Jean-Philippe Mikus

Partner | Trade-mark Agent

Stock Exchange Tower
800 Square Victoria, Suite 3700 P.O. Box 242
Montréal, QC H4Z 1E9

Canada

Jean-Philippe Mikus is the co-chair of the firm's Technology and Intellectual Property Practice Group.

Jean-Philippe practices in the fields of intellectual property law, information technology law and entertainment law. He is a member of the intellectual property, information technology and Asia-Pacific practice groups of Fasken Martineau.

He represents both foreign and Canadian clients in matters involving trademarks, passing off, copyright, trade secrets, patents, information technology systems, software and unfair competition before the Quebec Superior Court, the Quebec Court of Appeals, the Federal Court of Canada, the Federal Court of Appeals as well as the Trade-Mark Opposition Board and the Copyright Board.

He provides strategic advice relating to intellectual property to ensure that appropriate measures are implanted to maximize the protection of intangible business assets. He provides intellectual property portfolio management services. He also regularly advises businesses and investors on intellectual property in the context of mergers and acquisitions as well as financing transactions.

He is a trademark agent and acts in this capacity on behalf of a large number of clients before the Canadian Intellectual Property Office (CIPO) to secure the registration of trademarks, to oppose trade-mark applications, to strike trademark registrations and to represent them in all other matters. He co-authored the first French-language Canadian book on trademarks specifically aimed at the business community (Choisir et protéger ses marques de commerce ("Choosing and Protecting Your Trademarks"), Éditions Yvon Blais, 2010). He manages extensive trademark portfolios and obtains the registration of trademarks abroad through the firm's vast network of foreign correspondents. He provides advice concerning the development of trademark use policies and trademark license agreements so as to preserve the validity of trademarks. He regularly provides availability opinions to Canadian and foreign clients in the context of the selection of a new trademark or the expansion of the range of products and services for existing trademarks.

Jean-Philippe Mikus has solid experience in intellectual property and other legal issues relating to information technology, social media, Internet, wireless technologies, online services, cloud computing, consumer goods, software, gaming software, the mining industry and electronic commerce. He advises and represents businesses in their contractual relations, including in connection with the acquisition and sale of technologies, as well as patents, trademarks, research and development services, strategic partnerships, distributorships and licenses.

He has significant expertise in copyright law and commercial transactions involving copyright. He is the author of the Canadian chapter of the international publication Copyright Throughout the World published by Thomson Reuters and of the chapter on copyright infringement actions of the Jurisclasseur Propriété Intellectuelle published by LexisNexis. He is also the author of the book entitled Droit de l’édition et du commerce du livre (The Law of Book Publishing and the Book Trade) published in 1996 which won a prize from the Quebec Bar Foundation in the "New Author" category.

Jean-Philippe Mikus published numerous articles on copyright law, trademark law, patent law and information technology law. He is frequently invited to give conferences on intellectual property law and has also participated in the organization of a large number of conferences in the field. He combines in-depth knowledge of cutting edge fields with a solid business sense.