Intellectual Property

Intellectual property is part of a company’s competitive advantage and is an asset that requires careful strategy, management and protection. For technology start-ups, IP is likely the core business asset, and its commercialization the foundation for the company's business plan. We assist clients with the identification, creation, strategy, monetization and disposition of their IP rights in a way that propels their business objectives.

IP Services

Members of our IP Group include lawyers, patent and trademark agents who routinely advise on all aspects of IP portfolio creation, development, strategy, management and exploitation including:

• Prepare strategically advantageous worldwide filing strategies
• Offensive and defensive strategies
• Create baseline industry or sector patent-based technology landscapes
• IP due diligence assessments
  
• Competitor watch services
  
• Invention disclosure process
• Identify core vs. non-core IP assets
• Prepare, file and prosecute Canadian, US and international patent applications
• Prepare, file and prosecute Canadian, US and international trademark applications
  
• Prepare IP licensing and transfer agreements
• Create contamination and confidential information management protocols
• Prepare website and application terms of use/service
  

Our IP professionals also work with our IP Litigation group, and draw upon the expertise of colleagues in our firm’s Technology group who have worked on a full range of technology transactions and our Privacy and Data Management group have advised in relation to data security law issues. 

Community Involvement

As trusted IP professionals, members of our Group are often called upon, and participate in, various educational activities and consultation clinics within the technology ecosystem. They are also approached by media to address and/or provide commentary on various IP issues, including changes to legislation that may affect businesses’ IP portfolio and strategy.

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Insights and Resources

Episode #6 | In the Spirit of Giving Gift Cards
On Episode 6: In the Spirit of Giving Gift Cards – Mark Fancourt-Smith and Alix Stoicheff speak to Kelowna partner, Paul Matthews, P.Eng. (AB) about British Columbia’s Prepaid Purchase Cards Regulation and what you need to know when buying or using gift cards this holiday season and beyond. Other Insights:

• Intellectual Property Ownership and Enforcement, Part 1 - with Paul Matthews
• Intellectual Property Ownership and Enforcement, Part 2 - with Paul Matthews
• Understanding the Importance of Intellectual Property - with Paul Matthews
• The Different Types of Intellectual Property - with Paul Matthews
  

Other Resources:

• Accelerate Okanagan
• Business Link
• entrepreneurship@UBC
• Innovate Calgary

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Meet Our Intellectual Property Key Contacts:

Paul Matthews, P.Eng. (AB)
Partner

Vancouver: t 604.631.9159
Kelowna: t 250.300.8574
Calgary: t 403.218.7550

Contact Paul 

Richard Okimaw
Partner and Patent & Trademark Agent

Kelowna
t 778.738.2606

Contact Richard
  

Carolyn Walters
Trademark Agent

Calgary
t 403.218.7557

Contact Carolyn

Experience

Strategy

• Designed, build and rolled-out a corporate IP strategy complete with alternatives and examples for an enforcement philosophy, for a major energy player
• Developed and implemented a long-term patent strategy for a leading oil field technology company
• Developed and executed strategic plans to register, maintain and enforce trademarks for an energy company with a large global trademark portfolio by conducting a gap analysis and creating a customized and focused trademark filing strategy which resulted in a reduction of the trademark portfolio and reduced costs
• Developed and implemented corporate policies and procedures related to intellectual property for a major energy company
• Developed guidelines for responding to online infringements for a large energy company
• Developed an eLearning module on safeguarding intellectual property to prevent loss of value from key technological developments and to mitigate risks preventatively

Patents

• Performed a Freedom-to-operate exercise for a first of its kind commercial scale industrial technology in the energy industry
• Oversaw the transfer of multiple patent portfolios to a multinational corporation including preparing subsequent continuation and improvement patent applications
• Conducted and prepare patentability opinions for clients on new technology or improvements
• Initiated and co-contributed to driving $4 million in (lifecycle) costs out of the global patent portfolio of a technology start-up

Trademarks

• Initiated and managed the transfer of almost 900 trademarks in over 70 countries that was required as a result of a large oil and gas merger

