Intellectual Property (IP) includes patents, confidential information, trademarks, copyrights, industrial designs, and information and technology not registrable but nonetheless protectable. IP exists in equipment and process improvements and designs, know how around making and operating improved equipment and processes, and in intangible forms such as mere ideas not yet reduced to practice, software, or "goodwill and trade dress" that can be copied to a competitor's advantage.
Field's patent agents Antony (Tony) Edwards, P.Eng. LL.B., Thomas Malyszko P.Eng. (Mechanical), J.D., Shohini Bagchee, P.Eng., M.Eng. (Chem.) and Charlene Lipchen (B.Sc. (Chem.), B.A., J.D.) (Trainee) have a broad subject matter familiarity with a strong background and focus in Alberta’s Oil and Gas Sector including drilling and completion, fracking operations, SAGD and other oilsands technology, artificial lift, miscellaneous downhole tools, midstream processes, and other oil recovery production methods.
Our Agents include lawyers and engineers, together having over 50 years combined experience in writing and successfully prosecuting hundreds of patents. They advise on "prior art," patenting strategies and disputes.
The patent group also includes Neil Kathol LL.B., who has over 25 years of experience in commercial litigation with an emphasis in patent and trade secret litigation, in several important court cases. Neil also conducts patent infringement analysis, freedom-to-operate analysis, patent ownership disputes, novelty/anticipation and other validity issues.
Field Law has eight registered trade mark agents with over one hundred years of combined experience dealing with an extensive array of issues for clients. Our clients range in industry from financial services, entertainment and fashion to construction to food and beverage; and in size from major universities and multinational corporations to family businesses.
We provide a full range of services:
- Trade-mark screening and selection including creative suggestions on strategic image development and working with brand generators building a brand from scratch
- Trade-mark registration including oppositions and watch services (unlike most firms we handle your Canada and US trade-marks ourselves)
- Trade-mark infringement prosecution and defence
- EU (CTM's) and international jurisdictions through colleagues with whom we have longstanding relationships and using our own experience to build offensive and defensive strategies
Copyright and Industrial Design
Our lawyers serve clients in many different industries, including universities, the energy sector, manufacturers, the software development industry, the entertainment industry and media publishers. We provide a full range of services including:
- Copyright/design registration and protection
- Print and electronic publishing
- Licensing, ownership, chain of title due diligence
- Software development and licensing
- Copyright infringement prosecution and defence
- Copyright protection in the information and e-communications sectors
Commercial IP Including Technology Licensing, Purchase and Sale
We provide extensive services related to the identification, capture, assignment, development and exploitation of patented and non-patented technology including:
- Confidentiality and non-disclosure agreements; non-compete, non-solicitation and IP ownership clause strategies:
- Technology development joint venture agreements
- Technology licensing
- Software licensing and software distribution agreements, Cloud Computing strategies including data security strategies
- Sale, Purchase, and distribution agreements where technology is a core asset
- Technology supplier outsourcing agreements
Field has broad litigation experience in IP matters. Our experience includes patent, copyright, trademark and design infringement prosecution, trade secret/breach of confidence actions, ownership disputes, defending infringement claims, breaches of IP commercial agreements including licenses, asset purchase and sale, and distribution agreement disputes. We have performed trial and appeal work in these areas, with extensive experience in both the Provincial Courts and the Federal Court of Canada, Federal Court of Appeal and in Arbitrations and Mediations.
The following services are offered by our lawyers in this area of law:
- Patent application drafting and prosecution, searches, freedom-to-use analysis, infringement opinions, patent infringement, ownership disputes and expungement litigation; patent licensing
- Preparing, filing and prosecuting trademark, including US trademark, and copyright applications
- Assessing potential liability for infringement of intellectual property interests
- Assessing the types of intellectual property protection available for new technology
- Conducting intellectual property audits for the purpose of evaluating intellectual property portfolios
- Conducting intellectual property due diligence investigations in connection with business acquisitions and financing
- Developing strategies for the protection and commercialization of intellectual property interests
- Negotiating and preparing agreements for the sale and licensing of intellectual property interests
- Negotiating and preparing research and development agreements
- Providing intellectual property advice on the purchase and sale of businesses, employer/employee relationships and joint ventures
- Representing plaintiffs and defendants in trade secret, fiduciary duty, trade-mark, copyright, industrial design, and counterfeit goods litigation