Jean-Philippe Mikus 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 DuMoulin.
He represents both foreign and Canadian clients in matters involving trade-marks, 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 is also regularly called upon to act in regulatory matters, including matters involving the application of the Food and Drug Act and the Food and Drug Regulations. His experience includes litigation seeking to resolve the status of drugs approved on the basis of a Notice of Compliance with Conditions ("NOC/c"), more specifically to determine whether generic drug manufacturers are entitled to use a drug approved on the basis of a NOC/c as a Canadian reference product for purposes of their own abbreviated new drug submission.
He is a trade-mark 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 trade-marks, to oppose trade-mark applications, to strike trade-mark registrations and to represent them in all other matters. He co-authored recently the first French-language Canadian book on trade-marks specifically aimed at the business community (Choisir et protéger ses marques de commerce ("Choosing and Protecting Your Trade-Marks"), Éditions Yvon Blais, 2010). He manages extensive trade-mark portfolios and obtains the registration of trade-marks abroad through the firm's vast network of foreign correspondents. He provides advice concerning the development of trade-mark use policies and trade-mark license agreements so as to preserve the validity of trade-marks. He regularly provides availability opinions to Canadian and foreign clients in the context of the selection of a new trade-mark or the expansion of the range of products and services for existing trade-marks.
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.
Jean-Philippe Mikus has solid experience in intellectual property and other legal issues relating to information technology, Internet, wireless technology, broadcasting, automated systems, software, online music services, gaming software and electronic commerce. He advises and represents businesses in their contractual relations in information technology, software, video game and electronic commerce, including in the context of development services, distribution, licensing, etc.
He developed and taught for a number of years a course on E-commerce law. He is also coauthor of a manual entitled Internet in the Workplace addressing legal issues relating to the use of Internet in the workplace.
In the field of entertainment law, he is involved in the resolution of legal issues relating to film, live entertainment, television, music and publishing. In this last respect, he is the author of Droit de l'édition et du commerce du livre (The Law of Book Publishing and the Book Trade) published in 1996 that won the Quebec Bar Foundation prize in the "New Author" category.
Jean-Philippe Mikus published numerous articles on copyright law, trade-mark 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.
Membership/Affiliations
- Member, Montreal Bar Association
- Member, Canadian Bar Association
- Member, Intellectual Property Institute of Canada (IPIC)
- Member, International Trade Mark Association (INTA)
- Member, Association des praticiens du droit des marques et des modèles (APRAM)
- Registered Trade-Mark Agent
- President, ALAI Canada (2003-2006)
- Member of the Board of Directors, ALAI Canada (1999-2011)
- Member of the Annual Conference Organizing Commitee, ALAI Canada (1999-2006)
- Member, Executive Committee of Association littéraire et artistique internationale (2002-2008)
- Coordinator of the Regroupement des praticiens de marques de commerce (RPM) (Since 2006)
- Assistant director of the 2007 edition of the course entitled "The Business of Copyright" offered jointly by the Intellectual Property Institute of Canada (IPIC) and McGill University
- Director of the 2008 edition of the course entitled "The Business of Copyright" offered jointly by the Intellectual Property Institute of Canada (IPIC) and McGill University
- Assistant-Director of Summer 2009 Intellectual Property Law Program offered jointly by the Intellectual Property Institute of Canada (IPIC) and McGill University
- Member IPIC/McGill Courses Liaison Committee, Intellectual Property Institute of Canada (IPIC) (Since 2007)
- Member, Association des professionnels de la communication et du marketing (APCM)
- Member, American Marketing Association
- Member of the Board, Équilibre, Groupe d'action sur le poids
- Member, executive committee of the Information, Intellectual Property and Telecommunications Section of the Canadian Bar Association, Quebec Section (Since 2009)
- Director of Summer 2010 Intellectual Property Law Program offered jointly by the Intellectual Property Institute of Canada (IPIC) and McGill University
- Director of Summer 2011 Intellectual Property Law Program offered jointly by the Intellectual Property Institute of Canada (IPIC) and McGill University
- Member, Swiss Canadian Chamber of Commerce
- Member, Chambre de commerce de la Haute Yamaska et Région
- Member, Réseau ActionTI