Getting a firm grip on intellectual property

Giving in-house counsel a hand with IP

Even companies with in-house counsel rely on external law firms to handle intellectual property matters. But a combination of the two may be the most effective way to go

THE LATEST DIGITAL transformation of many businesses – whether hot tech start-ups or companies in traditional industries that aren’t tech-heavy – and ongoing research and development in the field both support a case for businesses to be more proactive in developing a proactive intellectual property strategy. And part of developing that strategy, say IP lawyers and patent agents at Smart & Biggar LLP, involves business leaders and in-house counsel at companies of all sizes ensuring they have access to the proper legal and technical insight to seize opportunities and minimize risk. This is true whether they have in-house counsel with IP expertise on their team, or they work with specialized outside counsel who assist.

Patrick Roszell, also a partner at Smart & Biggar in Toronto, agrees. He points out that most companies across industries today are “rapidly becoming more IP-centric” as they develop and use quickly evolving technology. The incidents of IP risk that are emerging, he says, are “especially prevalent in organizations that are relatively new to IP.” “There’s a lot of experiential learning that comes from becoming aware of what IP is at play in your field, and what IP your competitors hold,” Roszell says. “A lot of organizations don’t initially have a sense of what IP is relevant in their industry and technological fields. And so that means that organizations can overlook infringement risks [that] could threaten their operations.” Treating IP as a core asset At the same time, Roszell, who is also qualified as a trademark and patent agent, points out that “many organizations are not used to dealing with IP as a core asset and have not had the time to create disciplined systems around their IP.” Commercial agreements often have legal gaps that could lead to disputes or to rights being lost, he says – and decisions made without detailed consideration of IP issues can easily compromise a company’s IP position. These are some examples of situations in which company executives and in-house counsel alike can benefit from the guidance of an outside law firm with specialized expertise in IP to help guide them. Other key strategic areas they can provide counsel and advice on include:

IP matters is followed. Having outside counsel to call on helps him deal with the sheer volume of IP-related issues a tech-savvy and innovative company like Husky needs to manage, which he says “lets us move things along much more quickly.” Gow adds that companies like his are constantly transforming, along with their peers, competitors and industry partners, and changing the way business is done through digitization and technology. This is all happening quickly and during day-to-day operations. “So it’s a bit like trying to switch out your engine while the car is still going down the road,” he says. The size of the companies wanting to protect their IP and dealing with more sophisticated IP issues has also changed, says Mattar. “It used to be that only fairly large [multinational] companies were investing in protecting their IP, but now we’re seeing medium- and small-sized local Canadian companies becoming more interested and aware of IP and how it can contribute to creating tangible value – whether on the technology side, involving patents, or on the trademark and design side of things.” Mattar says these smaller companies are facing increasingly aggressive competitors on the IP front, especially when they expand into foreign markets. So “they need to be more diligent in managing their IP assets, and they are coming to realize they have to invest more time and resources into IP processes, and they have to develop and execute on an IP strategy to remain competitive in the market." They might not have the appropriate team members in-house with the knowledge to deal with IP matters, so they are looking to outside counsel. “They might have general counsel in-house, but without direct IP experience, or sometimes no lawyer in-house at all,” Mattar adds. Roszell says he is also seeing a significant push for more sophisticated technology and digital transformation occurring within traditional companies that “you wouldn’t necessarily think of as interested in or focused on IP.” For example, a manufacturer might be using software and data in new ways that create IP risks and opportunities that might not have existed 10 years ago.

critical IP risks that companies and in-house counsel often overlook guidance for in-house counsel to better manage common IP issues within their organizations systems, processes and tools to mitigate operational IP risk in day-to-day business operations lessons from experience working with innovative companies

Counsel can commercialize IP opportunities Specialized IP lawyers and trademark and patent agents can help guide in-house counsel on how to create an “IP/innovation culture” and embed an IP perspective and mindset into everything their company is doing. This can include internal activities like employee education, or an external focus on commercial agreements with vendors and clients. Geoff Gow, IP manager at Husky Injection Molding Systems, who is also an engineer and patent agent, says he has had a lot of experience helping companies he has worked for develop and implement IP strategies and programs. But even he depends on an outside law firm (Husky is a client of Smart & Biggar) to help ensure that organizational discipline around

Teaming up in-house counsel with external expertise When an outside law firm works with a client on an IP strategy and to implement related policies around it, Mattar says this often involves setting up new protocols and procedures, including internal checks and balances. For innovative companies, it may also include putting in place systems for tracking their technology innovations to ensure that IP rights are obtained. An outside law firm with specialized expertise in IP can also help a company access IP-related funding from government initiatives related to IP and provide IP support during due diligence on commercial transactions. “Developing an IP strategy requires a significant amount of business and technical input, and there really needs to be a facilitator, such as an experienced in-house counsel, to help coordinate all this," Mattar says. "Even if the company’s in-house team has only some basic knowledge of IP, we’re in a good position to help move the process along.”

Smart & Biggar is widely recognized as Canada’s leading firm for intellectual property, and with over 100 lawyers, patent agents and trademark agents in five offices, it is also the largest firm focused purely on IP and related specialty areas. Consistently ranked at the top of the field by its clients and peers, Smart & Biggar prides itself on providing strategic IP counsel, insights and solutions for all its clients. The firm has a storied history and tradition of providing the highest quality of IP advisory services and has filed more patent and trademark applications than any firm in Canada.

