Our Legal Structure and Provision of Services
Smart & Biggar is the business name for three separate but related entities which provide separate specialized intellectual property services under the Smart & Biggar brand in a collaborative manner, namely:
- Smart & Biggar LLP, a limited liability partnership formed under the laws of the Province of Québec, which carries on the business of a law firm and solely provides legal services in Canada outside the province of Alberta;
- Smart & Biggar Alberta LLP, a limited liability partnership wholly owned by individual lawyers and formed under the laws of the Province of Alberta which carries on the business of a law firm and solely provides legal services in Canada within the Province of Alberta; and
- Smart & Biggar LP, a limited partnership formed under the laws of the Province of Québec, which carries on the business of a patent and trademark agency and provides all related and other services that are not legal services provided by either of Smart & Biggar LLP or the Smart & Biggar Alberta LLP.
Smart & Biggar Alberta LLP is solely responsible for the provision of all services reserved to the legal profession pursuant to the rules applicable to the practice of law in the Province of Alberta. Smart & Biggar Alberta LLP will at all times provide such legal services, and all fees for legal services under the laws of the Province of Alberta will be invoiced by Smart & Biggar Alberta LLP.
Smart & Biggar LLP is solely responsible for the provision of all services reserved to the legal profession pursuant to the rules applicable to the practice of law anywhere in Canada other than the Province of Alberta. Smart & Biggar LLP will at all times provide such legal services, and all fees for legal services under the laws of any Province of Canada other than the Province of Alberta will be invoiced by Smart & Biggar LLP.
Smart & Biggar LP generally provides all other services, all fees for such services will be invoiced by Smart & Biggar LP.
Except to the extent relating to the provision of legal services in connection with the laws of the Province of Alberta, which will be provided solely by Smart & Biggar Alberta LLP, the expressions ‘Smart & Biggar’, ‘we’, ‘us’ and “the firm” mean any or all of Smart & Biggar Alberta LLP, Smart & Biggar LP or Smart & Biggar LLP according to the context in which the expression is used, and each right of Smart & Biggar hereunder may be exercised by any of them, and each obligation may be wholly satisfied by performance by any of them. Smart & Biggar LLP is a third-party beneficiary of these terms of engagement.
Transfer of Files and Trust Accounts
As you previously had a relationship with either or both of our predecessor firms, Smart & Biggar LLP and Smart & Biggar IP Agency Co., respectively a limited liability partnership and a general partnership formed under the laws of Ontario, you agree that your files, documents and contact information in their possession will be transferred to Smart & Biggar Alberta LLP and Smart & Biggar LP, respectively, for use and handling going forward.
You also agree that funds and other property, if any, held in trust on your behalf by either of our predecessor firms, Smart & Biggar LLP and Smart & Biggar IP Agency Co, will be transferred to a trust account held on your behalf by Smart & Biggar Alberta LLP or Smart & Biggar LP, respectively, for the same original purpose and under the same terms and conditions, and in compliance with regulatory requirements and rules of professional conduct applicable to Smart & Biggar Alberta LLP or Smart & Biggar LP, respectively.
Conflicts of Interest
We have been retained by you. Our provision of services (including legal services) to you in accordance with these terms of engagement does not include our acting for any other parties or persons, including those that may be related to you, such as individuals or entities that are shareholders, directors or officers of a corporation, or any related companies or affiliates.
Affiliation with the IPH Limited Group
Smart & Biggar Alberta LLP is affiliated with and operates as part of the IPH Limited group through a mutually exclusive collaborative service and referral arrangement with Smart & Biggar LP and Smart & Biggar LLP. The IPH Limited group is made up of a network of intellectual property professional services businesses which operate under different brands in a range of jurisdictions. IPH Limited has an indirect ownership interest in Smart & Biggar LP which in turn has an ownership interest in Smart & Biggar LLP.
Smart & Biggar and each other IPH business adheres to certain key principles to ensure independence in the provision of professional IP agency and legal services to clients, appropriate disclosure of relationships within the IPH Limited group and management of actual or potential conflicts of interest.
For more information on IPH Limited and the legal entities forming part of the group, please see iphltd.com.au. For more information on the key principles to which each IPH Limited business adheres, please see our Group Relationships Statement.
Each of the IPH businesses, including Smart & Biggar, operate independently from one another in the provision to clients of professional IP agency and legal services (subject to the possibility an IPH business may in some cases engage or itself be engaged as a foreign agent or lawyer by another IPH business).
