François Guay (Smart & Biggar) : "IP key decisions are now clearly switching from the R&D department"
François Guay is analyzing intellectual property key trends in the following years.
Leaders League. How do you perceive the evolution of the Canadian IP market?
François Guay. The biggest trend in the IP world, and not only in Canada, is the fast-paced professionalization that has occurred in the past 10 years. For decades, on the corporate side, IP was attached to the R&D department, meaning that technology was the key driver, and in a certain way, not lead by the legal department. IP issues were tackled by engineers and not legal professionals and often isolated from strategic decisions taken by the board. Driven greatly by market leaders in Silicon Valley and elsewhere, top management and general counsel started considering intellectual property as a competitive advantage. My thought is that a good patent and a good IP portfolio is of course a means to protect your innovation, but much more than that : a tool to keep away competitors and improve your market share. Reflective of this importance, key IP decisions are now clearly switching from R&D departments to In-house counsel and even to the board under the representation of VP Legal. Another trend that appeared some years ago is the growing importance of intellectual property in M&A deals. Therefore, evaluating your IP assets becomes a must; not only from a technological point of view but also from a strategic point of view after the transaction. The role of the IP lawyer is therefore quickly growing in due-diligence.
Leaders League. What distinguishes Smart & Biggar I Fetherstonhaugh from its competitors?
F. G. The most important competitive advantage of Smart & Biggar / Fetherstonhaugh is the culture of the firm and the depth of its resources. We are an old firm, which is going to celebrate its 125th birthday next year. During those years we built an extraordinarily strong client portfolio, which is impressively faithful. To meet our clients’ high expectations, we need to provide them with the highest level of value-added services. Therefore, to become a partner in our firm, there is only one way: to be recognized as one of the best in the IP business. With few exceptions, we grow organically. There is also remarkably little turnover in our partnership. We are active in prosecution, litigation and transactional work, and we handle the biggest share of patent and trademark prosecution in Canada, and likely IP Litigation as well. In many ways, it is our clients who allow us to become better, by allowing us to represent them in many of the most interesting cases. However, we do not rest on our laurels and we provide our associates and partners important training through the years.
Leaders League. Is there a legal battle you won and want to emphasize?
F. G. My most famous victory is surely the Marlboro case. Marlboro is one of the 10 most known trademarks in the world and Philip Morris (PM) hold the trademarks rights worldwide, except in Canada. 80 years ago, one of the Philip Morris ancestor’s sold a portfolio of unknown trademarks (at this time) to British American Tobacco (BAT) including Marlboro. If you ask for a pack of Marlboro in Canada, you will therefore not have a regular PM pack but a BAT pack. Philip Morris fought for more than 50 years to get the mark back without success, and in 2006, PM launched a pack on the Canadian market without a name on it but with the classic Marlboro design. I argued that using such a no-name-Marlboro-design pack nevertheless constitute trade-mark infringement since most consumers would call it Marlboro even if there was no name on the pack. I often joke that I was probably the only one who believed that we could win this case and the final outcome was therefore even more gratifying.
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