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 Tony Edwards at aedwards@fieldlaw.com or 403-260-8590, or any one of our team of IP professionals to discuss your IP needs and get an initial assessment of your IP strategy.

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, 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
July 11, 2019
Understanding Your Intellectual Property Toolbox
Seminars
Do you work in an industry with technology or inventions that you are trying to protect? Or are you looking to commercialize your existing technology and capitalize on it? Join Field Law's Neil Kathol, a lawyer and trademark agent, for a Lunch...
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...
May 2019
Shotguns & Shareholders: A Practical Review of Shareholders' Agreements for Start up Companies
Presentations
Innovate Calgary
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...
March 14, 2019
Buzz Kill: Additional Considerations When Advising Clients on Their Cannabis-Related Trademarks
Presentations
Canadian Bar Association - Intellectual Property + Technology Section
March 6, 2019
Beer®: Trademark Protection & Legal Quality Control for the Long Haul
Presentations
Alberta Craft Brewing Convention
January 2019
IP Landscaping
Presentations
Government of Alberta - GreenSTEM Kick-Off Event
November 2018
A Taste of the IPIC AGM
Presentations
Business, Law and Technology Forum
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
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 2018
How do “Smart Contracts” Fit With “Traditional Contracts”?
The Medium
Placing Smart Contracts in ContextA “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 the legal sens...
September 2018
Cyber Losses: A Serious Organizational Risk in the Modern World
The Lawyer's Daily
September 2018
The Best Lawyers in Canada 2019
28 Field Law Lawyers Recognized
Field Law is proud to announce that 28 of our lawyers have been included in the 13th edition of The Best Lawyers™ in Canada. These lawyers have been recognized in 17 service areas, resulting in a total of 36 rankings.Among the 28 Field Law l...
August 2018
Use of Facial Recognition Software at Calgary Malls Raises Privacy Concerns
The Lawyer's Daily
June 2018
Standing Out: Branding and Trademark Issues for Cannabis Companies
Countdown to Cannabis Legislation
With the anticipation surrounding the upcoming legalization of cannabis in Canada, it comes as no surprise that companies have been quick to take advantage of this budding industry. More than 70 corporations have been issued licenses from Health Canada...
June 2018
Smart Contracts (Part 2): Intermediaries? We Don’t Need No Stinkin’ Intermediaries!
JD Supra
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...
May 2018
Are Your Personality Rights Protected?
The Medium
The present day is marked by the propagation of cameras in nearly every device and the ability to instantaneously share and spread photos and information. The result has been to make it exceedingly difficult for individuals to protect themselves from h...
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...
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 ...
February 2018
Neil Kathol on Global News with Nancy Hixt
Legal experts urge caution when posting online about the #MeToo movement
January 2018
Drones 101
Calgary lawyer says laws confusing but clarity is on the horizon
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...
August 2017
The Best Lawyers in Canada 2018
25 Field Law Lawyers Recognized
25 Lawyers from Field Law Recognized in The Best Lawyers™ in Canada 2018 Field Law is pleased to announce that 25 lawyers have been included in the 12th Edition of The Best Lawyers™ in Canada. Three of these lawyers are new additions a...
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
August 2015
No Copyright or Trademark Protection for Metatags
IP Blog
April 2015
Texas Justice Provides an Evidence Solution
The Medium
Have you ever been in a situation where you have reliable information that an organization has infringed your intellectual property rights, but you do not have actual “evidence” in­-hand? This article discusses a pro...
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...
April 2015
Drilling Down: Oil Prices and Innovation
The Medium
Some economists have recently predicted that it not be until the third fiscal quarter 2015 that oil prices may begin to stabilize (for example, see ATB Financial’s Alberta Economic Outlook Q2 2015, published March 31, 2015). A...
November 2014
Canada's New Trademark Law and What it Means for Business
The Medium
Through sweeping legislation smuggled in by means of an omnibus budget bill, Canada’s trademark registration regime will be changed more dramatically than at any time in the last 50 years. The changes are giving trademark agen...
November 2014
Intellectual Asset Management Best Practices – Part 2
The Medium
In Part 1, we looked at three important steps in starting an intellectual asset management process within your organization. “Intellectual assets” can include the know-­how and intellectual capital within your organizatio...
November 2014
Computer and Software Related Innovation - Is There A Rationale For Filing Software Patent Applications in Canada?
The Medium
Intellectual property law provides a number of avenues to protect investments that innovators make in developing and marketing software. Securing one or more intellectual property rights is critical in acquiring and maintaining an edge i...
May 2014
Illustrator Wins Copyright Infringement Case at the Supreme Court
The Cinar v. Robinson decision of the Supreme Court of Canada in late 2013 is of interest to Canada’s creative community, and copyright owners generally including owners of industrial copyright.   The case makes it clear that ...
May 2014
Intellectual Asset Management Best Practices - Part 1
The Medium
Does your organization have “intellectual assets”? Regardless of what your organization does – whether it is a service ­based business, or in the manufacturing sector, whether it is driven by cloud-­based software or bric...
May 2014
Whose Invention Is It Anyway? Some Thoughts on Patent Inventorship and Ownership
Patents provide a number of commercial benefits to patent owners including exclusivity in the market, bargaining power and the potential for licensing income. Needless to say, ensuring that you are the rightful owner of the patent is essential. An...
May 2014
Mommas, Don’t Let Your Babies Grow Up To Be CDAs
The Problem With Trade Marking Professional Designations and Their Acronyms
We all regularly rely on knowing another person’s qualifications by the letters after their name: C.A., P. Eng., R.N., M.D., etc. But these well­-known acronyms belong to regulated professions – where government legislation control...