Scope of Engagement
Please note that our firm’s practice is restricted to intellectual property agency matters and legal representation, including patents, trademarks, copyrights, designs, and related matters including litigation.
In order to enable us to provide effective service and advice, you will be required to tell us all relevant information about your matter at the start of our relationship as well as on an ongoing basis, and to instruct us well before deadlines to avoid loss of rights and to avoid fees and costs required for urgent handling.
We generally provide our services in accordance with instructions received from you. However, if your rights or interests are at risk, we may need to act without awaiting your instructions, in which case our services and disbursements will be invoiced as usual.
In the event that you seek intellectual property protection in other countries, we can assist you in selecting a foreign intellectual property lawyer or agent. To the extent we work with any such foreign lawyer or agent, you agree that we will correspond with these individuals and firms as your representatives, and that we are not liable for any failure by them to perform their work competently and/or in a timely manner, and that you will be responsible for all associated fees and expenses.
Advice & Services
We treat our advice and services as confidential. Our advice and services are provided solely to you and only for your benefit, and you are responsible for paying our fees. We do not act for your shareholders, directors, officers, representatives or any other person unless we expressly agree otherwise. No other person may use the advice we give you unless we agree otherwise in writing and upon such conditions as we may specify. You should refrain from disclosing our advice to others. In the event that you wish to disclose our advice to others, you agree to obtain and remit to us the third-party recipient’s prior written acknowledgement that they accept that we have no obligation or duty owed to them and will not be liable to them under any circumstances.
Our advice relates only to each particular matter in respect of which you engage us. Once a matter has ended, we will not owe you any duty, obligation or liability in respect of any related or other matters unless you specifically engage us in respect of those related or other matters.
Our advice is opinion only, based on the facts we know and on our professional judgement, and is subject to any changes in the law after the date on which the advice is given. We are not liable for errors in, or omissions from, any information provided by third parties.
Our advice is not to be referred to in connection with any prospectus, financial statement or public document without our prior written consent, subject in all cases to the conditions we may specify.
Confidentiality
We will hold all information you provide to us in confidence and in accordance with this engagement agreement and our legal obligations.
Handling of Information
Smart & Biggar LP provides to Smart & Biggar Alberta LLP certain management, administrative and operational services (including storage of data and information), and its personnel may support the provision of the legal services provided by Smart & Biggar Alberta LLP. Smart & Biggar Alberta LLP personnel may also assist Smart & Biggar LP or Smart & Biggar LLP in the provision of its services. You consent to the sharing of your information between Smart & Biggar Alberta LLP and Smart & Biggar LP or Smart & Biggar LLP for such purposes.
To provide services to you, we may need to disclose information provided by or created with respect to you to third parties such as government authorities, courts, foreign patent and trademark agents or lawyers, other counsel, renewals agents, and experts. You consent to such disclosure for such purposes.
In order to provide services hereunder, we may also rely upon back-office, non-professional services provided by partners and affiliates within the IPH Limited group that do not provide professional services, including information technology, insurance, personnel, analysis, client support, finance and accounting services. As an affiliate of the IPH Limited group, where reasonably necessary to satisfy corporate governance, management and reporting responsibilities, such as financial and regulatory reporting, compliance, corporate accountability and oversight and risk management responsibilities, we may also be required to share certain information with IPH Limited. You agree that we may disclose your information for these limited purposes. Any information shared for such purposes is disclosed only to the extent reasonably required, is used only for the purposes provided above, and remains subject to confidentiality. For greater certainty, no non-public information is shared with any other IPH business (unless engaged on your behalf as a foreign agent or lawyer).
Our communications and advice to you are generally protected by solicitor-client privilege in the Province of Alberta. The sharing of information, materials and communications as outlined herein does not constitute a waiver of any applicable solicitor-client privilege or professional secrecy that might otherwise attach to that information, material or communication.
U.S. export control laws, such as the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR), limit the export of certain technical data from the U.S., including for the purposes of drafting a patent application. Penalties for non-compliance include civil sanctions, such as significant fines, or possibly criminal penalties. These provisions primarily apply to information having use (or potential use) in the defence, security, and/or military space, but caution should be exercised in relation to any technology that may be of a potentially sensitive nature. We assume that you will take any necessary steps that may be required for exporting data / disclosure for preparing or discussing a potential patent application for an invention made in the U.S.
Our Fees
We charge fixed fees for carrying out specific actions, such as filing applications, and hourly rate fees for time spent on non-standard advice and services.
For certain activities (e.g., searches; preparing and filing of applications; addressing objections raised by Examiners in the Intellectual Property Office (“prosecution matters”)), our fees are typically based on a combination of professional time spent on a matter and a fixed-cost component.
