ACCLO Tips and Tricks From the Trade

The Association for Chinese Canadian Lawyers in Ontario (ACCLO) hosted a CLE session on September 17, 2011, on “Tips and Tricks from the Trade,” featuring Sean Zhang of Blakes, Jeffrey Lem of Davies, Roslyn Tsao of Epstein Cole LLP, and Madam Justice W. Low of the Ontario Superior Court of Justice.

Notes from the sessions follow.

IP Tips and Tricks

Zhang started out by defining IP law as an intangible personal property often associated with intellectual activity or creation. IP rights are often enforced in courts and vary between jurisdictions. Registration and application terms vary and are often for a limited term.

There are several different types of IP used to protect distinct aspects of products and processes, and can include trade-marks, copyright, patent, industrial design, and trade secrets.

A trade-mark can be a word, slogan, symbol, shape of goods or packaging, colours, or sounds, which are used to distinguish wares and/or services from those of others. Common law rights to trade-mark are acquired through use, which is usually required to obtain registration. An application is required for registration but confers enhanced rights, and can be renewed for successive terms of 15 years.

Copyright is a bundle of rights granted to protect the form of expression, not the idea. The author usually owns the copyright unless it was created during the course of employment, or they assigned the rights in writing. Moral rights to the integrity of the work belong to the author, but may be waived, not assigned. No registration is required for copyright, but the term ends 50 years after the author’s death.

Patents are rights granted by the state to exclude others from making, using, or selling the “claimed invention.” If there is any public disclosure it could destroy the claim to novelty. Some jurisdictions provide a one-year grace period from public disclosure. A patent term starts from granting and ends 20 years from filing, and an application is required before granting which correctly and fully describes the invention. Patents are commonly granted for methods or processes, machines and devices, manufactured articles, and chemical compounds compositions of matter.

A trade secret describes types of confidential information which confers a competitive advantage in business or trade. The Federal Court of Canada ruled in Société Gamma Inc. v. Canada [Secretary of State], (1994), 79 F.T.R. 42, at pg 45 (F.C.T.D.) that a “trade secret” must be something “that is guarded very closely and is of such peculiar value to the owner of the trade secret that harm to him would be presumed by its mere disclosure.”

Industrial design protects the look, not the function, and required registration for protection. Some level of originality is required, and the term ends 10 years from the date of registration. Protected industrial designs may include shape, configuration, pattern, ornamentation, or a combination of these, and some level of originality is required.

When advising on a business deal, consider any agreement to ownership of IP or IP rights. A non-disclosure agreement (NDA) may protect the novelty of a possible invention or originality of design. Consider any disclosure to an industry partner or customer that could trigger the 12-month grace period for patents or industrial design.

When advising on employment issues document the ownership of IP rights and confidentiality provisions. Record the obligation of the employee or contractor to disclose or transfer IP rights to the employer, and their obligation to assist the employer in obtaining registration or granting of IP rights.

IP deadlines are very rigid and often have disastrous consequences if they’re missed, including a total loss of rights (deemed abandonment) with no remedy, the valuation of which could be substantial (as with the Nortel patents recently). Prosecution deadlines of IP applications vary with different types and the applications.

Real Estate Tips and Tricks

Why does real estate matter? It’s one of the major reasons for malpractice claims, with over 50% of small-firm claims are related to real estate. Lem represents the prosecution side of LawPRO claims, and has seen plenty of disasters. Although 85% of these claims result in a pay-out, this does not necessarily mean that malpractice was not present, simply that proof of causation was absent for ab out half of them.

The primary tip in this area is to document everything in the retainer, outlining the scope of the retainer and the responsibilities that the lawyer is taking on. If the court is allowed to determine the retainer it will invariably be broader than intended. Putting all of this in writing helps avoid ambiguities and prevents clients from retroactively blaming the lawyer for not examining aspects of a real estate transaction.

Clients do not normally perceive this as being a negative thing because it provides realistic expectations and alerts them to areas that may need further attention. Some lawyers go beyond this and state the costs associated with expanding the retainer, allowing clients to choose to take on additional costs with a broader project.

Documentation isn’t always enough though, especially when clients don’t speak English fluently. Lem feels that practicing real estate in any language other than English is a risky proposition. Instead, he suggests lawyers send a letter in their first language outlining basic facts, and explaining that all future correspondences and documents will be in English, stating that it is their responsibility to obtain a translator if needed.

Another practical tip useful in this area is to use a calculator with a print-out. Not only does it help lawyers review figures that were calculated to come up with an amount, but it provides documentation of the calculation used for the records.

Family Law Tips and Tricks

Most people in law school state that the last thing they would want to do is family law due to the exposure to conflict and emotional tensions. Tsao highlighted a few family law issues that could arise for lawyers practicing in other areas.

Tsao warned of keeping a mind out for domestic abuse, but also various forms of financial abuse. These situations can often result in one partner being less forthcoming about information. Although most violence is typically male, it can also be a female abuser.

Checking the status of the children is also very important. If issues arise down the road, it’s important to note that inquiries about their health, status in school, and general well-being was made.

The financial situation of the couple should be established, including any joint accounts and joint lines of credit. In many matrimonial disputes one partner removes all funds from a joint account without notification or consent of the other partner. Purchases on credit cards in both names will still be the responsibility of both partners. Money can be nasty, and a particular source of contention between partners.

Gauging the general tone of the divorce is important because it will signal whether it is amicable and whether action needs to be taken in an immediate fashion.

Before moving out of the house, the implications for custody of children should be considered. Courts like to maintain the status quo. Both partners have right of possession of the matrimonial home, whether they are on the title or not. But a different living arrangement may be necessary if the context is particularly acrimonious, especially if one partner is threatening to call the police to remove the other partner.

Tips from the Bench

Without integrity, a lawyer will not have self-respect or the respect of their peers. Without competence you will have no clients. And without courtesy you will have no friends.

Lawyers today often enter the practice without the benefit of a structured bar admissions course, or the mentoring that used to occur during articles and the early years of practice. Justice Low indicated that one of the hardest parts of practice is managing client expectations.

Some lawyers are good rainmakers. Others are great at research and writing. Some have no difficulty getting on their feet for a motion, or have a great rapport with juries. However, very few lawyers have the luxury of doing only a few tasks that they are good at and they like, requiring lawyers to play all of the instruments in the band.

One thing every lawyer should do is help manage client expectations. Managing client expectations on the front-end helps pay dividends throughout a case. A litigation plan should include expected results, including adverse outcomes. Many litigators commence with their case with little idea of where they want to go. Planning can optimize your likelihood of getting paid, and paid on time.

There are matters that the lawyer should be clearly in control of, and not the client, such as procedures, legal arguments, and litigation strategies. Relinquishing control of those matters undermines the skill that a lawyer has. Far too often counsel are not familiar enough with the facts or the law. Building a case is like building a house. You need a foundation, and plans. Research should be done at the beginning and not the end.

Providing arguments in the form of a factum, whether it’s required or not, does both you and your client a service. Not only does it help organize your arguments, if the judge reserves judgments they will have the materials on hand for review.