Program

Drafting Patent and Trademark License Grant Clauses

In this workshop you will:
     ■   Learn key aspects of writing license clauses to grant rights in patents and trademarks
     ■   Get feedback and input from experienced practitioners on practice clauses you write
     ■   Receive hints and tips for avoiding common mistakes in preparing these clauses
This workshop will feature lectures, small group sessions and feedback from facilitators. 

Bradley Limpert Limpert & Associates (Toronto)
Jason Hynes Bereskin & Parr LLP (Kitchener)

Pre-registration required / Additional fee applicable / Limited seating

Cross-examination of an Expert and a Fact Witness

In this workshop you will:
     ■   Learn how to prepare for and conduct a cross-examination of an expert and a fact witness
     ■   Observe a mock cross-examination of an expert and a fact witness by seasoned litigators
     ■   Prepare and conduct your own cross-examination and get feedback from the instructors

This workshop will feature lectures, discussions and demonstrations of cross-examination.

Carol Hitchman Sprigings Intellectual Property Law (Toronto)
Patrick Smith Seastone IP (Calgary)

Pre-registration required / Additional fee applicable / Limited seating

Gold Sponsor: 

Join us for this year’s Welcome Reception and reconnect with old friends and colleagues and take this opportunity to make new connections.
Venue: RBC Convention Centre
Pre-registration required. Dress code: business casual

Gold Sponsor:

Tim Lowman Aird & Berlis LLP (Toronto)
IPIC President
Barry Fong Osler, Hoskin & Harcourt LLP (Ottawa)
Chair, IPIC Conference Committee

The Honourable Marshall Rothstein C.C., KC

One of Canada’s most esteemed jurists, Justice Rothstein served on the Supreme Court of Canada from 2006 until his retirement in 2015. He is now a partner at Osler, Hoskin & Harcourt LLP. Originally from Winnipeg, he was appointed a Companion of the Order of Canada in 2017 for outstanding achievement, dedication to the community and service to the nation.

Moderator: Barry Fong Osler, Hoskin & Harcourt LLP (Ottawa)

Gold Sponsor:

Debate: Be it Resolved that Trade Secrets are More Powerful than Copyright or Patents in Protecting Digital Technology

Gold Sponsor:

There are many challenges in protecting digital technology and practical difficulties for obtaining registrations for patents or establishing copyright. Patent protection requires disclosure and is vulnerable to invalidity attacks. The scope of copyright protection is limited. Are trade secrets the answer? Is it too risky to rely on confidentiality? Are the remedies available in Canada for theft and misuse of trade secrets sufficient deterrents?

Nathaniel Lipkus Osler, Hoskin & Harcourt LLP (Toronto)
Maya Medeiros Norton Rose Fulbright Canada LLP (Vancouver)
Marek Nitoslawski Fasken Martineau DuMoulin LLP (Montreal)
Amrita Singh Marks & Clerk Canada (Toronto)

Moderator: Tamara Ramsey Dale & Lessman LLP (Toronto)

What I Wish I Knew When I Was a Practitioner – Views from the Bench

Have judges’ perspectives evolved since their time in practice? What are the pros and cons of compendia and visual aids? What are some annoyances in factums? What could be done differently for oral submissions? What should patent agents and trademark agents consider when drafting applications? Many more interesting tips and tricks to be learned from the bench in this fireside chat.

The Honourable Nicholas McHaffie Federal Court (Ottawa)
The Honourable Glennys L. McVeigh Federal Court (Ottawa)

Moderator: Jordana Sanft Lenczner Slaght LLP (Toronto)

Gold Sponsor: 

The following IP Roundtables qualify for one hour of Ethics/Professionalism:

■   Professional Regulation and Compliance Issues
■   Best Practices in Employee Retention
■   Identifying and Handling Conflicts of Interest
■   Managing the Challenging Client
■   Retainer Agreements: Dos and Don’ts
■   Working with Outside Counsel (Reserved for In-House)

** Pre-registration required. In-person participation only.

Utility in Patent Law: Is It Still a Thing?

Since the Supreme Court’s decision in AstraZeneca six years ago, the utility requirement in patent law has been fundamentally altered. Learn the latest on how courts are dealing with this allegation of invalidity, including the distinction between demonstrated utility and sound prediction, the disclosure requirement in sound prediction cases, and the intersection between the old utility and the new overbreadth.

Dino Clarizio Ridout & Maybee LLP (Toronto)
France Côté Benoît & Côté Inc. (Montreal)
Chris Van Barr Gowling WLG (Ottawa)

Moderator: Yael Bienenstock Torys LLP (Toronto)

IP Protection and Enforcement in the Metaverse

As the Metaverse grows at an accelerated pace, there is little time to adjust to its quickly changing landscape. For copyright and trademark owners, the scope of potential issues can be hard to predict. What is the best digital protection strategy for brands? What kind of rights enforcement in the Metaverse have we seen to date? What can IP owners do to protect their rights in the digital space going forward?

Ian Ballon Greenberg Traurig, LLP (Los Angeles)
Panagiota Dafniotis Dentons Canada LLP (Montreal)

Moderator: Colleen Stanley Stanley Law (Toronto)

Major U.S. Supreme Court Patent Decisions

Gold Sponsor: 

This panel will present major and current U.S. Supreme Court patent decisions and discuss considerations for navigating the intersection of Canadian and U.S. patent law, and the potential impact of U.S. jurisprudence in Canada.