• Provided support for the sale of a large subsidiary which involved the transfer and licensing of hundreds of trademarks, and implemented guidelines and processes to ensure proper care and control of the licensed trademarks and for reporting suspected infringements
• Successfully opposed and defended trademarks before the Canadian Trademarks Office
• Prepared and filed domain name disputes at the World Intellectual Property Office resulting in transfer of the domain name to the client
• Led investigations into counterfeit products in various countries including Russia, Turkey, Indonesia and China and worked with local counsel and authorities to combat the problem 

Agreements

• Acted for Red Leaf Pulp in negotiations with Sustainable Fiber Technologies in licensing the The Phoenix Process™, a pulping process, to use waste straw for the production of pulp and value added products, including consumer products like molded cups and packaging, and tissue and paper towels. It will be the first operating entity to found, develop, construct, and operate a non-wood fibre plant in Saskatchewan, Canada
• Represented a technology company in structuring and negotiating the development, supply and licensing of physics based human movement simulations and anatomical models for the production of virtual characters
• Acted for a public utility entering the electric vehicle (EV) market in negotiating commercial agreements for the development and supply of novel EV charging systems, and for the charging network management
• Represented Risk Alive Analytics Inc., a super-niche data analytics and knowledge mobilization consultant in the process hazard analysis space in negotiating a master services agreement with a major Canadian energy producer and refiner for 400+ process units
• Drafted trademark licensing agreement templates for a precious stone branding program on a global basis throughout the entire supply chain from the mine to the retail storefront
• Drafted copyright licenses for a novel methodology and toolkit for learning a foreign language
• Negotiated and closed a Lump Sum Turn Key project agreement valued over $100 million for the commercial application of a proprietary technology, complete with a claims avoidance program employed during project execution

Terms of Use

• Drafted terms of use and privacy policies for Websites and App’s for various organizations in the gaming, animation, motorcycle owner and rider communities, touring, maps, health and fitness, nutrition, pharmaceutical, personal vigilance, industrial products, industrial services, software as a service, software development, personal development, technical course delivery, medical devices and other spaces

Litigation

• Paul W. Matthews, P.Eng. (AB) acted as an expert witness and provided an opinion on appropriate licensing royalties in the patent infringement action (Maoz Betser-Zilevitch v. PetroChina Canada Ltd. 2021 FC 85)
• Successfully defended an international publishing company and its author in a copyright infringement action (Thumbnail Creative Group Inc. v. Blu Concept, 2009 BCSC 1833)
• Successfully defended a visual effects studio and its principals against claims for breach of fiduciary duty, conspiracy, conversion, breach of confidence, and solicitation of employees, arising from the provision of visual effects for a network science fiction television show (Zoic Studios BC Inc. v. Gannon, 2012 BCSC 1322; 2015 BCCA 334)
• Successfully defended against claims by a junior mining company against a major for breach of confidence in a case involving significant nickel deposits in the Cape Smith Belt, obtaining dismissal of all claims after summary trial (Novawest Resources Inc. v. Anglo American Exploration (Canada) Ltd. et al., 2006 BCSC 769)
• Successfully obtained an injunction restraining passing off and sale of counterfeit luxury handbags, and an order to seize all inventory (Hermes Canada Inc. v. Henry High Class Kelly Retail Store, 2004 BCSC 1694)
• Represented a website owner in the first case in Canada and the Commonwealth to enforce passive (or “browse wrap”) online terms of use and related copyright claims (Century 21 Canada LP v. Rogers Communications Inc., 2011 BCSC 1196)
• Negotiated a commercial settlement respecting a dispute with a drilling services supplier over the ownership of intellectual property rights for a new drilling technology
• Initiated, directed and ultimately negotiated the settlement of litigation in multiple jurisdictions against multiple parties to preserve and protect an energy company’s confidential information respecting a mining technology innovation
• Uncovered and led an investigation into the misappropriation of company innovations for an energy company
• Effectively managed post-construction disputes for an energy company having designed, implemented and directed a dispute resolution management program comprising case assessment, planning and budgeting standards and reporting for outside counsel

Team