About Brian Gray
I was formerly senior partner at Norton Rose Fulbright Canada. Prior to that I was National Head of the Intellectual Property Department at McCarthy Tetrault. I have had experience in all aspects of intellectual property (patents, trademarks and copyright), technology and media matters for over 40 years. Typically this means helping to resolve disputes.. This frequently results in providing advice concerning licensing and litigation. I am especially interested in helping inventors, creators or creative companies to grow their business and products using intellectual property. I assist by helping such companies maintain exclusive rights to their inventions or brands and to defend those businesses from claims of misappropriation I have defended some of the most creative people in the world such as James Cameron, creator of Avatar, and some of the most iconic brands such as Barbie and Heinz, Weight Watchers and American Eagle. I have represented e-commerce and telecom companies such as Nortel, Research in Motion in patent disputes. I have represented movie studios, publishers, banks, software developers, chemical companies and theatre companies. Please see specific subject headings on this site for specific experience. and including work in media, advertising, technology, almost all creative and technical industries, biotechnology and information technology.
Barrister and Solicitor/ Mediator/ Arbitrator
Patent Agent, Trade-mark Agent
416 917-1652 email@example.com Ontario Call to the Bar 1979 Trade-mark Agent Canada 1979 Patent Agent Canada 1980 Patent Agent United States 1980 Brian Gray has had extensive experience in all phases of Intellectual Property counseling, prosecution, licensing and litigation, and including work in computer subject matter, media, advertising, technology, biotechnology, chemistry and information technology. EDUCATION: B.A. (1971, Cornell University) Chemistry and History (Dean’s List for academic excellence 1971), Editor the Cornell Daily Sun 1969-1971 and President of SDX Journalism Honorary. M.A. (1974, Cornell University) Government, International Relations (Western European Studies Fellowship) LL.B. (1977, University of Toronto) PROFESSIONAL MEMBERSHIPS: Barrister and Solicitor (1979) Registered Canadian Trade-mark Agent, 1979 Registered Canadian Patent Agent, 1980; U.S. Patent Agent, 1980 Fellow, Intellectual Property Institute of Canada (Member at various times of: Joint Liaison Committee for Patents, Trade-mark Legislation Committee, Trade Related Intellectual Property Committee, Patent Legislation Committee, Copyright Legislation Committee, Litigation Committee) Overseas Member of the Institute of Trade Mark Agents (UK)1989-2016, International Bar Association (co-chairman of Intellectual Property committee) American Bar Association, Canadian Bar Association (member joint task force studying the Competition Bureau draft Intellectual Property Enforcement Guidelines) American Intellectual Property Law Association AIPPI (International Association for the Protection of Intellectual Property) Copyright Society of the U.S.A.
PAST AND PRESENT
1979-1986 lawyer and patent agent and later partner Ridout & Maybee, patent agents, Hayhurst Dale and Deeth, solicitors 1986-2004 Blake, Cassels and Graydon, solicitors, co-founder of the Intellectual Property Department 2004-2007 McCarthy Tetrault, head of intellectual property department. 2007-2017 Ogilvy Renault, since merged with Norton Rose and then merged with Fulbright and Jaworski to form Norton Rose Fulbright, senior partner. 2018- present Brian Gray Law
INTELLECTUAL PROPERTY TRANSACTIONS
Counsel to Nortel Networks Inc. and affiliates in their record-breaking auction of around 7,000 patent assets to Rockstar Bidco, a consortium of Apple, EMC, Ericsson, Microsoft, Research in Motion and Sony for $4.5 billion. Also counsel to Nortel in several other significant sales of multiple Nortel divisions with critical IP assets including Genband, Ericsson and Avaya. Counsel in Canada to H.J.Heinz in the acquisition and subsequent disposition of Weight Watchers International and subsequent trademark licensing arrangements. Intellectual Property counsel to H.J.Heinz in respect of many acquisitions, reorganizations and divestitures 1986- present. Trademark counsel to Mac’s Milk (at the time the largest franchiser in Canada) in connection with the protection and licensing of all of their trademarks. Intellectual Property counsel to Allelix Inc (at the time the largest biotechnology company in Canada) and subsequently counsel to the various divisions and spin offs from Allelix, including Pioneer Hi-Bred (later DuPont), Allelix Biopharmaceucials (later NPS Pharmaceuticals) and Allelix Diagnostics (later ADI Diagnostics and later still Biomira Diagnostics) Acted for the Stratford Festival and Brian MacDonald Production in respect of the production of several Gilbert & Sullivan plays at Stratford and their subsequent touring of shows in the U.S. including on Broadway and at the Kennedy Centre Washington D.C. and negotiated television rights for broadcast on the CBC.
