Nelson Godfrey's practice focusses on all aspects and areas of intellectual property, with particular emphasis on patent and trademark prosecution, licensing, commercialization and strategy, privacy matters and intellectual property litigation.
Nelson has extensive experience drafting a wide array of contractual documents, including licensing and IP transfer agreements, non-disclosure agreements and IP development agreements. He also regularly prepares and prosecutes trademark and patent applications, and has been involved in all aspects of litigation matters including trademark oppositions, infringement of various forms of intellectual property, and privacy and confidential information disputes. He has appeared before the Supreme Court of British Columbia and the Federal Court of Canada. As well, Nelson has been involved in researching regulatory and IP regimes around the development and delivery of biotechnology products through a Genome Canada-funded research project.
Nelson works with clients ranging from small local entities to multinational corporations located throughout Western Canada, the United States and internationally. Nelson has a unique understanding and comprehension of client needs, having held in-house IP and regulatory roles with two mid-sized biotechnology companies prior to joining the firm. He is committed to the long-term growth and development of the science and technology sectors in British Columbia and Canada, and has been involved with a wide variety of organizations dedicated to that end.
• Federal Court of Appeal seeks to clarify law relating to trademarks descriptive or misdescriptive of geographical origin IP Update - Canada, March 16, 2016; Lexology, March 16, 2016; Mondaq, March 21, 2016; International Law Office Intellectual Property Newsletter, April 25, 2016
• Acronyms and the issue of descriptiveness under the Canadian Trademarks Act IP Update - Canada, November 20, 2015; Lexology, November 20, 2015; Mondaq, November 23, 2015; International Law Office Intellectual Property Newsletter, December 14, 2015, Canadian Corporate Counsel, December 2015
•“Much Ado About Krill Pills: Reckitt Benckiser v. Jamieson ” BarTalk, Canadian Bar Association, British Columbia Branch, October 2015, page 19
• Cancellation proceedings against a registered Canadian trademark: when can “special circumstances” justify non-use? IP Update - Canada, August 17, 2015; Lexology, August 17, 2015; Mondaq, August 17, 2015; International Law Office Intellectual Property Newsletter, September 1, 2015
• Tax deduction for the depreciation in the market value of patents, IP Update - Canada, April 8, 2015; Lexology, April 8, 2015; Mondaq, April 9, 2015; CCCA Members Knowledge Centre, April 2015; International Law Office Intellectual Property Newsletter, May 5, 2015
• Limelight v Akamai and indirect patent infringement in Canada, IP Update - Canada, August 13, 2014; Lexology, August 13, 2014; Mondaq, August 14, 2014; CCCA Members Knowledge Centre, August 2014; International Law Office Intellectual Property Newsletter, August 26, 2014
• Prior use of an inaccessible invention: is it disclosure? IP Update - Canada, February 6, 2014; Lexology, February 6, 2014; Mondaq, February 7, 2014; CCCA Members Knowledge Centre, February 2014; International Law Office Intellectual Property Newsletter, February 24, 2014
• Supreme Court of Canada weighs personal privacy considerations against freedom of expression, IP Update - Canada, November 26, 2013; Lexology, November 26, 2013; Mondaq, November 26, 2013; CCCA Members Knowledge Centre, November 2013; International Law Office Intellectual Property Newsletter, February 24, 2014
•“Case Studies of African Agricultural Biotechnology Regulation: Precautionary and Harmonized Policy-Making in the Wake of the Cartagena Protocol and the AU Model Law, Loyola of Los Angeles International & Comparative Law Review, November 2013, Vol. 35, pp. 409-432
•“The Environmental Regulation of Genetically Modified Bacteria: Case Studies of Canada's Piecemeal Regulatory Approach to Biotechnology, ” Journal of Environmental Law and Practice, May 2013, Vol. 24, No. 2, pp. 97-124
•“Intellectual Property and Sharing Regimes in Agricultural Genomics: Finding the Right Balance for Innovation ” (co-author: Emily Marden), Drake Journal of Agricultural Law, Summer 2012, Vol. 17, No. 2, pp. 369-393