Most commercial litigators deal with intellectual property all the time without calling it that. A licence agreement, a non-compete tied to confidential information, a brand listed in a schedule to an asset purchase agreement, a patent pledged as security for a loan.
Usually the IP is background. Occasionally it becomes the issue that decides the file, and the rules shift in ways that are not obvious from the contract side. These are the signals.
1. A pleading relies on a statutory IP right
Once a claim or defence rests on the Trademarks Act, RSC 1985, c T-13, the Copyright Act, RSC 1985, c C-42, or the Patent Act, RSC 1985, c P-4, several things follow.
Standing. A person deriving an interest in copyright by written assignment or grant may sue, but the owner must generally be made a party (Copyright Act, s 41.23). A person "claiming under the patentee" may sue for patent infringement, and the patentee must be a party (Patent Act, s 55). A trademark licensee can sue in its own name only after calling on the owner and waiting two months, subject to the licence (Trademarks Act, s 50(3)).
Limitation periods. Three years, with discoverability, for copyright (Copyright Act, s 43.1). Six years for patent remedies (Patent Act, s 55.01).
Use. An owner suing within three years of a trademark registration must show use in Canada in that period, or special circumstances (Trademarks Act, s 53.2(1.1), in force since April 1, 2025).
Remedies. Statutory damages for copyright can be elected at any time before final judgment (Copyright Act, s 38.1). The choice between damages and an accounting of profits has its own case law.
2. Validity is in play
An allegation of infringement invites a counterclaim that the right is invalid. Only the Federal Court can expunge a registration or impeach a patent as against the world (Federal Courts Act, RSC 1985, c F-7, s 20(1)). In a superior court, invalidity can still be raised as a defence between the parties.
Either way, asserting the right puts it at risk. The client should hear that before the claim is issued, not after the defence arrives.
3. Forum is a live question
The Federal Court offers national reach and IP-specific procedure, but it cannot hear a free-standing contract or fiduciary claim. If the dispute has both elements, the choice of court shapes everything after it.
4. The injunction turns on the brand or the technology
Confusion evidence, proof of goodwill, irreparable harm to reputation, and sometimes claim construction, all on an interlocutory timetable.
5. Ownership is contested
Chain of title is its own inquiry. Who authored or invented, in what capacity, what was signed, whether moral rights were waived, and what the registers say. Correcting the registers is Federal Court business.
6. The case needs a technical expert
In patent and software cases, the choice of expert and the framing of the mandate can decide the result. Patent claims are construed through the eyes of a person skilled in the art, and the expert has to be instructed accordingly.
7. The IP is the collateral
IP does not have to be in dispute to decide a motion. It can simply be the asset.
In 1943391 Ontario Ltd v Biosenta Inc, 2026 ONSC 3042, a creditor owed more than $7 million applied for a court-appointed receiver and manager over a technology company's entire business. Its security covered one United States patent and the product made by working it. The principal debt was not in dispute. The application was dismissed.
The difficulty was evidentiary. The court was not told what the secured patent was worth, whether the company still used or needed it, or how it related to two other patents that counsel said the company held. Nor was it told whether the patent could be sold apart from the business, or whether it would be worth more or less if the business closed (at paras 76–77, 80, 87). The creditor argued that the value of the collateral depended on formulae, testing information, and data held by the company. That was not in evidence either (at paras 40, 43).
The court's answer, per Myers J (as he then was), is the part to remember: "There is no shortage of expertise in patents in this province and country." It declined to put a public company into receivership so that an insolvency trustee could look around, in place of an IP specialist the receiver would need in any event (at paras 91–92). The creditor was invited to return on proper material after consulting IP and industry experts (at para 95).
The questions that would have filled the gap are ordinary ones for IP counsel:
What exactly does the security cover? One patent, a family of patents, or also the know-how and data needed to practise them?
Is the secured patent the one the business depends on, or has the technology moved on to others?
Can it be sold or licensed on its own, and who would buy it?
What is it worth with the business operating, and what is it worth if the business stops?
Where is the security recorded, and do those registers correspond to where the patent was granted?
Does anything in the deal documents limit enforcement? In Biosenta, the creditor had agreed to release its security if the company reasonably needed that to license the product (at paras 17–18, 88).
None of this is litigation about a patent. It is evidence about one, and the application failed for want of it. The same questions arise in receiverships, bankruptcies, oppression applications and valuations whenever the principal asset is intangible.
What bringing in IP counsel can look like
It is not all or nothing.
A discrete opinion on ownership, validity, infringement risk or forum.
A pleading review before the claim or defence is delivered.
Evidence for a motion on what an IP asset is, what it covers and how it could be realized.
Co-counsel of record on the IP issues, or on a parallel Federal Court proceeding.
Consulting counsel in the background on strategy, expert selection and cross-examination.
Agency in the Federal Court.
In each model, lead counsel stays lead, and the client relationship stays where it is.
The professional conduct side
The Law Society of Ontario's competence rule contemplates exactly this. A lawyer who is not competent to handle a matter should decline it, or obtain the client's instructions to retain, consult or collaborate with a lawyer who is. Associating with other counsel is a recognized way of meeting the duty. It is usually cheaper for the client than a learning curve billed by the hour.
When you do not need it
Where the IP is truly incidental. An asset list in a purchase-price dispute with no contest over validity, scope or ownership. A licence dispute that is only about payment.
A workable test: will an IP statute, or the validity, ownership, scope or value of an IP right, decide a contested issue? If so, get the advice before pleadings close, before the forum is locked in, and before the motion record is served.
wu law. provides co-counsel, agency and consulting services to other firms. If a file has an IP question that would benefit from a second view, get in touch.
This post is general information for lawyers. It is not legal advice.