Tom Cotter University of Minnesota Law School (Minneapolis)
William Milliken Sterne, Kessler, Goldstein & Fox P.L.L.C. (Washington)
Lillian Wallace Steptoe & Johnson LLP (New York)

Moderator: Ben Hackett Goodmans LLP (Toronto)

Major U.S. Supreme Court Trademark and Copyright Decisions

This panel will present major and current U.S. Supreme Court copyright and trademark decisions and discuss whether freedom of expression takes precedence over trademark rights (Bad Spaniels), fair use vs. transformative use (Andy Warhol), copyright on uniforms (Star Athletica) and finding of liability in the U.S. based on foreign sales (Hetronic).

Eleanor Lackman Mitchell Silberberg & Knupp LLP (New York)
Ted Davis Kilpatrick Townsend & Stockton LLP (Atlanta)

Moderator: Brian Gray Brian Gray Law (Toronto)

Gold Sponsor:

All delegates welcome.

Gold Sponsor:  

The Patent & Trademark Institute Educational Foundation (PTIEF) – a registered charity with the objective to promote diversity and inclusion by helping remove barriers to access and offer financial support to deserving individuals from under-represented groups that wish to pursue educational opportunities in the field of IP – will hold its first ever networking event during IPIC2023. Join in the fun for trivia and games at the Across the Board Café and support an important cause. Light food and limited drink tickets will be provided. Register early as seating is limited.
Additional fee is applicable – proceeds to go to the PTIEF.

Gold Sponsor:

CIPO Update

Konstantinos Georgaras Commissioner of Patents, Registrar of Trademarks and CEO, Canadian Intellectual Property Office (Gatineau)

Moderator: Isi Caulder Bereskin & Parr LLP (Toronto)

College of Patent Agents and Trademark Agents: Continuing to Build the Regulator

Juda Strawczynski CEO & Registrar, College of Patent Agents and Trademark Agents

Moderator: Isi Caulder Bereskin & Parr LLP (Toronto)

Gold Sponsor:

Natural Selection and the Origin of the Species Patent: Are Selection Patents Evolving or Dying Out?

It’s been fifteen years since the Supreme Court considered selection patents in the Sanofi case. Where do things stand today? Learn why prosecutors draft (or avoid) selection patents, as well as how litigators grapple with the validity of selection patents, whether on offense or defense.

Neil Fineberg Fineberg Ramamoorthy LLP (Toronto)
Melanie Szweras Bereskin & Parr LLP (Toronto)
Kristin Wall Norton Rose Fulbright Canada LLP (Toronto)

Moderator: Andrew Moeser Lenczner Slaght LLP (Toronto)

In-house Perspectives on IP Protection and Enforcement

Gold Sponsor:

In-house legal teams face increasing pressure to find cost efficiencies and the right balance to handle their IP legal needs. In-house practitioners will discuss pragmatic strategies to manage and protect intellectual property to mitigate IP risk and will explore how external counsel can best support their role and efforts in prosecution and legal disputes.

Isabelle Chabot Director – Patents, EXFO Inc. (Québec City)
Janet Chong Senior Legal Counsel SOCAN (Toronto)
Christina Settimi Director, Legal Counsel, Intellectual Property, Maple Leaf Foods Inc.

Moderator: Arnold Ceballos The Bank of Nova Scotia (Toronto)

Patent Office Practice Update

Jeremy McLean Program Manager – Examination Practice, Patent Branch, CIPO
Jeffrey Orser Senior Director, Patent Services and Strategic Affairs, CIPO

Moderator: Jean-Charles Grégoire Marks & Clerk (Ottawa)

Trademarks Office Practice Update

Mesmin Pierre Director General, Trademarks and Industrial Designs Branch, CIPO
Iyana Goyette Deputy Director, Policy and Legislation, CIPO

Moderator: Chris Hale Chris Hale IP Law (Toronto)

Gold Sponsor: 

The following IP Roundtables qualify for one Substantive hour:

■   Lunch with the Director General of Patents
■   Lunch with the Director General of Trademarks
■   AI in IP Searching and Prosecution
■   When to Seek Trade Secret Protection
■   Efficient and Non-Contentious Litigation
■   ADR in IP and Technology Disputes

** Pre-registration required. In-person participation only.

Breaking Down the Year’s Most Important IP Court Decisions

Gold Sponsor:

A deep dive into the year’s ground-breaking IP cases changing the world of IP. Seasoned practitioners will unpack the most significant rulings of the year in patent, trademark and copyright law and offer insights into how they’re shaping the future of IP law and practice.

Daniela Bassan Stewart McKelvey (Halifax)
Sangeetha Punniyamoorthy DLA Piper (Toronto)
Andrew Shaughnessy Torys LLP (Toronto)

Moderator: Daniel Davies Smart & Biggar LLP (Ottawa)

The Impact of UNDRIP on Canada’s Intellectual Property Law

The United Nations Declaration on the Rights of Indigenous Peoples Act (UNDRIP), which is now part of Canadian law, states that Indigenous peoples “have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.” How does, and how should, this right of Indigenous peoples affect IP law and our own practice of law?

Sara Mainville JFK Law LLP (Toronto)
Stuart Wuttke General Counsel, Assembly of First Nations (Ottawa)

Moderator: Vincent de Grandpré Bennett Jones LLP (Toronto)

Gold Sponsor: 

An IPIC tradition . . . join us for this year’s closing Gala and enjoy an elegant evening of fine dining and honouring the accomplishments of members of the IP profession with IPIC’s Awards Ceremony.

Pre-registration required. Limited seating.
Dress code: black tie recommended

Gold Sponsor:

Continue your evening with a nightcap and a little something sweet at the Dessert Reception.