Monday, 27 February 2017 09:00

Buyer beware

Buyer bewareThose seeking to acquire the intellectual property rights of a bankrupt company are often faced with a unique set of legal challenges, as exemplified by Thomson Reuters’ recent acquisition of certain intellectual property rights owned by Federated Press.
Published in Issue Archive
Monday, 06 February 2017 09:00

The EU trade agreement

Illustration: Alexi Vella
Illustration: Alexi Vella
IP practitioners are hoping the newly signed Comprehensive Economic and Trade Agreement will bring a net gain

Published in Features
Software patent eligibility in Canada: IP year in reviewTwo recent Patent Appeal Board decisions issued on behalf of the commissioner of patents in 2016 reflect the challenges in obtaining some types of software patents in Canada, especially claims to business methods and the like. Similar challenges are arising in the United States, which, since the decision in Alice Corp. v. CLS Bank International, has made it more difficult to gain patent protection on certain software-related inventions.
Published in Issue Archive
Monday, 14 November 2016 09:00

Fintech

Fintech Defining the new normal: Innovation in financial technology is forcing regulators to think creatively. It was an engrossing week, and the latest evidence that the Canadian world of finance was being upended by the emergence of nimble players using new technologies to offer cutting-edge financial products and services. 
Thursday, 08 September 2016 22:01

Whose content is it anyway?

Whose content is it anyway?Please copy and paste this as your status: I declare that my rights are attached to all my personal data, drawings, paintings, photos, video, texts etc. published on my profile and my page.Those who read this text can do a copy/paste on their Facebook wall. This will allow them to place themselves under the protection of copyright.”
Published in Issue Archive
 Peter Wilcox, president of the Intellectual Property Institute of Canada
Peter Wilcox, president of the Intellectual Property Institute of Canada
Most people have probably never heard of the Public Servants Inventions Act, but a Federal Court of Appeal has ruled it can’t stand in the way of a man and his valid patent.
Published in Latest News
Monday, 24 August 2015 08:00

The pros & cons of practising . . .

Practising in St. John's

Emily Lukaweski, Cox & Palmer LLP

The pros & cons of practising . . .                                                                                                                                                                                                                      
PROS:
• A lively arts and culture scene, accompanied by a thriving restaurant industry.
• Smaller firm sizes that
allow large amounts of independence and control over files early in your practice, complemented by easy access to senior lawyers willing to offer support and knowledge.
• Opportunity to work on both local and international files, across a range of practice areas.
• The small bar and friendly culture creates a collegial and civil legal culture.  

CONS:
• The weather can be on the windy and grey side.
• Can be expensive to get off the island, but,  overall, St. John’s offers a high quality of life, and is a culturally rich gem in Canada.

Melissa Royle, Benson Buffett PLC Inc.
The pros & cons of practising . . .
PROS:
• The city itself has a vibrant culture, sense of community, and incredible nearby hiking trails and scenery.
• With less specialization than bigger centres, there is more opportunity to learn about different areas of law while maintaining a general field of focus.
• You can earn more responsibility sooner than in a larger,
big-city firm.
• St. John’s has experienced a real growth period, bringing with it lots of interesting legal work.
• The positive side of a small bar is we have a generally inclusive and encouraging legal community.

CONS:
• Many salaries have not kept up with the increasing cost of living, particularly considering the student debt most law graduates accumulate having to attend law school out-of-province.
• Conflicts. You often have to pass on files because of business or personal conflict given our relatively small and very interconnected population.
• The down side of a small bar is your reputation forms quickly, and a poor reputation spreads even faster. You must maintain civility and respect at all times even when it’s difficult, including when you are not working.

Practising in Winnipeg

Lewis Allen, Thompson Dorfman Sweatman LLP
The pros & cons of practising . . .
PROS:
• The size of the typical files in Winnipeg provides junior lawyers with the opportunity to fill a higher-level role on files and work directly with the lead partner at a more junior career stage. It also means junior lawyers and students get direct exposure to clients and other lawyers earlier on.   
• Winnipeg’s legal marketplace is large enough that it allows for some specialization in a larger legal area (e.g. corporate law or litigation), without requiring a very narrow specialization. As a corporate and commercial lawyer, this has allowed me to develop expertise in many different aspects of corporate and commercial law.
• Winnipeg offers affordable living and recreational opportunities, including exceptional lake country within an hour or two of the city.
• Manitoba’s economy is stable and well diversified, meaning that work flow for lawyers tends to be consistent and job stability is high.

CONS:
• Because the volume of corporate activity in Manitoba is lower than in several other provinces, there is less work available on large and complex transactions.
• Starting salaries in Winnipeg are lower than in other larger Canadian legal markets.  
• Winnipeg is known for long and cold winters. However, it’s a dry cold, and with the return of the NHL, there is more to be excited about during the winter months.

