Intellectual Property + Technology
Intellectual Property + Technology
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You need a practical, cost-effective intellectual property (IP) strategy that achieves the goals of your business. We collaborate with you to develop and implement your strategy, through the registration of IP rights, commercialization, enforcement, and protection of your IP in the jurisdictions where you need it. This leaves you free to get back to the field, the lab, or the prototype, and the next brilliant idea.  It is important to have experienced counsel to help as you negotiate confidentiality agreements, license agreements and IP purchase-and-sale agreements. We also provide advice on disputes, litigation, infringement and enforcement of IP rights.

IP covers patents, confidential information, trademarks, copyrights, and industrial designs. It includes information, technology and any know-how that is not registrable but is nonetheless protectable.

IP rights apply across industries and sectors and include both the tangible and intangible:

  • Equipment and process improvements and designs
  • Ideas not yet reduced to practice
  • Software, automation, and computer-based systems
  • Know-how around making and operating improved equipment and processes, and
  • Brands and marks that provide goodwill, and “trade dress" that can be used to a competitor's advantage

To learn more about how to protect and manage your intellectual property rights, visit:

Contact Laura MacFarlane at lmacfarlane@fieldlaw.com or 403-260-8577, or any one of our team of IP professionals to discuss your IP needs and get an initial assessment of your IP strategy. Click here to sign up to receive invitations to seminars, webinars and events as well as email alerts with the latest information on Intellectual Property + Technology. 

