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Intellectual Property Law

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

Bennett Jones has one of the largest intellectual property groups in a full-service, top-tier business law firm in Canada.

We provide comprehensive depth and breadth in four key areas of IP:

  • Prosecution
  • IP Litigation
  • Advisory
  • Transactions

Our teams work in close and creative collaboration to bring the greatest value to clients.

Prosecution

Bennett Jones is one of few law firms prosecuting and litigating in many key areas of patent litigation—energy, pharmaceuticals, biotechnology, agriculture, and mining/drilling.

On trademark matters, we provide searching, risk assessment, counselling, filing, prosecution, opposition and related registration services. This is supported by a wide range of trademark transactional services. We manage a portfolio of well-known and iconic trademarks for companies based in Canada and around the world.

What Clients Say

"The team I deal with has a demeanour that allows me to bring them directly into conversations to meet our business representatives," said one client, adding: "We are impressed with their ability to distil issues understandably."

Litigation

Our litigation team is regularly retained to assist a diverse client base with disputes arising from the misuse or misappropriation of intellectual property across a broad spectrum of the arts and sciences.

We act as counsel in litigation matters involving confidential information, trade secrets, patents, trademarks, passing off, copyrights and registered designs. In patent litigation, we are best known for our pharmaceutical, biologics and energy expertise. We also litigate matters that deal with anti-piracy issues, personality rights, defamation and commercial disputes involving, at their core, the ownership and exploitation of intellectual property.

What Clients Say

Sources praise the group as a "very good strategic firm" and for its "client-oriented" service and "well-balanced expertise."

Advisory

Our IP lawyers are experienced with the management of entire company portfolios, including:

  • registering trademark, patents, copyrights and designs;
  • protecting trade secrets;
  • conducting IP audits; and
  • full-service litigation for high-profile clients.

We advise clients on:

  • IP issues arising out of M&A transactions, joint ventures and licensing matters;
  • advertising and labelling;
  • IP protection, enforcement, commercialization and brand-building strategies across a wide range of industries;
  • the management and commercialization of intellectual property; and
  • mechanical, biochemical, chemical, pharmaceutical and telecommunication technology
  • life sciences regulatory

What Clients Say

"[T]hey are a collaborative group of highly skilled, team-focused professionals. In my experience, they are quick to provide practical advice that can be relayed to both a lawyer as well as a junior-level marketer."

Transactions

Bennett Jones has substantial experience with structuring, drafting and negotiating IP and IT aspects of major mergers, acquisitions, divestitures and financing transactions. Our expertise in technology transactions includes cloud, fintech, AI, robotics and data management. We have deep experience in energy technology cleantech and agtech.

Bennett Jones experience in technology procurement and licensing in connection with large and medium scale energy and utility projects is unparalleled in Western Canada.

In IT procurement, we have led a number of large multi-stage, multi-vendor outsourcing transactions on behalf of large, integrated energy companies and utilities. On international matters, we provide practical advice to efficiently conclude complex cross-border IP transactions.

IAM Top Patent Firms in Canada

"Making light work of prosecution, bringing the heat in litigation and displaying sharp commercial nous in transactions, Bennett Jones has all bases covered."

Key Contacts

  • Dominique T. Hussey Dominique T. Hussey, Vice Chair and Toronto Managing Partner
  • Irene T. Bridger Irene T. Bridger, Partner, Patent Agent, Trademark Agent
  • Roseann  Caldwell Roseann Caldwell, Patent 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 trade-mark 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 Canada
Ranked, Intellectual Property
Ranked, Intellectual Property: Litigation
Chambers Global
Ranked, Intellectual Property
The Legal 500: Canada
Ranked, Intellectual Property
The Canadian Legal Lexpert Directory
Consistently recommended, Intellectual Property, Calgary
Consistently recommended, Intellectual Property, Edmonton
Repeatedly recommended, Intellectual Property, Toronto
Global 100 Most Sustainable Corporations in the World
Recognized as Intellectual Property Law Firm of the Year - Canada
IAM Patent 1000: The World's Leading Patent Practitioners
Ranked in categories of prosecution and transactions/litigation
International Legal Alliance Summit Awards (ILASA)
Recognized as Best Canadian Law Firm
Managing Intellectual Property – World IP Survey
Ranked, leading Canadian firm, Trade Mark Contentious & Trade Mark Prosecution
WTR 1000: The World's Leading Trademark Professionals
Recognized as a leading firm in Trademark Law - Canada

