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Technology & Intellectual Property

In today’s fast paced global marketplace, intellectual property is often central to a company’s value and competitive edge.

Commercializing and deploying technology requires a clear understanding of the underlying rights. We partner with our clients to craft strategies to identify, protect and enforce their rights in their key assets, and identify obstacles to growth.

The lawyers in the WeirFoulds Technology and Intellectual Property practice service a wide range of industries old and new, including retail, transportation, government, education, manufacturing, food, information technology, finance, and professional services.

Our experience and expertise in technology law ranges from traditional categories (IT service agreements, licensing, software development) to new and emerging technologies (Blockchain, Fintech, AI).

As reflected in the variety and depth of the representative experience below, we successfully deliver a one-stop shop for all our clients’ technology and intellectual property needs.

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Areas of Expertise
  • Prosecution of applications for registration of trademarks, copyrights and industrial designs including availability searches, “Section 45” trademark proceedings and management of IP portfolios in a global basis
  • Litigation, arbitration and mediation services relating to technology and IP including IP infringement and “cease and desist” letters
  • Internet technology including e-commerce, domain name disputes, website privacy policies and website terms of use
  • Acquisition, protection and commercialization of IP and technology assets including through licences, acquisition/sale agreements, non-disclosure agreements and research agreements
  • Cybersecurity including preparing for and responding to a security breach
  • Compliance with Canada’s anti-spam law (CASL)
  • M&A and joint venture agreements involving IP and technology assets
Representative Experience
  • Acted for a national telecommunications provider with respect to a wide variety of technology, intellectual property, privacy and security compliance matters, including as counsel for several $200+ million transactions for complex telecommunications services, outsourcings or call centres, and the procurement of next generation platforms.
  • Handled the trademark portfolio and software licensing agreements of an international Canadian health services technology company since its start-up phase, and assisted in the sale of the company for a purchase price that exceeded $100 million including the negotiation and settlement of complex intellectual property representations, warranties and indemnities.
  • Helped Canadian universities develop IP policies in light of unique relationships between universities, professors and students.
  • Assisted an agricultural products marketing agency with regulatory powers under the Farm Products Marketing Act (Ontario) to manage its trade-mark portfolio and ensure compliance with privacy laws regarding its digital assets.
  • Acted for a major police force in Ontario, and other first responders, in acquiring a digital radio system, that consisted of both hardware and software components, with a purchase price that exceeded $35 million.
  • Drafted and negotiated an international trademark licence agreement and structure on behalf of a major Canadian engineering and construction services firm regarding its marks, including a form of sub-license agreement for use by affiliates of the licensees.
  • Advised a major Canadian commercial bakery with international business operations regarding the forms of agreements with its distributors and retailers in order to protect the intellectual property of the bakery in jointly developed products sold under various private label arrangements.
  • Acted for a national dealer of heavy construction equipment as technology counsel, including in the renegotiation of a few $10+ million licensing transactions, development agreements or technology acquisition arrangements.
  • Acted for a national standards body providing services and standards in the supply chain for food, food services, healthcare, and hardline goods, by providing general counsel including corporate and technology advice.
  • Advised a government agency with respect to security compliance, including the development of security policies and related procedures for the protection of confidential and personal information.
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