copyright landscape
- Teksavvy Solutions v. Bell Media, a groundbreaking decision of the Federal Court of Appeal that confirmed the availability of site-blocking injunctions in Canadian copyright cases
- CBC v. Conservative Fund Canada, the first case in Canada to apply the fair dealing defence in the Copyright Act to political advertising
- Two of the largest copyright class actions in Canadian history
- Countless royalty proceedings before the Copyright Board of Canada, along with related litigation in the Federal Court and the Federal Court of Appeal
- Copyright-related proceedings before the Canadian Competition Tribunal
- Appearances before standing committees of the Canadian Parliament and Senate, charged with studying options for copyright reform
The Cassels team has represented clients in a wide range of industries, from music, film, TV, video games, and publishing to software, higher education, building products, and more. We add value to our copyright clients in many different ways, including:
- Advice and counsel on Canadian and international copyright law
- Copyright infringement litigation for copyright owners and users, as well as their representatives and insurers
- Negotiating and drafting licence agreements
- Copyright registration in Canada and the US
- Chain of title analysis, including copyright reversion
- Purchase and sale of copyright catalogues and other valuable assets
Known internationally for its expertise in the collective administration of copyright, the Cassels team also acts or has acted for a host of Canadian copyright collective societies and industry trade associations in proceedings before the Copyright Board of Canada. We also advise copyright users on compliance with certified tariffs, represent them as objectors and interveners in Copyright Board proceedings, and help them navigate other unique aspects of the Canadian copyright landscape.
TRADEMARKS
Our trademark lawyers advise some of the most valuable and high-profile Canadian and international brands – as well as referring law firms around the world – on the protection, enforcement, and licensing of various intellectual properties. We assist our clients with:
- Trademark applications
- Opposition and expungement proceedings
- Trademark litigation
- Trademark searches nationally and internationally
- Buying, selling, and licensing valuable marks
Our sophisticated, in-house computerized trademark search facilities permit us to identify, without delay, whether a proposed trademark already exists in either Canada or the United States. We can conduct manual searches in Canada (three to four days or expedited to 48 hours), oversee trademark availability searches in the US and elsewhere, and file applications in Canada and around the world through our extensive network of foreign agents.
The Cassels team has a significant presence before the Trademark Opposition Board, which handles both opposition and summary cancellation proceedings. That has given rise to many related proceedings in the Federal Court of Canada. We also work with clients on opposition proceedings in virtually all of the world’s most important trademark jurisdictions, including the United States, China, India, South Korea, the United Kingdom, France, Germany, Russia, Australia, Singapore, and the European Union.
Beyond our prosecution, opposition, and dispute practice, our trademark lawyers are well-known for their strategic advice and counsel. We routinely apply our specialized expertise in areas well beyond traditional trademark practice, assisting clients and other law firms to execute complicated transactions involving intellectual property. We have extensive experience with trademark licensing, due diligence, and valuation, as well as with the purchase and sale of valuable brand assets.
PATENTS
Our patent lawyers are trusted partners and strategic advisors to many of the world’s leading life sciences, technology, and consumer product companies. We focus on understanding our clients’ priorities and have a proven track record for designing practical, business-minded solutions to achieve their objectives.
Our patent litigators are preferred counsel for numerous entities, large and small, in high-stakes and multijurisdictional litigation. They are at home in the courtroom and are particularly known for their experience as tenacious examiners and persuasive advocates. Few Canadian counsel have taken as many cases to trial or handled as many appeals as the members of the Cassels patent litigation team.
They have been directly involved in many precedent-setting patent cases in Canada, including:
- Precedent-setting decisions on obviousness, utility, sufficiency, infringement and the test for inducing infringement
- Precedent setting decisions on discovery issues, including the proper scope of discovery, use of inventor evidence and the selection of a company’s discovery representative
- A successful challenge to the sufficiency of a notice of allegation
- A novel case allowing an industry association to make a collective response on behalf of its members to infringement allegations by a non-practising entity
Our patent team also has also demonstrated expertise in many innovative industries, including:
- Pharmaceuticals: Small molecule and biologic drug patents, new uses and combination uses across a range of therapeutic areas, novel formulations, crystal forms and salt forms
- Technology: social media applications, remote video capture technology, vehicle location and tracking technology
- Medical devices: Coronary artery stents, mobility devices, vascular prosthetics
- Agriculture and food: High-linolenic canola oil, electric treatment of vegetables before cutting; seafood processing technologies; cannabinoid biosynthetic pathways
- Manufactured goods: Pipe welding scanner, manufactured flooring substrates and sound insulative materials, water slides
- Consumer goods: Water filters, jump starters
- Energy: Oil transfer systems, SAGD oil sands technology, coil tubing injectors, reactor pressure tube sampling device
- Mining: directional drilling, ventilation doors
- Chemical: Polysaccharide resin technology
- Aerospace: Optical components for F-35 Joint Strike fighter, satellite technology
Our team is invested in client success, whether that means obtaining a judgment in the courtroom, developing and implementing alternative dispute resolution mechanisms, or negotiating favourable settlement terms.
At the same time, our patent lawyers are trusted business advisors. They regularly help clients with commercial transactions and provide practical advice on regulatory issues affecting innovative companies. Our team leverages this expertise to deliver litigation advice tailored to the specific commercial and regulatory interests of our clients’ businesses.
REGISTRATION AND COMMERCIALIZATION
Intellectual property — from inventions to designs — is often among a business’s most valuable assets. Our sophisticated team brings a multidisciplinary approach and a wealth of diverse experience to its work on commercializing patents and industrial designs. We work with our clients on all aspects of their global patent and industrial design strategies, including:
- Advising on the patentability of inventions and the registrability of industrial designs
- Overseeing patent and industrial design searches in Canada and around the world
- Preparing and filing applications under the Industrial Designs Act
- Supervising the preparation, filing, and prosecution of patent applications in Canada and around the world
- Assessing the ownership of rights in inventions and designs
- Analyzing the scope of patent and industrial design rights
- Negotiating licences and agreements
- Conducting due diligence and other strategic reviews
- Advising on commercial transactions involving patents and industrial designs
INTELLECTUAL PROPERTY AUDITS AND POLICIES
Many companies find that, despite the value of intellectual property to their business, they place too little importance on understanding what IP they own, what IP they use, and how to secure the rights they rely on every day. Often, these issues come into focus on the eve of an important transaction, when it’s too late to implement optimal solutions. Other times, the issues become apparent only through litigation that could have been avoided.
The Cassels team helps clients realize value and manage risk by designing and conducting systematic intellectual property audits. A careful IP audit can help avoid unnecessary surprises and identify potential threats. It can also reveal underutilized or undervalued assets that can boost a company’s bottom line.
We also help clients secure their intellectual property rights proactively by developing internal policies to govern the ownership, management, registration, and use of IP, as well as employment and non-disclosure agreements that help ensure that their IP is protected from the moment of its creation.