Dough Fawcett, Fillmore Riley LLP
The pros & cons of practising . . .
PROS:
• The Manitoba bar is a small and collegial community that provides for a positive work environment to resolve matters efficiently.
• The Manitoba business community is small but active including the agribusiness industry, which requires assistance with national and international legal matters.
• Manitoba does not generally experience the “booms” of some other areas in Canada; however, it also does not generally experience the “busts” either.  
• The cost of living in Manitoba is a significant positive. While housing costs continue to increase, the costs remain significantly lower than in most other jurisdictions in Canada.
• Manitoba summers are legendary and many Manitobans spend a significant amount of time at the lake or cottage during the summer months.
• Manitoba (and Winnipeg in particular) has numerous festivals including Folklorama, Fringe Festival and the Folk Festival, to name a few.
• The Winnipeg Jets.

CONS:
• Manitoba winters can be very cold.
• The sizes of the transactions occurring in Manitoba are generally smaller as compared to other major centres.

Practising e-discovery law

Duncan Fraser, Wortzmans LLP, Ottawa

The pros & cons of practising . . .
PROS:
• The variety of work. Electronic evidence is now a factor in almost all litigation, investigations,  and large commercial transactions. I get calls about everything from collecting social media material to managing the disclosure of millions of documents. Every case is about putting the right evidence forward, and I love designing tailored solutions to real-world problems.
• Being a lawyers’ lawyer. I provide experience and expertise that helps other lawyers to focus on the tactical and procedural elements of the case. I get to work with great lawyers, and to provide a legal service that makes a real difference.
• Evidence. I was a litigator for 19 years, and I love working with evidence. As for practising in e-discovery, the combination of my litigation experience and technology skills really help with problem solving and honing in on what is important.

CONS:
• E-discovery is often reactive work. We get called once the problem is getting out of hand, and that can make it expensive. I do a lot of outreach to help organizations and law firms identify and avoid e-discovery crises.
• It can be hard to keep up with the crazy pace of technological change. My firm is in a constant state of learning — we stay connected to developments in law, technology, and information governance channels. Fitting in all the learning can make for a very full day.
•  Lawyers understand what “e-discovery” lawyer means, but when I tell a fellow soccer dad, I usually get an “Oh” or a blank stare. Saying I practise in digital evidence, information governance, and cyber security advice gets a better response.

David N. Sharpe, KPMG LLP, Toronto
The pros & cons of practising . . .
PROS:
• Work with leading-edge technology for capturing, processing, searching, analyzing, and reviewing all kinds of electronic information, from e-mails and spreadsheets to medical devices and GPS devices in suspects’ cellphones.
• Learn about and monitor the development of new technologies, including data analytics, sentiment analysis, artificial intelligence, and a variety of machine learning tools.
• Play a key role in managing others who may be less comfortable with technology; become a subject-matter expert who makes their work more effective and efficient.
• Interact with a broader range of experts in other professions than might otherwise be the case: IT, networking and information security, cybersecurity, software development, computer science, information science, data analytics, and linguistics are just a few.

CONS:
• You may feel too caught up in technical issues; it can be hard to maintain close involvement in substantive law.
• Colleagues within a firm may see you as less of a “real” lawyer — even though the purely legal aspects of e-discovery can be complex and demanding and some major cases turn on clients’ and lawyers’ e-discovery practices and missteps (e.g. Apple v. Samsung).
 • “Winning” for your client usually means simply avoiding unnecessary cost, delay, sanctions, and bad publicity — and making others’ jobs easier. The aggressive use of e-discovery skills to win cases at the motion stage is not something we will see in Canada for years to come, if ever.
• You have to be comfortable with concepts and challenges relating to electronic files, formats, databases, connectivity, and indexing and search methodologies. While some find these things stimulating, others do not.

Practising Intellectual property law

Christopher C. Scott, Oyen Wiggs Green & Mutala LLP, Vancouver
The pros & cons of practising . . .
PROS:
• Some areas of intellectual property practice, especially patent practice, are highly technical; practitioners often work with cutting-edge inventions or designs, which requires us to think like engineers, scientists or designers.
• It can be tremendously satisfying to help clients protect meritorious ideas and creations, both because the subject matter is interesting and because protection rewards clients for their research and development.
• All sizes of businesses have IP needs, so practitioners can have a wide variety of clients, from garage-based inventors and mom-and-pop shops to multinational brands.
• Practitioners who focus on IP prosecution (which is largely non-adversarial) deal with deadlines set months or years in advance, which helps to keep work schedules relatively consistent and predictable.

CONS:
• Prospective IP practitioners must pass the notoriously difficult patent and/or trademark agent exams to practise; pass rates are in the low single digits.
• IP practice tends to involve a high volume of files, which can result in numerous overlapping deadlines.
• Patent drafting in particular is full of procedural pitfalls and requires practitioners to be hyper-accurate; a single typo or inadvisable turn of phrase in a 100-page document can lead to a loss of rights for your client (and potentially significant liability for you).