LITIGATION AND DISPUTE RESOLUTION EXPERIENCE
Acted for eBay as intervener in the Supreme Court of Canada on the Equustek v. Google case involving the court’s order of a worldwide injunction against Google. Acted for the Canadian Banking Association and the Canadian Life and Health Insurance Association as intervener in Amazon v. the Commissioner of Patents, the seminal and leading case on the patentability of business methods. Acted for the Bank of Nova Scotia in a multimillion dollar Canadian and US patent claim by Data Treasury concerning cheque scanning and processing. Successfully defended Fox and James Cameron in respect of a copyright claim for the movie Avatar. Successfully defended Fox in respect of a distribution dispute over A Christmas Carol. Defended Alliance Atlantis in respect of a claim over the production of the series Due South. Successfully defended Sony Pictures in respect of a dispute over the movies Crouching Tiger, Hidden Dragon and other confidential matters. Defended Universal Pictures in respect of the movie Charlie Wilson’s War Successfully acted for His Highness the Aga Khan in a copyright claim. Advised a large Canadian mobile phone manufacturer in connection with the multimillion dollar patent infringement claim. Acted for Queens University and Parteq Inc and achieved a significant settlement for Queens University based on a patented drug developed there. Acted for nVidia in the leading Canadian trade secret case on inevitable disclosure Henry v. ATI Acted for Walt Disney and others in connection with enforcement of a US bit-torrent infringement judgment against a Canadian copyright infringer. Acted for Warner-Lambert in a Patent Medicines Notice of Compliance proceeding relating to the block buster drug Lipitor. I have also acted as counsel in an arbitration for Timberjack (John Deere) involving 5 US and Canadian patents before a retired US court district judge and in media and entertainment arbitrations for Fox, Sony and Marvin Hamlisch as well as numerous mediations relating to all kinds of intellectual property. I have been an expert witness in a U.S. copyright case, involving rights to Stravinsky’s musical works in Canada, and an expert witness in an EPO patent opposition involving patent ownership and in a Canadian patent and trademark case involving professional negligence.See list of reported cases attached. In addition counsel in numerous unreported decisions or cases which settled including patent cases for Queens University, Hewlett-Packard, Beecham, Warner-Lambert, Solvay, Agfa, Lubrizol, Champion Road Machinery and TRW and copyright cases for Sony, Fox and Universal and the Motion Picture Association and trademark cases for Mattel, Heinz, American Eagle, Baron Philippe de Rothschild SA, and Esselte Pendeflex, and a trade libel case for ShoreTel.
I am on the panel of arbitrators and mediators of the World Intellectual Property Association and the International Trademark Association and have completed the WIPO advanced workshop on domain name dispute resolution and arbitration and the INTA mediation training. I am also a member of IP Neutrals of Canada and of the ADR Institute of Canada.
