Intellectual Property Litigation lawyers are generally understood to comprise the provision of advice and representation, whether by way of negotiation, judicial proceedings, alternative dispute resolution, mediation or arbitration, in all matters relating to contentious proceedings (either administrative before federal officials or tribunals or judicial before federal or other courts) involving rights respecting patents, trademarks, official marks, copyright, moral rights, industrial designs, brand names, trade dress, personality rights, trade secrets, data protection, etc.; urgent interlocutory applications including injunctions, “Anton Piller” orders, etc. respecting alleged infringement of intellectual property rights, etc.; international intellectual property litigation; and other such matters.
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An intellectual property litigation lawyer – or IP litigation lawyer – may be distinguished from an IP lawyer in the sense that the former may concentrate with court actions and alternative dispute resolutions for IP rights violations, while the latter focuses on the registration of IP rights before the CIPO. However, there may be instances where an IP litigation lawyer would also render services provided by an IP lawyer.
Once an IP has been successfully registered, an IP litigation lawyer is an author’s or inventor’s first person to go to for advice on the available remedies that they may take on. Initially, amicable settlement through the different modes of alternative dispute resolution (ADR) such as negotiations, mediations, or arbitration may ensue, which may be held through ad hoc proceedings, or through the guidance of the CIPO or other ADR institution. In an ADR proceeding, an IP litigation lawyer represents the said author or inventor who will ensure that any amicable settlement or arbitration award is favourable to the complaining author or inventor.
Although the main work of an IP litigation lawyer is in the courtroom, most of the work is done outside the court, i.e., drafting pleadings and other documentary submissions for a court action. However, an IP litigation lawyer will usually proceed to litigation, or court appeals, only when ADR proceedings and other administrative remedies have been exhaustively availed of.
Intellectual Property (IP) is an original creation, concept, or material made by a person or a juridical entity – who may be referred to as the inventor, creator, or maker. Once an IP is registered under specific laws of a country and/or according to international conventions on IP registration, it is entitled to protection under the law against any infringement. An infringement occurs when there is an illegal or unconsented use, reproduction, or commercial distribution of an IP.
The five types of intellectual property under the Canadian jurisdiction are:
Intellectual property law or IP law in Canada is distributed among the five types of intellectual property. In other words, each type of IP has its own legislation which contains the provisions on specific definition to consider a material as an IP under the said type, the process of its registration, its proper usage, grounds for infringement, and remedies of a person or juridical entity claiming ownership of the said IP.
Although, general laws on property (personal and real property) may constructively or alternatively applied in some jurisdictions in the absence of specific IP laws.
Patents in Canada are governed by the Patent Act. Under the Act, when a patent is granted by the government to an inventor on their creation or invention, it provides for the right of an inventor to enjoin other persons or entities from using the said creation or invention.
This protection is valid for a maximum of 20 years and is based on “first applicant” regime. The Act provides that actions for infringement and damages may be filed either before the federal courts or the provincial courts, as the two courts have concurrent jurisdiction over patent infringements. The said remedy must be filed within 6 years to prevent the action from prescribing.
The Canadian legislation which governs this type of IP is the Industrial Design Act. The Act defines an industrial design as a visible feature on a finished article, such as a distinctive new product. When an industrial design is registered, it grants the designer or proprietor the exclusive rights on its usage for up to 10 years.
The designer or proprietor may also license other persons or entities (called licensee) for its use or commercial distribution. In addition, the said designer or proprietor may also sell the industrial design or use them as a security for any financial obligation. When infringement of an industrial design occurs, a proprietor or a licensee may file for an action of infringement and damages either before a provincial or a federal court, with the federal court having exclusive jurisdiction on a proceeding for rectification and alteration.
The federal law protecting Canadian trademarks is the Trademarks Act. A trademark may either be a:
When a trademark is registered, the registrant acquires the sole right to use the trademark in Canada for a period of 10 years, which may be renewed after that. The federal court has jurisdiction over actions on the illegal use, sale or distribution of a product under a registered trademark, which must be instituted by the offended party within 2 years from the discovery of such illegal act/s.
When an author or artist creates any kind of artistic work, such as books, films, musical compositions, paintings, among others, this creation is protected from being reproduced or copied without the consent of the said author or artist. This is right is called a copyright, and when granted to another person, it gives them the right to legally copy or reproduce an author’s or artist’s original work.
Generally, said works are automatically protected during the lifetime of the author or artist, and until 70 years after the author’s death. However, for formal registrations and sanctions on infringement in Canada, the governing law is the Copyright Act.
Any copyright infringement, subject to exceptions under Section 29, may be a subject of a civil action (Section 34) for injunction and damages, or a criminal action (Section 42). The federal courts and provincial courts both have concurrent jurisdiction on the said civil and criminal action. However, both actions differ on its prescriptive period – civil actions must be commenced within three years from the occurrence of the act complained of; while criminal actions must be filed within two years from the discovery of the infringement.
A trade secret is information, or a collection thereof, which is vital to one’s conduct of profitable business by giving a market advantage to its owner in keeping its product or services unique and be preferred over its competitors. It may be a formula or recipe; an industrial method or technique or process; an IT program or source code; or any other data, such as marketing plans, list of clients, or research data, among others.
Currently, there is no federal law governing trade secrets, hence, there is no formal registration process for it. Nevertheless, other laws may still be applied to protect trade secrets, which also provides remedies against persons who disclosed such information. Section 391 of Canada’s Criminal Code defines trade secrets and punishes persons disclosing such secret, including the person who has prior knowledge of its illegal acquisition and thereafter discloses it.
Additionally, the owner of a trade secret may also apply for a court injunction to prevent the person who illegally obtained a trade secret from further disclosing such information. Other provincial-specific laws may also be resorted to in consultation of a trade secrets lawyer for the appropriate action to pursue.
Prevention is still the best way to protect trade secrets. Through the help of a trade secrets lawyer, employers may draft non-disclosure agreements (NDAs), or include confidentiality clauses in employment contracts, which employees need to sign before they may be officially hired.
The regulating body for IP laws in Canada is the Canadian Intellectual Property Office (CIPO), which enforces the laws mentioned above, and caters to the registration governing each type of IP.
Interested in filing a case for IP infringement? Head down below for a list of the best intellectual property litigation lawyers in Canada as ranked by Lexpert to further guide you on your case.