Intellectual Property

Heenan Blaikie’s Intellectual Property team partners with domestic and foreign clients to help them assess, protect and fully benefit from their intellectual property assets. We specialize in the clearance, registration and enforcement of patents and trade-marks in numerous areas, including the pharmaceutical, chemical, biotechnology, mechanical, electrical and high technology sectors. Our intellectual property professionals are also experienced in securing protection for and defending domain names, copyright and industrial designs. We approach the acquisition, protection and commercialization of intellectual property practically – with a view to securing the broadest possible protection for our clients in the most cost-effective manner possible. Our national team members work in English and in French, Canada’s official languages.

Internationally Recognized Excellence in Intellectual Property Litigation

Heenan Blaikie has been repeatedly recognized as one of the top intellectual property litigation firms in Canada. We regularly litigate patent, trade-mark and other intellectual property disputes before provincial and federal courts. We work collaboratively with our clients to develop winning litigation strategies and have successfully argued numerous precedent-setting cases. The depth and strength of our group enables us to quickly marshal superior resources to ensure that, when litigation becomes necessary, our clients consistently achieve optimal results.

Patent and Trade-Mark Prosecution

Our team includes lawyers and patent and trade-mark agents who have significant experience in patent and trade-mark drafting and prosecution. We conduct comprehensive searches to establish subject matter patentability and accurately assess risk when providing patentability and infringement opinions. We do thorough searching to deliver reliable trade-mark registrability and availability opinions. We manage sophisticated patent and trade-mark portfolios worldwide through an extensive network of foreign associates. Our international experience enhances our understanding of the issues facing our clients, which enables us to better protect their interests in Canada and elsewhere.

Commercialization

We have a depth of experience in drafting, negotiating and structuring commercial transactions involving intellectual property. This includes licensing and transfer of intellectual property assets as well as clearance and valuation of intellectual property in commercial transactions.

Integrated Service

As part of a full service law firm, our team regularly works with our commercial, entertainment, labour and tax colleagues to provide comprehensive and seamless client service.

Services Overview

Our team provides comprehensive intellectual property services, including:

• Patent litigation in infringement and impeachment actions and proceedings under the Patented Medicines (Notice of Compliance) Regulations
• Quia timet, interim and interlocutory injunctions, Anton Piller orders and Mareva injunctions to restrain infringement, preserve evidence and secure assets
• Trade-mark litigation, including infringement, depreciation of goodwill and passing off actions
• Copyright and industrial design litigation
• Trade secret and breach of confidence litigation
• Judicial review of administrative decisions relating to intellectual property rights
• Alternative dispute resolution, including mediation and arbitration
• Representation before boards and tribunals, including the Patented Medicine Prices Review Board, the Patent Appeal Board, the Trade-marks Opposition Board, the Copyright Board of Canada, and the Canadian Artists and Producers Professional Relations Tribunal
• Patent clearance, infringement, validity and freedom to operate opinions
• Patent drafting and prosecution
• Trade-mark clearance and registrability and availability opinions
• Trade-mark applications and prosecution
• Copyright and industrial design registration
• Portfolio management of technology and brands, including audits, watch services and policing of rights
• Drafting and negotiation of licences, technology development and transfer agreements, research and collaboration arrangements, strategic alliances, joint ventures, co-promotion and co-marketing, distribution and related agreements
• Due diligence audits and opinions
• Valuation of intellectual property
• Domain name registration and disputes
• Marketing and advertising law, including food, drug and chemical regulatory matters
• Confidentiality and non-disclosure agreements

Organizational Involvement

Our lawyers are frequent speakers at intellectual property conferences and seminars worldwide. They lecture and publish extensively on IP-related matters and several of them are members of prominent organizations, including the following:

• Intellectual Property Institute of Canada
• International Trademark Association
• Licensing Executives Society International
• American Intellectual Property Law Association
• International Association for the Protection of Intellectual Property