The Canadian market is transparent and mature, and the scope of industries in which licensing is a feature is nothing less than might be expected from one of the world’s most highly developed economies. Life sciences, telecommunications and information technology all remain major spheres of activity, although the economic slowdown of recent years has undoubtedly affected investor confidence. However, the tide has turned in this regard, thanks in part to government stimuli directed towards universities and other research institutions in an effort to encourage the commercialisation of their technology. Another reported positive development is the increased awareness among smaller entrepreneurial start-ups of the commercial efficacy of out-licensing their intellectual property. Canada’s abundant deposits of natural resources are also the source of considerable technology licensing: novel methods of extraction and refinement, particularly in relation to newer hydrocarbon sources such as bituminous sands and shale gas, have seen increased activity in this sphere. Clean-tech is another growing field of research and development. Canadian licensing practices often incorporate the skill sets of patent agents and attorneys at law; indeed, many practitioners are dual qualified and often handle licensing as part of a broader IP, TMT or corporate and commercial practice.
Bennett Jones boasts the extensive resources and expertise necessary to serve the gamut of high-tech industries. The outfit is especially noted for its work in the energy and natural resources sectors, as well as for a strong showing in IT matters. Stephen D Burns centres his practice on finding technology commercialisation solutions for his clients, and specialises in advising on the IP and technology aspects of mergers, acquisitions, collaborations and corporate structurings. Duncan C Card focuses largely on IT transactional matters, including software licensing, e-business, outsourcing and system delivery. “Long-time player in licensing” Martin PJ Kratz leads the IP group. An “enthusiastic and highly active lawyer”, he represents clients from sectors including life sciences, energy, telecommunications and information technology. In addition to IP licensing and technology transfer, he regularly handles the technology elements of corporate and commercial matters. Michael R Whitt focuses on the commercialisation of intellectual property and technology, as well as rights procurement. He manages licensing and related transactional matters in a wide variety of fields, such as information technology, consumer goods manufacturing and agriculture.Bereskin & Parr LLP
“A first-choice firm for the university sector”, this boutique is acclaimed for its expertise in intellectual property and technology. Patent agents and attorneys combine forces to offer a comprehensive service in the protection and commercial exploitation of intellectual property. Roger Hart wins respect for his extensive experience and numerous publications on the topic of IP licensing. His background in mechanical engineering and the automotive industry assists in advising a range of clients on IP and technology licence agreements. Philip Mendes da Costa has expertise in chemical engineering and focuses on building and commercialising patent portfolios for his clients, which includes the drafting and negotiation of licence deals and other transactions.Blake, Cassels & Graydon LLP
“A pre-eminent competitor” in the licensing arena, this full service outfit is instructed by a multitude of clients from diverse industries. Sheldon Burshtein is a “truly excellent IP practitioner who is held in high regard in the market”. In addition to IP prosecution, protection and exploitation, he advises on the IP issues arising from corporate and commercial transactions. Burshtein’s practice encompasses an exhaustive range of industries; he is “the goto guy for licensing in Canada and can handle all areas of technology”. IT law specialist Richard Corley is singled out as “a very fine lawyer who is undoubtedly a leader in technology commercialisation”. He provides counsel on licensing matters and commercial transactions involving information technology, energy and clean-tech. “Terrific practitioner” Sunny Handa specialises in IP and IT licensing in the context of commercial transactions, and has worked for leading IT and life sciences businesses on such matters. Software licensing, outsourcing and other IT contracts constitute a key area of practice for Christine Ing, who also handles pharmaceutical and biotechnology patent licensing.Deeth Williams Wall LLP
This boutique specialises in serving clients in the high-tech field. The team handles a broad spectrum of IP commercialisation work, including patent licensing and related transactions; it is also well known for its expertise in IT transfers involving software licensing, outsourcing and system delivery. With a focus on IP law, Michael Erdle advises on technology transfer and the formation of joint ventures and other arrangements for the exploitation of IP and technology rights. “Brilliant licensing lawyer” Gervas Wall draws on in-depth expertise covering patent prosecution and litigation, as well as IP licensing. Amy-Lynne Williams enjoys “a terrific reputation in the marketplace” and advises on licensing, technology transfers and other agreements, particularly in relation to information technology.Farris Vaughan Wills & Murphy LLP
This outfit of “highly capable and competent practitioners” regularly manages licensing and other commercial IP agreements for its clients. The “superbly knowledgeable” James Hatton focuses on IP licensing and associated technology transactions. He is particularly well known for his work on deals in the biotechnology and pharmaceuticals sectors. Hector MacKay-Dunn is “a brilliant lawyer who is always a pleasure to work with”. His extensive practice covers corporate and commercial transactional advice, including IP and technology licensing.Fasken Martineau LLP
