Intellectual
Property

Overview

Helping you achieve a competitive edge. That's what we mean by a different kind of practice.

Our Team

Whether they are multinational corporations, small to medium-size businesses, universities or research centres, all our clients face the same challenge: how to constantly innovate to become or remain competitive industry leaders in an increasingly complex legal landscape. In their quest to become or remain industry leaders, our clients need allies to fully capture, manage and optimize the value of their innovations. BCF has always been such an ally. Our team of highly qualified intellectual property lawyers, patent and trademark agents has developed a broad legal and scientific expertise in the field of intellectual property.

Patents and Industrial Designs

Our lawyers and patent agents help clients maximize the value of their inventions by properly protecting, defending and managing them, both in Canada and abroad and in a wide variety of sectors, such as chemistry, electricity, electronics, life sciences, mechanics, nanotechnology, optics, software and telecommunications.

Our team participates in the identification of an invention and the drafting and prosecution of the patent application claiming such an invention. It handles the preparation of assignments of rights by employees and consultants as well as the due diligence investigations of patent portfolios and the protection of our clients’ rights in their inventions via the adoption and implementation of the appropriate corporate strategy against infringers. It is also actively involved in the licensing in or out of patented inventions and the implementation of licensing programs as well as of intellectual property management programs.

Our team also prepares patentability, validity, infringement and freedom-to-operate opinions, and will obtain the protection of other intellectual property assets under the Industrial Design Act, the Integrated Circuits Topography Act and the Plant Breeder’s Rights Act.

Trademarks

Besides providing registrability and availability opinion and preparing, filing and prosecuting trademark applications in Canada, our team comprised of lawyers and trademark agents help clients maximize the value of their trademarks by properly protecting, defending and managing them abroad. Our team also participates in the drafting and negotiating of trademark license agreements and helps clients put in place broad licensing programs which can generate new revenue streams while building the strength of a trademark or of a trademark portfolio.

Furthermore, our team works closely with our clients’ marketing departments and marketing firms to ensure branding and marketing efforts are in line with current trademark law as well as with regulations having an impact on branding and labelling in Canada and the province of Quebec, such as the Food and Drugs Act and the Charte de la langue française.

Copyrights

We assists clients with all copyright issues arising from their operations, ensuring, among other things, that problems related to moral rights or open source software will not prevent clients from marketing or optimizing the value of their copyright protected works. Our copyright team also drafts and negotiates all types of agreements involving copyright protected works, including licences, and sees to it that clients obtain the transfer of copyrights in elements developed by consultants.

Trade Secrets

Our team works with clients in determining whether an invention should be kept secret rather than be the subject of a patent application. We suggest appropriate measures to help maintain the secrecy of trade secrets and other confidential information, including those provided by third parties under non-disclosure agreements. We protect the rights of our clients contractually, for example by tailoring the non-disclosure agreement necessary for a particular business endeavour, or via litigation, should it become necessary to adopt legal measures against individuals or companies involved in misappropriating the trade secrets of our clients.

Intellectual Property Litigation

Different from civil or commercial litigation, intellectual property litigation has its own subtleties, which are very familiar to our professional teams. BCF also has extensive experience with the distinctive features of Federal Court practise and the main principles of common law that apply to this area.

Often linked to the scientific, technological and IT fields, intellectual property litigation requires knowledge that is above and beyond the legal field. This is why our teams are made up of professionals and lawyers who devote themselves almost entirely to intellectual property and litigation, take special interest in your field of activity and will help you adopt a litigation strategy aligned with your business objectives and minimize the chances of success of a third-party litigation.

Commercial Contracts Related to Intellectual Property, from Franchising to Technology Transfer to Outsourcing

Our professionals, who draw on combined skills and knowledge in the fields of intellectual property, marketing, taxation and finance, have solid expertise in drafting and negotiating all types of contracts involving intellectual property, be it licence agreements or contracts dealing with technology transfers, research and development, distribution, franchising, software development or outsourcing. We lead you every step of the way, from the negotiation of favourable conditions to the drafting and signing of agreements, all the while placing an emphasis on business solutions and taking your commercial reality into account so as to contribute to the conversion of intellectual capital into financial capital. Just like you, we know that even the best idea, the most powerful software or an invention protected by the most secure patent is of very little value if it doesn’t make it to market.

Our team, which includes both lawyers and scientists, also assists clients with the due diligence review of intellectual property assets, a crucial step prior to any transaction.

Regulations, Labelling, Advertizing and Competition

Our intellectual property team advises clients on all matters involving the various rules applicable to the marketing, promotion, advertizing and labelling of their products and services in Canada, be it in the wine and spirits industry, the natural health products industry, the food and drug industry or the cosmetics industry. Our professionals also review our clients’ labels, product packaging and advertising materials, including contests, to ensure compliance with applicable laws and regulations. Moreover, we advise our clients on the specific language requirements applicable in Quebec, including those arising from the Charter of the French Language and its regulations.

