The combined intellectual property team of Aird & Berlis LLP and Aird & McBurney LP brings together lawyers and patent and trademark agents who secure Canadian and worldwide protection and provide enforcement of intellectual property 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.
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.
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.
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
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.
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.