This article is a continuation of ''Heavy hitters'' from the January 2016 issue of Canadian Lawyer magazine.
In the intellectual property arena, some of the top 10 boutique firms in this year’s Canadian Lawyer survey say they’re riding the wave of a boom in wearable and virtual reality device innovation and overall with the “Internet of things.” Yuri Chumak, of Fleck & Chumak LLP, says: “What we’re seeing is a bit of a flourishing in the software companies in and around Toronto and so we’re helping them compete with the likes of Silicon Valley, where literally there are hundreds if not thousands of patent lawyers working to file IP on behalf of those companies,” he says. “We’re trying to really develop and nurture the software development community in Toronto, so that’s a big area of growth we’re seeing.”
Chumak says the bread-and-butter work from large clients at his firm tends to be “routine,” like patent and trademark prosecution, domain names, and trademark enforcement. “I think that’s our sweet spot.
We’re not trying to go after the strategic work for our biggest clients,” he says.
IP boutiques say clients choose them for their depth of expertise as well as cost-consciousness. But while efficiency is important to all clients, Elliot Simcoe, senior partner at Smart & Biggar/Fetherstonhaugh, says his firm is seeing an interesting dynamic where some clients, particularly those in the pharmaceutical sector, make it clear they want the most experienced lawyers on their files and are less concerned with costs.
“It’s interesting because not a week goes by that I’m not faced with, on one hand, a need to get work done as efficiently as possible and yet the same day I’m doing that for one client, another client is acknowledging, ‘This is very important work, we want this done at the highest level,’” Simcoe says. “I call it a stratification of work,” he adds.
For smaller boutiques, finding “win-win” alternative fee arrangements is a major challenge. Chumak says efficient use of technology makes his firm competitive on rates, but he says designing those structures can be tough.
In Quebec, Robic LLP partner Bob Sotiriadis says he expects both risks and opportunities from Canada’s adoption of the Madrid Protocol, an internationally recognized trademark convention that will mean trademark owners in member countries will be able to register their rights in multiple jurisdictions by filing a single application in their home countries.
“The Madrid treaty will probably cause Canadian IP firms to lose some of the filings from overseas clients, but it might increase the potential for Canadian companies to file more than they did because they’ll be able to get more countries for a lower price than before,” Sotiriadis says.
How we did it: Canadian Lawyer selected Canada’s top intellectual property boutiques by asking readers to rank a long list of notable firms in each area, which was whittled down to a short list through votes drawing on input from our editorial team. The following results are an alphabetical list of the 10 boutique firms in each area that are rated most highly by other lawyers.
Aitken Klee LLP
The firm was founded in 2013 when David Aitken and Marcus Klee left a national law firm to set up their own intellectual property boutique. It expanded to Toronto in 2014 with the addition of former Heenan Blaikie LLP lawyers. The 16-lawyer firm successfully represented Teva Canada Ltd. in an action for recovery of damages in a medical patent matter, W. L. Gore & Associates Inc. in a patent infringement and validity case for a patent covering artificial veins and arteries, and is representing Two-Way Media Ltd. in a patent infringement and validity suit in Two Way Media Ltd. v. Bell Aliant Regional Communications, Limited, et al.
“Aitken Klee has Canada’s best PM(NOC) litigation team.”
Bereskin & Parr LLP
Toronto, Mississauga, Waterloo, Montreal
Known as one of Canada’s largest IP boutiques, Bereskin & Parr employs 64 fully licensed lawyers plus patent and trademark agents. Founded in 1965 by David Rogers and Daniel Bereskin, the firm represents some of the world’s most recognized brands, including Canada Goose Inc., Kobo Inc., IMAX Corp., NHL Enterprises, Microsoft Corp., and General Electric Co. The firm recently worked on a prominent case, Nova Chemicals Corp. ats. Dow Chemical Corp. Bereskin & Parr’s direct clients range from small startup operations and individual inventors to large Canadian and multinational corporations, including Fortune 500 companies and some of the biggest intellectual property rights owners in the world.
“Depth and breadth of expertise. Commitment to the trademarks profession.”
Deeth Williams Wall LLP
Founded 20 years ago, the firm has grown from seven lawyers to 24, covering all aspects of IP prosecution, commercialization, and enforcement; IT law; litigation; and regulatory law. The firm acts for a number of large businesses, including an international oilfield services company, a national telecommunications company, a provincial government, a major inter-bank data network, an international soft drink company, and an international retailer. It acted for Actavis Specialty Pharmaceuticals Co. in numerous patent litigation and PM(NOC) matters. It also provides day-to-day patent and trademark advice for major food, chemical, automotive, and retail companies.
“They stay current and have excellent service.”
Dimock Stratton LLP
Dimock Stratton’s founding partners Ron Dimock and Bruce Stratton started the law firm in 1994. Today, it has 10 partners and 11 associates who are all lawyers with science or engineering backgrounds. The firm says its lawyers have been involved in one out of every four patent trials in Canada in the last 30 years and have won more patent cases for patentees than any other firm. Its clients include The Dow Chemical Co., Magna International, The Procter & Gamble Co., Arctic Cat, SNF Holding Co., and Easton Hockey Inc. Its notable mandates include its representation of the defendant in Bombardier Recreational Products v. Arctic Cat, and the plaintiffs in SNF v. B.A.S.F., and Media Tube Corp and NorthVu Inc. v. Bell Canada. It also brought an action for industrial design infringement on behalf of Procter & Gamble.
