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 health profession...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 -
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 -
Ashenmil v Xylem Water Solutions AC
2016 TMOB 155Successfully defended the client’s trademark registration in a trademark cancellation proceeding.Read More -
Google Inc v Catherine MacDonald
DCA-1796-CIRASuccessfully recovered three domain names for the client containing its mark “Gmail”.Read More -
Take-Two Interactive Software, Inc v iCity Corp - Domain Manager
DTV2013-0004Successfully defended the client’s domain name registration for gta.tv from an allegation of confusion with the trademark GTA (Grand Theft Auto) by establishing the meaning of the domain name is in fa...Read More -
Microsoft Corp c 9038-3746 Québec Inc
2010 FCA 151Represented Microsoft, the respondent (plaintiff) in this software counterfeiting case. The appellant (defendant) pleaded guilty to two charges of contempt of court for selling Microsoft counterfeit s...Read More
Unparalleled Expertise in Software, Information & Cloud Technology
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Lexpert®-Ranked
One lawyer in Technology Transactions
2020-2023The Canadian Legal LEXPERT® Directory -
Lexpert®-Ranked
Two lawyers in Computer and IT Law
2022-2023The Canadian Legal LEXPERT® Directory -
Lexpert®-Ranked
Eight lawyers in Life Sciences and Health Law
2022-2023The Canadian Legal LEXPERT® Directory -
Lexpert®-Ranked
Two lawyers in Advertising and Marketing Law
2022The Canadian Legal LEXPERT® Directory -
Lexpert®-Ranked
13 Lexpert®-ranked lawyers
2021Lexpert Special Edition: Technology -
Lexpert®-Ranked
Nine Lexpert®-ranked lawyers
2020Lexpert Special Edition: 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
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Quebec’s “IP Box”: A tax incentive for the commercialization of IP
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In-house counsel primer: Managing IP and compliance risks in artificial intelligence and a digital world
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Related News & Media
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Smart & Biggar celebrates International Day of Women in Engineering 2023
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Smart & Biggar leads the Canadian patent rankings with 23 lawyers and agents listed in IAM Patent 1000
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Smart & Biggar named IP ‘Law Firm of the Year’ and leads the rankings with 36 lawyers recognized in the 2022 edition of The Best Lawyers in Canada and Best Lawyers: Ones to Watch
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Smart & Biggar masterclass helps Ottawa entrepreneurs understand IP Strategy for Software
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