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“Many organizations are not used to dealing with IP as a core asset and have not had the time to create disciplined systems around their IP”

Patrick Roszell, Smart & Biggar LLP

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Brigide Mattar, a partner at Smart & Biggar in Montreal, says, “There are operational risks, such as making sure you're not infringing on the IP of other parties and ensuring that you can commercialize your products and services without worrying too much about being dragged into litigation. But the other risk – one that is often underestimated – is failing to recognize and secure IP rights on innovations that are being created through significant R&D investments, and losing out on opportunities to maximize value from these innovations. These risks are more likely to be present when a company doesn't have a proactive strategic IP plan in place.” Mattar, who is qualified as a professional engineer and patent agent, adds that few Canadian companies have in-house counsel with the expertise in IP law, in particular patent law, that is needed to develop a technology-focused IP strategy or to keep up with this complex and evolving area of law and practice. Mattar and her colleagues often act as trusted advisors to in-house counsel, who typically have a background in corporate/commercial law, to help bridge this gap in IP knowledge and expertise. This applies equally to companies with a strong base in technology that are dealing heavily in patents, she says, and those with “soft” IP rights such as trademarks, copyrights and industrial designs.

Canadian patents in force 2011–20

Roszell agrees. “Whether it’s an internal advisor, an external advisor, or both, developing an IP strategy early on is the best way to pre-emptively identify possible risks, giving you the means, time and flexibility to deal with them.” Husky’s Gow notes that working with outside counsel comes down to a trust factor. “You have to feel comfortable that the [external] firm’s lawyer and/or patent agents are keeping you abreast of the changes in the law or IP office requirements and understand any deadlines and how to avoid obvious pitfalls.” As someone who has been dealing with IP issues in-house for companies for the better part of 25 years, Gow says he sees global competition only getting fiercer. So, having a good handle on your IP portfolio is “important for companies in protecting margins, preserving the value of unique IP assets, and preventing negative commercial and financial outcomes if there ever is litigation.”

“Owners of IP are investing a lot of money and energy but don’t understand the risk of that IP being compromised”

Brigide Mattar, Smart & Biggar LLP

Industry experts

Brigide Mattar is a patent agent and partner at Smart & Biggar with over 20 years' experience in all aspects of patent practice in Canada and the U.S., including preparing and prosecuting applications; assisting clients in designing new products that minimize risks of infringement; managing portfolios; conducting freedom-to-operate assessments; and developing strategies that support business objectives. Mattar offers expertise in the preparation of infringement and validity opinions and due diligence reports in the context of sales, acquisitions and commercial transactions. Trained as an electrical and computer engineer, she has technical expertise in electronics, telecommunications, software, and related technologies.

Smart & Biggar LLP

Brigide Mattar

Geoff Gow is IP manager and a patent agent at Husky Injection Molding Systems, a leading global supplier of injection-moulding equipment and services. He manages a patent portfolio segment with over 700 patents worldwide and conducts freedom-to-operate due diligence for new products. Gow was a co-recipient of the 2012 InsideCounsel Award for innovative IP management and was recognized as an Association of Corporate Counsel Value Champion for his part in creating an innovative Holistic Legal Strategy (2016). He holds an engineering degree and is a named co-inventor on seven U.S. patent applications and patents.

Husky Injection Molding Systems

Geoff Gow

With a decade of experience in counselling clients on the creation, protection and management of IP rights, Patrick Roszell, a partner at Smart & Biggar, has has a track record of helping clients secure IP assets that create strategic opportunities. His clients, ranging from large multinational corporations to technology start-ups, trust him to bring a pragmatic approach to delivering commercially valuable and cost-effective solutions. Roszell's practice focuses on patent prosecution and strategy, including drafting patent applications and providing patentability, infringement and freedom-to-operate opinions.

Smart & Biggar LLP

Patrick Roszell

Smart & Biggar LLP

Geoff Gow

Husky Injection Molding Systems

Brigide Mattar

Smart & Biggar LLP

Industry experts

Smart & Biggar LLP

Brigide Mattar

Husky Injection Molding Systems

Geoff Gow

With a decade of experience in counselling clients on the creation, protection and management of IP rights, Patrick Roszell, a partner at Smart & Biggar, has a track record of helping clients secure IP assets that create strategic opportunities. His clients, ranging from large multinational corporations to technology start-ups, trust him to bring a pragmatic approach to delivering commercially valuable and cost-effective solutions. Roszell's practice focuses on patent prosecution and strategy, including drafting patent applications and providing patentability, infringement and freedom-to-operate opinions.

Smart & Biggar LLP

Patrick Roszel

Patrick Roszell

Smart & Biggar LLP

Geoff Gow

Husky Injection Molding Systems

Brigide Mattar

Smart & Biggar LLP

Industry experts

Smart & Biggar LLP

Brigide Mattar

Husky Injection Molding Systems

Geoff Gow

Smart & Biggar LLP

Patrick Roszell

Brigide Mattar

Smart & Biggar LLP

Geoff Gow

Husky Injection Molding Systems

Patrick Roszell

Smart & Biggar LLP

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“You have to feel comfortable that the [external] firm’s lawyer is keeping you abreast of the changes in the law, and understand any deadlines and how to avoid obvious pitfalls”

Geoff Gow, Husky Injection Molding SystemS

Canadian IP filings 2011–20

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Source: World Intellectual Property Organization Database

Canadian patents in force 2011–20

Source: World Intellectual Property Organization Database

2011

2012

2013

2014

2015

2016

2017

2018

2019

2020

200,000

150,000

100,000

50,000

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