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Intellectual Property

The combined intellectual property team of Aird & Berlis LLP (“A&B”) and Aird & McBurney LP (“Aird & McBurney”) brings together lawyers and patent and trademark agents who secure Canadian and worldwide protection and provide enforcement of intellectual property (“IP”) rights.

A&B and Aird & McBurney work closely to provide a full range of services in IP procurement, litigation, technology transfer and corporate transactions in connection with all forms of IP, including patents, trademarks, copyrights, industrial designs, trade secrets and domain names.

Members of the two firms have been in practice together for more than 30 years and have a strong history of collaboration. Our clients range from individual inventors and small startup companies to universities, hospitals and research facilities to large Canadian and multinational corporations, including Fortune 100 companies.

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Expertise

Securing IP Rights

When it comes to securing IP rights, we are vigorous and strategic advocates. We assist clients in acquiring the appropriate IP rights to support their business mandates.

The patent agents of Aird & McBurney hold Ph.D., M.Sc. or B.Eng. degrees in their fields of expertise. This technical depth allows them to offer unparalleled service in the preparation, prosecution and maintenance of patent and industrial design applications over a wide range of technologies and industries, including medical and agricultural biotechnologies, diagnostics, pharmaceuticals, chemistry, immunology, genetics, bioinformatics, mining, oil and gas, “clean” or “green” innovation (such as renewable energy, biofuels, solar power, wind power and water purification), munitions, medical devices, scientific instrumentation, wireless communications, e-commerce software, manufacturing and consumer products.

Our trademark agents and lawyers assist clients in developing and managing national and global trademark portfolios. They conduct searches to determine the availability of trademarks for use and registration in Canada and elsewhere, and provide a full range of services relating to the prosecution, registration and maintenance of trademarks.

Conflict Avoidance

We provide patentability, freedom to operate, infringement and validity opinions, as well as trademark clearances and assistance in designing to avoid patent and trademark infringement. We have extensive experience in developing and managing strategic international IP portfolios while keeping up with the latest technical advances and the rapidly changing global IP climate. We also help our clients increase their brand exposure with the counsel of our lawyers who are experts in regulatory, advertising and marketing matters.

Enforcement

Our clients trust us to protect their IP rights against infringers, counterfeiters and cybersquatters and to defend them against invalid claims made by others. We represent our clients in all types of IP litigation involving patent, trademark, copyright, industrial design, confidential information/trade secret rights, domain name and UDRPs, and the Patented Medicines (Notice of Compliance) Regulations, as well as invention ownership, competition law, false advertising, product liability and professional negligence claims. We have substantial experience before the courts and tribunals listed below, as well as in the mediation and arbitration of IP and related matters.

  • Supreme Court of Canada
  • Federal Court of Appeal
  • Ontario Court of Appeal
  • Federal Court
  • Ontario Superior Court
  • Alberta Court of Queen’s Bench
  • Canadian Patent Appeal Board
  • Canadian Patent Reissue Board
  • Trademarks Opposition Board

Corporate Transactions

We consult on the IP aspects of acquisitions, divestitures and financings. We conduct thorough due diligence reviews of IP assets in connection with corporate transactions, and act on behalf of lenders and borrowers for financings secured by IP, including the enforcement of such security. We have also acted on many tax-motivated public offerings and other creative financings based on IP, such as feature films and computer software.

Technology Transfer

Our expertise in technology transfer allows clients to effectively leverage their IP. We advise on licensing/joint development agreements, pooling agreements, asset purchase agreements, franchising agreements, security agreements, non-disclosure agreements, assignment agreements, and research and development agreements. We are experienced in structuring, drafting and negotiating all types of commercial agreements to protect our clients’ investments. Our team also has extensive experience in negotiating and drafting licences for enterprise-wide management systems and e-commerce providers.

Our Team

Together, A&B and Aird & McBurney provide seamless advice to our clients on a full range of IP services. We also work closely with other practice groups, including domestic and international tax, technology, communications, sports and media, franchising, corporate finance, corporate/commercial and labour and employment, to offer our clients advice that is responsive to all their business needs.

Members of our IP team are involved in many industry organizations, including:

  • Advocates’ Society
  • American Intellectual Property Law Association (AIPLA)
  • Association of University Technology Managers (AUTM)
  • Canadian Society for Pharmaceutical Sciences (CSPS)
  • Canadian Society of Pharmacology and Therapeutics (CSPT)
  • Chartered Institute of Arbitrators
  • Intellectual Property Owners Association (IPO)
  • Intellectual Property Institute of Canada (IPIC)
  • International Association for the Protection of Intellectual Property (AIPPI)
  • International Federation of Intellectual Property Attorneys (FICPI)
  • International Trademark Association (INTA)
  • Licensing Executives Society (LES)
  • Life Sciences Ontario (LSO)
  • Toronto Intellectual Property Group (TIPG)

Representative Clients

We represent Fortune 100 companies in the life sciences, food and beverage, entertainment, media, sports and communications, energy and mining sectors, in addition to the electrical, mechanical, biomedical, computer engineering and software development industries. Our clients also include individuals, startups, universities, hospitals and research institutions.

Key Contacts

Aird & Berlis LLP

Tim Lowman, FCIArb, CLP

Grant Cansfield

Ken Clark, B.A.Sc. (Mech Eng.)

Aird & McBurney LP

Peter W. McBurney, P.Eng.

Lola A. Bartoszewicz, M.Sc., Ph.D.

Kimberly A. McManus, Ph.D.

Kitt Sinden, M.Sc.



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