February 2014
New Weapons to Combat Counterfeit Products
Brand owners face the ever growing problem of counterfeit products imported into and sold in Canada. Compared to the “real thing”, counterfeit products are often inferior in quality and may even pose a potential health or safety hazard...
February 2014
The Legal Perils of 3D Printing
3D printing refers to the techniques also known as “additive manufacturing”. This process uses a digital model to create a three-dimensional object by adding successive layers of materials in the shape of the object.3D printing machine...
February 2014
Supreme Court on Copyright Infringement and Protection of Ideas
Let’s say you pitch a story idea to a TV production company ­- and not just an idea, but a complete set of storyboards, characters and scripts. You would be surprised if one day you saw that story idea come to life in a TV production tha...
November 2013
Patenting, Publishing and Trade Secrets: Strategies for Inventors
A company independently develops an innovation and they discover later that it has been patented by a competitor. The competitor did not steal or reverse ­engineer that innovation – they simply arrived at it independently, and got to the...
November 2013
Tips and Trends in Online Contracting
The Medium
Wondering if your online contract will hold up? Here’s the good news: online contracts are enforceable in Canada. For a number of years the courts have shown that they will uphold online agreements in the same way as written paper agreements...
November 2013
Getting Your Application Through the USPTO - Expedited Examination Options
The Medium
You’ve developed your new technology, taken care to keep it confidential and are planning to file for patent protection at the US Patent and Trademark Office (USPTO). Everything looks good. Until your patent agent tells you it may be 3 or mo...
June 2013
Norwich Orders: You Can't Be Anonymous on the Internet After All
The Medium
It’s hard to start a lawsuit when you don’t know who you’re suing. What can potential claimants do when they have been wronged but lack the essential information necessary to start a lawsuit? The answer to this question came in ...
June 2013
Software Licenses and Indemnities: What Obligations Are You Taking On?
The Medium
License agreements often contain indemnities. An indemnity is a contractual obligation to step in and reimburse some financial obligation such as a liability, loss, or damage. In essence, the party giving the indemnity will make the injured p...
June 2013
Insane in the Do-main: The New gTLDs and the Trademark Clearinghouse
The Medium
ICANN (the entity that essentially controls the worldwide domain name system) is in the final stages of processing approximately 1,900 applications for new gTLDs (generic Top Level Domains – like ".com") many of which are expe...
March 2013
Protection By Design: Industrial Design Law In Canada
The Medium
Bodum – a maker of popular coffee­-press and glass products – wanted to protect their design for a double-­walled drinking glass in a competitive marketplace. Apple wanted to protect the design of their popular handsets like th...
March 2013
Trademark Rights: Across the Border and On the Web
The Medium
Here are three concepts that are not new: trade­marks, borders and the internet. But the courts are still trying to work out how to handle the three when they collide, as they did in the case of HomeAway.com, Inc. v. Hrdlicka. In this interest...
March 2013
The Heart of The Patent Bargain: Viagra Patent Invalidated In Canada
The Medium
In a recent unanimous decision by the Supreme Court of Canada (Teva Canada Limited v Pfizer Canada Inc.), Pfizer Canada’s patent to its multi­million dollar selling Viagra was invalidated for insufficient disclosure. The decision allows ...
March 2013
Utility Models, Petty Patents & Innovation Patents: Efficient IP Protection for SMEs
The Medium
For small to medium sized enterprises (SMEs), patent protection can be complex and costly. And yet, for many of them, patent protection is a must to maintain their competitive edge. A fast and cheap option for protecting mechanical inventions, pro...
April 2012
Canadian Patents: Importance of Registering Assignment
The Medium
This is a review of a recent decision of the Ontario Superior Court of Justice, which has implications for Canadian patent owners and assignees.   The case is Verdellen v. Monaghan Mushrooms Ltd.The facts are that the Applicant...
April 2012
Intellectual Property Issues in Corporate-Commercial Transactions
The Medium
April 2012
Is Nature "Patentable"?
The Medium
A recent unanimous decision (Mayo Collaborative Services. v. Prometheus Labs. Inc.) by the United States Supreme Court has invalidated two patents held by Prometheus Labs Inc. on the basis that the claims contained patent ineli...
Winter 2012
Display of a Trade-mark on a Website
TSA Stores Inc. v. Registrar of Trade-marks   In this recent decision, the impugned trademark registrations were registered solely for retail store services. The registered owner had previously used the impugned marks in associ...
Winter 2012
Canadian Patents: Not Invalid for Lack of "Good Faith"
This is a review of a recent decision of the Canadian Federal Court of Appeal, which has implications for patent law practitioners and Canadian patent owners. The case is Weatherford Canada Ltd. v. Corlac Inc.    ...
Winter 2012
Software Licensing and Development: A Case Study
Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2011 FC 340 This recent decision provides a good case study on software development, licensing and copyright issues. This is a lawsuit about copyright in certain software computer pro...
Winter 2012
Harper vs. The SCC - Copyright Cage Match?
Though most people don’t give much thought to copyright law on a day to day basis, we are continuously interacting with it, when we create, copy, buy, and download all manner of things we can see, hear and use. The price we pa...
Spring 2011
You Be the Judge: Canadian Trademark Battles
One of the most important steps in the trademark registration process is “Opposition”. Anyone who opposes registration of a trademark may file a Statement of Opposition based on one of the following grounds: the ap...
Spring 2011
Invention Assignments: A Cautionary Tale
This is a review of a recent decision of the United States Court of Appeal for the Federal Circuit which has implications for business law practitioners, particularly those with a technology practice.   The case is Board o...
Spring 2011
Tips For Software Licensing in 2011
Software vendors and their customers are changing the traditional distribution models for software licensing in Canada. While this change is by no means new – IT outsourcing, ASPs (Application Service Providers), SaaS (So...
November 2009
Tips and Trends in CleanTech Licensing

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