(Main Office)

Smart & Biggar is Canada's largest firm practising exclusively in intellectual property and technology law. We have a national and international reputation for the quality of our work and the calibre of our professionals. Related to Fetherstonhaugh through common partners, offices and personnel, we have been leaders in our field for over a century. Our record of superior service is the reason the world's most innovative corporations and law firms look to Smart & Biggar/Fetherstonhaugh. We offer a full range of services related to intellectual property and technology law, from trying complex patent litigation to managing trade-mark portfolios around the world.

LEGAL SERVICES

In the century that has passed since the founding of our firm, the legal and technological landscape has changed significantly. Advances in science, technology and marketing call for new methods of protection and these developments have brought intellectual property issues to the forefront of the global economy. We have not only kept pace with these changes — we have helped to bring many of them to fruition. Today we advise clients on a wide variety of existing and emerging intellectual property and technology law matters:

- Patents

- Trade-marks

- Copyright & Media

- Industrial Designs

- Litigation

- Licensing & IP Transactions

- IP Management & Strategic Counselling

- Pharmaceutical Regulatory & Compliance

- IP Crime

TECHNOLOGICAL UNDERSTANDING

Approximately 70 of our 104 professionals are registered patent agents, including most of our lawyers. Virtually every member of our firm has an engineering or scientific background and dozens of our practitioners also have postgraduate degrees in their respective areas of practice. We offer our clients technology-specific experience in many sectors, including:

- Life Sciences and Pharmaceutical

- Chemical

- Industrial and Mechanical

- Electrical and Electronic

- Software, Information Technology and Internet

- Consumer Products

- Media and Broadcasting

- Financial Services

- Aerospace and Defence

- Transportation

- Consulting Services

- Energy and Utilities

- Food, Beverage and Tobacco

- Luxury Goods and Apparel

- Metals and Mining

- Retail

- Telecommunications

- Clean Tech

MAXIMUM INTERNATIONAL REACH FOR CLIENTS

Our offices span across the country, but our practice covers the globe. For domestic clients who are expanding beyond national borders, we offer strategic counsel and an efficient gateway to the world. In addition to English and French, we offer capabilities in a number of foreign languages including German, Mandarin and Japanese. Members of our firms are also registered to practise before the US, UK and European patent offices. Over the course of many decades, we have built relationships with leading associate firms throughout the world. Our clients know that their assets will be protected outside of Canada with the same sophisticated level of understanding and care that they receive at home.

A TRUSTED RESOURCE FOR CLIENTS AND ASSOCIATES

We offer a full complement of patent and trade-mark agency services to associate firms and in-house counsel seeking to protect, exploit or litigate intellectual property rights in Canada. Many clients appreciate the convenience offered by our Ottawa office's close proximity to the Canadian Intellectual Property Office. In fact, we have prepared, filed and prosecuted more patent and trade-mark applications than any other firm in Canada.

Statement of Practice

Intellectual Property, Patents, Trademarks, Licensing, Litigation, Copyright, Industrial designs, Anti-counterfeiting, Portfolio Management, Infringement, Patent and Trademark Prosecution, Technologies, Trade Secrets, Counterfeit, Anti-Piracy, Technology Law, Biotechnology, Chemical, Pharmaceutical, Computer, Software, Internet, Electrical, Electronic, and Mechanical.

Address

55 Metcalfe Street Suite 900 P.O. Box 2999 Station D
Ottawa, ON K1P 5Y6, (City of Ottawa)
Canada

Phone

Phone: 613.232.2486
Fax: 613.232.8440

Email

Website

http://www.smart-biggar.ca

Firm/Affiliate Offices

Toronto, Ontario Office: Box 111 Suite 1500, 438 University Avenue, M5G 2K8. Tel.: 416.593.5514. Fax: 416.591.1690. Email: toronto@smart-biggar.ca.

Montreal, Quebec Office: Suite 3300, 1000 De La Gauchetière Street West, H3B 4W5. Tel.: 514.954.1500. Fax: 514.954.1396. Email: montreal@smart-biggar.ca.

Vancouver, British Columbia Office: 2300-1055 West Georgia Street, Box 11115, V6E 3P3. Tel.: 604.682.7780. Fax: 604.682.0274. Email: vancouver@smart-biggar.ca.

PARTNERS

John Bochnovic (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1978, Ontario; 1984, Quebec; 1978, Registered Patent Agent; 1978, Registered Trade-mark Agent; Registered to practise before the United States Patent and Trademark Office. Education: McGill University (B.Eng., Electrical, 1972); Osgoode Hall Law School of York University (LL.B., 1976); Professional Engineer (Professional Engineers Ontario).

John Bochnovic is Chair of Smart & Biggar/Fetherstonhaugh, and is the current President of the International Association for the Protection of Intellectual Property (AIPPI). Mr. Bochnovic has over 30 years of extensive intellectual property advisory experience, particularly within the fields of patents and trade-marks and including multi-jurisdictional litigation. His client activities span a wide-range of industry sectors, including electronics, communications and pharmaceuticals.

Mr. Bochnovic was a research fellow at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich. In addition to having taught patent law at the University of Ottawa's Faculty of Law for many years, Mr. Bochnovic has presented papers worldwide on a variety of subjects in the field of intellectual property law.

Rankings and recognition

· Selected by World Trademark Review 1000 - The Definitive Guide to Trademark Legal Services

· Recognized in The Best Lawyers in Canada under Intellectual Property Law

· Listed in The Canadian Legal LEXPERT® Directory under Intellectual Property

· Selected to appear in Chambers Global 2012 - The World's Leading Lawyers for Business under Intellectual Property

· Listed in Euromoney's Guide to the World's Leading Patent Law Practitioners

· Recognized in Euromoney's Guide to the World's Leading Trade Mark Law Practitioners

· Listed in IAM Patent 1000 - The World's Leading Patent Practitioners 2012

· Selected to appear in IAM Strategy 250 - The World's Leading IP Strategists 2010

· Listed in IAM Licensing 250 - The World's Leading Patent and Technology Licensing Lawyers 2011/2012

· Recognized in The International Who's Who of Patent Lawyers

· Listed in Who's Who Legal: Canada 2012 under Patents

· Selected to appear in the PLC Which Lawyer? under IP: non-patent litigation, commercial IP

· International Association for the Protection of Intellectual Property (AIPPI) Award of Merit

Professional Involvement

Memberships

· President, International Association for the Protection of Intellectual Property (AIPPI); past President, Canadian Group

· Languages: English; French; German. Practice Areas: Patents; Trade-marks; Copyright & Media; Industrial Designs; Litigation; Licensing & IP Transactions; IP Management & Strategic Counselling; Electrical/Electronics; Pharmaceutical; Software/Internet/Information Technologies; Industrial/Mechanical; Pharmaceutical Regulatory & Compliance; Cleantech.Email: John Bochnovic

Glen B. Tremblay (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1985, Ontario; 1987, Registered Patent Agent; 1987, Registered Trade-mark Agent. Education: Royal Military College of Canada (B.Eng., Mechanical, 1976); Queen's University (LL.B., 1983).

Glen Tremblay has been Chair of the firms' Executive Committee since 2000 and in this capacity serves as the Managing Partner of the firms. For the past 25 years, Mr. Tremblay's practice has included litigation in the patent and trade-mark areas. He has been extensively involved in patent, trade-mark and other IP-related litigation before the Federal Court of Canada, the Federal Court of Appeal and the Ontario Superior Court of Justice. He has also argued matters before the Patent Appeal Board and the Trade-marks Opposition Board.

Mr. Tremblay has extensive experience in obtaining and managing intellectual property rights with respect to patents, trade-marks and industrial designs. As part of his practice, he is responsible for coordinating international patent, trade-mark and industrial design portfolios for many clients.

Rankings and recognition

· Listed in The Canadian Legal Lexpert® Directory under Intellectual Property

· Recognized in The Best Lawyers in Canada under Intellectual Property Law

Professional Involvement

Memberships

· Practice Areas: Patents; Trade-marks; Industrial Designs; IP Management & Strategic Counselling; Industrial/Mechanical; Cleantech.Email: Glen B. Tremblay

Steven B. Garland (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1992, Ontario; 1992, Registered Trade-mark Agent; 1993, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of Western Ontario (B.Eng., Chemical-Biochemical, 1985); University of Ottawa (LL.B., 1990); Professional Engineer (Professional Engineers Ontario).

Steven Garland has 20 years of experience in intellectual property litigation of all types, including issues relating to patent, trade-mark, copyright, industrial designs, trade secrets and competition law. He has acted in many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, biotechnological, telephony, mechanical and industrial matters. Mr. Garland has appeared as counsel in intellectual property cases at both the trial and appellate levels of the Federal Court of Canada, in the Ontario Superior Court and Court of Appeal, and before the Supreme Court of Canada. He also regularly appears before the Patent Appeal Board and the Trade-marks Opposition Board. He has also been retained as a mediator in intellectual property disputes. A representative list of some of the parties on whose behalf Mr. Garland has acted is provided below.

Mr. Garland regularly acts on behalf of innovator pharmaceutical and biopharmaceutical companies in respect of patent related matters, including patent infringement actions and proceedings under the Patented Medicines (Notice of Compliance) Regulations.

Mr. Garland is a member of the firms' Executive Committee. He is the President of the International Association for the Protection of Intellectual Property (AIPPI) Canadian Group, and a Past President of the Intellectual Property Institute of Canada. He is also an adjunct professor at the University of Ottawa Law School, where he teaches patent law. Mr. Garland is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. He is also a member of the editorial board of the international publication Intellectual Property Magazine.

Mr. Garland (together with Colin B. Ingram and John R. Morrissey of Smart & Biggar) recently successfully represented Amazon.com in Amazon.com, Inc. v. Commissioner of Patents, 2010 FC 1011,2011 FCA 328 in what has become a leading case regarding patentable subject matter, including computer implemented inventions and business methods, in Canada. The Federal Court of Appeal decision was recognized as the 2012 Canadian Patent Case of the Year by Managing Intellectual Property magazine. The Federal Court decision was recognized as the 2010 Canadian Business Case of the Year, in the January 2011 issue of LEXPERT magazine.