Our team also assists clients in connection with product recalls and in negotiations with the governmental authorities responsible for approving products in Canada. In addition, it handles notices of compliance for patented medicines.

Domain Names and Internet

Market globalization, the phenomenon of social media and the proliferation of domain name extensions, among other things, have given rise to an exponentially increasing number of Internet-related issues. Our team has developed the expertise to help you navigate through the legal maze created by the use of global computer networks. From dealing with the appropriation of domain names to Facebook and Twitter conversations to the use of Google’s AdWords program, our seasoned team of Internet experts will guide you so as to ensure that the Web remains a crucial ally in maintaining your presence on the global virtual stage.

For more information and to read about the full range of our services on that subject, please visit our Internet Group page.

Giuseppe Anzuino

Paralegal, Trademarks

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Giuseppe Anzuino

514 397-6699 #3615

Jocelyn Auger

Consulting Lawyer

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Jocelyn Auger

514 397-2643

Johanne Auger

Partner, Trademark Agent

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Johanne Auger

514 397-6721

418 266-4503

Andréanne Auger

514 397-2261

418-692-4506

Dominique Babin

Partner, Lawyer

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Dominique Babin

514 397-2675

Amber M. Beckley

514 397-6699 #2785

418 649-5474

Jean-Sébastien Brière

Counsel Lawyer and Patent Agent

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Jean-Sébastien Brière

514 397-5554

Jonathan Cutler

Partner, Lawyer, Patent Agent

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Jonathan Cutler

514 397-6903

Frédéric Dionne

Partner, Trademark Agent

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Frédéric Dionne

514 397-5559

Serge Fournier

Partner, Lawyer

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Serge Fournier

514 397-6901

Alexandra Gagnon

Patent Paralegal

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Alexandra Gagnon

514 397-5563

Pierre-Marc Gendron

514 397-6760

Dominic Goudreault

Partner, Patent Agent

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Dominic Goudreault

514 397-6659

Ilya Kalnish

Partner, Trademark and Patent Agent

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Ilya Kalnish

514 787-2789

Irina Kostko

Lawyer and Technical Consultant - Patents

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Irina Kostko

514 397-6836

Julien Lacheré

Partner, Patent Agent, Engineer

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Julien Lacheré

514 397-2633

Jérôme Lafrenière

Technical consultant, Patents

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Jérôme  Lafrenière

514 787-4747

Pascal Lauzon

Partner, Lawyer and Trademark Agent

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Pascal  Lauzon

514 397-6736

Annik Leclerc

Patent Paralegal

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Annik Leclerc

514 397-6727

Kendrick Lo

Consulting Lawyer, Patent Agent

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Kendrick Lo

514 397-5567

Daniel M. Mackay

514 397-2694

Oleksiy Malashenko

Technical Consultant, Patents

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Oleksiy Malashenko

514 787-2787

Brigitte Nepveu

Partner, Lawyer

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Brigitte Nepveu

514 397-6706

Eric Ouimet

Partner, Lawyer, FCIArb

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Eric Ouimet

514 397-6925

Olga Pavlyuk

Patent Paralegal

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Olga Pavlyuk

514 397-6699 #3468

Simon Pelletier

Partner, Lawyer, Engineer

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Simon Pelletier

514 397-6719

Julien Perron-Piché

Lawyer, Engineer and Technical Consultant, Patents

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Julien Perron-Piché

514 397-2608

Omar Pezo

Patent, Paralegal

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Omar Pezo

514 787-2871

Gaël Picout

Paralegal, Trademark

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Gaël Picout

514 397-6959

Gaétan Prince

Partner, Engineer and Patent Agent

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Gaétan Prince

514 397-6725

Tina Ralaisoa

Paralegal, Trademarks

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Tina Ralaisoa

514 397-6699 #3443

Juan Carlos Ramos

Technical consultant, Patents and Engineer

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Juan Carlos Ramos

514 397-2660

Emma Saffman

Patent Agent

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Emma Saffman

514 397-4756

Zsolt Sámson

Patent Searcher and Analyst

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Zsolt Sámson

514 787-3935

François Sawyer

Engineer, Patent Agent

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François Sawyer

514 397-6753

Kimberly Sévigny

Paralegal, Trademarks

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Kimberly  Sévigny

514 397-6699 #3752

Philippe Therias

Lawyer, Consultant and European patent and trademark Attorney

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Philippe  Therias

Maxime Verret

Chief Operating Officer, Intellectual Property, Senior Patent Agent

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Maxime  Verret

514 397-6872

Tuba Yamaç

Patent Agent

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Tuba Yamaç

514 397-6724

Erik Yelemanov

Technical Consultant, Patents

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Erik Yelemanov

514 397-6913