With deep industry expertise in the life sciences and IT sectors, Fasken Martineau is well equipped to provide clients with a comprehensive, well-resourced service in IP licensing. Its general commercial proficiency also makes it a preferred firm for handling the technology and IP aspects of wider corporate transactions. Jean-Nicolas Delage is “a highly credible, highly competent and sensible lawyer” who specialises in the creation, protection and exploitation of patent pools for high-tech industries, including telecommunications, energy and aerospace engineering. “Venerable professional” Ian Kyer is noted for his longstanding experience in the field. He focuses on IT law and related IP and corporate matters.Fraser Milner Casgrain LLP
This full service firm has proven capabilities in the technology licensing domain; clients attest to their “absolute confidence in the work product and the guidance that they provide”. It advises an impressive array of public and private sector clients on IP commercialisation matters, including oil and gas companies, healthcare institutions, banks and electric power utilities. “Classy operator” Michael Beairsto specialises in technology commercialisation matters, such as patent and software licensing, outsourcing and other technology-based transactions. Craig McDougall has honed “technical skills of the highest order”, making him a prime choice for clients from industries including information technology, petroleum and telecommunications. Focusing on IP and IT licensing and collaboration arrangements, “he properly understands the issues and imperatives that drive these kinds of initiatives at a corporate level.” Endowed with “practical knowledge and practical skills”, Thomas Reaume advises high-tech businesses on corporate and commercial matters. He has extensive experience in drafting and negotiating IP and technology licence agreements. Tom Sides “brings a wealth of experience to the table”. He handles patent licensing, technology transfer and IT transactions, and regularly acts as IP and technology counsel in corporate matters.Gowling Lafleur Henderson LLP
Sources are full of appreciation for the topquality service that Gowlings delivers. The general practice outfit is “extremely responsive and cost effective – in this sense, they behave like a small firm, but have the resources of an international firm”. The legal and commercial knowledge of its large ensemble of lawyers is combined to great effect with the technical expertise of patent agents; clients comment that “ultimately, the way we demonstrate our satisfaction with Gowlings is that we just keep going back to them”. Well known as a trademark lawyer, Regina Corrigan is hailed for her extensive work in drafting and negotiating technology licence agreements and collaboration deals. “Brilliant in assessing and prioritising real and imagined risks” for his clients, Robert Fashler regularly exhibits his “understanding, experience and ability to tailor licence agreements that best serve his clients’ interests”. Lisa Lifshitz wins glowing praise for her technology licensing practice. Clients say that she is a “superb negotiator who dramatically reduces our risk exposure”. She handles IP licensing as well as software licensing, outsourcing and IT system contracts; clients include global leaders from the IT, life sciences and media sectors.Heenan Blaikie LLP
Building on a noteworthy showing in IP prosecution work, Heenan Blaikie’s licensing practice “continues to go from strength to strength”. It is noted in particular for its expertise in licensing at the intersection between high technology and the media and entertainment industry. Michel Généreux is “a highly competent lawyer with an outstanding practice in technology matters”. As part of his IT law practice, he regularly advises on licensing, as well as outsourcing and commercial transactions involving technology.McCarthy Tétrault
“A team of diligent lawyers who know their craft extremely well”, the IP practice at McCarthy Tétrault receives warm accolades for its expansive offering in patent and technology licensing. With an ample reserve of industry experience and legal expertise at hand, the team “brings vision to the negotiation table”. Wendy Gross focuses on IP licensing agreements and commercial transactions involving technology and IP rights as part of her “wide-ranging and sophisticated licensing practice”. She also advises on outsourcing and regulatory matters. “Respected member of the technology law community” Charles Morgan is a seasoned hand at drafting and negotiating licence agreements, and is saluted for his handling of highly complex IP and IT deals in various industries, particularly telecommunications. “Absolutely outstanding practitioner” Barry Sookman garners plaudits for his commercial awareness and “enterprising approach” to licence agreements. His IP and IT licensing practice covers a wide variety of technologies, with a recent focus on internetrelated matters such as e-business. In addition to patent licensing, technology transfer and IT contractual matters, the widely acclaimed George Takach has a sterling track record in handling technology-based mergers and acquisitions. Thanks to his tireless efforts on the lecture and conference circuit, as well as his numerous publications on the subject of technology law, peers declare that “he has made us all better IP lawyers” and “has almost single-handedly educated the business world on licensing”.Miller Thomson LLP
Market commentators observe that the IP profile of this general practice firm has grown significantly in recent years. The team regularly advises on issues including IP licensing, IT contractual matters and commercial transactions with a technology element. Fraser Mann is held in high regard for his longstanding experience in technology law. “Knowledgeable, well read, current and up to date on the relevant issues of the day”, Mann drafts and negotiates licence deals for private and public sector clients in the healthcare, financial services and telecommunications fields.Norton Rose OR LLP
Sources recognise Norton Rose OR as a key player in the licensing arena. Complementing its outstanding credentials in other areas of business law, this full service outfit also displays “significant expertise in IP”, offering a commercially astute, well-informed approach to patent and technology licensing. Its substantial team of lawyers and patent agents has negotiated and drafted licence agreements for global companies from the pharmaceutical and medical devices industries, among others. Brian Gray and Christopher Hunter are key points of contact.Osler, Hoskin & Harcourt LLP
