Intellectual Property + Technology
Intellectual Property + Technology
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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.

Patents
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.

Trademarks
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

IP Litigation
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.

Partner
Calgary
403-260-8590
aedwards@fieldlaw.com
Lawyer, Trademark Agent
Calgary
403-232-1755
lstattfoy@fieldlaw.com
Partner
Calgary
403-260-8564
nkathol@fieldlaw.com
Technical Specialist (Electronics Engineering)
Calgary
403-260-8549
pmadan@fieldlaw.com
Lawyer, Trademark Agent, CLP
Calgary
403-260-8508
rstobbe@fieldlaw.com
Patent Agent
Edmonton
780-643-8798
sbagchee@fieldlaw.com
Consultant: Patent and Trade-Mark Agent
Calgary
403-260-8500
tmalyszko@fieldlaw.com
Lawyer, Trademark Agent
Edmonton
780-423-7661
toreilly@fieldlaw.com
Canada v. Dawn's Place Ltd. (F.C.A.), [2007] 3 F.C.R. 521, Federal Court of Appeal
Dawn's Place Ltd. v. Canada, [2006] F.C.J. No. 1600, Federal Court of Appeal
Auld Phillips Ltd. v. Suzanne's Inc., [2005] F.C.J. No. 70, Federal Court of Canada
Auld Phillips Ltd. v. Suzanne's Inc., 39 C.P.R. (4th) 45, Federal Court of Canada
Auld Phillips Ltd. v. Suzanne's Inc., [2005] F.C.J. No. 2084, Federal Court of Appeal
Suzanne's Inc. v. Auld Phillips Ltd., 46 C.P.R. (4th) 81, Federal Court of Appeal, 46 C.P.R. (4th) 81, Federal Court of Appeal
October 2016
Drone Regulations and the Evolving Legal Implications
October 2016
Drones
September 2016
States' Response to Evolving Drone Issues
September 2016
Ownership of Copyright in Software
September 2016
The Wild West: Drone Laws and Privacy in Canada
September 2016
Post-Grant Patent Amendment - Canadian and US Options
September 2016
5C - The Rise of the Drones - Liability and Insurance Implications
March 2016
Four Reasons You Should File Now
March 2016
Competing After Employment (Part Two)
March 2016
Intellectual Property for Designers
March 2016
Trademarks and Copyright
December 2015
Patent Law, Software Licensing and IT Transactions
December 2015
Patent Law, Software Licensing and IT Transactions
November 2015
Top Ten Developments in Intellectual Property Law
September 2015
Forum Selection in Online Terms
September 2015
Technology Escrow Agreements
August 2015
No copyright or trademark protection for metatags
April 2015
Texas Justice Provides an Evidence Solution
April 2015
Competing After Employment (Part One)
April 2015
Drilling Down: Oil Prices and Innovation
April 2015
Intellectual Property for Brand Professionals
November 2014
Canada's New Trademark Law and What it Means for Business
November 2014
Intellectual Asset Management Best Practices – Part 2
November 2014
Computer and Software Related Innovation - Is There A Rationale For Filing Software Patent Applications in Canada?
October 2014
Understanding Pervasive IP/IT Issues
May 2014
Illustrator Wins Copyright Infringement Case at the Supreme Court
May 2014
Intellectual Asset Management Best Practices - Part 1
May 2014
Whose Invention Is It Anyway? Some Thoughts on Patent Inventorship and Ownership
May 2014
Mommas, Don’t Let Your Babies Grow Up To Be CDAs - The Problem With Trade Marking Professional Designations and Their Acronyms
February 2014
New Weapons to Combat Counterfeit Products
February 2014
The Legal Perils of 3D Printing
February 2014
Supreme Court on Copyright Infringement and Protection of Ideas
February 2014
Generic Top Level Domains (gTLD) Update
February 2014
Intellectual Property Considerations in Business Transactions Intellectual Property Considerations in Business Transactions
February 2014
Intellectual Property Considerations in Business Transactions Intellectual Property Considerations in Business Transactions
November 2013
Patenting, Publishing and Trade Secrets: Strategies for Inventors
November 2013
Tips and Trends in Online Contracting
November 2013
Getting Your Application Through the USPTO - Expedited Examination Options
June 2013
New Domain Name Deadlines for Trademark Owners
June 2013
Norwich Orders: You Can't Be Anonymous on the Internet After All
June 2013
Software Licenses and Indemnities: What Obligations Are You Taking On?
June 2013
Insane in the Do-main: The New gTLDs and the Trademark Clearinghouse
March 2013
Protection By Design: Industrial Design Law In Canada
March 2013
Trade-Mark Rights: Across the Border & on the Web
March 2013
The Heart of The Patent Bargain: Viagra Patent Invalidated In Canada
March 2013
Utility Models, Petty Patents & Innovation Patents: Efficient IP Protection for SMEs
March 2013
Intellectual Property Protection and Patents
March 2013
Intellectual Property Protection and Patents
March 2013
Protecting Intellectual Property
February 2013