ORGANIZATIONS AND TEACHING
International Bar Association, Chairman Committee on Intellectual Property and Entertainment (L), 1994 - 1998; Chairman Trade mark Sub-committee of Committee L, 1990 - 1994 International Trade-mark Association (Chairman, Canada Sub-committee of International Trade-mark Committee, 1988-1989); member 1991-1994 of Trade Barriers Committee; Editorial Board, Trade-Mark Reporter 1995-1997, Chairman, Canada sub-committee of the North America Anti-counterfeiting Committee 2011-2013, Copyright Committee 2016-2017.) Editorial Advisory Board and Correspondent for Canada, Bureau of National Affairs, World Intellectual Property Reporter 1989 - 2007 Editorial Advisory Board, Federated Press Intellectual Property Quarterly 2004-2016 Editorial Advisory Board, American Intellectual Property Law (AIPLA) Quarterly Journal 2013-present Member, Intellectual Property Committee of the Industrial Biotechnology Association of Canada (now BIOTECanada) 1990-1999. Member, Joint Copyright Committee of the Canadian Bar Association and the Intellectual Property Institute of Canada. (2002-present). Member, Joint Intellectual Property and Competition Committee of the Canadian Bar Association to study the draft Competition Bureau Intellectual Property Enforcement Guidelines. International Association for the Protection of Industrial Property, (AIPPI) (Chairman, Canadian Group Committee on Q.93 Protection for Biotechnology 1992; Member, Committee on Patent Novelty 1995; Chairman Q130, Unfair Competition and Misleading Advertising 1998); Member Q.194, 2007, Impact of Co-ownership of IP Rights, program committee and organizing committee for AIPPI Toronto 2014, Chairman Q246 Exceptions and Limitations to copyright protection for libraries archives and educational and research institutions 2015, Canadian and Global Chairman 2016 Liability for linking and framing on the internet; Canadian Chairman 2017 Graphical User Interfaces. American Intellectual Property Association: Program Committee 2007-2017; International Education Committee 2000-2004; Patent Law Committee 2000-2017, Copyright Law Committee 2008-2017 Instructor, Trade-marks, Law Society of Upper Canada Bar Admission Course, 1982-1984 Lecturer - Trade-marks and Patents (assisted W.L. Hayhurst), University of Toronto Law School, 1980 – 1985 Lecturer- Osgoode Law School Program on Intellectual Property Licensing- 2017 Lecturer, Copyright, McGill University 2002, 2003, 2004 Lecturer, Graduate Seminar, Patent Law, University of Toronto, 2004 Board of Directors, Toronto Field Naturalists 1975-1980 Board of Directors, Protein Engineering Network of Centres Excellence (PENCE) 1994 - 2006 Board of Directors, TechLaw Inc., 1996 -2004 Board of Directors, Canadian Biosciences Commercialization Institute (Sciences Sans Frontieres) 2001 - 2006 Board of Directors, Parteq Innovations (technology transfer corporation of Queen’s University), 2006 - 2013 Board of Directors, the International Consortium on Anti-virals, 2006 – present Board of Directors and Vice-Chairman, Canadian Frailty Network, a Network of Centres of Excellence 2010-2022. Member, National Biotechnology Advisory Committee 1989 - 1999, appointed by the Minister of Industry to advise on science policy.
In 2006, in an independent review from clients, Chambers Global had this to say about Brian: “Brian Gray is considered the best at the firm for pure IP work, whether contentious or non-contentious. Clients say he is ‘diligent, knowledgeable, responsible and reasonable in terms of what needs to be done and portioning out the work so the rates remain viable.” In 2007, Chambers Global in a subsequent independent review from clients had this to say about Brian: “Brian ‘can perform miracles’ according to his clients. As well as being ‘a pleasure to work with,’ he can deal with situations where ‘there are no real precedents’. As one client remarked, ‘ we cannot afford to take risks- we need a lawyer who can provide an analysis of which way the law is going and who can foresee how the courts might respond-and that’s precisely what Gray does.” Selected by peer reviews published in Managing Intellectual Property as one of the top patent and trade-mark lawyers practising in Canada, every year since reviews began. Identified in L’Expert Directory in Canada as one of the most frequently recommended lawyers in the Intellectual Property category, every year since reviews began. Listed in AmLaw/LEXPERT as one of the 500 leading lawyers in Canada and one of twenty-five in the Intellectual Property category, 1999 – 2005, 2012-present. Listed in Who’s Who Legal as a leading lawyer in patents and trade-marks category 1999 - present. Listed in Practical Law and in Global Counsel 3000 as “highly recommended” in Intellectual Property, Life Sciences and Life Sciences Biotechnology. Listed in the Euromoney Expert Guide 2003 - present as one of the World’s Leading Patent and Trade-mark Law Experts Listed in the World Trademark Review 1000 (WTR 1000) 2011-present as leading individual (Band 2) Listed in Who’s Who Legal as a leading lawyer in the life sciences category. Listed in Benchmark Canada as a leading litigation lawyer in the Intellectual Property category 2013-present
Trade-Marks Law of Canada, Carswell published by National Judicial Institute, 1993 edited. Gordon Henderson. Contributing author chapter “Oppositions and Post-Registration Attacks” “Industrial Design Rights, An International Perspective” Kluwer Law, May 2001 (edited by Brian W. Gray and Effie Bouzalas), and author of Canadian chapter. “Industrial Design Rights, An International Perspective” second edition Wolters Kluwer 2016 (edited by Brian W. Gray and Rita Gao), and contributing author of Canadian chapter with Rita Gao and Chris Hunter.