Representative list of parties

3M
Amazon.com
Anchor Brewing Company
Barmish Inc.
Bauer/Nike
Bayer Inc.
Bombardier
Clark Shoes
DSM
Dow Chemical
Ferrari
General Electric
Glaxo Wellcome
Harvard College (Harvard Mouse case)
Imperial Tobacco
Labatt
Loeb IGA
H. Lundbeck A/S
McDonalds
MCI
Merz Pharma GmbH
Nautica
Pfizer
Playboy
Progressive Games
sanofi-aventis
Shell Canada
Shoppers Drug Mart
Shionogi & Co.
Stamicarbon B.V.
Takeda
Vina Concha Y Toro

Rankings and recognition

· Recognized annually since the inaugural edition in 2012 as a 'Local Litigation Star' in Benchmark Canada under Intellectual Property

· Recognized in the LEXPERT® Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada under Intellectual Property Litigation

· Selected to appear in The LEXPERT®/American Lawyer Guide to the Leading 500 Lawyers in Canada under Intellectual Property and Intellectual Property Litigation

· Selected by World Trademark Review 1000 - The Definitive Guide to Trademark Legal Services

· Named Best Lawyers' 2013 Ottawa Intellectual Property Law Lawyer of the Year

· Selected to appear in The Best Lawyers in Canada under Intellectual Property

· Recognized in The Canadian Legal LEXPERT® Directoryunder Intellectual Property and Litigation - Intellectual Property

· Listed in Chambers Global 2012 - The World's Leading Lawyers for Business under Intellectual Property: Litigation

· Listed in Euromoney's Guide to the World's Leading Patent Law Practitioners

· Listed in IAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators 2010

· Selected to appear in IAM Patent 1000 - The World's Leading Patent Practitioners 2012

· Recognized in IAM Patent Litigation 250 - The World's Leading Patent Litigators

· Selected to appear in The International Who's Who of Patent Lawyers

· Recognized in The International Who's Who of Life Sciences Lawyers

· Recognized in Who's Who Legal: Canada 2012 under Patents

Experience

Iwasaki Electric Co Ltd v Hortilux Schreder BV, 2012 FCA 321

Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201

Amazon.com Inc v Canada (Attorney General), 2010 FC 1011, 2011 FCA 328

Red Bull GmbH v 9087-1047 Quebec Inc, 2011 TMOB 79

Corlac Inc v Weatherford Canada Inc, 2011 FCA 228 (for the Intervener, IPIC)

Hortilux Schreder BV v Iwasaki Electric Co Ltd, 2011 FC 967

Indigo Books & Music Inc v C & J Clark International Limited, 2010 FC 859

Copperhead Brewing Co v John Labatt Ltd (1995), 61 C.P.R. (3d) 317

Harvard College v Canada (Commissioner of Patents), 2002 SCC 76

Lundbeck Canada Inc v ratiopharm Inc, 2009 FC 1102.

Eli Lilly and Company v Apotex Inc, 2009 FC 991

J2 Global Communications Inc v Protus IP Solutions Inc, 2009 FCA 42

Lundbeck Canada Inc v ratiopharm Inc, 2008 FC 579

Anchor Brewing Co v Sleeman Brewing & Malting Co, 2005 FCA 170

Sim & McBurney v Anchor Brewing Co, 2005 FCA 171

Sleeman Brewing & Malting Co Ltd v Anchor Brewing Co, 2005 FCA 170

Oakley Inc v Shoppers Drug Mart Inc, 2004 FCA 404

Anchor Brewing Co v Sleeman Brewing & Malting Co Ltd, 2004 FC 384

Sim & McBurney v Anchor Brewing Co, 2004 FC 118

Bauer Nike Hockey Inc v Regan, 2003 FC 1174

Diamant Toys Ltd. v Jouets Bo-Jeux Toys Inc, 2002 FCT 384

Stamicarbon BV v Urea Casale SA, 2002 FCA 10

Andrés Wines Ltd v Vina Concha Y Toro SA, 2001 FCT 575

President and Fellows of Harvard College v Canada (Commissioner of Patents), [2000] 4 F.C. 528, 7 C.P.R. (4th) 1

Stamicarbon BV v Urea Casale SA, [2001] 1 F.C. 172, 8 C.P.R. (4th) 206

Osler Harkin & Harcourt v Canada (Registrar of Trade-marks), 77 C.P.R. (3d) 475

Allen & Hanburys Ltd v Torpharm Inc, 75 C.P.R. (3d) 417

Central Transport Inc v Mantha & Associates, 59 C.P.R. (3d) 213

Mobil Oil Corp v Hercules Canada Inc, 57 C.P.R. (3d) 488

Bousquet v Barmish Inc, (F.C.A.), 46 C.P.R. (3d) 510

Professional Involvement

Memberships

· Past President and Practice Areas: Litigation; Patents; Trade-marks; Copyright & Media; Industrial Designs; Licensing & IP Transactions; IP Management & Strategic Counselling; Pharmaceutical; Life Sciences; Software/Internet/Information Technologies; Chemical & Industrial Biotechnology; Industrial/Mechanical; Electrical/Electronics; IP Crime; Pharmaceutical Regulatory & Compliance.Email: Steven B. Garland

David E. Schwartz (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1992, British Columbia; 1993, Alberta; 2001, Ontario; 1994, Registered Trade-mark Agent; 1997, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of Alberta (B.Sc., Hons., Genetics, 1987); University of Alberta (LL.B., 1991) Dean's Honour Roll.

Since 1994, David Schwartz has practiced exclusively in the intellectual property field with a focus on patent law, particularly in the fields of biotechnology, pharmaceuticals and chemistry.

Mr. Schwartz has acted on behalf of a comprehensive range of clients, including start-ups, early-stage ventures, universities, government organizations and multinational corporations. His client activities regularly involve diverse fields such as plant biotechnology, stem cells, organic chemistry, materials science, diagnostics, pharmaceuticals, immunology, vaccines, water filtration, nutriceuticals, expression systems and assays.

In his patent prosecution practice, Mr. Schwartz frequently advises clients on regulatory matters relating to the Patented Medicines (Notice of Compliance) Regulations and listing patents with Health Canada, data protection under the Food and Drug Regulations, and matters concerning the Patented Medicine Prices Review Board. He also has expertise in managing global intellectual property portfolios and in performing freedom-to-operate and infringement analysis and intellectual property due diligence. He has handled first-to-invent conflicts under the pre-1989 Patent Act and appears regularly in oral proceedings before the Patent Appeal Board. Mr. Schwartz has also testified before the House of Commons Standing Committee on Industry, Science and Technology with respect to proposed amendments to the Patent Act.

Rankings and recognition

· Recognized in The Best Lawyers in Canada under Biotechnology Law

· Repeatedly recommended in The Canadian Legal Lexpert® Directory under Intellectual Property and Biotechnology

Professional Involvement

Memberships

· Secretary, Intellectual Property Institute of Canada; past Chair of the Biotechnology Patents Committee

· Member, American Intellectual Property Law Association

· Member, International Association for the Protection of Intellectual Property (AIPPI)

· Member, Canadian Bar Association

Speaking engagements

· "Managing Mankind's Inheritance Resources: The Canadian Patent Perspective," Ministry of Science and Technology of the People's Republic of China, Consulate of the People's Republic of China, Toronto, November 2009

· "Impact of Recent Developments on Life Cycle Management" (co-presenters: J. Sheldon Hamilton and Daphne C. Lainson), Smart & Biggar's Pharma Patents 2008, Mississauga, ON, November 2008

· "Keeping Current in International Patent Practice Webinar Series: Current Issues in Canadian Patent Law & Practice," American University, Washington College of Law, Washington, DC, November 2008

· "Canadian Pharmaceutical Patent Prosecution Strategies in View of Recent Jurisprudence" (co-presenter: Daphne C. Lainson), Smart & Biggar's Pharma Patents 2007, Mississauga, ON, November 2007

· "Canadian and U.S./Foreign Patent Office Practice" (co-presenter: Yoon Kang), Smart & Biggar's Pharma Patents 2006, Mississauga, ON, November 2006

· "Technology Transfer and Commercializing IP in the Life Sciences," Insight Information Conference, Ottawa, January 2004 and Toronto, December 2004

Teaching activities

· Patent Law, Queen's University Faculty of Law, Kingston, ON, 2010

· Patent Law, Queen's University Faculty of Law, Kingston, ON, 2009

· Intellectual Property & Technology Law for Engineers, University of Ottawa, 2007

· Intellectual Property & Technology Law for Engineers, University of Ottawa, 2006

· Intellectual Property & Technology Law for Engineers, University of Ottawa, 2005

Media

Publications

· "Patent Law Update" (co-author: Jeffrey E. Coles), Managing Intellectual Property, September 2012

· "Building blocks to green patent specifications" (co-author: Glen S. Kurokawa), Intellectual Property Magazine, October 2011

· "The Patentability of Pharmaceutical Dosage Regimes in Canada" (co-author: Gunars A. Gaikis), 26 Canadian Intellectual Property Review 2, 2011

· "Canadian SEBs: Not the same generic rights," Intellectual Property Magazine, August 2010

· "Canada Paves the Way for Subsequent Entry Biologics" (co-author: Daphne C. Lainson), Pharmaceutical Law Insight, May 2009

· "On closer examination: examining re-examination" (co-author: Christopher J. Thompson), Patent World, November 2008

· "Later Stage Stem Cells Patentable," The Lawyers Weekly, March 2, 2007

· "Recent Developments in Biotechnology" (co-author Daphne C. Lainson), The 2007 LEXPERT/ALM Guide to the Leading 500 Lawyers in Canada, January 2007, pp. 164-167

· "Unique IP Issues in Canada's Pharmaceutical and Biotechnology Industry" (co-authors: Gunars A. Gaikis and Daphne C. Lainson), The 2006 LEXPERT Guide to the Top 100 Industry Specialists in Canada, October 2006, pp. 125-129

Practice Areas: Patents; Life Sciences; Pharmaceutical; Chemical & Industrial Biotechnology; IP Management & Strategic Counselling; Licensing & IP Transactions; Pharmaceutical Regulatory & Compliance; Cleantech.Email: David E. Schwartz

Philip Lapin (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1995, Ontario; 1995, Registered Trade-mark Agent; 1998, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.Sc., Hons., Computer Science, 1988); McGill University (B.C.L./LL.B., 1992).

Philip Lapin is recognized as one of Canada's leading trade-mark lawyers, and is the chair of the firms' Trade-mark Practice Group. With almost 20 years of experience, Mr. Lapin is responsible for managing and providing strategic advice concerning the trade-mark portfolios for many Canadian and multinational corporations.

Mr. Lapin has handled the clearance, prosecution and registration of thousands of trade-marks, and has particular expertise in trade-mark opposition and cancellation proceedings before the Trade-marks Office.

In addition, Mr. Lapin files, prosecutes and advises clients with respect to all aspects of Canadian industrial design law and practice.

Mr. Lapin is also an editor of Canadian ReMARKS, the firms' trade-mark and marketing law newsletter and is the author of the "CANADA" section of the INTA Country Guides.

Mr. Lapin was an adjunct professor at the University of Ottawa's engineering school for many years, teaching trade-mark law to non-lawyers. Mr. Lapin is also a frequent speaker and author on a wide variety of trade-mark-related topics.

Mr. Lapin was awarded the Marie F. Morency prize for obtaining the highest mark in Canada on the patent drafting examination.

