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Resource Listings

Checklists
Sample Forms, Policies, and Contracts

IP Due Diligence Checklist

By Kilpatrick Townsend & Stockton LLP

This is a sample Intellectual Property (IP) due diligence checklist in a corporate acquisition, for the analysis of the seller's IP assets and related matters.

Sample Forms, Policies, and Contracts

Sample Work For Hire Agreement

By Kilpatrick Townsend & Stockton LLP

This is a sample work for hire and assignment agreement. The sample includes a clause regarding work for hire, and an assignment clause under which the rights to the work produced by the hired party are assigned to the client. Initially published August 21, 2020, republished March 29, 2023.

Sample Forms, Policies, and Contracts

Sample IP Assignment Agreement

This is a sample intellectual property assignment agreement, under which a company assigns the rights, title, and interest in and to trademarks, patents, domain names and intangible assets to another company, in connection with a corporate acquisition. This sample includes a choice of New York law.

Articles

Consider Canada: Why you should designate Canada – and a Canadian agent – in your next Madrid application

By Mark Evans, Partner, Smart & Biggar LLP, Barrister and Solicitor, Patent and Trademark Agent, and Tierney GB Deluzio, Associate of Smart & Biggar LLP, Barrister and Solicitor, Trademark Agent

More than a year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada. In this IP update, you will learn some of the key reasons why international brand owners should consider designating Canada in international trademark applications.

Articles

Yes, CIPO really will be writing to your client instead of to you

By Jamie-Lynn Kraft, Senior Associate, Smart & Biggar LLP, Barrister and Solicitor Trademark Agent

When you file a Madrid originating application, and designate Canada, you should receive a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO). This chart provides a non-exhaustive illustration of where CIPO will direct all correspondence for a Madrid originating application, and why you may wish to appoint a Canadian agent for the Canadian application.

Articles

Top 10 Differences Between Canadian and US Trademark Filing, Prosecution, and Enforcement

By Kohji Suzuki, Partner of Smart & Biggar LLP, Barrister and Solicitor, Patent and Trademark Agent, and Tierney GB Deluzio, Associate of Smart & Biggar LLP, Barrister and Solicitor, Trademark Agent.

Canadian trademark laws and rules do bear many similarities to those in the US. However, for international brand owners looking to file, prosecute, and enforce trademarks in Canada, it is critical to keep in mind some important features unique to the Canadian system, which are outlined in this resource.

Articles

Fact or Fiction? Debunking Patent Myths for Business and Technology Leaders (Canada)

By Brigide Mattar, Professional Engineer, Patent Agent, and Partner, Smart & Biggar IP Agency Co.

There are many misconceptions or ‘myths’ about patents that have found their way into popular discourse, ranging from what type of innovations are patentable, to how important it is to own and protect your intellectual property (IP) using patents. This resource addresses five common myths about patents to globally help business leaders and technology managers better separate fact from fiction and make informed decisions to protect investments made in innovation.

Articles

Top Ten Red Flags to Look for in Your Brand License Agreement

By  Marc A. Lieberstein (Kilpatrick Townsend LLP, Co-Chair Retail Consumer Goods Industry Team; Co-Chair Franchise Group)

This article outlines red flags that brand owners and licensees should look for, consider, and address if they find such flags in a brand license agreement.