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Procido’s intellectual property and technology group (“IPT Group”) provides end-to-end services from technology development until its implementation. The IPT Group also provides services to support formation, growth and operation of our clients’ businesses in Canada and abroad, including franchising, brand valuation and brand enforcement.

We also conduct due diligence to study market growth and provide advisory services on commercialization of the brand. We have presence at various locations across Canada, and abroad through our well-developed and carefully selected affiliations. Our group is equipped to manage your intellectual property requirements. We work closely with our Corporate group which provides support on business establishment, commercial contracts and transactions.

Our group includes lawyers with experience in Canada and abroad, having worked with large corporations including but not limited to: energy companies, public corporations, MNCs, pharmaceuticals, clean technology, e-commerce, oil and gas, electronics, FMCGs, entertainment and news, to name a few. The IPT Group consists of two seasoned lawyers, Craig Zawada, K.C. who has almost 40 years experience in varied fields of Intellectual Property, and Rob Hendry who has 20+ years experience in Patents and Trademarks. Also part of the team is Avneet Nehel who has 10 years experience in Intellectual Property after practicing in India. This team of highly skilled lawyers has long-standing experience with a wide range of intellectual property services from building your initial strategy to brand management. Our lawyers are tech-savvy and detail oriented when it comes to intellectual property. We advise not only on how to develop your intellectual property, but also how to protect and enforce it.

We provide a wide range of services including but not limited to:

Protection of various kinds of Intellectual Property

We advise individuals and corporations across various sectors and industries on keeping their technology safe by strategizing on development, protection and registration of intellectual property in Canada and around the world. Our clients include individual inventors to multi-national companies. Our flexible billing model helps everyone get the advice they need with certainty as to cost. We also work with international law firms and agents to act as their representatives for registering intellectual property in Canada. Our experienced lawyers are also able to provide advice on privacy and cybersecurity law.

  1. Patents
    • Drafting and prosecution
    • Portfolio management
    • Legal opinions on patentability
    • Prior art searches
    • Patent audits, validity and infringement opinions
    • Right to use and freedom to operate opinions
    • Filing and prosecution in Canada, US, and throughout the world
    • Patent licensing, assignment and monetizing
    • Due diligence in commercial transactions
    • Litigation and enforcement
  2. Brands (trademarks)
    • Advising and conducting a clearance search
    • Prosecution and portfolio management
    • Oppositions and cancellation
    • Litigation and enforcement
    • Internet law and domain names
  3. Marketing and advising
    • Advertising campaigns in all media, including for regulated products (e.g. food, pharmaceutical, medical device, cosmetics, cannabis)
    • Various promotional programs, including sweepstakes and contests, loyalty programs, coupons and rebates
    • Product label and packaging reviews
    • Privacy and anti-spam (“CASL”) advisories
    • Misleading advertising, including trade disputes
    • Social media and influencer policies and contracts
    • Comparative advertising claims
    • Environmental claims
    • E-commerce and other consumer protection act issues
    • Consumer product safety and product recalls
    • Commercial agreements, including joint promotion, co-branding, sponsorship, spokesperson, influencer, collaboration and distribution agreements
    • Searches and clearances of third-party rights
  4. Designs
    • Drafting and prosecution
    • Portfolio management
    • Opinions on registrability
    • Litigation and enforcement
  5. Copyright  and digital media
    • Opinions on registrability
    • Litigation and enforcement
    • Copyright registration and filing with CIPO
    • Pre-clearance of Copyrights
    • Advice on registration and enforcement
    • Freedom to Operate and non-infringement opinions
    • Copyright ownership advice
    • Employee agreements related to Copyright ownership
    • Copyright licensing and commercial agreement
    • Advice and due diligence on copyright in transactions
    • Online copyright and disputes counselling
    • Litigation advice
    • Global copyright monitoring and policing of rights
    • Enforcement and litigation
  6. Regulatory Compliance
    • Regulatory (Health Canada and provincial) and health care compliance advice and due diligence
    • PR communications and Direct-to-Consumer advertising campaigns
    • Brand name assessments, including Look-alike Sound-alike (LA/SA) Assessments of product names
    • Access to Information Act and Freedom of Information and Protection of Privacy Act matters
Enforcement of Intellectual Property

We have experience in advising clients on providing the best protection of their intellectual property and defending their rights. Our experience includes patents, designs, trademarks, trade secrets, confidential information, copyrights, data protection and cybersecurity, which are all important assets of your business and must be protected. We also have experience in advising clients on anti-trust and competition law, including unfair competition, and work closely with our corporate and litigation team to provide advice which incorporates the larger picture rather than focusing on a niche area.

  1. Patent litigation and enforcement
  2. Trademark litigation and enforcement
  3. Trademark opposition and cancellation
  4. Design litigation and enforcement
  5. Copyright litigation and enforcement
  6. Taking down pirated content from the internet
  7. IP litigation and enforcement
Growth of Intellecual Property

We are with you from the initial stage of planning to help you commercialize your intellectual property and add value to your business. We are also members of CIPO and the federal government IP assist program to help startups find value in their technology and grow. Every company in business has a brand and technology which has a value and potential for growth. With the help of Procido you will be worry-free on how to manage your large portfolio since it can be centralized locally rather than having coordinating with distant law firms. We provide solutions to clients to better manage your intellectual property and how to generate more value to it, as well as block competitors from stealing your intellectual property.

Our lawyers have experience as patent agents, trademark agents, as well as working as in-house lawyers with experience in handling global portfolios and strategizing brands globally, while consulting with international partners. Our lawyers also have experience in advising on IP audits, due diligence and commercial agreements and licensing including technology contracts.

  1. IP strategy advisory
    • IP counselling, opinion and advice
    • IP portfolio management
  2. IP licensing and transactions
    • Due diligence
    • Audits and valuations
    • Agreements and contracts in various fields including high tech, software, oil and gas, clean tech, life sciences, consumer products/ sports industry, media and broadcasting, and entertainment

Procido LLP lawyer Chad Eggerman is certified Project Management Professional and applies his knowledge of project management to benefit you and to lead teams in managing projects for you to be more efficient and save you money while increasing the quality of our deliverables to you.

We find it a bit sad that we need to state that at Procido LLP we are firm which uses project management to advise clients, but many law firms do not and instead rely on individual lawyers to manage files on their own and in silos. Procido LLP legal project management starts from the outset of our engagement with you – we prepare a Budget and Workplan as part of our fee estimate. We think through what work you need done and define a scope for that and then we break that scope up into management chunks with milestones to meet and then assign resources to undertake this works. It all sounds obvious, but is not widely adopted at law firms in Canada.