Optrics Inc. v Lloyd’s Underwriters, 2022 ABCA 26
Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2017 FC 1111
1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2017 FCA 185
1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2016 FC 1400
1395804 Ontario Ltd. (Blacklock's Reporter) v. Canada (Attorney General), 2016 FC 1255
Andrews v. McHale and 1625531 (Gemstone Logistics) , 2016 FC 624
Geophysical Service Incorporated v. Encana Corporation, 2016 ABQB 230
College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449
Resource Well Completion Technologies Inc. v. Canuck Completions Ltd., 2014 ABQB 209
Online Constructors Ltd. v. Speers Construction Inc., 2011 ABQB 43
Pat's Off-Road Transport v. Campbell et al, 2010 ABQB 443
Stonetile  (Canada) Ltd. v. Castcon Ltd., 2010 ABQB 392
Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law, 2010 FC 73
Community Credit Union Ltd. v. Canada (Registrar of Trade Marks), 2006 FC 1119
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
Credit Union Central of Canada v. Community Credit Union Ltd., 2005 CanLII 78195
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
Excalibre Oil Tools Ltd. v. Garay, 1999 CanLII 8705 (FC)
Ital-Press Ltd. v. Sicoli, 1999 CanLII 8048 (FC)
Cookie Florist Canada Ltd. v. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.), 1998 CanLII 8079 (FCA)
Ital-Press Ltd. v. Sicoli, 1999 F.C.J. No. 837
Norac Systems International Inc. v. Massload Technologies Inc., 1997 CanLII 4900
Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.), [1996] F.C.J. No. 1598, Federal Court of Canada - Trial Division
Ital-Press Ltd. v. Sicoli, [1996] F.C.J. No. 1119, Federal Court of Canada - Trial Division
Alwest Neon Signs Ltd. v. Coldwell Banker Achievers Realty, 1994 CanLII 9222 (AB QB)
Gunther's Building Centre Ltd. V. Moli Industries Ltd., [1993] A.J. No. 1037, Alberta Court of Queen's Bench
Strait Line Contractors Ltd. v. Rainbow Oilfield Maintenance Ltd. , 1991 ABCA 78
Nutman Co. v. Magic Afterburners Inc., [1991] F.C.J. No. 1112, Federal Court of Canada - Trial Division
September 2022 - 2 min read
Excess Patent Claim Fees are Coming to Canada - Keep Calm and Carry On
Amendments to Canada’s Patent Rules, coming into force on October 3, 2022, will introduce excess claim fees into Canada’s patent regime (amongst other changes). If examination of a Canadian patent application is requested on or after Octobe...
August 25, 2022
The Best Lawyers™ in Canada 2023
39 Lawyers Recognized
Field Law is pleased to announce that 39 of our lawyers are recognized in their respective practice areas in the 17th edition of The Best Lawyers™ in Canada. Recognition in Best Lawyers™ is based on peer reviews of ...
August 2022 - 3 min read
The Artificial Intelligence and Data Act… Coming Soon to AI Near You
In June 2022, the Government introduced Bill C-27, an Act to enact the Consumer Privacy Protection Act, the Personal Information and Data Protection Tribunal Act, and the Artificial Intelligence and Data Act. A major component of this propose...
July 2022 - 3 min read
Accessing Venture Capital: Five Practical Tips for Start-Ups
Introduction It is often exciting to embark on a new business venture which aims at providing solutions and products that could potentially "change the world". However, in the course of developing and executing a new business idea, it beco...
January 2022
Meet Our Newest Partners
Field Law welcomes Jill Bishop and Richard Stobbe to its partnership.Field Law is pleased to welcome Jill Bishop and Richard Stobbe as firm partners, starting January 1, 2022.“Both Richard and Jill have demonstrated leadership and commitment to e...
October 2021
Interesting Insights on Intellectual Property
Alberta Real Estate Association - Podcast Episode 38
In this episode, Lisa Statt Foy, brings her wealth of legal knowledge to our discussion to help REALTORS® understand the potential pitfalls and best practices related to the use of images, trademarks, copyrighting, and more. With the expl...
August 2021
The Best Lawyers™ in Canada 2022
38 Field Lawyers Recognized
Field Law is pleased to announce that 38 of our lawyers are recognized in their respective practice areas in the 16th edition of The Best Lawyers™ in Canada. Recognition in Best Lawyers™ is based on peer reviews of ...
August 23, 2021
As Esports Grows and Creates new Legal Challenges, Law Firm Allies with Alberta Esports Association
Canadian Lawyer
August 16, 2021 - 2 min read
Field Law Announces Sponsorship of Alberta Esports Association (AESA)
CALGARY – August 16, 2021 –Field Law’s Emerging Technology group is pleased to announce a new alliance with the Alberta Esports Association (AESA), a not-for-profit organization established in 2020 that serves as the governing body fo...
May 13, 2021
Coffee + Counsel: How to Protect Your Business Against Phishing Attacks
Q+A Session
Join us for another edition of Coffee + Counsel, a complimentary series that brings you together with a few of our lawyers for an unscripted chat about legal issues pertinent to organizations in Alberta. Your questions guide the discussion, and we prov...
May 5, 2021
The Modernization of Canadian Privacy Law: Where Are We Heading?
Seminars
Individuals and organizations, both large and small, are increasingly faced with challenging issues in the area of privacy and information handling. Bill C-11, the Digital Charter Implementation Act, 2020, seeks to modernize Canadian privacy legis...
February 24 + March 10
2020 - A Year in Review Webinar Series
Did you miss the Field Law Labour + Employment Group's annual Year in Review? The recordings are now available! Is employer-friendly OHS legislation coming to a worksite near you? What are the impacts of COVID-19 on employment legislation a...
March 2021 - 4 min read
Facial Recognition: A Privacy Law Perspective
Humans love to look at faces – our families, our friends, complete strangers. In some ways, our brains are optimized for facial identity recognition. We’re good at it, so of course we want to teach machines how to do it even bette...
January 2021
Field Law Announces Five New Partners