Formerly photojournalist (stringer for UPI, Look, Newsweek) and photographer for the Smithsonian Institution
Patent and Trademark Institute of Canada, October 1987 “Copyright Reform” Pharmaceutical Manufacturers Association Seminar, April 1987 “New Changes to the Patent System” Canadian Institute Seminar, Toronto, May 1988 “Domestic & International Technology Transfers Conference” “Biotechnology Licensing” (with Eileen McMahon) Food Drug Cosmetic Law Journal, July 1988 “New Changes to the Patent System” Canadian Computer Law Reporter Vol. 6, Issues 3 and 4, January 1989 “Biotechnology Licensing” (with Eileen McMahon) Canadian Institute Seminar, October 1989 Chairman and Panellist - “The Business of Biotechnology” Canadian Institute Seminar, June 1991, November 1991, June 1992, April 1997 “Grey Market Goods and Parallel Importation” Report of the Canadian Group A.I.P.P.I., January 1992 “Life Form Patenting” National Judicial Institute, Trade-marks, Montebello, Quebec, November 1992 “Oppositions and Post-Registration Attacks” Canadian Institute Seminar, Chairman, February 1993 “The Business of Biotechnology” Blake, Cassels and Graydon Seminar June 1993 “The Inevitable Internalization of Trade-marks and Grey Market” Law Society of Upper Canada, September 1993 “Trade-mark Licensing” International Bar Association, September 1993 “Franchising and Special Trade-Mark Issues” Contributing Author, Gordon Henderson Trade Mark Law in Canada (Carswell, 1994) Intellectual Property World Desk Reference, October 1993, December 1994 “Canada Summary of Intellectual Property Laws” International Bar Association, Melbourne, September 1994 “Industrial Design and Copyright” Law Society of Upper Canada - Initiation in Intellectual Property, June 6, 1995 “Patents in a Nutshell” International Bar Association, September 1995 “Protecting International Reputation” International Bar Association, Berlin, September 1996 “Publishing Agreements and Copyright” Department of Foreign Affairs and International Trade, September 1997 “Managing Intellectual Property Issues in the United States” International Bar Association, New Delhi, November 1997 “Technology Transfer” Managing Intellectual Property, December 1997 “Survey of Trade Secret Law in Canada” Insight Conference Intellectual Property Litigation, February 22-23, 1999 “Demonstrative Evidence in Intellectual Property Cases” Biotechnology Focus, March/April 1999 “Setting the Right Royalty” Canadian Legal Yearbook, Intellectual Property Section, June 1999 “Intellectual Property Year in Review” InfoNex, June 1999 “Tactics for Maintaining Competitive Position of IP Assets” TechLaw, September 1999 “International Patent Litigation - Patent and Trade-mark Litigation in Canada” The Canadian Institute, November 2000 “International Licensing Agreements and Technology Transfers: A Cross-Border Perspective” InfoNex, November 2000 “Revised Interim USPTO Utility and Written Description Patent Guidelines and How They Are Being Interpreted” The Canadian Institute, May 2001 “New Developments in Biotech Patentability: Harvard Mouse and More” InfoNex, June 2001 (Toronto) “Understanding the Recent Changes to Patent Construction: What You Need to Know” International Bar Association, November 2001 (Mexico) “Canadian Patent Litigation” InfoNex, January 2002 (Toronto) “Cross-Border Concerns: Examining Trade Secrets and Confidential Information” The Canadian Institute, February 2002 “Maximizing Licensing Opportunities While Protecting the Company’s IP Rights” The Canadian Institute, February 2002 “Protecting and Managing Corporate IP” Chair. Insight Information Co. “Drug Patents”, March 2002. Federated Press Conference, April 2002 “Anticipating Disputes and Dispute Resolution in Intellectual