Canadian Lawyer

March 2022

The most widely read magazine for Canadian lawyers

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30 www.canadianlawyermag.com TOP INTELLECTUAL PROPERTY BOUTIQUES Canadian Lawyer asked lawyers, in-house counsel and clients from across Canada to vote on what they considered to be the top intellectual property boutiques in the country. In the survey, which took place from November 1 to 26, 2021, respondents were asked to rank the law firms from a long list provided. They were also allowed to add a firm not included in the long list. The respondents' rankings were based on the firms' regional service coverage, client base, notable mandates, service excellence and legal expertise. To be eligible for the list, firms were required to derive the majority of their work from IP law. A points system was also used to determine the winners. The quantitative results were combined with feedback from respected senior members of the bar and the results of the Lexpert peer survey where applicable. firms on their toes, Zischka says, is the main- tenance fee for keeping a patent application going. The good news is that it no longer must be a patent agent that pays the fee, but if a fee is missed, a notice is sent, and a firm must contact the client to take steps to rectify the situation. "We've had to adapt to changes in IP law during a pandemic that have slowed things down, so we've had to get used to that challenge." Entrepreneurs become more IP savvy Jonathan Pollack, a specialist in patent law at winning firm Marks & Clerk, says that in his time as a lawyer, entrepreneurs and business owners are becoming much more aware of the importance of getting patents, "and an expec- tation that they should be able to get patents for almost anything, which is very different from when I was a lawyer." Amrita Singh, who specializes in IP litiga- tion also at Marks & Clerk, adds that there is a "big focus now on educating young people and folks in the start-up phase about IP, and how it is really important to the ultimate strength of that asset." However, both she and Pollack acknowledge that a company just starting out doesn't always have finan- cial or other resources to focus on IP, and especially during the challenging times of a pandemic, managing the business has been given priority. Fellow Marks & Clerk partner Cat Lovrics points out that entrepreneurs, investors and venture capitalists are becoming savvier in the IP landscape and more attuned to the risks and value of IP assets. Maybe not so much at the early stages, but "when you get to a point where you're talking about an exit, which is what I think most entrepreneurs and start-ups are hoping for, that's when there is a focus on IP." Dealing with a backlog Most IP lawyers at the Top 10 firms dealing in trademark law point to the significant backlog at the Canadian Intellectual Prop- erty Office (CIPO), a trend that Gary Daniel of Deeth Williams Wall LLP says won't end soon. He notes that upwards of 180,000 trademark applications are pending, mostly awaiting examination. "While some of this backlog could be blamed on the pandemic, CIPO is currently processing trademark METHODOLOGY "We've had to adapt to changes in IP law during a pandemic that have slowed things down, so we've had to get used to that challenge" Matthew Zischka, Smart & Biggar LLP SPECIAL REPORT 7 of the top 10 boutiques have offices in Toronto 6th Top Intellectual Property Boutiques report 300 survey votes received by Canadian Lawyer

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