The Firm welcomes Anthony Burden, Jason Kully, Lisa Statt Foy, Britt Tetz, and Matthew Turzansky to its partnership.Field Law is pleased to welcome Anthony Burden, Jason Kully, Lisa Statt Foy, Britt Tetz, and Matthew Turzansky as partners of the Firm. ...
August 2020
The Best Lawyers™ in Canada 2021
38 Fielders Recognized
Field Law is pleased to announce that 38 of our lawyers are recognized in their respective practice areas in the 15th edition of The Best Lawyers™ in Canada. Recognition in Best Lawyers™ is based on peer reviews of ...
June 2020 - 7 min read
Case Study: G&G Oil Co. of Indiana v. Continental Western Insurance
Defence + Indemnity
The ransom paid in response to a ransomware attack was held not to be covered under the “Computer Coverage” of an insurance policy because the attack and the ransom demand did not amount to “fraud”, as opposed to a mere theft (c...
June 2020 - 7 min read
Case Study: Grossman v. Nissan Canada
Defence + Indemnity
An employer who is innocent of negligence or other misconduct can be vicariously liable for the tort of intrusion upon seclusion based on a data breach committed by one of its employees.  Grossman v. Nissan Canada, 2019 ONSC 6180, per Be...
May 2020
Cybersecurity in the Age of COVID-19 (And Beyond)
April 2020
Signing Contracts in a Distanced World
When many people think of signing a contract, the traditional picture is a meeting, a pen and paper, and handshakes at the end. With current social and physical distancing protocols in place, all of these traditional images are jarring. Now, every...
March 2020
Patent Issues under Canada’s COVID-19 Emergency Response Act
The Federal Government’s COVID-19 Emergency Response Act contains certain amendments to the Patent Act that permit the Federal Government to authorize anyone to “make, construct, use and sell a patented invention to the extent necessar...
March 2020
Copyright is Great… But it Has its Limits
Proline Pipe, an Alberta company, created certain design drawings for pipe bending machines. A former employee took those drawings with him when he left the company. A rival company obtained copies of the drawings and manufactured the pipe bending mach...
Winter 2020
2019 - A Year in Review Seminar Series
Seminars
Join the Field Law Labour + Employment Group for our annual seminars featuring legal updates and practical challenges for management and employee groups.Part 1 has been approved for 1.75 CPD hours and Part 2 has been approved for 2.25 CPD hou...
January 2020
Legalized Cannabis Spurs Rush to the Canadian Patent Office
Keeping Up with Cannabis
Canada’s legalization of cannabis for recreational purposes, in October of 2018, spurred a significant increase in Canadian patent application filings for a wide variety of cannabis-related technologies.Searches conducted on the Canadian Patent D...
January 2020
Click-Through Agreements
IP Blog
November 2019
Buzz Kill: Cannabis Branding + Packaging Restrictions in Canada
Keeping Up With Cannabis
In the excitement of Canadian cannabis legalization, many overlooked that cannabis legislation is in fact focused on controlling the production, distribution, sale and possession of cannabis in Canada to achieve three objectives: Protect young pers...
May + June 2019
Drone Workshop: Updates on Canada's Drone Regulations
Seminars
Canada's Latest Drone Regulations - Are You Ready to Fly?The Field Law Emerging Technology Group invites you to take to the sky with your drone, but before you do, we encourage you to familiarize yourself with the regulation, risks and responsibili...
April 24, 2019
Trailblazers: An Evening to Celebrate Women in Intellectual Property, Technology, Engineering + Math
Client Events
The Women's Intellectual Property Networking Group of the Intellectual Property Institute of Canada presents:Trailblazers: An Evening to Celebrate Women in Intellectual Property, Technology, Engineering + Math    Date: Wednesday, Apr...
January 10, 2019
New Canadian Drone Regulations
Ted Henley, CityNews
(3:54) Erika Carrasco discusses the new rules for flying drones in Canada that come into effect on June 1, 2019.
January 9, 2019
New Canadian Drone Regulations
On January 9, 2019, Transport Canada published new rules for flying drones in Canada to enhance predictability for businesses, improve the security of aviation and ensure our airspace is safe for everyone.  The new regulations distinguish bet...
October 2018
#Hashmarks: Can a Hashtag be a Trademark?
The Medium
Through its automatic web of connections, the humble hashtag has been repurposed: it’s now associated with the cachet of internet fame.  In social media platforms the hashtag brings users from one descriptor to thousands of associated result...
October 2018
How do “Smart Contracts” Fit With “Traditional Contracts”?
The Medium
Placing Smart Contracts in Context  A “smart contract” is really a set of computer programs designed to automatically execute certain transaction steps, provided certain conditions are met. It’s not so much a contract, in th...
October 2018
To Serve and Protect: The Many Reasons for a Trademark Registration
The Medium
A trademark is the consistently used brand identifier of tens of thousands of consumer products and services you regularly see – the Apple “Apple”, the Microsoft “Window”, the Nike “Swoosh”, the Google Chrome, ...
October 17 + 18, 2018
Cybersecurity Roundtable: Risks + What to Do
Roundtable
In our previous workshop, “Cybersecurity for Canadian Organizations”, we presented an overview of cybersecurity risks and obligations, as well as what should be done to prevent or mitigate risks and how to respond to cyber incidents. Buildi...
September 2018
Cyber Losses: A Serious Organizational Risk in the Modern World
The Lawyer's Daily
August 2018
Use of Facial Recognition Software at Calgary Malls Raises Privacy Concerns
The Lawyer's Daily
June 2018
Smart Contracts (Part 2): Intermediaries? We Don’t Need No Stinkin’ Intermediaries!
IP Blog
In Part 1 (Can Smart Contracts Really be Smart?), we looked at smart contracts, and how “smart” they really are – if you need some background, start there.Smart contracts (or “programmatically executed transactions”) ...