Property” International Trademark Association, Annual Meeting May 2002 “Trade-marks Issues on Websites and Website Agreements” Understanding Copyrights (McGill University), August 2002 “Statutory Exemptions to Copyright Infringement” International Trademarks Association (Brussels), September 2002 “Trade-marks in Cyberspace” International Trademarks Association (New York), September 2002 “Trade-marks in Cyberspace” TechLaw (Indianapolis), October 2002 “Patent Protection for Living (and Almost Living) Things” American Intellectual Property Law Association, October 2002 “Trade-marks and Copyright Developments” BIOTECanada Insights Magazine, October 2002 “Patent Enforcement” World Internet Law Reporter, November 2002 “Fair Dealing and the Internet” World Trademark Law Report, January 2003 “Sullivan Entertainment v. Anne of Green Gables Licensing Authority” case comment World Intellectual Property Report, March 2003 “Federal Court of Appeal: “Small Entity” Status Does Not Change” Co-Chair Insight Information Co. “Drug Patents”, March 2003 International Bar Association, September 2003 “Interpretation of Patent Claims - A Global View” American Intellectual Property Association, January 2004, “The Best and Worst Practices in International Intellectual Property Litigation” University of Toronto Law School Lectures, February 2004 “Interpretation of Patent Claims” Co-Chair Insight Information Co. “Drug Patents”, March 2004 World Intellectual Property Report, March 2004 “No Markman Hearings in Canada” Co-Chair Insight Information Co. “Drug Patents”, March 2005 Nanotechnology Law & Business, Vol. 2, Issue 2, April 2005 “Nanotechnology in Canada” World Intellectual Property Law Reports, November 2005 “Supreme Court of Canada Decides LEGO Case” Lawyers Weekly, November 2005 “Peer to Peer File Sharing” Managing Intellectual Property - IP Focus, February 2006 “Drawing the Lines in Court” IP&IT Handbook 2006/07, February 2006 “Managing Intellectual Property - Trade-marks Q&A” IP&IT Handbook 2006/07, February 2006 “Managing Intellectual Property - Protection and Enforcement of Five Essential IPRs Q&A” Insight Information Co., Co-Chair “Drug Patents”, March 2006 World Trade-mark Law Report, March 2006 “Canadian Court Restrains Grey market Goods” World Trade-mark Law Report, April 2006 “Canadian Court upholds United States Judgment against Canadian Internet Business” IBA - Product Law and Advertising Committee Newsletter, June 2006 “Unfair Competition - Comparative Advertising - Canada” McCarthy Tetrault , Technology Law Quarterly June 2006 “Canadian court upholds U.S. Judgment against Canadian Internet Business” Federated Press - Intellectual Property Quarterly, July 2006 “Proposed Changes to Canadian Drug “Linkage” PM (NOC) Regulations and Data Exclusivity Provisions” Queen’s University, Kingston, September 2006 “Database Protection - The limits of copyright” Osgoode Hall Law School, April, 2007 & June 2008 York University – Course on Intellectual Property License Agreements “Copyright Grant and Scope” Intellectual Property Institute of Canada, October 2007 “Parallel Imports – Can I.P. Law Prevent Them” Federated Press, November 5, 2007 “Patent Valuation” Northwind Professional Institute Patentability of Business Methods Invitational Forum – Panel Discussion Moderator “What is the position of other jurisdictions?” Federated Press, May 2008 “Selection Patents” The Conference Board of Canada, May 2008 Intellectual Property Rights Conference: A Catalyst for Innovation – Panel Discussion Participant “Intellectual Property Development, Management, and Protection” Federated Press, Intellectual Property Quarterly 2008 “Proposed Amendments to the Copyright Act Bill C-61” World Intellectual Property Report, 2008 (by Brian W. Gray & Jason Markwell) “Supreme Court of Canada upholds the validity of selection patents and restates the tests for anticipation and obviousness, Apotex Inc. v. Sanofi-Synthelabo Canada Inc. et al. (Supreme Court of Canada)” Lexpert, Nov / Dec 2008 “Business Method Patents: Here to Stay?” 13th IT.CAN Conference, October 2009 “Recent Patent Issues re Business Method and Software Implemented Inventions – Other Patent Issues Relevant to the IT Industry” Executive View Media UK – Digital Guide on Intellectual Property 2010 “Indefiniteness: Computer Claims with Means plus Function Language” Central and Eastern European Law Institute (CEELI) Instructor on Intellectual Property for three day program for judges from Ukraine and Moldova, January 2011, Prague, Czech Republic. Financier Worldwide, September 2011 “Canada - Intellectual Property Annual Review 2011” Federated Press – Intellectual Property Journal, Vol. XVII, No. 1, 2011 “Federal Court of Appeal Ruling on whether Amazon.com’s “One-Click” System may be Patentable” Federated Press, October 18, 2011 “Workshop: Managing IT and IP Disputes” International Bar Association, Dubai, November 2011, Chair Panel “Specialist Intellectual Property Courts” International Bar Association, Dubai, November 2011, Roundtable Leader “Intellectual Property Auctions” Financier Worldwide, January 2012 “Canada – Biotechnology & Pharmaceuticals Annual Review” Norton Rose Canada IP Monitor – Trade-marks and Brands, February 2012 “CIPO Inviting Consultation, Sound, Motion and Holographic Marks to be Allowed and Opposition Procedures Modernized” University of Guelph- February 16, 2012 “Copyright Licensing Grant and Scope” Federated Press, June 19, 2012 “Patent Portfolio Assessment and Valuation” Managing IP Magazine, 2012 “Non-traditional Trade-marks in Canada” Norton Rose Canada IP Monitor – Trade-marks and Brands, August 2012 (by Brian W. Gray & Adam Haller) “Imperial Tobacco Smokes Marlboro” Federated Press, Intellectual Property Journal, August 2012 “Are We Communicating? In Public?: Two Supreme Court Decisions” Federated Press Workshop, October 12, 2012 “Managing IT and IP Disputes” International Bar Association, Dublin, October 2012, Panel Chair “International Exhaustion of Trade-mark and Copyright Rights” University of Guelph, November 14, 2012 “Novelty Rules and Prior Disclosure” Osgoode Hall, York University, November 27, 2012 “Copyright Licensing Grant and Scope” Judge, Fox Intellectual Property Moot February 2013 Client Presentation to DuPont, March 2013 “Strategic Alliances and Joint Ventures” International Bar Association World Life Sciences Conference Dallas, Texas, May 2013 panel presentation on IP due diligence in Life Sciences transactions Client Seminar, H.J. Heinz, May 2013 “Trade-mark and Marketing Issues” The Art Collecting Legal Handbook, Thomson Reuters published May 2013 – Canada chapter Federated Press, May 2013 “Copyright Litigation – Recent Case Law” Federal Circuit Bar Association, September 2013 “Trade and Intellectual Property in a Global Recovering Economy” / “Business Method Patents” The Canadian Institute Annual Forum, October 2013 “The Challenges of Enforcement: Chapter 17 of the NAFTA and Enforcement” Federated Press, October 2013 “Managing IT and IP Disputes Workshop” American Intellectual Property Association, Panel Chair, October 2013 Washington D.C. “Special Patent Courts or Courts with Special Patent Rules?” IT.Can Conference, October 2013 “Recent Developments on Patent Law of Interest to IT Lawyers” Client Presentation – Mattel, November 2013 “Advertising, Marketing, Competition & Trade-marks” Canadian Science Policy Conference Toronto, November 21, 2013 “Business methods, abstract ideas and claim construction. The illusive search for