IP strategy aligned with the business realities of the technology industry
The tremendous economic potential that software and technology hold make it critical to understand the complex and interdisciplinary nature of the IP rights involved and how to use them effectively to maximize economic value.
Technological advancement in software, IT, and cloud computing has brought significant changes to IP, and the law must answer increasingly difficult questions regarding the protection of technologies.
Developing software requires an immense commitment of time, labour, skill, and capital and in the digital age, it is possible that companies and businesses have only intangible, intellectual property assets. In the software sector, because of the multiple layers of overlapping patents in existence, there are a number of key IP strategies involved, specific to this complex, lucrative, and fiercely competitive industry. Implementing precise strategies using the full scope of intellectual property protection is an increasingly vital part of modern business for technology innovators.
Strategies must be uniquely tailored to each area of technology, since software is considered a creation that may need both patent and copyright protection.
Writing an IP blueprint for continued Canadian technological success
Given its economic significance, legal protection for software concerns developers, consumers and governments. Canadian law has evolved to keep up with the rapid progress in the computer technology arena, and while there is no single statute in Canada covering all aspects of computer software and technology, stringent Canadian IP law covers patents, copyright, trademarks, and trade secrets. Protection is also given through regulation and legislation, such as the Integrated Circuit Topography Act, and in some instances, the Criminal Code of Canada may offer added protection for computer software.
As computer technology continues to evolve, so too will Canadian law. The Smart & Biggar team is actively involved in the evolution of Canadian intellectual property policy and legislation and plays an active part in major organizations that develop and promote the strong technology and development capabilities of the Canadian technology industries.
Our highly skilled lawyers and litigators are at the very top of the Canadian intellectual property field and understand the value of practical business and economic solutions for our Canadian and international clients.
Technical expertise
With unmatched experience in complex and rapidly evolving technologies, we understand that the unique and distinct challenges of each of our clients require focused and efficient IP strategies.
We have a unique combination of technical training in relevant subspecialties, such as electrical engineering and computer science and real-world experience in diverse technological areas such as data aggregation, telecommunications, augmented and virtual reality, cryptography, voice recognition, data collection and analytics, image processing, and electromechanical systems. The breadth and depth of our experience allow us to provide the best possible technical expertise to software, IT and cloud technology innovators.
Legal expertise
The complexity of software, IT and cloud technology make these industries multi-faceted and in need of different types of IP protection. While many of the same strategies that apply to traditional technologies are still applicable, there are key aspects to infringement enforcement and developing patent, trade secret, and copyright protection that are specific to the software and IT sectors.
The Smart & Biggar team stays on the cutting edge of IP law and software innovation. We have a distinguished record across all aspects of intellectual property. Our team of litigators has appeared at the highest appellate levels of common law and civil law courts, representing clients in both of Canada’s official languages. Having appeared in the Supreme Court of Canada on more than 50 occasions, we have handled a significant share of Canada’s most commercially important and technically complex intellectual property law cases, many of which are leading Canadian precedents.
The pressing issue of global IP theft
It is no secret that powerful technological forces are transforming the global economy. Companies around the world that are developing and using technology and software are facing challenges involving theft and misuse. Protecting technology IP is a complex issue because businesses with valuable IP like software have to focus on both inside and outside threats.
Worldwide investment on software and technology is growing. The proliferation of new technologies and increasingly integrated global markets are making international harmonization and agreement a hot topic as the threats to cybersecurity transform the global technology and software industry.
Our clients range from entrepreneurs, startups and emerging small businesses to global technology leaders. We are regularly called upon by in-house counsel, commercial law firms, investors and companies seeking investment to advise on the IP and technology aspects of commercial projects, collaborations and transactions. With our depth of IP and industry-related experience, our Canadian and international clients have a focused team behind them to develop and implement IP management and strategy that strengthens and protects their business objectives and corporate strategy around the world.
