Chairman: Daphne Lainson
Managing Partners: Steven Garland (Ottawa office), Mark Evans (Toronto office), François Guay (Montreal office), John Knox (Vancouver office), Alistair Simpson (Calgary office)
Number of partners: 42
Number of lawyers: 65
Languages: Afrikaans, Bulgarian, Chinese, Croatian, English, French, German, Greek, Hindi, Japanese, Latvian, Portuguese, Punjabi, Spanish, Ukrainian, Vietnames
Smart & Biggar/Fetherstonhaugh is Canada’s largest firm practising exclusively in intellectual property and technology law. The firm works directly with global and domestic organisations, and seamlessly as one team with associate firms, to help its clients secure, protect and maximise the value of their inventions and intellectual property investments in Canada. From five offices across Canada, the firm offers the full complement of intellectual property services including strategic IP counseling, IP litigation, IP transactions support, licensing, and patent and trademark agency services. It serves many of the world’s leading organisations representing the broad spectrum of industries.
The firm’s focus on value includes:
■ Client Service Delivery Excellence– Smart & Biggar has an international reputation for client service excellence. The firm leverages sophisticated project management and back office systems to manage its clients’ matters, and constantly seek new ways to streamline and increase the efficiency and value of its service offering
■ Expertise– Smart & Biggar has one of the largest IP teams in Canada and it offers clients experience in the combined scientific, technical and legal fields, along with highly specialised industry knowledge
■ Technical Strength– Virtually every member of the firm has an engineering or scientific educational background, and many possess graduate degrees in a diverse range of areas. Over 55 members of the firm, including most of its lawyers, are registered patent agents
■ History of Partnering– Smart & Biggar carefully nurtures long-term relationships with clients and expert associate firms around the world. These relationships endure because Smart & Biggar consistently seeks out opportunities to continuously add value and deliver superior client service
Main Areas of Practice:
Patents & Designs:
The firm draws on its professionals’ unparalleled technical knowledge in evaluating an invention, reviewing its patentability and developing strong and enforceable patent rights throughout the world. Professionals also work closely with their clients to develop customised patent protection strategies that provide a powerful competitive advantage.
From publishing Canada’s first text on trademarks and registering Canada’s first sound-mark, to obtaining precedentsetting damages against counterfeiters, the firm enjoys a deep tradition of leadership in trademark protection, licensing and enforcement and is sought after by the owners of the world’s most valuable brands.
Copyright & Media:
The firm provides comprehensive expertise in all aspects of copyright law, whether obtaining protection within traditional artistic fields or identifying and defending cutting-edge issues related to rapidly changing advances in areas such as high tech, software, broadcasting, new media and the internet.
The firm is a dominant force in intellectual property litigation, and is recognised as Canada’s leading IP litigation firm. The firm has efficient and highly effective trial lawyers, and no other Canadian firm can claim a more distinguished and successful record. The firm routinely handles Canada’s most commercially important and technically complex intellectual property cases. Many victories on behalf of its clients are leading Canadian precedents, and the firm’s lawyers have represented clients in the Supreme Court of Canada on more than 50 occasions.
Licensing & IP Transactions:
Smart & Biggar/Fetherstonhaugh has extensive experience in developing and managing successful revenue-generating licensing programs as they combine business know-how with sophisticated legal and technical expertise. The firm’s IP licensing and transactional lawyers leverage their expertise in advising on, structuring and negotiating a wide variety of domestic and international M&A, IPOs, financing and patent licensing deals and other intellectual property-related transactions. The firm is frequently called upon by in-house counsel, outside commercial law firms, foreign law firms, investors and companies seeking investment to provide advice on patent assets and related opportunities and risks in connection with commercial projects, collaborations and transactions.
IP Management & Strategic Counselling:
The firm works closely with clients to manage and develop their rights by performing strategic IP and technology audits, identifying risks and significant opportunities, and advising clients on the best course of action to leverage their rights.
The litigation handled by the firm’s pharmaceutical group includes pharmaceutical patent infringement and validity actions, pharmaceutical trademark oppositions and infringement and validity proceedings, court applications relating to regulatory approval of pharmaceuticals and litigation under access to information legislation. The members of the litigation team work closely with the chemical and biotechnology patent procurement groups, all of whom have graduate and undergraduate degrees in such areas as cell biology, physiology, molecular cell biology, microbiology, immunology, biochemistry, developmental genetics, molecular and cellular physiology or pharmacy.
The firm works with a variety of clients in Canada and internationally, including universities, hospitals, research institutions and government laboratories, as well as small and medium sized enterprises and multinational companies, to develop intellectual property protection and license innovations. The combination of extensive expertise and advanced technical training in relevant subspecialties enables the firm to offer outstanding services for the protection of chemical, pharmaceutical and biotechnological inventions.
From actively lobbying for improvement in Canada’s anticounterfeiting and anti-piracy laws, policies and environment, to obtaining precedent-setting damages and restitution orders against counterfeiters, Smart & Biggar’s anti-counterfeiting group provides efficient and expert advice and service to cost effectively protect intellectual property rights holders against IP crime.