Rankings and recognition

· Selected to appear in The Canadian Legal Lexpert® Directory under Intellectual Property

· Selected by World Trademark Review 1000 - The Definitive Guide to Trademark Legal Services

· Recognized in Euromoney's Guide to the World's Leading Trade Mark Law Practitioners

Professional Involvement

Memberships

· Practice Areas: Trade-marks; Patents; Industrial Designs; Industrial/Mechanical; Software/Internet/Information Technologies; Copyright & Media; IP Management & Strategic Counselling; Licensing & IP Transactions; Cleantech.Email: Philip Lapin

Elliott S. Simcoe (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1996, Ontario; 1996, Registered Trade-mark Agent; 1999, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of Waterloo (B.A.Sc., Electrical Engineering, 1991); Queen's University (LL.B., 1994).

Elliott Simcoe has over a decade of wide-ranging experience in intellectual property law. His practice is primarily focussed on preparing and prosecuting patent applications in Canada and managing the filing and prosecuting of patent applications worldwide in the fields of electrical and computer engineering. He is also regularly involved with matters relating to patent litigation, Canadian trade-mark drafting and prosecution, and copyrights. He has significant expertise in domain name matters, including acquisition and licensing.

The majority of Mr. Simcoe's work is conducted for clients based in Canada and the United States operating in the fields of electrical and computer engineering. He also provides frequent assistance to associate firms in the United States with procuring intellectual property protection in Canada.

Mr. Simcoe is an editor of IP Perspectives, the firms' intellectual property and technology law newsletter.

Rankings and recognition

· Listed in The Canadian Legal Lexpert® Directory under Intellectual Property

Professional Involvement

Memberships

· Practice Areas: Patents; Trade-marks; Copyright & Media; Litigation; Electrical/Electronics; Software/Internet/Information Technologies; Licensing & IP Transactions; Cleantech.Email: Elliott S. Simcoe

Kohji Suzuki (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1997, Ontario; 1998, Registered Patent Agent; 1998, Registered Trade-mark Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of Manitoba (B.Sc., Mechanical Engineering, Gold Medal, 1992) thesis titled Biomechanical analysis of gait using force plates; University of Manitoba (LL.B., Honour Roll, 1995) Advocacy Prize.

Kohji Suzuki's practice is highly diverse and covers all areas of intellectual property with particular emphasis placed on trade-marks and mechanical patents. Mr. Suzuki calls on over 15 years of experience to counsel his clients on the most ideal strategies for acquiring, protecting and enforcing their intellectual property rights.

Mr. Suzuki has worked primarily with large multinational corporations based in Canada, the United States and Japan. His current work in the procurement and maintenance of intellectual property rights is supported by an early career focus on patent and trade-mark litigation before the Ontario and Federal courts.

Mr. Suzuki is an editor of Canadian ReMARKS, the firms' trade-mark and marketing law newsletter.

Rankings and recognition

· Listed in The Canadian Legal Lexpert® Directory under Intellectual Property

· Recognized in Euromoney's Guide to the World's Leading Trade Mark Law Practitioners

· Selected to appear in The Best Lawyers in Canada under Intellectual Property Law

Professional Involvement

Memberships

· Languages: English; Japanese. Practice Areas: Trade-marks; Patents; Industrial Designs; IP Management & Strategic Counselling; Copyright & Media; Litigation; Licensing & IP Transactions; Industrial/Mechanical; Cleantech.Email: Kohji Suzuki

Christine N. Genge (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1998, Ontario; 1999, Registered Patent Agent; 1999, Registered Trade-mark Agent; Registered to practise before the United States Patent and Trademark Office. Education: Memorial University of Newfoundland (B.Eng., Mechanical, 1989); University of Ottawa (LL.B., 1996).

Christine Genge has more than a decade of experience in obtaining patent, industrial design and trade-mark protection. She is regularly involved with: preparing and filing patent and industrial design applications; dealing with procedural matters such as ownership concerning patent, industrial design, trade-mark applications; reporting and responding to Examiner's reports; and advising clients on Canadian law, available options for obtaining the most effective protection for their intellectual property assets, and the advantages and pitfalls of various courses of action.

Ms. Genge has in-depth knowledge concerning the different requirements for obtaining patent and industrial design protection in Canada, the U.S. and Europe. She also has experience in drafting mechanical patent applications for a broad range of technologies, including high-tech, consumer products and the oil field industry.

Ms. Genge represents clients of all sizes, including small and large Canadian companies, large multi-national corporations, and small and large associate law firms in the U.S., Europe, Asia and Australia. Her work experience in the mechanical aspects of silicon and circuit packaging are a particular asset to clients operating in these areas.

Ms. Genge is an editor of IP Perspectives, the firms' intellectual property and technology law newsletter.

Professional Involvement

Memberships

· Practice Areas: Patents; Industrial Designs; Industrial/Mechanical; Trade-marks; IP Management & Strategic Counselling; Electrical/Electronics; Cleantech.Email: Christine N. Genge

Jeremy E. Want (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 2000, Ontario; 2001, Registered Trade-mark Agent; 2003, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of Western Ontario (B.Sc., Hons., Chemistry, 1995); University of Manitoba (LL.B., 1998).

Jeremy Want has over a decade of experience with intellectual property litigation. He has participated in cases involving patents (including pharmaceuticals), trade-marks and copyrights. Mr. Want has successfully represented clients before the Federal Court of Canada, the Federal Court of Appeal and the Ontario Superior Court of Justice. He has also successfully argued cases before the Trade-marks Opposition Board.

Mr. Want has significant experience in respect of patent trials involving the quantification of damages and profits. Mr. Want also has experience with preparing and prosecuting trade-mark applications, and he has drafted and prosecuted patent applications in the mechanical and chemical fields.

Mr. Want has authored and co-authored a number of papers relating to the Canadian patent system and patent litigation in Canada, including papers prepared for the Intellectual Property Institute of Canada, Industry Canada, and articles published in the Canadian Intellectual Property Review and Patent World.

Experience

Patent proceedings

Bauer Hockey Corp. and Nike International Limited v. Easton Sports Canada Inc., 2010 FC 361; aff'd 2011 FCA 83 - Successfully represented the plaintiffs in a patent infringement action.

sanofi-aventis Canada Inc. v. Apotex Inc., 2007 FC 906 - Successfully resisted an appeal by the defendant of an order setting an early trial date.

Trade-mark proceedings

Canada Post Corp. v. United States Postal Service, 2005 FC 1630 - Successful application for judicial review to the Federal Court of a decision of the Registrar of Trade-marks to give public notice in respect of 13 official marks pursuant to Section 9(1)(n)(iii) of the Trade-marks Act.

Smart & Biggar v. Jarawan, 2006 FC 1254 - Successful appeal to the Federal Court of a decision of the Registrar of Trade-marks refusing to expunge a trade-mark registration pursuant to Section 45 of the Trade-marks Act.

Trade-mark Opposition Board proceedings

Bayer Aktiengesellschaft v. Marcon, 2011 T.M.O.B. 9 - Successful opposition proceeding on behalf of the opponent.

Parmalat Food Inc. v. Groupe Lactalis société anonyme (2005), 45 C.P.R. (4th) 212 (T.M.O.B.) - Successful opposition proceeding on behalf of the opponent.

Professional Involvement

Memberships

· Practice Areas: Litigation; Pharmaceutical; Industrial/Mechanical; Trade-marks; Chemical & Industrial Biotechnology; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Jeremy E. Want

Daphne C. Lainson (Partner, Ottawa; Barrister and Solicitor, Patent and Trade-mark Agent) admitted to bar, 2001, Ontario; 2001, Registered Trade-mark Agent; 2002, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.Sc., Hons., Chemistry, 1994); Queen's University (M.Sc., Chemistry, 1996) thesis titled A computational study of lithium cation and sodium cation interaction with sulfuryl and phosphoryl species; University of Windsor (LL.B., 1999).

Daphne Lainson specializes in securing patent protection for chemical, pharmaceutical and biotechnology related inventions. She is a lawyer, a qualified patent and trade-mark agent, and holds an advanced degree in chemistry. She has been assisting clients with securing patent protection for their innovations for over a decade.

Daphne champions and safeguards the intellectual property rights of her clients, protecting their inventions in new drugs, biologics, medical devices, consumer products, agrochemicals, specialty chemicals, industrial chemical processes, oil, gas and petrochemicals.

She also provides advice to clients on pharmaceutical regulatory law. This includes providing strategic advice during patent prosecution and following patent grant for both pharmaceuticals and biologics. She is called upon to advise innovative pharmaceutical and biopharmaceutical companies in matters relating to the Patented Medicines (Notice of Compliance) Regulations and the Patented Medicine Prices Review Board.

Daphne is sought after to provide advice and guidance to many of the top global innovators.

She is actively involved in the American Intellectual Property Law Association (AIPLA). She is the current chair of the AIPLA Mentoring Committee, past chair of the AIPLA Women in Intellectual Property Law Committee, and a member of the AIPLA Intellectual Property Practice in Japan Committee.

She plays a leading role in client relations management within the firms, particularly in key industrial markets, such as the U.S., Japan and Germany.

Rankings and recognition

· Named by LEXPERT as one of Canada's 2012 Rising Stars - Leading Lawyers Under 40

· Named Ottawa Businesswoman of the Year 2011 in the professional category by the Women's Business Network of Ottawa

Professional Involvement

Memberships

· Practice Areas: Patents; Chemical & Industrial Biotechnology; Pharmaceutical; Life Sciences; IP Management & Strategic Counselling; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Daphne C. Lainson

Colin B. Ingram (Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 2001, Ontario; 2001, Registered Patent Agent; 2001, Registered Trade-mark Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.A.Sc., Electrical Engineering, 1996); University of Ottawa (LL.B., 1999).

Colin Ingram practices in the areas of patent prosecution in the electrical/electronics field, and intellectual property litigation.

Mr. Ingram's litigation practice spans all areas of intellectual property with a particular focus on patent litigation, including pharmaceutical patent litigation. He has experience in both conventional litigation and litigation under the Patented Medicines (Notice of Compliance) Regulations. Mr. Ingram has also been heavily involved in leading Canadian cases on the scope of anti-trust claims relating to the use and acquisition of patent rights. He has appeared as counsel in intellectual property matters before the Ontario Superior Court of Justice, the Federal Court of Canada and the Supreme Court of Canada.

Mr. Ingram's client activities involve both small and large clients, including several high-profile pharmaceutical, electronics and online retail companies. Mr. Ingram works as part of a team that offers range, depth and experience in intellectual property litigation, the legal and technical resources to handle litigation in highly technical subject areas, and the capacity to take advantage of recent intellectual property procedural innovations, including the "trial within two years" initiative of the Federal Court of Canada.

Mr. Ingram has also spent time working in-house at a large Canadian high-tech company, which aids his understanding of the client's perspective when seeking intellectual property advice.

