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Intellectual Property Law

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  • Key Contacts
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services
  • Download PDF
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services

Our intellectual property lawyers, patent agents and trademark agents possess deep technical and subject-matter expertise in all areas of intellectual property law. Lawyers in our team have been ranked as leading practitioners in international and national publications, including, Chambers Canada, Benchmark Litigation, Best Lawyers, Managing IP, IAM, Who's Who Legal, Legal 500 and LMG Lifesciences.

Deals That Move Markets

Our results-oriented approach allows clients to understand their options, mitigate risks and seize opportunities, empowering innovators to maximize the potential of their intangible assets. With our firm's Canadian and U.S. agents—and through our extensive network of foreign associates—we assist market-leading clients with patent and trademark filings throughout the world.  

Our Areas of Expertise

We provide comprehensive and strategic advice in five key areas of IP:

Patent and Trademark Prosecution

Lawyers, patent agents and trademark agents at Bennett Jones have comprehensive experience in procuring and asserting intellectual property rights.

Our prosecution teams regularly assist clients with securing proprietary rights to establish enviable market positions. With diverse scientific backgrounds, our patent agents are equipped to guide you through the prosecution process for any type of technology. 

Learn more about our Patent and Trademark Prosecution experience

Intellectual Property Litigation

Bennett Jones assists clients with managing disputes before litigation commences. Our technical expertise allows us to help clients manage risk through opinions on freedom-to-operate, trademark clearance searches and pre-litigation market entry for pharmaceutical products.

We also provide strategic advice on complex regulatory matters for clients in the pharmaceutical, natural health product, medical device, cosmetic and cannabis sectors. 

Learn more about our Intellectual Property Litigation experience

Intellectual Property Advisory

Our lawyers and patent and trademark agents have extensive experience advising on the management of complex intellectual property portfolios. Our advisory team provides strategic legal guidance with a focus on innovation, technology, and branding.

Learn more about our Intellectual Property Advisory experience

Intellectual Property Transactions

Our transactional intellectual property team advises on the buying, selling, licensing and development of technology and intellectual property rights. Clients work with us for strategic, practical legal guidance on their intellectual property matters.

Learn more about our Intellectual Property Transactions experience

Data Governance Protection and Cybersecurity

Clients work with us for our practical approach to addressing cybersecurity. We advise clients on cybersecurity preparedness, data protection plans, due diligence and response plans, among other things. We also aid clients with the protection and enforcement of electronic-based privacy rights both domestically and internationally.

Learn more about our Data Governance Protection and Cybersecurity experience

Key Contacts

  • Dominique T. Hussey Dominique T. Hussey, Vice Chair and Toronto Managing Partner
  • Stephen D. Burns Stephen D. Burns, Partner, Trademark Agent
  • Related Lawyers

