Bereskin & Parr Profile
Bereskin & Parr is a leading Canadian intellectual property (IP) law firm serving clients of all sizes, in a variety of industries, domestic and international. The firm was founded in 1965 and has grown to be one of the largest IP law firms in Canada with four offices located in major economic or technology centers. The firm has offices in Toronto, Mississauga, Waterloo Region and Montréal. Bereskin & Parr is made up of over 75 lawyers, and patent and trade mark agents, many of whom are recognized as leading practitioners in their respective fields. The firm's practice is comprehensive, encompassing all aspects of intellectual property, with practice groups including:
People
The firm and many of its professionals are recognized leaders in various intellectual property fields. The Canadian Legal Lexpert Directory repeatedly describes Bereskin & Parr as a “market benchmark” for intellectual property boutiques. The firm also has a distinguished list of recommended IP, IP litigation, and biotechnology practitioners listed in both national and global legal guides such as those published by Lexpert, Who's Who Legal, Managing Intellectual Property, and Chambers Global. In 2006, both Dan Bereskin and Cynthia Rowden were recognized by the International Who's Who of Trademark Lawyers as being among the top ten most highly-regarded trade mark professionals in the world, and two of only three Canadians on the list. Cynthia Rowden was noted as being “outstanding”, receiving particular commendation for her portfolio management work.
Dan Bereskin received the most nominations in Canada and is described as “top of his game” and “dean of the Canadian bar”. He was subsequently named "The Leading Trademark Lawyer in the World" for 2006 and 2007 by the Who's Who Legal Awards. Our professionals are also privileged to be supported by dedicated and experienced staff, who help to ensure that our work product is always accurate and timely.
Our professionals understand the most complex technology, which means they can offer practical business-sensitive advice for protecting, marketing and promoting intellectual property rights. Our professionals' backgrounds are as diverse as our clients. Bereskin & Parr lawyers and agents have educational backgrounds ranging from dramatic arts to computer science, in addition to civil, mechanical, electrical, biomedical and nuclear engineering, immunology, chemistry, biology, biochemistry, and molecular biophysics. The combination of these technical qualifications with industry knowledge, as well as in-depth patent and trade mark law training and experience, allow us to offer a full range of intellectual property services while being sensitive to practical business needs and concerns.
Bereskin & Parr professionals are frequent speakers at intellectual property-related seminars and conferences around the world. They write articles for well-known legal and industry publications and contribute to leading texts on IP law. Several of our professionals have lectured on intellectual property issues at law faculties of Canadian universities.
Many Bereskin & Parr professionals have held prominent and respected positions within the IP community. Roger Hart, David Langton and Cynthia Rowden are all Past Presidents of the Intellectual Property Institute of Canada (IPIC). Cynthia Rowden, Lloyd Sarginson and Dan Bereskin have all been heavily involved in the International Trademark Association (INTA), with Dan having served as Legal Counsel to the INTA; the first non-U.S. person in this position in the 125 year history of the INTA. Robert Storey is currently the President of FICPI Canada, and Philip Mendes da Costa is a member of FICPI's CET Group 3, a group responsible for the supervision and examination of the developments in international legislation that affect patents. Several of our patent professionals are also very involved in the education and training of new patent professionals in Canada. They include Robert Storey, Philip Mendes da Costa, James Anglehart and Stephen Beney, who is also a member of the Canadian Patent Agents Examining Board.
Clients
The Bereskin & Parr offices are located in Canadian regions where manufacturing, technology, and research and development are highly concentrated, and as such, a large part of the firm's growth over the last 40+ years can be attributed to direct clients. However, the firm's global reputation and strong commitment to customer service has also resulted in the significant growth of our international associate work, which reaches over 100 countries.
Bereskin & Parr's direct clients range from small start-up operations and individual inventors to large Canadian and multi-national corporations, including some of the biggest intellectual property rights owners in the world. We serve all of the IP needs of these clients, including managing their worldwide trade mark and patent portfolios. The firm also represents universities, hospitals, and research facilities, which have complex, cutting-edge, scientific and technological inventions. Our clients' interests include, computer hardware and software, engineering and manufacturing equipment, biomedical, biotech and pharmaceutical innovations, agricultural inventions, telecommunications, retail services, clothing, food, and a full range of consumer goods. Bereskin & Parr's trade mark clients include Canadian companies with marks in over a hundred countries and Fortune 500 companies with thousands of Canadian trade marks.
We have established trusted relationships with leading foreign law firms that make up a significant portion of Bereskin & Parr's international associate clients. In addition, we also represent major corporations from around the world.