For other matters, such as when Smart & Biggar Alberta LLP is asked to provide legal opinions or undertake enforcement activities or engage in litigious matters, fees are based primarily on the hourly rates and time spent by the professionals involved with the file. The number of lawyers and paralegals assigned to the matter will be based on discussions with you and the size and complexity of the case. The hourly rates of the professionals vary depending on the individual’s experience, background, and qualifications. Moreover, while a litigation partner will always be the professional who oversees the case, and has ultimate responsibility for the file, Smart & Biggar Alberta LLP attempts to ensure that the work is performed by the appropriate level of professional, in order to keep costs at a minimum wherever possible. This includes not only using a junior lawyer(s) to do certain tasks as may be reasonable, but also the efficient use of paralegals.
We charge a range of rates based on the experience and seniority of the professionals involved and they change from time to time. If at any time you would like to know the rates being applied to your matter, please contact the professional supervising your file.
In addition to our fees, we also charge for service items (such as preparation of drawings, photocopying, postage, telephone and fax charges, etc.) and any third-party disbursements we may incur on your behalf (e.g., court fees; expert fees; travel expenses; court reporters; government fees; foreign associate fees; etc.).
If Smart & Biggar LP needs to instruct a foreign agent to do your work in their country, Smart & Biggar LP acts on your behalf and will charge you separately for the work. Smart & Biggar LP will convert the agent’s fees to Canadian dollars and add a foreign currency fee to cover exchange rate changes and bank and credit card fees (currently 5%). Smart & Biggar LP may pass on bank charges if they are significant.
We charge a separate office expense recoveries fee to cover the costs for printing, photocopying, and communication charges. We may pass on the actual costs to you if they are significant.
We would be pleased to provide you with our best estimate of anticipated fees and expenses in respect of any matter for which you engage us. However, please appreciate that if circumstances change or unanticipated complexities arise, our best estimate could be exceeded. We will let you know promptly if it becomes apparent that the actual fees are likely to be more than the amount we have estimated.
Invoices & Payment Arrangements
We will usually send you invoices every month unless we have agreed to a different arrangement.
For searches, filing of applications and related prosecution matters, our invoices are issued at different times as the work progresses rather than, for example, monthly, in order to minimize the associated administrative costs. For example, reporting allowance of a patent application, and paying the final fee for the application may be covered by a single invoice, covering activity that may take place over several months. For enforcement matters, our invoices will usually be issued on a monthly basis.
In circumstances where each of Smart & Biggar Alberta LLP and either or both of Smart & Biggar LP and Smart & Biggar LLP have provided services during the relevant period, each of them will send you a separate invoice for the services it has provided to you. For greater clarity, to the extent services detailed on such invoices comprise legal services under the laws of the Province of Alberta, they are provided solely by Smart & Biggar Alberta LLP.
If either Smart & Biggar Alberta LLP or Smart & Biggar LP is holding a deposit from you, you authorize that payment of any amounts invoiced to you by it may be satisfied from such deposit.
Each of our invoices will include goods and services tax as and when required by law.
All invoices are due for payment, in full, when received by you, such that your payment reaches us within 30 days from the invoice date. If an invoice issued to you by Smart & Biggar Alberta LLP or Smart & Biggar LP is not paid when due any amount outstanding may be deducted from any money held by either Smart & Biggar Alberta LLP or Smart & Biggar LP, respectively, on your behalf. In the event that an invoice issued to you by any of Smart & Biggar Alberta LLP or Smart & Biggar LP or Smart & Biggar LLP remains outstanding beyond 60 days, each of Smart & Biggar Alberta LLP and Smart & Biggar LP and Smart & Biggar LLP reserves the right to refrain from providing any further services to you, even in the face of critical due dates. We are entitled to retain your files and documents until you have paid all outstanding invoices.
Each of Smart & Biggar Alberta LLP and Smart & Biggar LP may also charge you interest at the legal rate on invoices you have not been paid when due, and may recover from you any costs of collection and related legal fees.
We reserve the right in our discretion to change the frequency of billing and the time for payment or to request payment in advance.
Monetary Retainer
Any monetary retainer held by either or both of our predecessor firms, Smart & Biggar LLP and Smart & Biggar IP Agency Co, in trust on your behalf will be transferred and held by Smart & Biggar Alberta LLP and Smart & Biggar LP, respectively, in trust on your behalf. Each monetary retainer will be applied to the final invoice for the matter in respect of which such retainer is held, and any excess balance will be returned to you. A supplementary retainer may be requested in the event that higher costs are anticipated, or in the event that you retain us in respect of additional intellectual property matters.