Insights, News & Events

Speaking Engagements

Jeilah Chan on Trademark Case Law

March 25, 2021
       

Speaking Engagements

Stephen Burns on Copyright's New Frontier

March 18, 2021
       

Blog

Ontario Court Enforces "No-Challenge Clause" in Patent Agreement

March 10, 2021
       

Announcements

Bennett Jones in Chambers Global 2021

February 22, 2021
       

Articles

Dominique Hussey and Jeilah Chan in WTR's Trademark Litigation 2021

January 14, 2021
       

Articles

Electronic Commerce: A Practitioner's Guide Trade-Marks and the Internet

2021
       

Announcements

Twenty-Five Bennett Jones Lawyers in Lexpert/ALM 500 Directory

December 17, 2020
       

Speaking Engagements

Jeilah Chan Leads IP and Brand Protection Strategy Discussion

December 03, 2020
       

Announcements

Bennett Jones Sponsors Women in Litigation Forum Toronto 2020

October 27, 2020
       

Announcements

Bennett Jones Advises on $3.2-Billion Agreement to Acquire K+S Americas Salt Business, Including Morton Salt and Windsor Salt

October 05, 2020
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 30, 2020
       

Announcements

Bennett Jones is Recognized in Chambers Canada 2021

September 10, 2020
       

Announcements

Bennett Jones' Best Lawyers in Canada 2021

August 27, 2020
       

Blog

Canadian Patents, Trademarks, and Industrial Designs: Final Extension of Deadlines in Response to the COVID-19 Pandemic

August 07, 2020
       

Announcements

Bennett Jones’ 2020 MIP IP STARS

June 01, 2020
       

Announcements

Bennett Jones in WTR 1000

June 01, 2020
       

Announcements

Fifteen Bennett Jones Lawyers in Lexpert's Special Edition on Technology

May 13, 2020
       

Blog

COVID-19 Medical Devices: Fast-Tracking Authorizations

May 07, 2020
       

Blog

COVID-19: What Deadlines Apply for the Protection of Intellectual Property Rights Now

April 29, 2020
       

Speaking Engagements

Jeilah Chan on Trademark Litigation: How to achieve fast and effective results

April 24, 2020
       

Speaking Engagements

Osgoode Hall Business Law LLM Program

April 2020
       

Announcements

Dominique Hussey Wins Outstanding Patent Practitioner for Americas

March 27, 2020
       

Blog

COVID-19: What Deadlines Apply for the Protection of Intellectual Property Rights Now?

March 20, 2020
       

Announcements

Bennett Jones an IAM Global Leader in Patent Law

January 20, 2020
       

Blog

NAFTA "2.1"—The Amended and Final Canada-United States-Mexico Agreement

December 17, 2019
       

Announcements

Twenty-three Bennett Jones Lawyers in Leading 500 in Canada

December 13, 2019
       

Announcements

Bennett Jones is Top-Tier in The Legal 500

November 18, 2019
       

Blog

Changes to Canadian Patent Law

October 24, 2019
       

Blog

Government Funding Opportunities for SMEs

October 15, 2019
       

Speaking Engagements

Martin Sorensen on Tax and Intellectual Property Transactions

September 13, 2019
       

Speaking Engagements

TAP Session: Acquiring Intellectual Property

September 10, 2019
       

Speaking Engagements

TAP Session: Exporting from Canada: Legal Considerations

September 10, 2019
       

Announcements

Bennett Jones is Best Canadian Law Firm for 2019

July 09, 2019
       

Announcements

Dominique Hussey a Top 250 Women in IP for Fourth Year in a Row

May 24, 2019
       

Speaking Engagements

Jeilah Chan on Trademark Litigation: Applications and Interlocutory Injunctions

May 02, 2019
       

Speaking Engagements

How to Protect Your IP

March 2019
       

Announcements

Bennett Jones Continues to Impress in WTR 1000 Rankings

January 31, 2019
       

Blog

OSFI Advisory of Interest to Federal Credit Unions—Incident Reporting

January 29, 2019
       

Blog

It’s Finally Happening—Major New Trademark Law Takes Effect in Canada on June 17, 2019

