IP boutiques holding their own

IP boutiques holding their own
Illustration: Jason Schneider
When Philip Mendes da Costa started out at Bereskin & Parr LLP in the mid-1980s, intellectual property boutiques were small affairs. Twenty-five years later, “we’re now larger than some of the mid- to large-size firms,” says the firm’s managing partner. He says the 59-lawyer shop has grown in tandem with the increasing emphasis corporations are putting on their IP portfolios. “Back then, patents and trademarks were considered important, but not really central to the business of the company,” he says. “More recently, you’ve got companies who can receive more revenue from patent royalties than manufacturing products, and companies where the value of the IP portfolio or goodwill represented by the trademark portfolio is very significant, and stands out on the balance sheet. It’s of critical importance to make sure the IP strategy aligned with the business strategy.” For that reason, he says it’s natural that larger corporate firms are looking to get in on the action. “It’s not just a peripheral issue at the moment."
“[Boutiques] don’t dominate the field anymore like they might have done 10 years ago. Big firms have formed their own departments and the market has certainly become more competitive,” says one Bay Street practitioner, who says full-service firms are strong on the litigation and transactional side of IP law.

Another western Canada-based lawyer at a full-service firm says IP lawyers outside boutiques are still often overlooked because the field is so strongly associated with specialist firms. “Most IP practices, even in large firms, are run as mini boutiques. The IP department is run very differently from departments in other areas of law, because it really is quite distinct,” he says.

Mark Evans, managing partner of Smart & Biggar/Fetherstonhaugh’s Toronto office, says that the unique nature of IP law makes it difficult for large firms to match the depth of expertise boutiques can provide. Because the volume of IP litigation is not as high as in other jurisdictions such as the United States, firms need to branch out. Evans says some larger firms struggle to accommodate patent agents in their structure, or the specific file-handling systems IP demands. “We have our own proprietary systems and administrative features that are geared to that,” Evans says. “There are certain elements of IP that can be suited to general practice firms, but a lot of it is an uneasy fit.”

Despite the new competition, Mendes da Costa says IP boutiques have a long future ahead of them. “I don’t think it’s ever going to be subsumed into the full-service firm and disappear. We’re going to be here forever,” he says.

In employment and labour law, conventional wisdom says that large firms sop up the management-side work, while boutiques live off referrals when conflicts arise. But Erin Kuzz, co-founder of Toronto firm Sherrard Kuzz LLP, says there’s a lot more to it than that. “To be candid, our experience is a lot of the large firms have issues with billing rates. Some of the files that we do just can’t bear the billing rates that a large corporate commercial department might charge. I certainly understand that creates some conflict sometimes in the larger firms,” she says.

Paul Young, managing partner at Filion Wakely Thorup Angeletti LLP, agrees that price has been a key factor in the rise of the employment and labour boutique. He says new ones seem to spring up every year. “We just have a greater ability to be flexible in terms of fee schedules, which really makes us quite competitive,” he says.

And boutiques are cementing their positions by forming their own alliances across international borders to expand referral networks in an increasingly global business landscape. Young says the firm’s recent tie up with L&E Global, the Belgium-based group of 10 management-side employment boutiques, will bring in new work, as well as offering domestic clients with international business a ready-made panel of counsel in foreign jurisdictions. “You also get lots of ideas from the other firms in the alliance about how to attract new business, which leads to more entrepreneurial thinking,” he says.

Sherrard Kuzz also branched out last year, joining the larger Employment Law Alliance, which consists of 3,000 lawyers from 135 countries around the world. “Clients feel very well looked after,” says Kuzz. “I’d say it gives us bigger reach than some of the large firms, because they may not be willing to refer to firms around the world who may be competitors in other fields. We have no competition with the other members of the alliance, so it takes away that conflict issue.”

Our editorial team began the process of selecting Canada’s top IP and labour and employment boutiques by creating a short list of the most notable firms in their respective fields. From there, we drew on the experience of in-house counsel and large-firm lawyers who refer work to these boutiques, conducting a series of confidential interviews to identify the cream of the crop. The following results are an alphabetical list of the 10 boutique intellectual property firms that are most often called upon by other lawyers when stakes are high. For our list of the top 10 labour and employment boutique firms, click here to read Part Two of this article.

Bereskin & Parr LLP
(Toronto, Mississauga, Ont., Waterloo, Ont., Montreal)

Founded in 1965 by Daniel Bereskin and Richard Parr, the firm has grown to 59 lawyers and has become one of the top IP firms in Canada. With multiple offices, this is a boutique that has certainly spread its wings. It also finished 2011 on a high note, merging with IP rivals Cameron MacKendrick LLP, adding its four lawyers to their ranks. It boasts a diverse client list, from clothing giants The Gap to hotel leader Marriott, with Unilever and General Electric in between. “For me, they’re No. 1, no question. They’re the real leading lights,” says one western Canadian litigator who’s faced them down in Federal Court.

Deeth Williams Wall LLP

Deeth Williams Wall LLP was created by a group of lawyers who all, at one point or another, practised at Blake Cassels & Graydon LLP, but opened their own shop as conflict issues increasingly popped up. The firm began operations in 1994 with seven lawyers, and has since built its strong reputation by offering top-notch IP, information technology, regulatory, and IP-focused litigation services. They have since grown their boutique, with 18 lawyers now advising large pharmaceuticals on new product launches and public sector pension funds on IT issues.