Mr. Ingram (together with Steven B. Garland and John R. Morrissey of Smart & Biggar) recently successfully represented Amazon.com inAmazon.com Inc v Commissioner of Patents, 2010 FC 1011, 2011 FCA 328 in what has become a leading case regarding patentable subject matter, including computer implemented inventions and business methods, in Canada. The Federal Court of Appeal decision was recognized as the 2012 Canadian Patent Case of the Year byManaging Intellectual Property magazine. The Federal Court decision was recognized as the 2010 Canadian Business Case of the Year, in the January 2011 issue of LEXPERT magazine.

Rankings and recognitions

· Recognized annually in Benchmark Canada under Intellectual Property since the inaugural edition in 2012

· Selected to appear in The Best Lawyers in Canada under Intellectual Property Law

Experience

AstraZeneca Canada Inc et al v Mylan Pharmaceuticals ULC et al, 2011 FC 1023, 2012 FCA 109 - Court granted Order of prohibition rejecting generic's arguments of inutility and obviousness.

Amazon.com, Inc v Canada (Attorney General), 2010 FC 1011, 2011 FCA 328 - Successfully represented Amazon.com in leading case regarding patentable subject matter, including computer implemented inventions and business methods, in Canada.

Corlac v Weatherford, 2011 FCA 228 - Successfully represented the intervener the Intellectual Property Institute of Canada (IPIC) on this leading case concerning the scope of the "good faith" requirement for patent prosecution in Canada.

Eli Lilly and Company v Apotex Inc, 2009 FC 991 - Successfully represented defendant by counterclaim, Shionogi & Co. Ltd., in this leading Canadian case on anti-trust claims relating to the use and assignment of patent rights (for interlocutory decision, see 2005 FCA 361).

Lundbeck Canada Inc v ratiopharm Inc, 2009 FC 1102 - Represented the applicant in this leading case on good faith prosecution under section 73(1)(a) of the Patent Act.

Koninklijke Phillips Electronics NV v Maple Technologies Ltd, 2007 FC 773 - Successfully obtained an order requiring disclosure of information regarding equipment and inventory purchased out of the bankruptcy of a patent infringement action defendant.

AstraZeneca Canada Inc v Canada (Minister of Health), 2006 SCC 49 - Represented the respondent, AstraZeneca Canada, before the Supreme Court of Canada in this leading case regarding the scope of thePatented Medicines (Notice of Compliance) Regulations.

Monsanto Canada Inc v Schmeiser, 2004 SCC 34 - Represented the intervener, The Canadian Seed Trade Association, before the Supreme Court of Canada in this leading case regarding the scope of patents to seeds and plants and patent infringement by use.

Harvard College v Canada (Commissioner of Patents), [2004] 4 S.C.R. 45 - Represented the respondent, Harvard College, before the Supreme Court of Canada in this leading case regarding patentable subject matter and in particular the patentability of animals in Canada.

General Electric Co v Wind Power Inc, 2003 FCT 537 - Successfully resisted a motion for particulars in this patent infringement action.

Professional Involvement

Memberships

· Practice Areas: Litigation; Patents; Electrical/Electronics; Pharmaceutical; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Colin B. Ingram

R. Allan Brett (Partner, Ottawa; Barrister and Solicitor; Patent Agent) admitted to bar, 2008, Ontario; 1996, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.Sc., Mathematics and Electrical Engineering, 1989); Queen's University (M.Sc., Electrical Engineering, 1993) thesis focused on spread spectrum communications; University of Ottawa (LL.B., 2007).

R. Allan Brett has specialized in the field of patents for over 15 years. His practice involves complete patent portfolio development and management for clients in various technology sectors, including telecom (infrastructure manufacturers and service providers), semiconductors, Internet, wireless systems, photonics, control systems, digital rights management, software, computers and computing industries. He routinely drafts patent applications and coordinates their prosecution in Canada and around the world, including the preparation and review of Office Action responses.

Professional Involvement

Memberships

· Practice Areas: Patents; IP Management & Strategic Counselling; Electrical/Electronics; Industrial/Mechanical; Software/Internet/Information Technologies; Cleantech.Email: R. Allan Brett

Thuy H. Nguyen (Partner) Education: University of Toronto (B.Sc., Honours Biochemistry, 1988; Ph.D., Biochemistry, 1994). 2000, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: University of Toronto (B.Sc., Hons., Biochemistry, 1988); University of Toronto (Ph.D., Biochemistry, 1994) thesis titled The role of chaperones in intracellular protein trafficking.

Thuy Nguyen has been practising in the area of biotechnology and pharmaceutical patents for over a decade. She has in-depth expertise in all aspects of preparing and prosecuting Canadian and foreign patent applications, including: preparing patentability infringement and validity opinions; developing and managing patent portfolios; conducting freedom-to-operate and due diligence evaluations; strategic planning; and general client counselling. She also provides in-house educational training and seminars on patent law and related matters.

Dr. Nguyen's client activities involve major biochemical, biopharmaceutical and bioagricultural companies as well as small biotechnology start-ups and universities. On top of her expertise in patent procurement and her advanced technical knowledge, Dr. Nguyen was directly involved in the process of starting a biotechnology company in Canada. This wide-ranging experience afforded her a profound understanding of how the law and science must work together to advance the business development goals of the clients she assists.

Professional Involvement

Memberships

· Languages: English; Vietnamese. Practice Areas: Patents; Life Sciences; Pharmaceutical; IP Management & Strategic Counselling; Cleantech.Email: Thuy H. Nguyen

ASSOCIATES

Daniel M. Anthony (Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 2005, Ontario; 2006, Registered Trade-mark Agent; 2007, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of British Columbia (B.Sc., Cell Biology and Genetics, 2000); University of Toronto (J.D., 2004).

Daniel Anthony's practice entails working with clients to define and execute effective strategies for establishing the highest level of protection possible for their intellectual property and technology rights. With a primary focus in litigation, Mr. Anthony also has significant experience with trade-mark opposition and domain name arbitration proceedings.

In his litigation practice, Mr. Anthony assists clients in a wide range of industries with navigating all aspects of a dispute from the initial complaint through to settlement or judgment. He has represented clients before the Canadian Federal Court and the Ontario Superior Court, and he has participated in cases argued before the Canadian Federal Court of Appeal.

Mr. Anthony also has experience in Internet law and in the prosecution and enforcement of trade-marks and copyrights online, including domain names disputes and arbitration.

Mr. Anthony is an editor of Canadian ReMARKS, the firms' trade-mark and marketing law newsletter.

Experience

Patent Infringement

Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361 - Successfully represented Bauer Hockey Corp. and Nike International Inc. in a patent infringement action involving hockey skates.

Trade-mark Opposition

Parmalat Canada Inc. v. Sysco Corp., 2008 FC 1104 - Successful appeal before the Federal Court of a Trade-mark Opposition Board's decision to deny an amendment that would add a novel ground of opposition. This case established that depreciation of goodwill is a possible ground of opposition on the basis that the applicant could not have been satisfied that it was entitled to use the mark.

Domain Name Proceedings

Canada Post Corporation v. Alain Lambert, WIPO Case Number D2008-1902 - Successfully obtained a transfer to Canada Post of five "postecanada" domain names in a defended Uniform Dispute Resolution Proceeding (UDRP) where the registrant was found to have been engaged in typosquatting.

Injunctions and Seizure Orders

Microsoft Corp. v. Cerrelli, 2007 FC 1213 - Successfully obtained and executed a Mareva injunction, Anton Piller Order and seizure before judgment involving a three-day on-site seizure of counterfeit goods and hundreds of thousands of dollars from bank accounts. Solicitor-client costs were awarded payable forthwith from monies seized.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada; member of the Domain Names and Trade-marks on the Internet Committee

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Media

Publications

· "Pinning' down intellectual property rights on scrapbooking websites" (co-author: Kendra Cann), IP Connections, July/August 2012

· "Domain names without borders: the imminent arrival of the new gTLDs," IP Connections, November/December 2011

· "How to ace the test for establishing trade-mark confusion," Canadian ReMARKS, July/August 2011, IP Connections, November/December 2011

· "CIRA expected to introduce substantive changes to CDRP," IP Perspectives, Summer 2011

· "Are you ready for new top-level domains?" IP Connections, March/April 2011

· "What to do when someone registers YourTrademark.ca," IP Connections, January/February 2011

· "Smart & Biggar successfully represents plaintiffs in patent infringement action in Federal Court," IP Perspectives, Autumn 2010; CCCA Members Knowledge Centre, September 2011

· "Federal Court introduces summary trial rules" (co-author: Colin B. Ingram), IP Perspectives, Spring 2010

· "Got personality? How can you protect it?" IP Connections, September/October 2009

· "New summary trial mechanism proposed for Federal Court," IP Perspectives, Spring 2009

· "Wine, cheese and other edible treats - a sampling of geographical indications," IP Connections, July/August 2008

· "Your Domain Name: Are You In Control?" Canadian Corporate Counsel, January/February 2008; IP Connections, January/February 2008

· "Canada: PROZAC tablet not registrable" (co-author: Gunars Gaikis), Law Lore & Practice, September 2006

· "A Shift on the Horizon: The Conspiracy of Assignment" (co-author: Steven B. Garland), Patent World, May 2006

Practice Areas: Litigation; Trade-marks; Copyright & Media; Patents; Pharmaceutical; Pharmaceutical Regulatory & Compliance; IP Management & Strategic Counselling; Software/Internet/Information Technologies.Email: Daniel M. Anthony

Timothy O. Stevenson (Barrister and Solicitor; Trade-mark Agent) admitted to bar, 2006, Ontario; 2008, Registered Trade-mark Agent. Education: University of Victoria (B.Sc., Biochemistry, 2000); University of Victoria (LL.B., 2005).

Timothy Stevenson's practice focusses primarily on trade-marks, including prosecution, clearance and opposition matters. Mr. Stevenson also has significant litigation experience in all areas of intellectual property, and has successfully represented clients before the Trade-marks Opposition Board, Federal Court and Federal Court of Appeal.

Mr. Stevenson works with clients in a variety of industries, including pharmaceuticals, consumer goods manufacturing, restaurants and food and beverage producers. His educational background in biochemistry and work experience in the field of pharmaceuticals are a particular asset to clients operating in these areas.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Canadian Bar Association

Speaking engagements

· Presentation on legal writing and research, Intellectual Property Institute of Canada Basics of Law training series, Ottawa, November 2009

Teaching activities

· Guest lecture on intellectual property issues (with Jeffrey Coles), Industrial Applications of Chemistry class, Carleton University, November 2010, October 2012

Media

Publications

· "Clic International Inc. v. Convenience Food Industries (Private) Limited and The Registrar of Trade-marks" case brief in Canadian ReMARKS, February 2012

· "Kelemata S.p.A. v. Gillette Company" case brief in Canadian ReMARKS, March/April 2011

· "Canadian Trade-marks Office may loosen restrictions on some non-traditional trade-marks," Canadian ReMARKS, January/February 2011

Practice Areas: Litigation; Trade-marks; Patents; Copyright & Media; Industrial Designs.Email: Timothy O. Stevenson

Jeffrey E. Coles (Barrister and Solicitor; Trade-mark Agent) admitted to bar, 2008, Ontario; 2009, Registered Trade-mark Agent. Education: Dalhousie University (B.Sc., Hons., Biochemistry and Microbiology, 2001); University of Alberta (M.Sc., Medical Sciences - Oncology, 2004) thesis titled Transcriptional Regulation and Role of B-FABP and GFAP in Malignant Glioma; University of Alberta (LL.B., 2007).