Standing “among the captains of Canadian industry”, thanks to their formidable reputation in corporate transactions, practitioners at this full service firm earn praise for their sophisticated appreciation of the complexities associated with commercial technology agreements. Lee Webster is lauded for his detailed knowledge of the law governing technology licensing. His practice runs the gamut of IP matters and he handles licence agreements and technology transactions across a diverse range of fields, including medical devices, telecommunications, consumer goods and metalworking.ROBIC LLP
Energy, mechanical engineering, consumer goods and biotechnology are just some of the sectors in which IP-focused firm ROBIC facilitates technology licensing. The team successfully marries longstanding experience in IP rights law with expertise in corporate transactional practice. Betty Koutsogiannis is renowned for her commercial nous when it comes to licensing, technology transfer and other collaboration arrangements, particularly in the life sciences field. “Upstanding member of the IP community” François Painchaud focuses on commercial IP work in life sciences and information technology; in addition to patent licensing and technology transfer, he regularly advises on the technological aspects of mergers and acquisitions.Smart & Biggar/Fetherstonhaugh
This team of “top-notch negotiators” is equally comfortable serving large multinationals and small early-stage companies, with clients proclaiming that “they behave with the interest of a vested business partner rather than just that of a service provider”. Built on the firm’s solid reputation in IP prosecution and litigation, the licensing practice is “one of the few that profoundly understands that the management of intellectual property is just as important as its protection”. John Bochnovic is applauded as “one of the best we have worked with”. His wide-ranging practice includes advising on IP licensing, technology transactions and IT licensing in fields such as pharmaceuticals, electronic and mechanical engineering, and information technology. The “strategically minded” Sanjay Goorachurn has an innate ability to “demystify the often complex and confusing realm of IP” for clients, who originate from a diverse array of industry sectors. He focuses on the strategic management of intellectual property by way of licensing and technology transfer, and is “always thinking about how work done today will create value in the future”. Alistair Simpson is a “highly responsive and endeavouring lawyer who is able to transform his immense knowledge into practical advice”. His client base ranges from high-tech companies to mechanics-based manufacturers on patent licensing agreements and related technology deals. Theodore Sum is respected for his extensive licensing experience involving an array of technologies. Recent deals include licence agreements relating to unconventional oil and gas and clean-tech.Torys LLP
This full service firm is a “major player with truly significant IP licensing ability” and is noted for the unimpeachable service it provides to clients from regulated industries, including banking and finance, food and beverages, pharmaceuticals and public transport. “Professional as well as personable”, Daniel Logan focuses on corporate and commercial transactions with intellectual property and technology at their heart – as does the group at Torys as a whole. In addition to licensing, Logan advises on the structuring of joint ventures and strategic partnerships, and manages outsourcing and system delivery in the IT law area. He is “perpetually available to clients and produces an excellent quality of work that always exceeds expectations”. As co-chair of the IP group, Conor McCourt strategically manages the intellectual property of his clients and maintains a “thorough approach to licence agreements”. He “always adds value”, thanks to his broad expertise in various technical and legal areas. Eileen McMahon specialises in IP and regulatory issues relating to food, drugs and medical devices. A major part of her practice involves the drafting and negotiation of licensing deals, and she has “expert familiarity with the technology in question”. As head of the life sciences group, Cheryl Reicin has a “good eye for potential risks” and the “ability to provide pragmatic, business-oriented advice”. She provides strategic guidance to companies from the biotechnology, pharmaceutical and medical devices industries, and her previous experience of practising in the United States has won her several high-profile US clients. She also commonly advises on regulatory and IT issues in the healthcare sector. Gabor Takach is “among the country’s most renowned technology lawyers”. He drafts and negotiates licence agreements in high-tech fields such as computer hardware and communications equipment; he also manages IT issues such as software licensing and outsourcing.
Eric Boehm is a recent arrival at Borden Ladner Gervais. He has proven experience of advising a sweep of national and international clients on licensing, outsourcing and the IP and technology issues arising from mergers, acquisitions and joint ventures. Cameron MacKendrick’s P Bradley Limpert is “brilliant in understanding the complexities of licensing”. He conducts licensing work in areas including biotechnology, chemical engineering and information technology, and offers a “consistently excellent and reliable work product”. Rudy Morrone of Fogler, Rubinoff LLP oversees a variety of technology issues, including licensing, transfers, IT contracts and corporate and commercial transactions. He has rich experience of advising clients in the life sciences, healthcare and telecommunications sectors, among others. Sources commend the IT-focused, noncontentious practice of Michel A Solis, who is especially noted for his software licensing work; clients appreciate his cost-effective approach and his background in computer programming. Colleen Spring Zimmerman recently joined the team at Fogler, Rubinoff, where she deals with technology commercialisation work. Sources opine that “her arrival will bring significant licensing profile to the practice”.