Technology

The Stikeman Elliott technology group understands its clients' business challenges and the unique role and risks associated with the exploitation of information technology, combining this understanding with sophisticated corporate capabilities to deliver the best possible support for any technology-related matter. The Stikeman Elliott technology group is comprised of technology practitioners who are fully integrated into the firm's transactional business law practice, ensuring that the members have strong corporate-commercial skills to complement their significant technology expertise. This multidisciplinary approach combined with the group's depth of transaction experience allows the group to provide innovative, practical legal advice for complex technology arrangements.

The Stikeman Elliott technology lawyers with whom you would be working understand both the business and the technology drivers of technology contracting, a product of experience that - in addition to the mandates described below - includes negotiating with virtually all of the major technology service providers, software companies and hardware manufacturers.

The core competencies of the technology group are:

Service Arrangements and Outsourcing

Members of our technology group have assisted clients with the negotiation and drafting of some of the most complex service and outsourcing transactions in Canada, including a wide range of offshore outsourcing transactions, cross border outsourcings into Canada and federal and provincial government procurement transactions.

Licensing and Commercialization

Stikeman Elliott has in-depth experience negotiating and drafting technology, patent and other intellectual property licensing, exploitation and commercialization agreements. We regularly represent both vendors and customers, advising on all aspects involving the licensing, exploitation or commercialization of intellectual property.

Technology Development

The protection and allocation of ownership rights in intellectual property is often complicated and contentious in the context of technology development, particularly where developed technology contains or relies upon pre-existing or underlying technology. Members of the technology group have significant experience advising on the issues arising out of development, design and manufacturing arrangements involving technology.

Privacy

Stikeman Elliott is highly regarded for innovative solutions to the challenges presented by the privacy and data protection laws in Canada. Members of our technology group help clients understand these laws and advise them on developing compliant practices and programs.

Intellectual Property Management / Branding

Members of the group are frequently called upon to assist clients in respect of critical intellectual property and branding issues as they relate to technology, including patent portfolio development and enforcement, confidentiality, copyright issues (particularly as they relate to software), employee intellectual property issues, trade-marks, domain names, and the protection of corporate and brand identities, as well as other aspects of the protection and exploitation of technology.

Technology Litigation

Members of the technology group advise clients with respect to software/licence disputes, patent infringement and validity matters, copyright and industrial design disputes, trade secrets, passing off and confidential information, valuation disputes in the IT field, departing employee disputes and related injunctions, obtaining Anton Pillar orders with respect to trade secrets, confidential information and proprietary technology, product liability and deficiency cases, and financing issues and disputes.

E-commerce and Internet Infrastructure

Stikeman Elliott has experience in enabling clients to do business electronically and over the Internet, including advising on issues relating to electronic contracting, website development or hosting agreements and B2B marketplaces.

Intellectual Property

Because intellectual property issues arise in a wide variety of contexts, Stikeman Elliott takes a multi-disciplinary approach to the practice of this area of law. Our Intellectual Property Group is composed of a team of dynamic and highly creative professionals who bring a wide range of training and experience to this and related practice areas.

How Our Strengths Work For Our Clients

New technologies and new ideas drive today's economy, which makes intellectual property a key factor in business success. While intellectual property is especially vital for high-technology firms, its importance cuts across industry sectors as well as national boundaries. Businesses have a growing need for innovative legal advisers in Canada and around the world to help them exploit their intellectual property to the fullest extent and in as many markets as possible while reducing the risks of that exploitation.

Among the areas in which Stikeman Elliott provides intellectual property expertise and assistance are:

Registration of trade-marks, patents, industrial designs and copyrights

Stikeman Elliott regularly files Canadian trade-mark, patent, industrial design and copyright applications on behalf of clients and assists in filing similar applications applied for in other countries.

Acquisition, protection and exploitation of intellectual property rights, in Canada and abroad

Stikeman Elliott counsels Canadian and foreign clients on the manner in which they may protect their intellectual property, acquire the intellectual property of others and best exploit their intellectual property portfolio. We also regularly advise clients and draft agreements on the franchising, licensing and assignment of intellectual property rights in a wide variety of contexts, including character licensing, as well as agreements respecting merchandising, sponsorship, and use of intellectual property as security. Stikeman Elliott has also acted for clients with regard to clarifying ownership of rights in major international sporting and entertainment events.

Intellectual property litigation

Stikeman Elliott represents clients in all areas of intellectual property litigation, including trade-mark, patent, industrial designs or copyright infringement actions before Canadian courts and proceedings before administrative tribunals such as the Trade-marks Opposition Board, the Copyright Board and the Patent Medicine Prices Review Board.

Corporate transactions

Stikeman Elliott represents clients in a variety of corporate transactions, such as licensing, public offerings, joint ventures, mergers, acquisitions and divestitures, many of which involve significant intellectual property rights. The Intellectual Property Group works with corporate, tax, trade and other lawyers to evaluate intellectual property aspects of corporate transactions, such as carrying out intellectual property due diligence searches in corporate acquisitions and assisting clients throughout the transfer of technology process. We have acted in a divestiture of flight simulation technology, an acquisition of rights in a manufacturing business in the food sector, and in a global acquisition of a leading specialty chemical business.

Advanced technology interests

Stikeman Elliott has been increasingly called upon by clients to assist them with the intellectual property implications of their involvement in advanced technologies, such as computer software or hardware, multimedia productions, tele-communications, pharmaceuticals and biotechnology, to name a few. To this end, we have negotiated and drafted licence, distribution, maintenance and support, confidentiality, joint development and research agreements, as well as employment and other agreements setting out the rights of business enterprises - both established and budding - as well as the rights of their founders, employees and contractors. In the computer industry, Stikeman Elliott has acted on behalf of OEMs, VARs, system integrators, retailers, software developers and users. We also have attended to the full range of needs of clients specializing in the public distribution of data encryption and decryption hardware, software and firmware intended for commercial transmission of signals. Finally, international clients also rely on our global perspective and expertise in such areas as trans-border data flow to assist them with technology transfers.

Intellectual property on the Internet

Stikeman Elliott has represented clients with respect to a variety of Internet matters, including a public offering for a major Internet provider, drafting online agreements, data protection, potential liability for copyright infringement and the regulatory environment applicable to the Internet. Among the Internet regulatory issues in respect of which we have given advice are the protection of intellectual property rights, freedom of speech, the implications of the application of new audio-visual technologies to the Internet, gambling on the Internet, and the applicability of Canada's collective copyright regime to copyrighted works accessible on the Internet.

Trade secrets and confidential information

Stikeman Elliott regularly advises clients on how to protect trade secrets and confidential information in a variety of situations, including with respect to contracting out of services, departing employees and joint ventures, and also acts on behalf of clients in trade secrets litigation.

Entertainment and cultural industries

Stikeman Elliott has worked with a variety of clients in such diverse entertainment and cultural areas as endorsements, print, music and audiovisual publishing and performance, telecommunications, and multimedia productions.

Public Policy and Advocacy

Clients frequently consult Stikeman Elliott to assist them in monitoring, understanding and influencing ongoing policy developments in a number of intellectual property areas. Stikeman Elliott is very active in negotiations concerning amendments to Canadian intellectual property legislation, in particular the Copyright Act. Drawing largely on our Ottawa office, which is the heart of Stikeman Elliott's regulatory practice, clients regularly benefit from our experience and understanding of the federal legislative and regulatory processes.