“Unparalleled commitment to the profession and significant trial experience.”
Fleck & Chumak LLP
Founded just two years ago, the firm says it’s quickly risen to the top thanks to the expertise of its team of four lawyers and a patent agent. The firm serves clients in a range of industries, including: computer software and devices; social media and e-commerce; online news media; scientific equipment; medical research and pharmaceuticals; agriculture; food, beverage, and restaurants; financial technology and services; industrial manufacturing and services; and apparel and consumer goods. It has worked on patent strategy, drafting, and prosecution for several startups and large companies, particularly in relation to computer software and devices.
“Lorraine Fleck — just plain savvy. She has an unheard of attitude to professionalism and customer service; she is responsive, knowledgeable, commercial, and also very pleasant!”
Tim Gilbert launched the firm in 2001 “armed with a briefcase and a cellphone.” The firm now has 10 lawyers and specializes in gaming, technology, life sciences, patents, copyright trademark, fashion, and sports and entertainment IP. Its clients include AmTote International Inc., Pharmaceutical Partners of Canada Inc., Mylan Pharmaceuticals ULC, and Safe Gaming System Inc. Among its notable cases are Safe Gaming System Inc. v. Atlantic Lottery Corp.; Eli Lilly Canada Inc. and Icos Corp. v. Mylan Pharmaceuticals ULC and the Minister of Health; Bayer Inc. and Bayer Intellectual property GMBH v. Fresenius Kabi Canada Ltd and the Minister of Health; and AmTote International Inc. v. Kentucky Downs, LLC. Gilbert’s is also assisting Children’s Hospital of Eastern Ontario pro bono in CHEO’s challenge to gene patents, the first case of its kind in Canada.
Oyen Wiggs Green & Mutala LLP
Established in 1977, the 14-lawyer firm says it’s small enough to cultivate personalized client-lawyer relationships but large enough to have the breadth to handle a wide range of intellectual property matters. The firm touts its expertise beyond law —including in engineering, physics, software, electronics, chemistry, and biotechnology — in allowing clients to “find someone here who speaks your language.” Its clients include Evolution Engineering Inc., EnWave Corporation, The University of British Columbia, ConocoPhillips Company, NORAN Engineering, and Constructors Ltd. Among its top mandates is its representation of the Government of B.C. before the Copyright Board and Federal Court of Appeal on the reprography tariff.
“Long history of high reputation, number of experts in the firm.”
Ridout & Maybee LLP
Toronto, Ottawa, Mississauga, Ont.
John G. Ridout, author of the first Canadian textbook on patents, and James E. Maybee, who would become the first president of what is today the Intellectual Property Institute of Canada (IPIC), together founded Ridout & Maybee in 1893. This year, the firm’s Janet Fuhrer is the president of the Canadian Bar Association, having previously served as the president of IPIC. In November, the firm joined with Gowan Intellectual Property with Gerald Gowan joining the Mississauga office. It is now a firm with more than 30 lawyers and patent agents, the majority of whom have advanced degrees in science, engineering, and IT – as well as law. This gives them a deep understanding of clients, including their most prominent, including Accenture, the Canadian Wildlife Federation, Chrysler Group LLC, S.C., Samsung Ltd., and Huawei.
“Strong bench, reasonable rates, and publication volumes.”
Montreal, Quebec City
Founded in 1892, ROBIC LLP is one of Canada’s oldest full-service IP boutiques. With a dedicated team of 180 individuals, including 27 lawyers located in two offices, the firm covers all aspects of IP prosecution, enforcement, and commercialization. It acts for some of the most reputable global and local brands. The depth and experience of its professionals allows ROBIC to provide dynamic and entrepreneurial representation to clients who are active in all areas of human endeavour. The firm says its enduring success and reputation is in large part the result of its ongoing focus on addressing clients’ needs.
Smart & Biggar/Fetherstonhaugh
Calgary, Ottawa, Toronto, Montreal, Vancouver
With 72 lawyers and offices in four provinces, Smart & Biggar/Fetherstonhaugh acts in a range of areas from patents and trademarks to Internet law and regulation and compliance in life sciences. It’s the biggest Canadian boutique law firm practising exclusively in intellectual property and technology law. The firm, which grew out of patent agency Fetherstonhaugh in 1906, recently successfully represented Dow Chemical Co. in The Dow Chemical Co. v. NOVA Chemicals Corp., Imperial Tobacco Products Ltd. Rothmans Benson & Hedges Inc. v. Imperial Tobacco Products Ltd., and the International Trademark Association in La Procureure Générale du Québec c. Magasins Best Buy ltée.
“Excellence of service, knowledge, number of skilled professionals, high-profile cases handled.”
Click here to read Heavy Hitters - part 1: Top 10 Labour and Employment boutiques.