May 2018
Can Smart Contracts Really be Smart?
The Medium
“We are in the midst of a revolution – a revolution in the technology of storing, processing, and communicating information… [which] has brought about profound changes in business, political, and social institutions.”This quote...
May 2018
Trolls on the Bridge to Your Brand
The Medium
Canada’s Trade-marks Act has been radically amended, with those changes announced by the Canadian government to come into effect in “early 2019”.  But the effect of those upcoming changes for brand owners is already happening, an...
Winter 2018
Cybersecurity for Canadian Organizations
Risks + What to Do
Digital technologies offer many benefits, but they also expose their users to an increasing range of threats with the potential not only to cripple or destroy an organization’s digital assets and data, but also to cause huge financial losses. It ...
February 2018
Trademarks: Use it or lose it – and prove it!
The Medium
You may be surprised to learn that even after your trade-mark is registered, it can be expunged from the Trade-marks Register. One way is through Section 45 of the Trade-marks Act (“Act”). Section 45 of the Act authorizes expungement of tra...
February 2018
The Google vs. Equustek Decision: What comes next?
The Medium
The internet is borderless, right? So how does one country balance the rights of internet users within its own borders? And can a Canadian court reach across an international border to control the online conduct of an American company? The case of...
February 2018
Goodbye Floppy Disk, Hello Streaming Video: Trademark Evolution, Part 2
The Medium
Technology certainly evolves. Can a trademark do the same?In the world of intellectual property rights, a registered trademark can live on for a hundred years or more. If you registered a trademark in the 1800s, it could still be valid today. But will ...
January 2018
Drones 101
Calgary lawyer says laws confusing but clarity is on the horizon
December 2017
Case Summary: R v Shah
Defence + Indemnity
After the first reported decision on drones in Canada, the drone operator was found guilty of flying his drone "in a manner hazardous or likely hazardous to aviation safety" under section 602.45 of the Canadian Aviation Regulations as it then...
November 2017
IP: What’s In It For You
Presentations
Canadian Intellectual Property Institute of Canada
November 2017
Legal Eagle to Explain How to Soar like a Drone Properly
Peter Caulfield, Journal of Commerce
Ahead of Calgary Buildex 2017, Erika Carrasco provides background on her presentation on safe, legal use of drones: It's a Bird, It's a Plane, No It's a Drone! Legal Know-how for Successful Use and Operation of UAVs on Construction and Comm...
September 2017
Autonomous Vehicle Law: The Current Legal Landscape
Presentations
The National Public Sector Lawyers Forum
June 2017
First Calgarian Convicted for Flying Drone Wins New Trial After Appeal
Shawn Logan, Calgary Herald
Erika Carrasco grants insight into the complexities of UAV Regulations in Canada, and her involvement as counsel in the appeal of the first person in Calgary charged under those Regulations.
June 2017
“I googled it”: Generic Words and Trademark Rights
The Medium
A registered trademark can suffer "genericide" if it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service.   In a very interesting decision from the U...
June 2017
Is Software Patentable? Recent US Case Law Offers a Glimmer of Hope
The Medium
Many inventions involve software, and many inventors are interested in protecting such inventions with a patent. The question is: are software inventions patentable?  Based on recent cases in the United States, the answer is: yes, software inventi...
June 2017
Non-Competition Clauses: Enforceable or Just for Show?
The Medium
When can a non-competition clause actually stop someone from working? Or are these clauses just for show?   Let's take a look at a couple of cases involving departing employees who find themselves in hot water with a former employer.  ...
September 2016
Ownership of Copyright in Software
Can an employee claim to own the employer’s software?An “author” of a work is the first owner of copyright. To determine ownership, it’s necessary to determine which contributions will be considered “authors...
September 2016
The Wild West: Drone Laws and Privacy in Canada
‘Drones’ were first known by the military as unmanned aerial vehicles, and later by the International Civil Aviation Organization as remotely piloted aircraft systems. Drones come in various shapes and sizes and can be p...
September 2016
Post-Grant Patent Amendment - Canadian and US Options
On the long and sometimes bumpy road of patent prosecution, a Notice of Allowance can be a welcome sign that you are nearly at your destination: a granted patent. But the journey is not over yet. At the time of grant, what if you re...
March 2016
Four Reasons You Should File Now
Considering the changes that are planned for Canadian trademark laws, there are several benefits to Canadian business owners reviewing their brands and trademarks, and applying for protection now. 1) Lower Application and Registration Fe...
March 2016
Competing After Employment (Part Two)
The Medium
Last summer, Jawbone, a fitness tracking hardware and software maker, sued its arch-­rival Fitbit (CNET, 2015) alleging that Fitbit lured its employees away to obtain access to Jawbone’s confidential information and produc...
September 2015
Forum Selection in Online Terms
IP Blog
Let’s say you’re a Canadian company doing business with a US supplier – which law should govern the contract? ‘Forum selection’ and ‘governing law’ refer to the practice of choosing the applicable law and venue...
April 2015
Competing After Employment (Part One)
The Medium
A key employee departs. The employer, worried that confidential information has leaked out of the company, scrambles to respond. After a frenzied period of preparation, the employer starts a lawsuit and seeks an injunction against t...

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