Jeffrey Coles practices in the field of patents relating to biotechnology, molecular biology, diagnostics and pharmaceuticals. He prepares and prosecutes patent applications for clients operating both in Canada and internationally. Mr. Coles assists his Canadian clients with coordinating patent applications in Canada and in foreign jurisdictions such as the United States, Europe and Japan. He also works with clients operating worldwide to assist in the prosecution of patent applications before the Canadian Intellectual Property Office. Mr. Coles regularly prepares and files responses to Office Actions and is involved in providing strategic advice concerning issues of patentability and in matters relating to the Patented Medicines (Notice of Compliance) Regulations and the Patented Medicine Prices Review Board.

With client activities that include companies from Canada and around the world, Mr. Coles works with biotechnology and pharmaceutical organizations ranging in size from small and medium enterprises to multinational corporations. He also has experience working with universities, research institutes and hospitals.

Prior to entering the legal field, Mr. Coles obtained significant research experience through his post-graduate studies at the University of Alberta and his work at the Chemical Biological Defence Section of the Canadian Department of National Defence. His research has been published in the Journal of Biochemistry, Viral Immunology and Neoplasia. Mr. Coles was the recipient of numerous scholarships during both his scientific and legal studies.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Teaching activities

· Guest lecture on intellectual property issues (with Timothy Stevenson), Industrial Applications of Chemistry class, Carleton University, November 2010, October 2012

Media

Publications

· "Patent Law Update" (co-author: David E. Shwartz), Managing Intellectual Property, September 2012

· "Canadian Patent Litigation As Part of a Global Enforcement Regime" (co-author: Jacqueline DeGagne), AIPLA Spring Meeting conference materials, New York, NY, May 2010

· "Nuclear factor I regulates brain fatty acid-binding protein and glial fibrillary acidic protein gene expression in malignant glioma cell lines" (co-authors: M. Brun, E.A. Monckton, D.D. Glubrecht, D. Bisgrove, and R. Godbout), Journal of Molecular Biology, August 2009; 391(2): 282-300

· "B-FABP-expressing radial glial cells: the malignant glioma cell of origin?" (co-authors: R. Mita, D.D. Glubrecht, R. Sung, X. Sun and R. Godbout), Neoplasia, September 2007; 734-744

Practice Areas: Patents; Life Sciences; Pharmaceutical; IP Management & Strategic Counselling; Trade-marks; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Jeffrey E. Coles

Daniel S. Davies (Barrister and Solicitor; Trade-mark Agent) admitted to bar, 2008, Ontario; 2009, Registered Trade-mark Agent. Education: University of Ottawa (B.A.Sc., Electrical Engineering, summa cum laude, 2003); University of Ottawa (LL.B., cum laude, 2007).

Daniel Davies practices primarily in litigation in the fields of patents, trade-marks and copyrights. He regularly represents clients in court proceedings, including before the Federal Court of Canada, and advises clients on the enforcement of their Canadian intellectual property rights. He also represents clients in trade-mark oppositions, trade-mark expungement proceedings and domain name disputes.

Mr. Davies works with clients in a wide variety of fields, including high-tech companies, Internet companies, manufacturers, retail chains, pharmaceutical companies and the oil and gas industry. His strong background in electrical engineering and experience in computer programming are particular assets to clients.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Canadian Bar Association

Media

Publications

· "Supreme Court provides guidance on application of 'fair dealing' test" (co-author: Kevin K. Graham),International Law Office Intellectual Property Newsletter, August 6, 2012

· "Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright)," IP Perspectives, Summer 2012 Special Edition

· "Federal Court of Appeal upholds prohibition Order for anastrozole," Rx IP Update, May 2012

· "Hortilux Schreder B.V. v. Iwasaki Electric Co. Ltd" case brief in Canadian ReMARKS, September/October 2011

· "Canadian Dental Association v. Ontario Dental Assistants Association" case brief in Canadian ReMARKS, September/October 2011

· "Compensation for costs in IP-related proceedings in Canada," IP Connections, July/August 2011

Practice Areas: Litigation; Electrical/Electronics; Software/Internet/Information Technologies; Trade-marks.Email: Daniel S. Davies

Glen S. Kurokawa (Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 2008, Ontario; 2009, Registered Trade-mark Agent; 2010, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: University of British Columbia (B.Sc., Chemistry/Biochemistry, 2001); University of Toronto (J.D., 2006).

Glen Kurokawa's practice focusses on patents in the chemical, pharmaceutical, life sciences and industrial/mechanical fields. He is involved both with patent prosecution and with litigation.

In Mr. Kurokawa's patent prosecution practice, he regularly assists associates and companies operating in Asia, the United States, and Europe with inventions in the chemical/pharmaceutical/life sciences sector, as well as mechanical and industrial sectors.

In his litigation practice, Mr. Kurokawa is involved with proceedings under the Patented Medicines (Notice of Compliance) Regulations.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Media

Publications

· "Building blocks to green patent specifications" (co-author: David E. Schwartz), Intellectual Property Magazine, October 2011

· "Asian CSR Profiles and National Indicators: Investigation Through Webcontent Analysis" (co-author: Darryl Macer), International Journal of Business and Society, 9(2): 1-8, 2008

· "Definitional imprecisions in strategic and non-strategic Corporate Social Responsibility" (co-author: Darryl R. J. Macer), International Journal of Management Concepts and Philosophy, 3(2): 121-133, 2008

· "Biosafety Regulation Trends in Southern and Southeastern Asia" (co-author: Darryl Macer), Journal of International Biotechnology Law, 2: 178-184, 2005

· "TRIPS, the Doha Declaration and increasing access to medicines: policy options for Ghana" (co-authors: J.C. Cohen, M. Gyansa-Lutterodt, K. Torpey and L.C. Esmail), Globalization and Health, 1: 17, 2005

· "Proton- and lanthanide-coordinating properties of the tetraaza macrocycle (EDDA-KA)2 in aqueous solution" (co-authors: Bin Song, Shuang Liu and Chris Orvig), Canadian Journal of Chemistry, 79: 1058-1067, 2001

Languages: English; Japanese. Practice Areas: Patents; Chemical & Industrial Biotechnology; Pharmaceutical; Life Sciences; Industrial/Mechanical; Cleantech; IP Management & Strategic Counselling; Litigation; Licensing & IP Transactions; Pharmaceutical Regulatory & Compliance.Email: Glen S. Kurokawa

Patrick J. Laycock (Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 2008, Ontario; 2009, Registered Patent Agent; 2010, Registered Trade-mark Agent. Education: Brigham Young University (B.Sc., Electrical Engineering, 2002); University of Central Florida (M.Sc., Optics, 2004); University of Alberta (LL.B., 2007).

Patrick Laycock's practice focusses on the drafting and prosecution of patents in the field of electronics. He also has experience with industrial design prosecution. Mr. Laycock regularly drafts patent applications and provides services relating to patent prosecution, including preparing and filing responses to Examiners' reports.

Mr. Laycock's client activities primarily involve large technology companies operating in Canada and the United States. He also regularly assists associate law firms from around the world with procuring patent protection for their clients' intellectual property assets in Canada.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Canadian Bar Association

Media

Publications

· "Free previews amount to fair dealing and do not infringe copyright," International Law Office Intellectual Property Newsletter, August 6, 2012

· "Society of Composers, Authors and Music Publishers of Canada v Bell Canada, 2012 SCC 36," IP Perspectives, Summer 2012 Special Edition

· "Why not designs?" IP Connections, July/August 2012

· "Cloud computing: A brief overview of intellectual property issues 'in the cloud,'" IP Connections, November/December 2011

· "Clarifying the scope of the good faith requirement in Canadian patent prosecution," IP Perspectives, Winter 2011

· "Considerations arising from the expiration of patent protection," IP Connections, January/February 2011

Practice Areas: Patents; Industrial Designs; Electrical/Electronics; Software/Internet/Information Technologies; Industrial/Mechanical; Cleantech.Email: Patrick J. Laycock

Christopher J. Thompson (Barrister and Solicitor) admitted to bar, 2010, Ontario. Education: University of Waterloo (B.Math., Computer Science, 1999) Dean's Honour List; University of Washington (M.Sc., Computer Science, 2001) thesis titled Interactive Design of Constraint-Based Articulated Structures; University of Alberta (LL.B., 2009).

Christopher Thompson focuses on prosecution and litigation relating to patents, particularly in the fields of software and computer-implemented technologies.

Prior to joining the firms, Mr. Thompson was employed by two of the world's largest software development companies. His skill set includes software design, computer graphics and computer-aided design, computer hardware architecture, and analog circuit design. This experience affords him a level of technical expertise and industry understanding that is of particular value to his clients, which include computer software and hardware companies of both local and international scope.

During his graduate studies at the University of Washington, Mr. Thompson was part of the four-person team that won the Grand Prize in the school's annual business plan and entrepreneurship competition.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Canadian Bar Association

Media

Publications

· "On closer examination: Examining the Canadian re-examination process" (co-author: David E. Schwartz), Patent World, November 2008

Languages: English; French. Practice Areas: Litigation; Patents; Trade-marks; Software/Internet/Information Technologies; Electrical/Electronics; Industrial/Mechanical; Cleantech.Email: Christopher J. Thompson

Cameron P. Weir (Barrister and Solicitor; Trade-mark Agent) admitted to bar, 2010, Ontario; 2011, Registered Trade-mark Agent. Education: Queen's University (B.Sc., Hons., Life Sciences, 2004); McGill University (M.Sc., Pharmacology and Therapeutics, 2007) thesis titled Aging and oxidative stress in epididymal spermatozoa of the brown Norway rat; Queen's University (J.D., 2009).

Cameron Weir's practice covers litigation in all areas of intellectual property, particularly in the areas of patents and trade-marks.

Mr. Weir's technical background is in the area of life sciences. He was the recipient of several awards during his undergraduate and graduate studies, including an award from the American Society of Andrology for research he presented in 2006. His graduate thesis was published in the Journal of Andrology.