Before either of Smart & Biggar Alberta LLP or Smart & Biggar LP commence any activities in respect of any new engagement, you may be required to provide a monetary retainer in the, together with a signed copy of our then current engagement agreement confirming the general terms of our engagement.
The amount of a retainer depends upon the anticipated cost at any stage, including our own fees and, in the case of filing applications in other countries, the fees that we anticipate will be charged by the foreign attorney.
Please note that our trust account is a Canadian dollar account and is non-interest bearing according to applicable Law Society rules. As such, any amount forwarded to us in a foreign currency will necessarily be converted by us to Canadian currency prior to deposit. It is this amount in Canadian currency that we will hold in trust on your behalf, and which will be the basis for any subsequent withdrawal on account of any final payment to you of any outstanding amount (if applicable). Our firm will not be responsible for any foreign currency exchange fluctuations.
Termination
We reserve the right to terminate the services being provided if an account is not paid promptly when due, or for any other reason not precluded by applicable rules of professional conduct, without affecting our right to be paid accrued fees and expenses.
You have the right to terminate our engagement at any time upon payment of accrued fees and expenses.
Record Keeping
Originals of physical documents that you provide to us will be returned to you, if requested, during or immediately following the specific engagement. Our file remains our property and will be maintained or, upon conclusion of the matter, destroyed in accordance with our policies and legal requirements. We may then maintain only electronic files in lieu of physical files. Physical samples or specimens will only be retained until a file is closed and, unless you instruct us to the contrary, will then be destroyed.
You agree that all files pertaining to the matter described above may be disposed of at any time after five (5) years have elapsed after we last performed services with respect to such matter. You may request, at any time before disposal of files, copies of materials contained in such files. You recognize that we may, in exercising our judgment while working on a matter, discard certain documents, such as interim drafts, the retention of which we do not believe to be significant to the protection of your interests.
Governing Law & Disputes
We carry on business under the laws of the Province of Alberta, and our relationship with you is governed by the laws of the Province of Alberta (without reference to its conflicts of laws rules) and the federal laws of Canada applicable therein.
If you have any dispute with, or claim against, our firm and decide to commence a court action to seek relief, you agree that any such dispute or claim will be submitted to, and resolved by, the Courts of competent jurisdiction located in the municipality of our place of business in the Province of Alberta, and you agree that such Courts will have the exclusive jurisdiction to finally adjudicate or determine any such dispute or claim.
Liability
To the extent allowed by law, our aggregate liability to you (whether in contract, extra-contractually, in tort (including negligence), equity or otherwise) in connection with our services will be limited to the greater of:
- the proceeds available under the applicable professional liability insurance held by us in respect of any such claim; and
- the amount of the aggregate fees paid to us for the matter giving rise to the claim (excluding our disbursements and applicable sales taxes).
Data & Privacy
Our communications will be sent to the last known contact details that we have on record; it is your responsibility to advise us if your contact details change.
Each of Smart & Biggar Alberta LLP and Smart & Biggar LP and Smart & Biggar LLP may collect and hold personal information about you and your representatives. The manner in which each of Smart & Biggar Alberta LLP and Smart & Biggar LP and Smart & Biggar LLP collects, manages, uses and discloses personal information is set out in our Privacy Policy as amended from time to time, which can be reviewed on our website. You have the right to see the information about you that is held by Smart & Biggar Alberta LLP and Smart & Biggar LP and Smart & Biggar LLP, as provided in our Privacy Policy.
Email Security
Unless otherwise agreed, we may communicate with you and with others by electronic means. We cannot guarantee that these communications will not be lost or affected for some reason beyond our reasonable control, and we will not be liable for any damage or loss caused thereby.
We also take this opportunity to remind you that messages sent by email transmission are not secure and we cannot ensure the confidentiality of the content of your email transmission. By sending sensitive or confidential email messages, you accept that there are inherent risks associated with the possible lack of confidentiality.
In reviewing these terms of engagement, you should feel free to seek independent legal advice.
This engagement agreement applies to any current instruction, and to any future instruction, whether or not we send you another copy of it.
Subject to applicable law, we can change the terms in this engagement agreement upon notifying you of the amended terms.
We look forward to continuing our relationship with you.
Yours very truly,
SMART & BIGGAR LP
SMART & BIGGAR ALBERTA LLP
(4864-0863-6208)