the claimed invention” Norton Rose Legal Matters Series, December 4, 2013 “Advertising Seminar” Judge, Fox Intellectual Property Moot February 2014 Federated Press Intellectual Property Journal March 2014: “Robinson’s Crusade: copyright Infringement considered by the Supreme Court of Canada” IP Monitor April 2014, “Government Pulls A Fast One, trademark amendments” IP Monitor May 2014, “The Oracle has Spoken, Oracle v. Google” IP Monitor July 2014 “Trademarks Unlimited Provincially” International Bar Association September 2014 “Copyright Claims are a part of Hollywood business” Federated Press Intellectual Property Journal. November 2014 “Has the Average Consumer Gotten Smarter or Are the B.C. Courts Changing the Ambit of Protection for Official Marks” IP Monitor December 2014 “Combatting Counterfeiting” Judge, Fox Intellectual Property Moot February 2015 IP Monitor December 2015 “Broadcast Incidental Copying Requires a License” IP Monitor February 2016 Lexmark Int’l Inc. v. Impression 24 Prods, Inc. “This Is So Exhausting”, International Exhaustion. IP Monitor February 2016 “Account of Profits – Equitable but not extraordinary” IP Monitor October 2016 “The insecurity of intellectual property licenses during insolvency proceedings”. IT.Can 2016 Annual Conference, October 25, 2016 “Linking and Searching: Patrolling and Controlling the Internet” IP Monitor November 2016 “Pizza battle goes to registrant” IP Monitor December 2016 “Settlement agreement restricting grey marketing is not an unreasonable restraint of trade” IP Monitor December 2016 “Trade-mark registration not all singing and all dancing” IP Monitor January 2017 “Where does a cause of action for patent infringement arise?” Moderator and Panelist June 21, 2017 “Subject Matter Eligibility Across Borders’ AIPLA Electronic and Computer Patent Law Summit Speaker, AIPLA annual meeting October 18-21, 2017 “Post-Sale Rights Post Lexmark, implications for U.S. and foreign patent owners and licensees” Numerous other case comments on patent, trade-mark and copyright cases in Canada primarily in the World Intellectual Property Reports, World Copyright Reports and World Trade-mark Reports, published by the Bureau of National Affairs, and Federated Press, Intellectual Property Journal or newsletters from my former firms, Blake, Cassels; McCarthy Tetrault or present firm Norton Rose Fulbright, formerly Ogilvy Renault.
INTERNATIONAL AND MANAGEMENT EXPERIENCE
Active in numerous international organizations such as AIPPI but especially the International Bar Association where I was chairman of one of the largest committees of the business law section, the Intellectual Property and Entertainment Committee and helped run meetings all over the world, in Berlin, New Delhi, Strasbourg, Melbourne, Hong Kong, Chicago, Boston, London, Paris and Barcelona to name a few and I also helped support local regional meetings in Mexico, Turkey and Brazil and coordinated the IBA representation at the WIPO in Geneva. As noted above in January 2011, I was an instructor on Intellectual Property for a three day program for judges from Ukraine and Moldova for the Central and Eastern European Law Institute (CEELI) , Prague, Czech Republic. I co-founded the IP group at Blake Cassels which became one of the largest and most respected IP groups in Canada in a general practice firm and I also headed the IP department at McCarthy Tetrault, one of the largest law firms in Canada at that time. For seven years I was on the board of one of the most successful university technology transfer organizations in Canada at Queens University, Parteq Inc. For ten years, I served on the Canadian Government policy body to advise on intellectual property policy as it related to biotechnology issues.