During Mr. Weir's legal studies, he worked with an interdisciplinary team of students on developing a process for a large Canadian biopharmaceutical company, the results of which were presented to members of the company's Board of Directors. His role in the project was to conduct a review of the intellectual property related to the process under consideration.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Media

Publications

· "Demystifying patent litigation: An overview of the procedures, cost and pace of patent litigation in Canada" (co-author: Colin B. Ingram), IP Connections, September/October 2012

· "The Duty of Candour in Canada" (co-author: Steven B. Garland), Canadian Intellectual Property ReviewVol. 27, No. 2 (December 2011), p. 219-256

· "McCallum Industries Limited v. HJ Heinz Company Australia Ltd." case brief in Canadian ReMARKS, February 2012

· "Canada and the duty of candour: Corlac Inc v. Weatherford Canada Ltd, 2011 FCA 228," IP Connections, January/February 2012

· "Canada - the duty of good faith: Corlac Inc v Weatherford Canada Ltd," Chartered Institute of Patent Attorneys (CIPA) Journal, October 2011

· "Case comment: Corlac Inc v Weatherford Ltd 2011 FCA 228," IPIC Bulletin, September/October 2011

· "Tucows.Com Co v. Lojas Renner SA" case brief in Canadian ReMARKS, September/October 2011

· "Canada and the Duty of Candour" (co-authors: Steven B. Garland and Colin B. Ingram), Intellectual Property Magazine, November 2011

· "McCarthy Tetrault LLP v. AutoZone Parts, Inc." case brief in Canadian ReMARKS, July/August 2011

· "Amazon single action ordering patent and the scope of patentable subject matter in Canada" (co-authors: Steven B. Garland and Colin B. Ingram) Intellectual Property Magazine, February 2011

· "Spermatozoa have decreased antioxidant enzymatic capacity and increased reactive oxygen species production during aging in the Brown Norway rat" (co-author: B. Robaire), Journal of Andrology, 2007; 28:229-40

Practice Areas: Litigation; Patents; Life Sciences; Pharmaceutical; Trade-marks; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Cameron P. Weir

Jacky Wong (Barrister and Solicitor; Trade-mark Agent) admitted to bar, 2010, Ontario; 2011, Registered Trade-mark Agent. Education: University of British Columbia/British Columbia Institute of Technology (B.Sc., Hons., Biotechnology Joint Degree, 2006); University of British Columbia (J.D., 2009).

Jacky Wong's practice covers trade-mark prosecution and litigation relating to all areas of intellectual property.

Mr. Wong is a registered trade-mark agent. He is regularly involved in all steps of the registration process, including preparing registrability and availability opinions for proposed trade-marks and response to Examiner's Reports. He also frequently prepares evidence and written arguments to be filed in trade-mark opposition and cancellation proceedings, as well as advises on enforcement and litigation matters.

Mr. Wong's technical background is in the biotechnology sector. His work experience in a biotechnology company and several research laboratories are of particular value to clients working within the pharmaceutical and biotechnology industries.

Through the course of his academic career, Mr. Wong was the recipient of multiple awards and scholarships. During his legal studies, he participated in an exchange program at the University of Hong Kong, during which time he worked as an intern in the Intellectual Property Department of the Government of the Hong Kong Special Administrative Region where he assisted in policy development.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada, member of the International Trade-mark Issues Committee

· Member, Canadian Bar Association

Media

Publications

· "Sound marks: A Canadian renaissance" (co-author: Philip Lapin), IP Connections, May/June 2012

· "Head Technology GmbH v. Jimmy Tees inc.," case brief in Canadian ReMARKS, February 2012

· "Copyright to be the focus of attention in fall 2011," IP Perspectives, Autumn 2011; Lexology, November 17, 2011

· "Spirits International B.V. v. BCF S.E.N.C.R.L." Case brief in Canadian ReMARKS, September/October 2011

· "Defining wares and services in Canada - what is an 'ordinary commercial term'?" Canadian ReMARKS, July/August 2011

· "Pélican International Inc. v. GSC Technologies Corp." Case brief in Canadian ReMARKS, May/June 2011

Languages: English; Chinese. Practice Areas: Litigation; Patents; Trade-marks; Copyright & Media; Life Sciences; Pharmaceutical; Chemical & Industrial Biotechnology; Industrial Designs; Pharmaceutical Regulatory & Compliance; Cleantech.Email: Jacky Wong

Hongbin Li (Barrister and Solicitor, Trade-mark Agent) admitted to bar, 2011, Ontario; 2012, Registered Trade-mark Agent. Education: Wuhan University (B.Sc., Chemistry, 1990); Peking University (M.Sc., Biophysics, 1996); University of California, San Francisco (M.Sc., Medical Information Science, 1999) thesis focussed on the understanding of the structure-function relationship of biomacromolecules through bioinformatic methods; University of Alberta (J.D., 2010).

Hongbin Li's practice focusses on patent prosecution in the fields of pharmaceuticals, chemistry, biotechnology, medical devices and diagnostics, applied materials and consumer products.

Prior to entering into the practice of law, Mr. Li worked in the biotechnology/pharmaceutical industry as a scientific developer. His job responsibilities included coordinating between R&D and patenting efforts.

Mr. Li is also academically trained in the field of bioinformatics. His graduate research in this subject was aimed at decoding the structural-functional relationship of biomolecules through computer-aided systems and involved developing computational tools for analyzing large-scale biological data.

Mr. Li was the recipient of several scholarships awarded for academic excellence during his undergraduate and graduate studies.

Languages: English; Chinese. Practice Areas: Patents; Pharmaceuticals; Chemical & Industrial Biotechnology; Life Sciences; Clean Tech.Email: Hongbin Li

Niall E. Cooney (Barrister and Solicitor, Trade-mark Agent) admitted to bar, 2011, Ontario; 2012, Registered Trade-mark Agent. Education: Queen's University (B.Sc., Electrical Engineering, 2007); Queen's University (J.D., 2010).

Niall Cooney's practice focusses on assisting clients with obtaining patent protection for electrical, computer, mechanical and software-related inventions. He regularly assists both Canadian clients, ranging from small to large high-tech companies, and associate firms in other countries with responding to office actions and filing protests. He has also assisted in some litigation work relating to validity analysis.

Mr. Cooney received several awards and scholarships during his undergraduate and legal studies, including the course prize in Patent Law, the David Sabbath Prize in Advanced Criminal Law and the Dean's Bronze Scholar award.

Practice Areas: Patents; Trade-marks; Litigation; Electrical/Electronics; Software/Internet/Information Technologies; Industrial/Mechanical; Cleantech.Email: Niall E. Cooney

Kwang Hoon Shin (Barrister and Solicitor, Trade-mark Agent) admitted to bar, 2011, Ontario; 2012, Registered Trade-mark Agent. Education: Seoul National University (B.Sc., Agricultural Biology, 1992); Seoul National University (M.Sc., Plant Pathology, 1996) thesis titled An expert system to diagnose and control diseases and nutritional disorders of cucumber; Seoul National University (Ph.D., Plant Pathology, 2003) thesis titled Effects of polyoxyethylene cetyl ether on biological activity of ethaboxam against cucumber downy mildew; PMP - Project Management Professional (2005); Osgoode Hall Law School of York University (J.D., 2010).

Kwang Shin's practice focusses on the preparation and prosecution of patent applications in the fields of chemistry, pharmaceuticals and life sciences.

Prior to joining Smart & Biggar/Fetherstonhaugh, Dr. Shin held managerial positions for more than 10 years in the research, technical support and strategic marketing divisions of Bayer CropScience (BCS) Korea. This experience has provided him with a solid understanding of the business of chemical substances and genetically modified organisms throughout their life cycle. Dr. Shin was also responsible for BCS's negotiations and transactions with Japanese companies for approximately 10 years.

Professional Involvement

Memberships

· Member, Project Management Institute

· Member, The Association of Korean Canadian Scientists and Engineers

· Member, Korean Society of Plant Pathology

Media

Publications

· "Patent protection of new plant varieties," IP Connections, November/December 2012

· "Suggestion on Patent Act Modification regarding Genetically Modified Plants," electronic publication on IP Osgoode website, 2008 "

· Improvement in Fungicidal Activity of Ethaboxam by a Non-ionic Surfactant, Polyoxyethylene Cetyl Ether" (co-authors: Dal-Soo Kim, Sam-Jae Chun and Eun Woo Park), The Plant Pathology Journal, 2006

Languages: English; Japanese; Korean. Practice Areas: Patents; Life Sciences; Chemical & Industrial Biotechnology; Pharmaceutical; Licensing & IP Transactions; IP Management & Strategic Counselling; Cleantech.Email: Kwang Hoon Shin

Lionel Fishman (Barrister and Solicitor) admitted to bar, 2012, Ontario. Education: University of Ottawa (B.A.Sc., Mechanical Engineering, summa cum laude, 2008); University of Ottawa (J.D., magna cum laude, 2011).

Lionel Fishman's practice focusses on patent and industrial design prosecution and litigation, particularly in the mechanical, electrical, computer and software fields.

Mr. Fishman's client activities involve Canadian companies seeking to obtain industrial design and patent protection in Canada and abroad, and associate firms outside of Canada seeking to obtain patent protection for foreign clients.

Through work terms as an engineering student, Mr. Fishman gained experience in the medical devices field and the aerospace and aeronautics industries. During his legal studies, he was the recipient of the Osgoode Society Prize for Canadian Legal History (awarded to the top 15 graduating students in each of Ontario's law schools), the Hugh G. Doyle Memorial Prize for Family Law, and the 2008-2009 Gowling Lafleur Henderson LLP Faculty of Law Entrance Scholarship.

Professional Involvement

Memberships

· Member, Canadian Bar Association

Languages: English; French; German. Practice Areas: Patents; Industrial Designs; Litigation; Industrial/Mechanical; Cleantech; Software/Internet/Information Technologies; Electrical/Electronics; Trade-marks; Copyright & Media; Licensing & IP Transactions; IP Management & Strategic Counselling.Email: Lionel Fishman

Eve Heafey (Barrister and Solicitor) admitted to bar, 2012, Ontario. Education: University of Ottawa (LL.L., summa cum laude, 2008); University of Ottawa (M.Sc., Nanochemistry, 2009) thesis titled Applications of Spectroscopy to the Creation and Study of Nanostructures; Columbia University (LL.M., IP Law, 2010) thesis titled Public Access to Science - The New Policy of the National Institutes of Health in Light of Copyright Protections in National and International Law; University of Ottawa (J.D., summa cum laude, 2011).

Eve Heafey's practice focusses on litigation relating to patents, trade-marks, industrial designs and copyright.

Ms. Heafey's technical expertise includes spectroscopic analytical techniques, such as photochemical processes, photospectrometry and laser flash photolysis, and as well as a variety of other analytical techniques, including cell culture, chromatography and microscopy. She also has experience with open-access software licences and open-access copyrights.

During her legal studies, Ms. Heafey received the Right Honourable Brian Dickson Prize for the highest standing in the National Program at the University of Ottawa (2011). She was also named a James Kent Scholar at Columbia Law School in recognition of her outstanding academic achievement.

In addition to her legal practice, Ms. Heafey teaches "Introductory Legal Thinking Studies for Chemistry" at the University of Ottawa, Faculty of Science.