Recent Experience

Canadian Utilities Limited, an ATCO company, in the sale of its entire Canadian fossil fuel-based electricity generation portfolio for approximately $835 million, which was completed in three stages, through the sale of its interest in the Cory project in Saskatchewan to SaskPower International Inc., a sale of its interest in the Brighton Beach project in Ontario to Ontario Power Generation Inc., and a sale of the balance of the applicable generation assets through a sale of its equity interest in ATCO Power Canada Ltd. to Heartland Generation Ltd., an affiliate of Energy Capital Partners.
Square Inc., financial services and mobile payments on its full range of IP in Canada.
Acquisition of 17 properties by a KingSett Capital-led consortium, in H&R Real Estate Investment Trust's acquisition of Primaris Retail Real Estate Investment Trust pursuant to a Plan of Arrangement. Bennett Jones acted for the consortium with respect to real estate and banking matters.
ATCO Ltd., in the disposition of ATCO I-Tek Inc. and ATCO's Australian IT operations to affiliates of Wipro Ltd. for aggregate sale proceeds of approximately $210 million.
ATCO Ltd., in the negotiation, structuring and other commercial matters relating to ATCO entering into a strategic alliance with Wipro including 10-year master service agreements governing the provision of IT services by Wipro to the ATCO Group of Companies valued at approximately $1.2 billion.
ATCO Structures & Logistics Ltd., in the sale of its 50% interest in TecnoFast, being its South American joint venture modular housing operations, to its co-venturer, TecnoFast S.A., for $124 million. The business of TecnoFast involved space rental and workforce housing fleet assets as well as manufacturing facilities and offices in Chile, Peru, Colombia, Argentina and Brazil.
Blue Ant Media Inc., in its acquisition of Canadian broadcaster GlassBOX Television Inc. and the Travel+Escape, Bite TV and AUX TV specialty channels.
Blue Ant Media Inc., in its acquisition of Canadian broadcaster High Fidelity HDTV and its four premium high definition channels—Oasis HD, eqhd, radX and HIFI HD.
Developed comprehensive document retention policy for SOX compliance.
Dupont Canada Inc., alleged infringer, in a reference to determine the damages that should be paid to the patentee, resulting in the patentee's claim for $30 million being reduced to $3 million. Allied Signal v. Dupont Canada Inc., (1998) 78 CPR (3d) 129
Gary Gurmukh Sales Ltd., in successful enforcement of trademark rights relating to souvenir merchandise. In addition to obtaining an injunction, order for delivery up, damages and costs, the respondent's claim that the trade-marks were invalid was dismissed. Gary Gurmukh Sales Ltd. v. Quality Goods IMD Inc.
Intrafinity Inc., doing business as SharpSchool, in the acquisition of substantially all of its assets by West Corporation.
Mitsubishi Corporation, in its acquisition of a 40% interest in Encana Corporation's Cutbank Ridge natural gas assets in Northeastern British Columbia for approximately $2.9 billion.
Monsanto Company, the patentee, in the enforcement of a gene patent against an infringer, in a landmark decision in the field of biotechnology by the Supreme Court of Canada which confirmed that gene modifications are patentable subject matter. The proceedings attracted significant legal and social commentary, culminating in the staging of Seeds (Schmeiser v. Monsanto), a documentary play authored by Annabel Soutar which dramatized the legal dispute using actual transcripts from the Court proceedings. Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34.
Negotiated a complex license for technology necessary for a next generation aromatics extraction plant in Alberta. The mandate involved a Joint Venture to build aromatics extraction plant.
Nidek Corp., an alleged infringer, in a patent covering a laser eye surgery apparatus, resulting in the dismissal of the action and subsequent appeal. Visx Inc. v. Nidek Co. Ltd., 2001 FCA 215.
NUCRYST Pharmaceuticals Corp., in the possible sale of all or substantially all of the assets of NUCRYST and the consideration of an amalgamation of the NUCRYST with 1499642 Alberta Ltd., a wholly-owned subsidiary of The Westaim Corporation.
Omstead Foods Limited, in the divestment of its frozen vegetable and coated appetizer division to Bonduelle SA and its frozen fruit division to Silver Valley Farms.
One Equity Partners and Systagenix Wound Management, as Canadian counsel, in the purchase of Ethicon, Inc.'s, (a Johnson & Johnson company), Professional Wound Care business. 
Research In Motion Limited, in its $150-million acquisition of Certicom Corp.
Resource Well Completion Technologies Inc., in the acquisition by Schoeller-Bleckmann Oilfield Equipment AG of a majority interest for approximately $40 million.
Statoil Canada Ltd., in acquisition by PTTEP Canada Limited of the remaining 60% ownership interest in the Thornbury, Hangingstone and South Leismer oil sands areas in exchange for Statoil's 40% stake in the Leismer and Corner projects and approximately US$200 million in cash.
SurfEasy Inc., in its acquisition by Opera Software.
The Banff Television Festival Foundation, in its restructuring involving incorporating a new foundation and obtained a court ordered transfer of assets and goodwill permitting the 2004 Banff Television Festival to proceed. This transaction included the licensing of various intellectual property assets to a third party white knight to ensure this 25-year Alberta institution could continue forward with its goals.
The Canadian Copyright Licensing Agency, in obtaining and enforcing judgments for copyright infringement against individual and corporate defendants.
The shareholder consortium, in their formation to effect the buyout of the founders of and the restructuring of Trakware Systems Inc., the restructuring has included the entering into of a complex source code / object code license arrangement with the founder.
The Westaim Corporation, in the sale of assets of Westaim's subsidiary, iFire Technology Ltd., to CTS Group Limited.
TriWest Capital Partners, one of Canada's leading private equity firms, in the acquisition of Prostar Well Service Inc. and Prostar Manufacturing Inc. (formerly Rangeland Drilling Automation Inc.)
VimpelCom Ltd., in its sale process and disposition of their debt and equity interests in the Globalive group of companies in Canada, including Globalive Wireless Management Corp. (WIND Mobile), including the forgiveness or sale of approximately $2 billion of debt owed by WIND Mobile and the sale of their equity interests in WIND Mobile for approximately $130 million.

Recent Recognition

Chambers Global
Ranked, Intellectual Property
The Legal 500
Ranked, Intellectual Property
Chambers Canada
Ranked, Intellectual Property
IAM Patent 1000
Ranked, Transactions

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Related Services

Data Governance Protection & Cybersecurity
Intellectual Property Advisory
Intellectual Property Litigation
Intellectual Property Transactions
Patent & Trademark Prosecution
Payment Solutions
Privacy & Data Protection
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