In Person Event

Your First Intellectual Property Matter: A Practical Guide


May 30, 2017


Toronto , Ontario


CLE / CPD Credit Information

  • Ontario – Professionalism - 0.50
  • Ontario – Substantive - 3.50

Hosted by The Canadian Bar Association, get your practical guide for navigating patent, trademark and copyright matters in Canada, at this essential program. You will walk away with the tools you need to advise your clients on how to maximize the value of their intellectual property rights. You will also acquire critical skills for obtaining and enforcing patents for your clients, learn how to effectively register, license and assert trademark rights and get helpful advice on copyright ownership, transfer and litigation. This event is a “must” for any lawyer who is beginning to practice intellectual property law, or is looking to brush up on the fundamentals!

8:30 am Registration and Coffee

9:00 am Welcome and Opening Remarks

9:05 am How to Obtain Trademark Protection

Nancy Miller, Miller IP Law

  • Exploring the types of trademarks available
  • Navigating the registration process
  • Making sense of ownership and licensing
  • Understanding opposition proceedings

9:30 am When Do You Have a Trademark Claim?

May Cheng, Osler, Hoskin & Harcourt LLP

  • Unraveling infringement, depreciation of goodwill and passing off
  • How to protect your trademark and still avoid anti-competitive activities
  • Key considerations in domain name disputes
  • Assessing damages and other remedies in trademark disputes
  • Important conversations to have with your client

10:00 am From Construction to Filing: Obtaining a Patent

Matthew Powell, Gilbert’s LLP

  • How does the patent application process work?
  • Fundamentals of patent claim construction
  • Duty of candour/good faith in obtaining and enforcing patent rights

10:25 am Patent Litigation 101

Geoffrey Mowatt, DLA Piper (Canada) LLP

  • How to assess whether patent infringement has occurred
  • Practical advice for drafting the statement of claim
  • Key defences in a patent action: attacking validity and proving prior art
  • How to calculate damages
  • What you need to know about litigation under the Patented Medicines (Notice of Compliance) Regulations

11:00 am Networking Break

11:15 am Asserting and Defending Copyright Infringement Claims

Jill Jarvis-Tonus, Bereskin & Parr LLP

  • What protection does copyright provide?
  • Best practices for asserting and defending an infringement claim
  • What remedies are available?
  • Balancing value against the cost of enforcement: expert strategies for advising your clients

11:50 am IP Advice for Drafting and Negotiating Tech Licensing Agreements

Bradley Limpert, Limpert & Associates

  • Risk allocation: recent case law and standard clauses
  • Managing your client’s expectations
  • How to protect confidential information
  • Key employment contracting terms
  • Critical advice on warranties, indemnities and limitations of liability
  • What are the typical service level objectives and requirements?

12:25 pm Managing Both the IP Portfolio and Your Client’s Expectations

Essien Udokang, Baker & McKenzie LLP

  • Expert advice for managing an IP portfolio
  • How to answer the two great questions: “How long?” and “How much?”
  • Real-life perspectives on how to advise, not kowtow
  • Valuable tools for analyzing and clarifying risk
  • Limitation periods to watch out for

12:55 pm Questions and Concluding Remarks

1:00 pm Program Concludes


This organization has been approved as an Accredited Provider of Professionalism Content by the Law Society of Upper Canada. Ontario: Total CPD = 4.0 hours (0h 30m Professionalism and up to 3h 30m Substantive)