Professional Involvement

Memberships

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Teaching activities

· "Introductory Legal Thinking Studies for Chemistry," University of Ottawa, Faculty of Sciences, 2012

· Coached University of Ottawa's Harold G. Fox Intellectual Property Moot Court Team, 2012

Media

Publications

· "A Primer on Nanomaterials Regulation" (co-author: Marc Saner), Institute for Science, Society and Policy, University of Ottawa, 2012

· "Public Access to Science: The New Policy of the National Institutes of Health in Light of Copyright Protections in National and International Law," UCLA Journal of Law & Technology, Volume 14, Issue 2 (2010)

Languages: English; French. Practice Areas: Litigation; Patents; Industrial Designs; Copyright & Media; Trade-marks; Pharmaceutical; Pharmaceutical Regulatory & Compliance; Chemical & Industrial Biotechnology; Cleantech; Life Sciences.Email: Eve Heafey

Andrea C. Kroetch (Barrister and Solicitor, Trade-mark Agent) admitted to bar, 2012, Ontario; 2012, Registered Trade-mark Agent. Education: University of Western Ontario (B.Sc., Hons., Genetics, International Relations, 2006); Carleton University (M.A., International Affairs, Specialization in International Institutions and Global Governance, 2011) thesis titled Canadian Conflict of Laws and Jurisdiction on the Internet; University of Ottawa (J.D., 2011).

Andrea Kroetch's practice focusses on litigation in all areas of intellectual property, trade-mark prosecution and opposition, and issues related to IP licensing and management, particularly in the area of trade-marks. She also provides advice on contest rules and general Canadian labelling requirements.

Ms. Kroetch has significant experience in matters relating to international intellectual property, primarily in the area of conflict of laws and in the legal issues involved in cross-border litigation, including questions of adjudicative jurisdiction and choice of law.

During her undergraduate, graduate and legal studies, Ms. Kroetch received several awards and scholarships, including entrance into the Dean's Course on Legal Research and Writing, the 2012 Osgoode Society Prize for Canadian Legal History (awarded to the top 15 graduating students in each of Ontario's law schools) and the 2007-2008 Gowling Lafleur Henderson LLP Faculty of Law Entrance Scholarship.

Professional Involvement

Memberships

· Member, Ontario Bar Association

· Member, Canadian Bar Association

Media

Publications

· "Liability for Infringement by Inducement" (co-author: Colin B. Ingram), Intellectual Property Journal, Volume XVII, No. 2, 2012

· "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 6 to 11, 2008

· "Why Privilege Rules Need to be Reformed - Canada: Uncertainty Regarding Overseas Advice," Managing Intellectual Property, July/August 2008

Practice Areas: Litigation; Trade-marks; Licensing & IP Transactions; IP Management & Strategic Counselling; Copyright & Media; Patents.Email: Andrea C. Kroetch

Erin T. Creber (Barrister and Solicitor) admitted to bar, 2012, Ontario. Education: Queen's University (B.Sc., Hons., Chemical Engineering, 2007); Queen's University (B.A., Economics, 2008); University of Western Ontario (J.D., 2011).

Erin Creber's practice covers litigation in all areas of intellectual property law and also involves trade-mark prosecution. She regularly prepares documents to support litigation, such as cease and desist letters and settlement agreements. She also assists with responding to correspondence from the Trade-marks Office relating to trade-mark registrations, applications and oppositions. In addition, she has experience filing copyright applications.

Ms. Creber's clients range from individuals seeking IP protection to large multi-national corporations, in-house counsel and associate firms. Her technical expertise in chemical processing and manufacturing, biomaterials and bioengineering is a particular asset to clients operating in these areas.

Professional Involvement

Memberships

· Member, Canadian Bar Association

Media

Publications

· "Discerning design marks: When does a change make a mark too different?" IP Connections, January/February 2013

· "From iTunes to the classroom - the Supreme Court of Canada cements fair dealing as a 'user's right'" (co-author: Kevin K. Graham), IP Perspectives, Autumn 2012

· "To disclaim or not to disclaim, that is the question" (co-author: Kevin K. Graham), IP Perspectives, Summer 2009

Practice Areas: Litigation; Trade-marks; Patents; Copyright & Media; Licensing & IP Transactions; Chemical & Industrial Biotechnology; Cleantech.Email: Erin T. Creber

COUNSEL

Solomon M.W. Gold (Counsel, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1991, Ontario; 1991, Registered Trade-mark Agent; 1994, Registered Patent Agent. Education: University of Toronto (B.Sc., Physiology, 1984); York University (M.Sc., Biology, 1987) thesis focused on hormonal control of protein synthesis in an insect reproductive system; University of Western Ontario (LL.B., 1989).

Solomon Gold's practice focusses on patent prosecution relating to chemical subject matter. He endeavours to assist clients in obtaining the strongest possible Canadian patent protection for their inventions in a cost-effective manner. He analyses objections raised by the Patent Office during the examination of an application and works with clients to develop strategies for addressing and overcoming them. He also assists with making voluntary amendments to pending applications when such action is in a client's best interests.

Mr. Gold's client activities involve companies operating in the chemical field, including those that develop pharmaceuticals, herbicides, pesticides, petroleum products, polymers and foods.

Professional Involvement

Memberships

· Practice Areas: Patents; Chemical & Industrial Biotechnology; Pharmaceutical; Life Sciences; Pharmaceutical Regulatory & Compliance.Email: Solomon M.W. Gold

Kevin K. Graham (Counsel, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent) admitted to bar, 1998, Ontario; 1998, Registered Trade-mark Agent; 2000, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.Sc., Hons., Engineering Physics, 1993) thesis titled Design of ultrasonic collision avoidance system; Osgoode Hall Law School of York University (LL.B., 1996).

Kevin Graham has practised in litigation in all areas of intellectual property for over a decade. Mr. Graham's activities cover all aspects of the litigation process, including: providing practical advice concerning intellectual property litigation and litigation strategy with the goal of bringing disputes to a successful resolution; preparing and presenting evidence and written and oral submissions to trial and appellate courts; and negotiating and preparing settlement and licensing agreements. He also advises on intellectual property management and protection strategies.

Mr. Graham has appeared before the Patent Appeal Board, Trade-marks Opposition Board, Federal Court, Federal Court of Appeal, Ontario Court of Appeal, and Ontario Superior Court of Justice. He works with local, national and international clients in a variety of fields, including manufacturing, information technology and high technology.

Experience

Uview Ultraviolet Systems Inc. v. Brasscorp Ltd., 2009 FC 58 - Patent infringement action.

Smart & Biggar v. Marty Sanders (2008), 70 C.P.R. (4th) 477 (T.M.O.B.) - Trade-mark expungement proceeding.

j2 Global Communications Inc. v. Protus IP Solutions Inc., 2008 FC 759, 2008 FC 760, 2009 FCA 41, 2009 FCA 42, 2010 FC 572 - Procedural motions and related appeals in patent infringement/anti-competition action.

CertainTeed Corp. v. Canada (Attorney General), 2006 FC 436 - Appeal from the patent appeal board.

Sim & McBurney v. Anchor Brewing Co., 2005 FCA 171 - Appeal of trade-mark expungement proceeding.

Anchor Brewing Co. v. Sleeman Brewing & Malting Co., 2005 FCA 170 - Appeal of summary judgment motion in trade-mark infringement action.

Oakley Inc. v. Shoppers Drug Mart Inc., 2004 FCA 404 - Appeal of summary judgment motion in copyright/trade-mark infringement action.

Molson Canada v. Oland Breweries Ltd./Brasseries Oland Ltée., 11 C.P.R. (4th) 199 (Ont. Gen. Div.); aff'd 19 C.P.R. (4th) 201 (Ont. C.A.) - Passing-off action.

Andrés Wines Ltd. v. Vina Concha Y Toro S.A., 2001 FCT 575 - Trade-mark expungement proceeding.

Professional Involvement

Memberships

· Practice Areas: Litigation; IP Management & Strategic Counselling; Software/Internet/Information Technologies; Licensing & IP Transactions; Trade-marks; Patents; Industrial Designs; Electrical/Electronics; Cleantech.Email: Kevin K. Graham

PATENT & TRADEMARK AGENTS

A. Oliver Stone 1994, European Patent Attorney; 1999, UK Chartered Patent Agent; 2002, Registered Patent Agent; registered to practice before the United States Patent and Trademark Office. Education: University of London, United Kingdom (B.Sc., Hons., Physics, 1985); University of London, United Kingdom (Ph.D., 1990) thesis titled Electrical transport properties of two-dimensional systems at low temperatures.

Oliver Stone's practice has been dedicated to patent drafting and prosecution for over 20 years. He has a vast array of experience with all aspects of the Canadian patent procurement process, including: assessing patentability and performing freedom-to-operate searches; drafting applications; reporting and responding to Office Actions; preparing infringement and validity opinions; and counselling clients regarding portfolio management strategies. He has also advised clients extensively on and assisted with the preparation of industrial design applications. Dr. Stone also has first-hand experience with practising before the United States Patent and Trademark Office, the United Kingdom Intellectual Property Office and the European Patent Office, which affords him a unique perspective on both assisting Canadian clients with their overseas applications and advising foreign associates on the procedural differences and potential challenges they may encounter in Canada.

Dr. Stone has drafted patent applications in a wide range of technologies, including telecommunications, electronic devices, processor architecture, imaging systems (including MRI and laser cameras), flight control systems, power generation, protective garments for military and emergency service personnel, solar energy capture and conversion systems, and anti-counterfeiting and security devices.

The majority of Dr. Stone's client activities involve corporate clients of all sizes, and he has also worked with Canadian universities and government research organizations. He has also assisted large corporate clients based in the United States, Korea and Japan with their Canadian patent procurement needs. Dr. Stone's track record of securing patent grant in difficult and complex cases is of particular value to clients operating within highly technological fields.

Professional Involvement

Memberships

· Practice Areas: Patents; IP Management & Strategic Counselling; Industrial Designs; Electrical/Electronics; Industrial/Mechanical; Software/Internet/Information Technologies; Cleantech.Email: A. Oliver Stone

A. Dennis Armstrong admitted to bar, 1977, Registered Trade-mark Agent. Education: Algonquin College of Applied Arts and Technology (Business Administration, 1973).

Dennis Armstrong has specialized in the field of trade-marks for over 30 years. His practice covers advising clients on all aspects of the domestic and international trade-mark life cycle, including searching, filing, prosecution, registration, cancellation proceedings and portfolio management.

Professional Involvement

Memberships

· Practice Areas: Trade-marks.Email: A. Dennis Armstrong

Sohrab Sabet 1981, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: University of Strathclyde (B.Sc., Hons., Chemistry, 1973); University of Strathclyde (M.Sc., Analytical Chemistry, 1974) thesis titled Interference Studies and Response Speed of the Ammonium Selective Electrode; University of Strathclyde (Ph.D., Atomic Spectroscopy, 1977) thesis titled The Application of Electrothermal and Delves Cup Atomic Absorption Spectrometry to Trace Metal Analysis in Biological Fluids.