January 17, 2019
       

Articles

Breach Notification Rules Under GDPR, PIPEDA and PIPA

December 2018
       

Articles

Understanding the GDPR - Comparing Consent Provisions to PIPEDA, PIPA and CASL

December 2018
       

Speaking Engagements

Advocates Society 2018

November 29, 2018
       

Updates

Introducing the U.S.-Mexico-Canada Agreement (USMCA)

October 04, 2018
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 15, 2018
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 13-15, 2018
       

Articles

Concordia International Corp. Completes US$4 Billion Recapitalization

September 06, 2018
       

Articles

Federal Courts of Canada Service

2018
       

Announcements

Arthur Renaud Joins Bennett Jones as Senior Counsel in Toronto

June 20, 2018
       

Blog

Understanding the GDPR—Comparing Consent Provisions to PIPEDA, PIPA and CASL

June 14, 2018
       

Announcements

Robert McDonald, Q.C. Joins Bennett Jones as Partner in Edmonton

June 13, 2018
       

Speaking Engagements

National Compliance Advisory Committee

May 2018
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Trademark Review: Summary Judgment and Interlocutory Injunctions

May 04, 2018
       

Announcements

Dominique Hussey a Top 250 Women in IP for Third Year Running

May 01, 2018
       

Announcements

Four Bennett Jones Lawyers 2018 MIP IP STARS

April 19, 2018
       

Speaking Engagements

Protecting Your Intellectual Property Interests and Finding Opportunities in Insolvency

April 09, 2018
       

Speaking Engagements

Tips and Tricks for Drafting Invention Disclosure Forms

March 2018
       

Articles

World Trademark Review: Trademark Litigation: A Global Guide 2018

January 09, 2018
       

Articles

Canadian Federal Courts Practice

2018
       

Blog

Copyright in Seismic Data

December 05, 2017
       

Announcements

Bennett Jones IP and Alberta Glycomics Centre: Innovation Vanguards

November 15, 2017
       

Speaking Engagements

Primer on Copyright Law

September 30, 2017
       

Speaking Engagements

Intellectual Property Transactions

September 21, 2017
       

In the News

Dominique Hussey in Bloomberg on Canada's Pharmaceutical IP Rules

July 26, 2017
       

Updates

Now You See It, Now You Don't: SCC Upholds Worldwide Injunction That Alters Google Search Results

July 12, 2017
       

Announcements

Bennett Jones Shines in IAM Patent 1000

June 06, 2017
       

Announcements

Dominique Hussey Again Named to Top 250 Women in IP in the World

June 02, 2017
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Trademark Litigation: Applications and Injunctions

June 02, 2017
       

Speaking Engagements

Sébastien Gittens speaks at ANHIX 2017 Spring Symposium & AGM

May 17, 2017
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Confidentiality, Conflicts and Ethical Advertising

April 25, 2017
       

Speaking Engagements

Business Literacy for Artists

March 25, 2017
       

Announcements

Four Bennett Jones Practices Ranked Band 1 by Chambers Global 2017

March 16, 2017
       

Speaking Engagements

Intellectual Property Law in China

March 14, 2017
       

Updates

Federal Court Cracks Down on Intentional Infringement with $1 Million Punitive Damages Awards

March 08, 2017
       

Articles

A Lawyer's Four Primary Concerns over Private Right of Action under CASL

February 06, 2017
       

Blog

Canadian Playground Fight Highlights the Importance of Industrial Design Protection

January 26, 2017
       

Blog

Canada's Anti-Spam Law: Is Your Business Ready for July 1st, 2017?

January 12, 2017
       

Speaking Engagements

CyberSecurity for Law Firms

January 12, 2017
       

Blog

Establishing the Due Diligence Defence Under CASL

November 30, 2016
       

Speaking Engagements

Primer on Remedies in IP Infringement Cases

November 30, 2016
       

Speaking Engagements

Intellectual Property for Tech Entrepreneurs

November 29, 2016
       

Speaking Engagements

Generic v. Innovator: Practical Impact of the Theoretical Patent Framework

September 17, 2016
       

Speaking Engagements

Introduction to Intellectual Property - Theoretical Frameworks 2016

September 15-17, 2016
       

Announcements

Bennett Jones Honoured at ILA Awards in New York

June 16, 2016
       

Announcements

Dominique Hussey named to Top 250 Women in IP in the world

May 24, 2016
       

Articles

The Business of Innovation - Intellectual Property Transactions and Strategies in the New Economy

May 2016
       

Articles

Intellectual Property Litigation: Forms and Precedents

April 19, 2016
       

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