Our services in Software, Information & Cloud Technology include:
- Preparing and enforcing patents for software, IT and cloud technologies
- Registering and enforcing copyright
- Registering domain names and resolving domain name disputes
- Negotiating, preparing and reviewing licensing, disclosure, distribution, service and maintenance, and development agreements
- Clearing rights required to publish software, including providing related opinions
- Non-disclosure agreements
- Regulatory advice
- Strategies for open-source software
Key Contacts
Client Success
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Bessette c Québec (Attorney General of Québec)
2019 CF 393Successfully represented Dr. Luc Bessette in this milestone patent infringement case brought against the Québec government in relation to the Québec Health Record, a system providing hea...Read More -
Keatley Surveying Ltd v Teranet Inc
2019 SCC 43Represented the intervenor the Land Title and Survey Authority of British Columbia on an appeal before the Supreme Court of Canada considering the issue of the ownership of copyright by the Crown in p...Read More -
Badawy v 1038482 Alberta Ltd et al
2018 FC 807Successfully represented the defendant Schneider Electric in having a patent infringement action struck out at the pleadings stageRead More -
LeddarTech Inc v Phantom Intelligence Inc
2017 CAF 224Successfully represented LeddarTech Inc in having the Federal Court of Appeal overturn the decisions of the Federal Court judge and of the Prothonotary that had erroneously struck so-called “open-ende...Read More -
Nintendo of America Inc v King et al
2017 FC 246Successfully represented Nintendo in an application for trademark infringement, copyright infringement and circumvention of technological protection measures (TPMs).Read More -
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Google Inc v Catherine MacDonald
DCA-1796-CIRA[gmailsupport.ca, gmailsupportcanada.ca, gmailsupportnumber.ca]Read More
Unparalleled Expertise in Software, Information & Cloud Technology
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Lexpert®-Ranked
Nine Lexpert®-ranked lawyers
2020Lexpert Special Edition on Technology -
Who's Who Legal
17 leading IP experts
2018Who's Who Legal: Canada -
Who's Who Legal
One leading data practitioner
2018Who's Who Legal: Data -
Best Lawyers
25 leading lawyers
2017The Best Lawyers in Canada -
Best Lawyers
26 leading lawyers
2016The Best Lawyers in Canada -
Best Lawyers
26 leading lawyers
2015The Best Lawyers in Canada -
Best Lawyers
20 leading lawyers
2014The Best Lawyers in Canada -
Best Lawyers
19 leading lawyers
2013The Best Lawyers in Canada -
IAM
Four leading patent lawyers
2012IAM Licensing 250 - The World's Leading Patent and Technology Licensing Lawyers -
Best Lawyers
17 leading lawyers
2011The Best Lawyers in Canada
Related Publications & Articles
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Cloud computing: A brief overview of intellectual property issues "in the cloud"
Cloud computing has emerged as a popular computer and information technology service, with the majority of businesses worldwide storing data “in the cloud.”Read More -
CIPO's new guidelines on patentable subject matter explained
The Canadian Intellectual Property Office (CIPO) released new guidelines on patentable subject matter and a set of examples applying the new guidelines to computer-implemented inventions, medical diag...Read More -
Federal Court rejects "problem-solution approach" opening the field for computer-implemented inventions
In a significant decision released August 21, 2020, Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty], Canada's Federal Court rejected the CIPO's approach to examining computer-implemen...Read More -
On the (Quebec Health) Record: the Federal Court holds the Quebec government liable for patent infringement
In a digital-age David versus Goliath case, Dr. Luc Bessette has come head-to-head with the Quebec government in a battle over rights to a technology solution that provides shared access to critical m...Read More -
Nintendo Awarded $12.7 million for Circumvention of Technological Protection Measures in Precedent-Setting Case
In a precedent-setting decision issued yesterday, Nintendo of America Inc v King et al, 2017 FC 246, the Federal Court awarded $12,760,000 in damages for circumvention of technological protection meas...Read More -
Federal Court issues interlocutory injunction directed at retailers of set-top boxes loaded with copyright infringing applications
On June 1, 2016, Madam Justice Tremblay-Lamer of the Federal Court issued an interlocutory injunction against retailers of set-top boxes that are configured, or “pre-loaded”, with various applications...Read More -
Google’s appeal of worldwide injunction to be heard by Supreme Court of Canada
The Supreme Court of Canada has agreed to hear Google's appeal of a worldwide injunction forcing it to block certain infringing websites. The appeal raises issues of how to provide meaningful protecti...Read More -
Supreme Court of Canada weighs personal privacy considerations against freedom of expression
Recent years have witnessed a massive increase in the ready availability of personal information, particularly in digital form, and a concomitant rise in the amount of information on customers and con...Read More
Related News & Media
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Smart & Biggar named IP 'Law Firm of the Year' and leads the rankings with 31 lawyers recognized in The Best Lawyers in Canada 2021 edition
Smart & Biggar is pleased to share that we have been named 'Law Firm of the Year' for expertise in Intellectual Property Law in the 2021 Edition of The Best Lawyers in Canada.Read More -
Abigail Smith re-elected to the Ontario Bar Association’s IT & IP section
Smart & Biggar congratulates Toronto senior associate Abigail Smith on her re-election to the Ontario Bar Association’s (OBA) Information Technology (IT) and Intellectual Property (IP) section as an e...Read More -
Lexpert recognizes 9 Smart & Biggar lawyers in new Special Edition on Technology
Smart & Biggar is pleased to share that nine of our lawyers are listed in the inaugural Lexpert Special Edition on Technology, published today.Read More -
Smart & Biggar and Invest Ottawa hosts webinar masterclass on IP strategy for software
On Wednesday, May 6, Smart & Biggar in partnership with Invest Ottawa will host a webinar masterclass – “IP Strategy for Software” – for members of the Invest Ottawa community.Read More -
Smart & Biggar boasts 24 “Lexpert-Ranked” lawyers in 2020 and earns top rankings across Canada
Smart & Biggar continues to be a leader in IP law across Canada in the 2020 edition of the Canadian Legal Lexpert Directory.Read More -
Lei Liu and Mark Pidkowich connect with innovators in sustainability at GLOBE 2020
Smart & Biggar partners Mark Pidkowich, from Vancouver, and Lei Liu, based in Ottawa, will attend the GLOBE 2020 Series in Vancouver from February 10-13, 2020.Read More -
Smart & Biggar delegates travel to Phoenix, Arizona to attend the AIPLA Mid-Winter Institute
Smart & Biggar partners, Daphne Lainson, David Schwartz and Matthew Zischka, will visit Phoenix, Arizona from January 29 to February 1, to attend the AIPLA Mid-Winter Institute.Read More -
Smart & Biggar names Matthew Zischka as Managing Partner
Smart & Biggar is pleased to announce that Matthew Zischka has succeeded Steven Garland as Chair of the firms’ Executive Committee and Managing Partner of the Firm.Read More