Creating business value and protecting innovation for the world’s leading companies
For many companies, a high-quality patent portfolio is their most important asset, strengthening their revenues and reputation.
To safeguard these valuable assets, market-leading companies from around the world turn to our expert patent lawyers and agents who specialize in the strategic development and management of patent portfolios and rights in Canada.
Canada’s leader for patents
Smart & Biggar is widely recognized as Canada's leading patent firm and we are proud to serve as strategic IP partners to some of the world’s largest and most innovative companies. With our recognized strength and reputation for superior service, we have prepared and filed more patent applications than any other firm in Canada.
Our clients include inventors, entrepreneurs or companies in private and public enterprise who trust us for our sophisticated legal and patent counsel. We also work collaboratively with international law firms and associate agents as their representatives for patent filing and prosecution in Canada.
Building strong IP portfolios to last
Our clients look to us to help them create intellectual property assets and strategic IP portfolios that deliver lasting business value. Patent rules and standards for patentability in Canada are aligned with many international treaties, but there are nuances and subtle differences that our team understands through our deep experience. The global patent field is also constantly changing, and the standards for non-obviousness and patent-eligible subject matter and requirements for patentability, such as sufficiency, utility and inequitable conduct, are fluid. We understand the challenges and how to overcome them, and help our clients devise strategies to protect inventions over the long term, with portfolios of valid and enforceable patents in Canada, and around the world.
Unmatched technical expertise
The patent team at Smart & Biggar has technical depth and expertise in patent drafting and procurement in Canada that is unmatched. We manage portfolios across a wide range of client industries, technologies and science disciplines, including computer science, electronics, semiconductors, life sciences and pharmaceuticals, biotechnology, medical devices, aerospace, consumer products and telecommunications.
Our lawyers and patent agents are consistently recognized as industry leaders and trusted business partners, and are sought after for their hands-on experience working as in-house IP managers and strategic consultants for internationally recognized R&D based companies. We are also a dominant force in patent enforcement and litigation, and routinely handle Canada’s most commercially important and technically complex intellectual property cases.
Our services include:
- Prior art searching
- Performing patent audits
- Patent validity and infringement opinions
- Right to use and “freedom to operate” opinions
- Canadian patent application preparation and filing
- Filing and prosecution in the United States and throughout the world
- Patent licensing, assignment and monetization programs
- Due diligence in commercial transactions
- Patent litigation and enforcement
Key Contacts
Client Success
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Nova Chemicals Corporation v The Dow Chemical Company et al
2020 FCA 141Successfully represented Dow Chemical before the Federal Court of Appeal, affirming the largest reported Canadian patent infringement award in history.Read More -
C. Steven Sikes, Aquero, LLC, and Aquial, LLC v Encana Corporation, Cenovus FCCL Ltd, FCCL Partnership and Cenovus Energy Inc
T-1345-13Successfully represented the defendants Cenovus Energy and Encana Corporation in a patent infringement matter in having the action dismissed for delay.Read More -
Betser-Zilevitch v Nexen Inc
2019 FCA 230Successfully represented the respondent Nexen Inc. in having the decision of the Federal Court affirmed whereby a patent infringement matter was deemed discontinued based on a binding settlement agree...Read More -
Bauer Hockey Ltd v Sport Maska Inc dba CCM Hockey
2019 FCA 204Successfully represented Bauer Hockey Ltd. in defending a motion brought by the Defendant CCM Hockey in three related IP infringement actions to have all 3 actions dismissed for an alleged failure to ...Read More -
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 -
Canadian National Railway Company v BNSF Railway Company
2019 FC 142Successfully represented CN in defending a motion brought by the defendant seeking a stay of the continued prosecution and issuance of certain of CN’s patent applications before the Canadian Pat...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 -
Betser-Zilevitch v Nexen Inc
2018 FC 735Successfully represented the defendant Nexen Inc. in a patent infringement matter in having the matter deemed discontinued based on a binding settlement agreement as between the parties.Read More
Unparalleled Expertise in Patents
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MIP