Patents: We Sweat The Small Stuff
February 2013
Patents: We Sweat The Small Stuff
October 2012
Copyright for Architects: Existence, Enforcement and Succession Issues
October 2012
Copyright for Architects: Existence, Enforcement and Succession Issues
October 2012
Cloud Computing
September 2012
The Perils of Disclosure: Invention Disclosure and Patent Grace Periods
September 2012
An OHS Legal Primer
June 2012
Intellectual Property and Technology
June 2012
Intellectual Property and Technology
January 2012
Patenting Genetic Inventions
June 2012
Intellectual Property and Technology
June 2012
Intellectual Property and Technology
May 2012
Software Licensing: The Good, The Bad and the Virtual
April 2012
Canadian Patents: Importance of Registering Assignment
April 2012
Intellectual Property Issues in Corporate-Commercial Transactions
April 2012
Is Nature "Patentable"?
Winter 2012
Display of a Trade-mark on a Website
Winter 2012
Canadian Patents: Not Invalid for Lack of "Good Faith"
Winter 2012
Software Licensing and Development: A Case Study
Winter 2012
Harper vs. The SCC - Copyright Cage Match?
December 8
Copyright Issues for Graphic Artists
April 2011
Copyright Reform is Dead…. Long Live Copyright Reform!
Spring 2011
You Be the Judge: Canadian Trade-mark Battles
Spring 2011
Invention Assignments: A Cautionary Tale
Spring 2011
Tips For Software Licensing in 2011
November 2010
Venture Prize - The Legal Perspective
November 2010
Venture Prize - The Legal Perspective
November 2010
Venture Prize - The Legal Perspective
June 2010
IP In Commercial Transactions - 43rd Annual Refresher
April 2010
The Law of Open Source Licensing
February 2010
Introduction to Intellectual Property and Licensing
2000-2009
Copyright Law
November 2009
Tips and Trends in CleanTech Licensing
November 2009
Venture Prize - The Legal Perspective
November 2009
Venture Prize - The Legal Perspective
November 2009
Apps: The Legal Side
April 2009
10 Cases / 10 Clauses
March 2009
Introduction to Intellectual Property and Licensing
March 2009
Trademark Basics and DIY Techniques
November 2008
Non-traditional Marks and INTA’s Non-Traditional Marks Committee
November 2008
Venture Prize - The Legal Perspective
November 2008
Venture Prize - The Legal Perspective
November 2008
Venture Prize - The Legal Perspective
March 2008
Basics of Trademarks I
2008
CIPO Basics of Law Series (Contracts Module)
2008
Intellectual Property for Law 685: Business Clinical
2008
Intellectual Propertyfor IT Managers
December 2007
Open Source: Software, Biotech & Beyond
November 2007
Venture Prize - The Legal Perspective
October/November 2007
Ownership of Copyright in Teaching Materials
November 2007
Venture Prize - The Legal Perspective
2007
Intellectual Property for Law 685: Business Clinical
October 2006
Trade-marks Oppositions
November 2006
Venture Prize - The Legal Perspective
November 2006
Venture Prize - The Legal Perspective
October  2006
Trade-marks Oppositions
June 2006
Overview of Copyright and Some Software Issues
June 2006
Copyright Law
April 2006
Basics of Licensing Technology & Software
2006
Intellectual Property for Law 685: Business Clinical
November 2005
Venture Prize - The Legal Perspective
November 2005
Venture Prize - The Legal Perspective
October 2005
Intellectual Property Plenary
February 2005
FCA Decides Whether Displayed Material Constituted a "Trade-mark"
January 2005
US Trade-mark Use and Registration
January 2005
US Trade-mark Use and Registration
November 2004
Intellectual Property in Educational Institutions
November 2004
Venture Prize - The Legal Perspective
2004
Risks and Rewards of Copyright Infringement
November 2003
Venture Prize - The Legal Perspective
November 2003
Venture Prize - The Legal Perspective
June 2003
Managing and Protecting Your Intellectual Property
2003
Internet Law and New Media
February 2002
Long-Arm Acts Enable Courts To Take Jurisdiction
2002
The Game of the Name - The Law of Trade Marks
November 2001
Key Issues to Building a Solid High-Tech Company
June 2001
The IP Box of Chocolates
May 2000/2001
Educational Copyright
February 2001
Analysis of the Personal Information Protection and Electronic Documents Act and Intellectual Property Overview
January 2001
Legal Issues for New Media
July 2000
Legal Issues for E-Business
June 2000
Coca-Cola vs. Pardhan
May 2000
Academic IP Issues
2000
Internet Law - The Law and New Media
January 2000
Who Wants to be a Multimedia Millionaire
March 1999
Copyright Collections
1999
Intellectual Property For Corporate Counsel
1999
Official Marks Under Canada's Trade-Marks Act
1999
New Media Copyright Issues
1997
Topics in Patent, Trademark and Copyright
Periodically
Legal Issues for Professional Writers (Full Semester Course)

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