Canada - A Global Player in IP
Bereskin & Parr's international clients recognize that despite its smaller population, Canada is still one of the largest economies in the world (G8 member). Canada is also the largest trading partner of the United States (U.S.) and is a world leader in many technologies, rapidly making a move from a resource-based to knowledge-based economy built on innovation and research. The high tech sector in Canada is growing at a dramatic pace, with inventions such as the wireless device, Blackberry™, being born out of Canada's Technology Triangle in Waterloo Region. Starting as far back as 1921 with the discovery of insulin, Canada has come a long way to establishing itself as a global player in the biotech and agricultural fields through cutting-edge research in areas such as stem cells, diabetes, hormones, genomics and proteomics. Canadian companies are encouraged to innovate by a government that is very generous with funding and advantageous tax credits for R&D. As a result, it is becoming increasingly important for international companies to consider protecting their valuable inventions within Canada.
Trade marks are a crucial component of a company's assets and warrant the same consideration as patents when deciding in which jurisdictions to seek protection. One interesting and significant reason for international companies to consider trade mark protection within Canada is that the country has a very large immigrant population, and is known as a "cultural mosaic". In the 2001 Canadian Census, more than 200 ethnic groups were identified, and unlike the "melting pot" model in the U.S., many of these groups co-exist while still maintaining their own languages and cultures. The Chinese speaking population in Canada has reached over 1 million, which is a statistic that cannot be ignored by international owners of Chinese trade marks. As a result, many of these owners find it worthwhile and advantageous to register their marks in Canada.
While Canadians share a language and some legal traditions with the U.S., it is important to recognize that, generally, protecting intellectual property rights in Canada is much less complex and much less expensive. For trade marks, Canada does not adhere to the Nice classification system, so any range of wares and services can be included in an application without having to pay additional fees; for patents, the Canadian office will routinely ask for the results of examination from one of the major patent offices, USPTO or EPO, and a favourable report from one of those offices that is adopted here will usually greatly simplify examination. In addition, Bereskin & Parr has developed internal systems to ensure that Canadian filings on behalf of foreign firms are handled accurately and efficiently.
For patents in particular, the incremental cost to obtain Canadian protection is quite low once an English version of a foreign application is made available for U.S. or EU filing. Furthermore, the ability to defer examination for 5 years allows lessons learned during U.S. and EU prosecution to be quickly and easily applied to the Canadian application at the beginning of examination.
Further, due to the heavy integration of the U.S. and Canadian economies, large trade volumes and lack of restrictions on movement of many goods, it is quite possible and easy for American importers to attempt to circumvent a U.S. patent by importation from Canada. While a U.S. patent can be used to stop such importation, the process is often difficult and expensive and cannot be used to reach the Canadian source of the imported goods directly, as would be the case if a Canadian patent was also available. For this reason, in many fields, it is recommended that patent protection should be obtained in Canada as well as the U.S. The fact that enforcement of a Canadian patent is usually much simpler and less expensive than enforcement of an equivalent patent in the U.S. is another factor favouring patent protection in Canada.
Services
Bereskin & Parr's trade mark practice covers all aspects of trade mark law including, searching, clearing, filing, registering, negotiating, licensing and litigating marks. These same services also extend to trade names, trade dress, and domain names. Bereskin & Parr has consistently been one of the top three Canadian trade mark agents, according to number of Canadian trade marks filed, since 2003.
The firm's patent practice is made up of over 50 professionals proficient at drafting and prosecuting patent applications and securing design patents. The practice is broken up into specialized groups of highly-skilled professionals with the appropriate education and experience required. These groups are: Biotechnology & Pharmaceutical Group; Software/High Technology Group; Mechanical/Industrial Group; Chemical Group; and our industry-specific group, the Automotive Group.
Our patent professionals can also provide advice and assistance on licensing, tech-transfer, transactions, due diligence, portfolio management, and freedom to operate matters.
The firm's new media and copyright professionals protect internet and e-commerce-related trade marks and copyright, handle domain name protection and related disputes, and advise on the protection of copyright and other entertainment-related IP rights.
Bereskin & Parr's regulatory, advertising and marketing (RAM) practice encompasses all intellectual property issues arising from the marketing of a product. The RAM professionals provide packaging and labelling advice, conduct internet reviews, and counsel on matters governed by privacy or consumer protection legislation and regulatory agencies.
Bereskin & Parr's litigation team has represented clients in some of Canada's most important intellectual property litigation. The firm's professionals have appeared in courts across Canada from Provincial Courts and Courts of Appeal, to the Supreme Court of Canada. Before commencing any litigation, we carefully review all options available to the client, including negotiation and alternative dispute resolution. When litigation is necessary, we carefully plan the strategy with the client, and always treat the client as an essential member of the litigation team.
For a full list of Bereskin & Parr's practice groups and their services, please refer to each of our practice area profiles.