Canadian IP Boutique Firm of the Year(Shortlisted)
2011-2020Managing IP Americas Awards -
MIP
Canadian Patent Prosecution Firm of the Year (Shortlisted)
2014-2020Managing IP Americas Awards -
MIP
Canadian Patent Contentious Firm of the Year (Shortlisted)
2014-2020Managing IP Americas Awards -
Chambers & Partners
Four IP leaders
2016-2021Chambers Global – The World’s Leading Lawyers for Business -
Chambers & Partners
Band One Firm
2010-2021Chambers Global – The World’s Leading Lawyers for Business -
Lexpert
IP Boutique Law Firm of the Year
2020Canadian Law Awards -
Legal Media Group
Canadian IP Impact Case of the Year
2017 & 2020LMG Life Sciences Awards -
Chambers & Partners
Band 3: Life Sciences
2019-2021Chambers Canada -
Chambers & Partners
Band One Firm: Intellectual Property
2016-2021Chambers Canada -
MIP
Tier One Firm for Patent Law
2014-2020IP Stars Handbook: Patents
Related Publications & Articles
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Allowance of Choueifaty patent application provides insight into CIPO's future approach to patentable subject matter
In an apparent conclusion to the patent at the heart of the Federal Court of Canada’s decision in Yves Choueifaty v Attorney General of Canada, 2020 FC 837 [Choueifaty], Canadian patent application no...Read More -
Canadian Patent Law 2020: A Year in Review
2020 was an unusual year by all accounts. In this article we take a look back at developments in Canadian patent law in the past year.Read More -
Protecting innovations through patent due diligence and FTO analysis
There are many different types of Freedom To Operate (FTO) analyses, and the type performed can vary depending on a company’s tolerance for unknown risk, key business goals and priorities and budget.Read More -
Office Actions: Options to consider when you need an extension of time to respond to the Patent Office
The extensive amendments to the Patent Act and Patent Rules that came into force on October 30, 2019 have complicated the practice for responding to an Office Action (i.e. an “Examiner’s Report”) issu...Read More -
Federal Court continues recent trend of granting summary judgment in appropriate patent proceedings
In a recent decision, Flatwork Technologies LLC v Brierley (2020 FC 997), the Federal Court granted summary judgment in favour of the Plaintiff, Flatwork Technologies, LLC (Flatwork), in respect of it...Read More -
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 -
Late PCT national phase entry in Canada as of right will soon come to an end
A significant change concerns the deadline for entering the Canadian national phase of a Patent Cooperation Treaty (PCT) application.Read More
Related News & Media
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Smart & Biggar shortlisted for seven North America awards by Managing Intellectual Property
Smart & Biggar is pleased to share that the firm has been shortlisted for an impressive and industry-leading seven Canadian IP awards at Managing Intellectual Property’s 2021 North America Awards.Read More -
Smart & Biggar Calgary Partners participate in PSAC-U webinar "Driving growth in the energy sector through innovation and IP"
On Tuesday, February 2, 2021, Calgary partners Evan Nuttall and Alistair Simpson will present at “PSAC-U: Driving growth in the energy sector through innovation and IP”, a webinar hosted by The Petrol...Read More -
Graham Hood and Abigail Smith chosen as Rising Stars in IP at 2020 Rising Stars Awards Americas
Smart & Biggar is pleased to share that partner Graham Hood and senior associate Abigail Smith have been honoured at the Expert Guides Rising Stars Awards Presentation on January 28th, 2021.Read More -
Sanjay Goorachurn and Daphne Lainson are recognized in inaugural IAM Strategy 300 Global Leaders guide
Partners Sanjay Goorachurn, of Montreal, and Daphne Lainson, of Ottawa, are honoured in IAM Strategy 300 Global Leaders, an inaugural guide to supplement the annual IAM Strategy 300: The World’s Leadi...Read More -
7 Smart & Biggar partners featured as leading IP lawyers in Canada in the 2021 edition of Lexpert / ALM 500
Smart & Biggar is pleased to share that 7 partners are recognized among Canada’s leading lawyers for intellectual property (IP) in the 23rd Edition of The Lexpert/American Lawyer Guide to the Leading ...Read More -
Smart & Biggar tops the list with 5 patent professionals recognized as 2021 IAM Global Leaders
Smart & Biggar is pleased to share that five patent practitioners have been recognized as IAM Global Leaders, more than any other firm in Canada.Read More -
Jean- Sébastien Dupont honoured as a 2020 Lexpert Rising Star: Leading lawyer under 40
Smart & Biggar is pleased to share that Montreal litigation partner Jean-Sébastien Dupont has been named a 2020 Lexpert Rising Star.Read More -
Smart & Biggar boasts 17 lawyers and agents recognized in Who's Who Legal Canada 2020
Smart & Biggar has been honoured across all IP practice areas in the Who’s Who Legal Canada 2020 National Guide with 17 of the firm’s lawyers and agents recognized in Patent (Litigation), Patent Agent...Read More