Dimock Stratton LLP
Also formed in 1994, Ron Dimock and Bruce Stratton have grown their firm to a stable of 18 lawyers. It represented Research In Motion Ltd. for two years in a patent lawsuit, successfully defended a patent case for Boston Scientific Corp. in an action brought by Johnson & Johnson Inc. over coronary stents, and went to the Supreme Court of Canada in late 2011 with interveners CanLII in Society of Composers Authors and Music Publishers of Canada v. Bell Canada, on the issue of fair dealing of copyright material for research purposes. Notable clients include TD Bank, Dow Chemical Co., and Procter & Gamble Co. “I’ve worked with them and against them, and either way, they’re always good,” says one big-law partner.
Macera & Jarzyna LLP

This Ottawa firm has litigated a slew of key patent, trademark, and copyright cases since opening its doors in 1978, including Molson Breweries v. John Labatt Ltd., UFCW Canada v. Wal-Mart Canada Corp., C-Cure v. Olympia & York, Kraft Canada Inc. v. Euro Excellence Inc., Dupont v. Ground Control, Spin Master v. Osiris, and Toyota Jidosha Kabushiki Kaisha v. Lexus Foods Inc. It has a wide range of clients from local inventors to multinational corporations. The firm has been a key advocate for retailers in their battles with the Copyright Board of Canada over levies paid on recording media. The firm now has 17 lawyers and five patent agents, and its sister company, Moffat & Co., is a patent and trademark agency firm. 
Oyen Wiggs Green & Mutala LLP

Since 1977, this 17-lawyer Vancouver firm has convinced British Columbia’s legal community that Ottawa and Toronto aren’t the only places to send IP files. Its litigation lawyers have appeared at the Supreme Court of British Columbia, the B.C. Court of Appeal, the Federal Court’s trial division, and the Federal Court of Appeal. Lawyers from the firm helmed by Gerald O.S. Oyen, Blake R. Wiggs, and Bruce M. Green have also stood before the Trademarks Opposition and the Patent Appeal boards. A telling web address: www.patentable.com.

Ridout & Maybee LLP
(Toronto, Ottawa, Mississauga, Ont.)

This firm of 38 professionals boasts some of the most recognizable names in the IP bar, including its co-founder James Maybee, who acted as the first president of the Patent and Trademark Institute of Canada, now known as the Intellectual Property Institute of Canada. Another partner at the firm, Janet Fuhrer, just completed her own term as president of IPIC, making her the sixth partner at the firm to helm the organization. Notable clients include Ford, RIM, and Canon Inc. “I feel very comfortable passing off any issues I have to them,” says one Bay Streeter.
Robic LLP
(Montreal, Quebec City)

The firm traces its history back to 1892 and the creation of patent agency Marion & Marion by two brothers who were also engineers. Author, teacher, and inventor Raymond Robic came on board in 1917, driving the Montreal firm’s growth into one of Canada’s most reputable IP boutiques. The Robic name made its way onto the firm’s letterhead in 1932, and never left. In 1970, the law firm Leger Robic Richard was formed, and now the fully integrated firm’s more than 40 professionals are split evenly between lawyers and patent agents. In May 2011, the firm branched out with a new office in Quebec City, and it keeps an eye on the interests of key players in the cosmetics, luxury goods, petro-chemical, entertainment, and food-and-retail sectors. A highlight was its representation of Veuve Clicquot Ponsardin at the Supreme Court in a key 2006 trademark battle.
Shapiro Cohen

Founded by the late Norman Shapiro in 1963, this Ottawa firm’s nine lawyers represent business and industry players in everything from the high-tech to fashion and entertainment fields. Its impressive client list includes the likes of Johnson & Johnson Inc., Verizon Communications Inc., and Virgin Group Ltd. The firm offers services in English and French and has extensive experience with issues regarding use of the French language in Quebec.

Sim Lowman Ashton & McKay LLP

Started in 1970, the firm has been led by Harold Fox Q.C., Donald Sim Q.C. and now-Federal Court Justice Roger Hughes, all pre-eminent Canadian IP counsel during their time in practice. It has played a leading, long-term role in the development of Canadian IP law in such cases as: Monsanto Canada Inc. v. Schmeiser, CCH Canada Ltd. v. Law Society of Upper Canada, Euro-Excellence Inc.v. Kraft Canada Inc., Beloit v. J.M. Voith GmbH, and others. It represents clients such as Nokia, Kraft, Walt Disney, Verizon, and Xerox in IP and related disputes over confidential information, licensing, invention ownership, product liability, and professional errors/omissions. Sister firm Sim & McBurney’s patent agents include electrical engineers and four PhDs in chemistry, clinical biochemistry, materials sciences, and engineering.
Smart & Biggar
(Toronto, Ottawa, Montreal, Vancouver)

This firm challenges the boutique label, with more lawyers and locations than most full-service firms. The firm boasts more than 80 lawyers at four offices covering three provinces across the country. It gained notoriety for the engineering and scientific educational backgrounds of nearly all of its team, with most lawyers also being registered patent agents. The firm grew out of patent agency Fetherstonhaugh, when Russell Smart joined his Ottawa law practice to them in 1906, and the two are still in close union. The firm has taken more than 50 cases to the Supreme Court of Canada, and advised Amazon.com in the landmark One-Click case at the Federal Court that in November recognized a patentable business method for the first time.

Click here for the top 10 labour and employment boutique firms. 

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