Intellectual Property Law

Our Intellectual Property Law Experience

At Conneely PC, in addition to drafting, filing, and prosecuting patent, trademark, and industrial design applications, we provide supporting intellectual property (IP) law services including opinions, due diligence, asset transfer, portfolio management, and strategic advice. Joe Conneely, the founder of our firm, is recognized as one of the best intellectual property lawyers in Canada. If you need an experienced Canadian intellectual property lawyer, agent, or attorney for your IP law matters, please contact us. By specializing, using the latest technology, and controlling overhead costs, we deliver great service for reasonable fees.

IP Opinions

We provide IP opinions with respect to the patentability, registrability, validity, and infringement of Canadian patents, trademarks, and industrial designs. Our experience drafting, filing, and prosecuting patent, trademark, and industrial design applications in Canada and worldwide allows us to expertly prepare IP opinions. We have drafted and prosecuted patent applications covering a number of technologies including patent applications for wireless devices, energy management systems, batteries, automotive systems, mining equipment, software applications, user interfaces, electronics, communication systems, medical devices, unmanned aerial vehicles, industrial equipment, augmented/virtual reality systems, artificial intelligence systems, apparel, and wearable tech. Trademarks associated with consumer goods, industrial goods, software, sportswear, retail, fashion, and apparel are our specialties. Our industrial design drafting and prosecution experience extends from display screens and icons to containers, furniture, vehicles, consumer electronics, fashion, and apparel.

Intellectual Property Due Diligence

In support of transactions, investments, and deals, we provide due diligence with respect to the IP involved. This may include basic confirmation of ownership of patents, trademarks, industrial designs, and copyrights through to opinions with respect to the validity of such IP. After closing, we record any assignments and licenses in the appropriate IP offices in Canada and around the world.

IP Strategy

Deciding what inventions, designs, or brands to protect with a patent, trademark, or industrial design registration, where to protect your IP, when to protect your IP, and how much should be spent on such protection are strategic decisions. For example, a start-up tech company may need to have a first patent application on file to attract an initial investment. That first patent application may form the basis of a patent portfolio developed to attract further investment. On the other hand, a larger corporation may be seeking advice as to which countries they should file applications in, which firms to use in those countries, when to maintain applications, and when to abandon applications, all with a view to cost effective maintenance and expansion of their IP portfolio. We provide such strategic advice to our clients and assist them with the development of their IP strategic plans.

Intellectual Property Portfolio Management

Paying maintenance fees, filing declarations of use, watching for potential confusion, and fulfilling other requirements in several countries for even small IP portfolios can be a challenge. We use the latest IP due date tracking software and watching services to manage our clients’ IP portfolios and provide monthly or quarterly IP status reports in a variety of formats to our clients.

IP Searches

An IP search is usually required before an IP opinion can be prepared. The results of patentability, availability, and registrability searches help you decide whether to proceed with a proposed patent, trademark, or industrial design application. The results of validity and infringement (or freedom to operate) searches help you decide whether to enter a particular field with a new product or service. We conduct simple IP searches in-house and arrange for more comprehensive searches from dedicated IP search firms.

Intellectual Property Audits

An IP audit is a review of an organization’s operations, products, website, and advertising materials to determine what should be protected by applications for patents, trademarks, and industrial designs. We conduct IP audits to help your organization determine what IP it has and to record the nature of that IP. This is a first step in developing an organization’s IP strategic plan. Invention, trademark, and design disclosure forms are very helpful when conducting IP audits. For example, an invention disclosure form is a questionnaire used to records details about a new invention. They are used by companies both large and small, universities, and individual inventors. The questions listed in the form act as a guide to gather the information required to draft or prepare a new patent application. That information includes details about the invention, identification of the inventors, ownership of the invention, assignment, searches conducted, prior art known or uncovered, any disclosure or upcoming disclosure of the invention, countries where protection is desired, etc. The invention disclosure form thus acts as a record of your organization’s invention. These forms may be gathered, evaluated, and ranked to determine which inventions should be protected with a patent application. They may also be used as a basis for incentivising inventors, teams, and projects. Trademark and design disclosure forms have a similar function. Please contact us and we’ll send you a copy of our invention, trademark, and design disclosure forms for your use.

IP Asset Transfer

We draft IP assignments and license agreements and have these transfer documents recorded in the Canadian Intellectual Property Office and in patent, trademark, and industrial design offices around the world as required.

Intellectual Property Litigation

While Conneely PC is not an IP litigation boutique, we provide litigation support and strategic advice with respect to choosing the right litigation counsel when required.

Questions?

Please contact us if you have any questions!