Erin E. Best, Trademark agent,  Stewart McKelvey, St. John’s
The pros & cons of practising . . .
PROS:
• Size of the bar: The IP bar in St. John’s is tiny. In fact, there are only nine of us actively practising in the area that I know of and, of that nine, three are in-house and only five are registered trademark agents. As a result, we all know each other and frequently work on the opposite side of disputes or work together to educate the market. It makes for a collegial atmosphere and easy communication. Being a bit of a big fish in a small pond has given me the opportunity to take the lead on some really great files.  
• Keeping current: Memberships in the CBA and IPIC make it easy to attend webinars and to meet fellow IP practitioners from across the country and around the world. I usually attend a couple of IP-specific conferences each year and have developed a list of contacts I can use to test general ideas and strategies. It is nice to get away and immerse myself in IP every now and then.  
• Outsourcing: Law firms in St. John’s have lower overhead than firms in larger urban centres. Because IP legislation has federal application, we can service our clients from across the country more economically than a Bay Street firm can. We are like the India of Canada when it comes to IP.

CONS:
• I practise copyright, trademark, entertainment, and privacy law. As a result of the lack of local lawyers who practise in these areas, many of NL’s SMEs and cultural industries have developed without a legal aspect. For example, St. John’s is bursting at the seams with artists, writers, and musicians, but very few of these talented individuals have ever put any thought into how copyright might impact their careers. It is changing  but slowly.
• The provincial government is encouraging business owners to trademark their business names and consider developing an IP strategy.
• Educating the marketplace is a huge endeavour and takes up a significant amount of my time. I give a lot of presentations to existing clients and the public on the basic principles of IP law.

Chantal Bertosa, Shapiro Cohen LLP, Ottawa
The pros & cons of practising . . .
PROS:
• IP is a dynamic and constantly evolving field, which provides opportunities to push the boundaries of the law and requires creative lawyering to use legislation that is often perceived as outdated when dealing with new challenges arising out of technological, economical, and social changes.  
• When we refer to IP, we typically hear about patents, trademarks, copyright, and industrial design, but there is so much more. Protecting cannabis seeds under the Plant Breeders’ Act; registering a sound or scent as a trademark; cyber squatters and new gtlds; request for assistance to the Canadian Border Services Agency for copyright and trademark owners; the use of trademarks in commercial advertising in Quebec and the Charter of the French Language. IP is an ever expanding area where you constantly learn new things and which looks into the protection of all business assets that involves creativity and innovation.
• There are so many facets to IP — the nature of the practice requires lawyers to look into the development, the protection, the enforcement, and the defence of intellectual property rights. Solicitors’ skills are welcome and put to good use outside the limelight of the court system.
• It is a field where you get to interact with domestic and overseas clients from all walks of life, such as individuals, small and medium enterprises, and Fortune 500 companies. Also, while IP is subject to national protection, it is also global and you have to stay abreast of legal trends in other jurisdictions and interact with foreign lawyers in your field of expertise.

CONS:
• As there are relatively few cases that go to trial in IP matters in Canada compared with other areas of law or even compared with other jurisdictions, and as it takes the Canadian government so long to adopt new legislation, it may be challenging to advise clients about the rights, recourses, and remedies they may have when dealing with innovative matters.
• The limited amount of IP litigation makes it difficult for young lawyers to have opportunities to get on their feet in court or to conduct their own cases.
• IP is often perceived as being expensive, which results in business owners either not taking appropriate steps to protect it or attempting to do it themselves. This often results in spending more money down the road to do what should have been done in the first place, so lawyers constantly need to be on the lookout to educate their clients.
• Trademarks are meant to act as a source identification tool, distinguishing a product from a competitor’s product. Trademarks are increasingly seen as commodities, particularly in cyberspace. This trend makes it very difficult for the consumer to identify one product from another, resulting in the loss of financial resources to develop and market products. It can be hard to convince clients of why they need to invest in the protection of their trademarks as part of their IP strategy,  and as lawyers, we need to act as business advocates not only for the protection of our clients’ assets but also for the protection of the public.
Published in Issue Archive
File early and watch closely as Canada's IP rules changeFar-reaching changes to Canada’s intellectual property laws will force companies to keep an eagle eye on their trademark and patent applications, watching deadlines and actions by their competitors, filing before the new rules bite, and getting ready for a heftier bill.
Published in Issue Archive
Monday, 06 April 2015 08:00

Windsor IP law clinic is where it’s at

Windsor IP clinic students, with Alford Kindred, the former regional managing director of the United States Patent and Trademark Office in Detroit.
Windsor IP clinic students, with Alford Kindred, the former regional managing director of the United States Patent and Trademark Office in Detroit.
Law, technology, and entrepreneurship clinic (LTEC) has been around for just over five years, but has already made quite a splash in the intellectual property legal community in North America.
Published in Latest News
Katy Perry’s dancing Super Bowl sharks have become part of an IP battle. Photo: Kirby Lee/USA Today Sports
Katy Perry’s dancing Super Bowl sharks have become part of an IP battle. Photo: Kirby Lee/USA Today Sports
Who knew Katy Perry’s goofy dancing Super Bowl shark would become the focus of an intellectual property battle?
Published in Latest News
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