Sohrab Sabet's practice has been dedicated to the drafting and prosecution of patents for over 30 years. His in-depth knowledge allows him to assist Canadian chemical and pharmaceutical companies as well as associate law firms in the United States, Japan and throughout Europe (including Germany, the United Kingdom, The Netherlands, and Italy) with all aspects of patent procurement before the Canadian Intellectual Property Office.

Professional Involvement

Memberships

· Practice Areas: Patents; Chemical & Industrial Biotechnology; Cleantech; Pharmaceutical.Email: Sohrab Sabet

Jeff Leuschner 2009, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office. Education: Queen's University (B.Sc., Electrical Engineering, 2005); Queen's University (M.Sc., Electrical Engineering, 2007) thesis titled A New Maximum-Likelihood Metric Expression for Space-Time Block Codes with Applications to Decoding Area: Wireless communications, specifically Multiple-Input Multiple-Output (MIMO) systems.

Jeff Leuschner's practice focusses on the drafting and prosecution of patent applications in the field of electronics. Mr. Leuschner has specialized knowledge in a variety of technical disciplines, including wireless communications, cryptography, and the physical layering of networks. This knowledge allows him to effectively assist clients with securing patent protection for their valuable intellectual property assets.

Professional Involvement

Memberships

· Member, Institute of Electrical and Electronics Engineers

Media

Publications

· "The one-year grace period for patent filing in Canada: An overview for U.S. practitioners," IP Perspectives, Summer 2012

· "A new generic maximum-likelihood metric expression for space-time block codes with applications to decoding" (co-author: S. Yousefi), IEEE Transactions on Information Theory, vol. 54, 2008, pp. 888-894

· "On the ML decoding of quasi-orthogonal space-time block codes via sphere decoding and exhaustive search" (co-author: S. Yousefi), IEEE Transactions of Wireless Communications, vol. 7, 2008, pp. 4088-4093.

· "A new sub-optimal decoder for quasi-orthogonal space-time block codes" (co-author: S. Yousefi), IEEE Communications Letters, vol. 12, 2008, pp. 548-550

Practice Areas: Patents; Electrical/Electronics; Software/Internet/Information Technologies; Cleantech.Email: Jeff Leuschner

David M. Walters 2003, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: Memorial University of Newfoundland (B.Eng., Electrical, 1993); Former Senior Canadian Patent Examiner.

David Walters practices exclusively in the field of patents. Having spent over 10 years in a legal department or law firm setting and over 15 in the patent industry, Mr. Walters has extensive experience with preparing and prosecuting patent applications in Canada and managing the filing and prosecution of patent applications worldwide. He also conducts patentability and infringement searches and opinions. His clients range from small enterprises to multinational corporations, both domestic and foreign, and the majority of his work is focused within the communications and electronics industries. He is not only able to assist Canadian companies with obtaining patent protection at home and abroad but is also well-versed in advising clients in the United States and overseas on securing patent protection in Canada.

Mr. Walters assists clients with navigating every stage of the patent process from the initial identification of a need for protection through to patent issuance. He has experience with coordinating applications between Canadian and foreign patent offices and working with foreign associates as necessary. He also dedicates considerable time and resources toward fully understanding how to effectively meet the needs and objectives of his clients, and he collaborates with them through each step to ensure that their priorities are met and to mitigate any issues that may arise.

Mr. Walters has worked in the field of patents in several capacities through the course of his career. His time as a Canadian Patent Examiner allows him to offer unique insight into the potential challenges a client may face during the examination process. He has also worked as an in-house patent agent, which has afforded him experience with the patent-related concerns and challenges that can arise within a corporate organization.

With a keen awareness of the importance of staying updated on developments in patent law and practice, Mr. Walters maintains a constant effort to review update services, patent office announcements and communications from our extensive network of associate law firms, which enables him to apply the most current practices possible to the work he conducts on behalf of clients.

Professional Involvement

Memberships

· Practice Areas: Patents; Software/Internet/Information Technologies; Electrical/Electronics; Industrial/Mechanical; IP Management & Strategic Counselling.Email: David M. Walters

Christian Bérubé 2004, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: University of Ottawa (B.Sc., Hons., Chemistry, 1999); University of Ottawa (M.Sc., Inorganic Chemistry, 2001) thesis titled Investigations into the fixation of dinitrogen with lanthanide complexes.

Christian Bérubé's practice focusses on the drafting and prosecution of chemical patents, primarily in the fields of material chemistry, polymers, catalysis and pharmaceuticals. He regularly assists national and multinational corporations with obtaining patent protection in Canada for industrial chemical processes, consumer products, specialty chemicals, petrochemical extraction and refinement processes, agrochemicals, and pharmaceuticals.

Mr. Bérubé also assists clients with drafting patent applications and coordinates the prosecution of such applications worldwide. He is able to provide advice on issues such as patentability, validity, and infringement, and he has experience with developing patent portfolios that complement clients' present and projected commercial activities.

With a large knowledge base spanning multiple technical disciplines and experience in managing the filing and prosecuting patent applications throughout the world, Mr. Bérubé offers clients individually tailored service that results in the most effective protection possible for their intellectual property assets.

Professional Involvement

Memberships

· Languages: English; French. Practice Areas: Patents; Chemical & Industrial Biotechnology; Pharmaceutical; Cleantech; IP Management & Strategic Counselling.Email: Christian Bérubé

Paul den Boef 2007, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: University of Alberta (B.Sc., Electrical Engineering, 2002); University of Alberta (M.Sc., Computer Engineering, 2004) thesis titled Autonomous Robotic Reactive Behaviour Synthesis, Scalability, and Transparency; Professional Engineer (Association of Professional Engineers, Geologists and Geophysicists of Alberta).

Paul den Boef's practice focusses on patent drafting and prosecution in the fields of electrical and computer engineering. He has considerable experience with preparing, filing and prosecuting patent applications pertaining to a variety of technologies, including wireless, telecommunications, and semiconductor technologies. He has also prepared patentability and validity opinions. He routinely works with several high-profile clients operating within Canada and internationally.

Prior to joining the firms, Mr. den Boef obtained a variety of engineering experience, including high-speed digital system design and industrial process control and automation. He also acted as a sessional instructor for an electronics control system course at the University of Alberta.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

Media

Publications

· "Patent Prosecution Highway agreement with USPTO extended," IP Perspectives, Winter 2011; International Law Office Intellectual Property Newsletter, February 21, 2011

Practice Areas: Patents; Electrical/Electronics; Software/Internet/Information Technologies; Industrial/Mechanical; Cleantech.Email: Paul den Boef

Mark S. Starzomski 2007, Registered Patent Agent; registered to practice before United States Patent and Trademark Office. Education: Technical University of Nova Scotia (B.Eng., Electrical, 1994); DalTech Dalhousie University (M.A.Sc., Electrical Engineering, 1999) thesis titled Characterization and Applications of the Phase Modulation Liquid Crystal Display; Professional Engineer (Association of Professional Engineers of Nova Scotia).

Mark Starzomski's practice is focussed on patent prosecution in the fields of electrical engineering, electronics, software and telecommunications. He has experience with every stage of patent prosecution, including: meeting with clients and inventors to discuss patentability; drafting patent applications; prosecuting applications in Canada; and managing the filing and prosecution of patent applications in the United States, Europe and other jurisdictions.

Mr. Starzomski regularly works with clients such as telecommunications companies, semiconductor manufacturers, and software companies (operating systems developers, gaming console manufacturers, etc.). A significant portion of his work also involves assisting foreign associates with their Canadian patent prosecution needs.

Prior to joining the firms, Mr. Starzomski gained significant experience working with communications systems, specifically in fibre optic telecommunications. He worked as a Product Development Engineer at a technology company that designed, developed, manufactured and distributed fibre optic components, modules and subsystems. He worked as part of a product development group dealing with a variety of wavelength stabilization components and attenuator products. He brings with him a strong working knowledge of testing, reliability, and failure analysis concepts pertaining to optical components.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada; Chair of the Ottawa Informals Group

· Board member, Technology Venture Challenge

Practice Areas: Patents; Electrical/Electronics; Software/Internet/Information Technologies; Industrial/Mechanical; IP Management & Strategic Counselling; Cleantech.Email: Mark S. Starzomski

Lei Liu 2011, Registered Patent Agent. Education: Peking University (B.Sc., Biological Science, 2003); Queen's University (Ph.D., Biochemistry, 2009) ; thesis titled Effects of Apolipoprotein(a) on Vascular Endothelial Cell Function: Insights into Possible Physiological and/or Pathological Roles for Lipoprotein(a).

Lei Liu's practice focusses exclusively on drafting and prosecuting Canadian patent applications, and coordinating the drafting and prosecution of patent applications in the United States. His client activities involve pharmaceutical and biotechnology companies, universities, and research institutions.

Dr. Liu's educational background is in the fields of biotechnology, biological science and chemistry. His doctoral studies focussed on cardiovascular, obesity and atherosclerosis research. Dr. Liu was the recipient of several awards during his studies, including the Merck Frosst Schering Award and AstraZeneca Award for presentations delivered at the Canadian Lipoprotein Conference, as well as the Dr. Robert John Wilson Fellowship. He also took part in the Stroke, Cardiovascular, Obesity, Lipids, Atherosclerosis Research (SCOLAR) Training Program funded by the Canadian Institutes of Health Research.

Professional Involvement

Memberships

· Associate, Intellectual Property Institute of Canada

· Member, American Intellectual Property Law Association

· Member, Association of Chinese Canadian Entrepreneurs

Media

Publications

· "Apolipoprotein (a) stimulates vascular endothelial cell growth and migration and signals through integrin alphaVbeta3," Biochemical Journal, 2009, 418(2):325-36

Languages: English; Chinese. Practice Areas: Patents; Life Sciences; Industrial Designs; Pharmaceutical; Chemical & Industrial Biotechnology.Email: Lei Liu

Roger T. Gallant 2012, Registered Patent Agent. Education: University of Prince Edward Island (B.Sc., Chemistry, 1993); University of Ottawa (M.Sc., Theoretical Chemistry, 1996) thesis titled Implementation of Parallel and Divide-and-Conquer algorithms in DeFT (LCGTO-DF); Wilfrid Laurier University (M.B.A., 2001); University of Western Ontario (Ph.D., Organic Chemistry, 2002) thesis titled Thermodynamics of Tetrahedral Intermediates in Amide Reactions.

Roger Gallant's practice focusses on the drafting and prosecution of pharmaceutical and chemical patent applications. He has in-depth experience in obtaining patent protection for pharmaceuticals, consumer products, agrochemicals, specialty chemicals, industrial chemical processes, and oil, gas and petrochemicals.

Dr. Gallant works primarily with the intellectual property departments of multinational corporations and with associate law firms to assist them in obtaining the most effective protection possible for their intellectual property assets.

Practice Areas: Patents; Pharmaceutical; Chemical & Industrial Biotechnology; Cleantech4.Email: Roger T. Gallant

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