INTELLECTUAL PROPERTY LICENSING

IP strategies and licensing
Marcel D. Mongeon

Boiler plate provisions
Colleen Spring Zimmerman

Licensing emerging technologies
Marcel D. Mongeon

Due diligence in Intellectual Property licensing
Gordon J. Zimmerman

Commercializing patents
James D. Skippen

International licensing and technology transfers
Gordon J. Zimmerman

Licensing agreements in outsourcing arrangements
Arnold Rosen

Resolution of disputes in license agreements
Christopher N. Hunter

Best practices for beneficial Intellectual Property license agreements and relationships
Stuart Wilkinson

Settling royalties and other compensation issues in Intellectual Property licensing
Dino P. Clarizio

Partner with Borden Ladner Gervais - A National Multi-Service Law Firm with a large IP practice including agency, corporate commercial and litigation in IP - Colleen practices in the Toronto office and is a member of the National IP section of BLG. Colleen has practiced with an intellectual property boutique firm. In addition to that experience, she has also had years of experience in National multi-service law firm in Canada.

Colleen has a broad intellectual property (IP) practice including advice in all aspects of IP, such as trade marks, copyrights, patents, industrial designs, licensing, distribution agreements, technology transfer, trade secrets and advertising.

Colleen has vast experience in intellectual property agency work;
Extensive experience in all intellectual property aspects of corporate transactions, in all business sectors, including manufacturing, technology, telecom, entertainment and bio-tech; and
Appears in the Trial and Appeal Divisions of the Federal Courts of Canada, including acting in all forms of interim and interlocutory relief, including Anton Piller Orders and other remedies.

Colleen is recognized as an expert in intellectual property by the Lexpert directory;

Is Editor-in-Chief of the Intellectual Property Journal;

Teaches as an Adjunct Professor at Osgoode Hall Law School (York University), teaching Intellectual Property Law and Cognitive Science. She has taught at McGill University in the Trade-Marks - Intensive Practical Course.

Colleen is a frequent speaker and published author in intellectual property.

In addition to her Law Degree, Colleen has a B.Sc. (Pharm) and is licensed to practise as a pharmacist.

Roger T. Hughes, Q.C., a leader of the Intellectual Property Bar in Canada. He graduated from Queen's University in 1963 with a BSc from the University of Toronto in 1966 with a JD in law. He was called to the Bar in Ontario in 1968 and in Alberta in 1974.

Mr. Hughes has an extensive intellectual property litigation practice acting as lead counsel in many such cases in Canada at all levels of Courts including the Supreme Court of Canada, the Federal Court and Superior Courts and Courts of Appeal of the provinces. He has acted as Arbitrator and Mediator resolving many disputes in Canada and elsewhere.

Mr. Hughes is the author of four respected text books published since the 1970's by looseleaf service several times a year. These are Hughes on Trademarks; Hughes on Copyright; Hughes and Woodley on Patents; and Federal Court of Canada Service. He contributes frequently to the Supreme Court Law Review and many other publications. He is a frequent speaker at programmes and seminars.

Mr. Hughes is an Adjunct Professor at Osgoode Hall Law School being the Director of the Intellectual Property Master of Laws programme lecturing in patents, trade-marks and copyright.

Mr. Hughes is a Fellow of the American College of Trial Lawyers, the Chartered Institute of Arbitrators and the Intellectual Property Institute of Canada (past President). He is a member of the Canadian Bar Association, the Ontario Bar Association, the American Bar Association, the Ontario Society of Professional Engineers and numerous other organizations.

Gordon J. Zimmerman is a partner with Borden Ladner Gervais LLP in Toronto where he heads the Intellectual Property and Technology Group. He practises exclusively in the field of intellectual property including patents, trade marks, copyright, industrial designs, trade secrets, confidential information and related litigation. He graduated from the University of Waterloo with an honours Bachelor of Science degree in Chemistry (being awarded the Gold Medal in Science) and from the University of Toronto with an LL.B. He received a J.D.S. Tory Fellowship for legal writing at the University of Toronto. He also received a diploma in Civil Law/Common Law studies from Dalhousie University and the University of Sherbrooke before being called to the Bar of Ontario in 1982. Mr. Zimmerman is a registered patent and trade mark agent and certified by the Law Society of Upper Canada as a Specialist in Intellectual Property (Patents, Trade marks and Copyright) Law. He is also a Fellow of the Intellectual Property Institute of Canada and of numerous other national and international organizations. He is past Chair of the Trade-Marks Committee of the Canadian Bar Association Intellectual Property Law Section and past-Chair of that Section's Ad Hoc Committee on Security Interests in Intellectual Property. He is also former Vice-Chair for Canada for the Inter Pacific Bar Association Intellectual Property Section. Mr. Zimmerman has published a number of articles and has spoken to numerous groups including the Intellectual Property Institute of Canada, the Canadian Bar Association, the Law Society of Upper Canada, the New York State Bar Association, the Licensing Executives Society, IT.CAN, The Canadian Institute, Insight, Atlas Information, Infonex, Federated Press, and university and community college classes including the IPIC/McGill Patent and Trade-marks courses. Current or past listings in L'Expert, The International Who's Who of Business Lawyers (Trademarks), Euromoney's Guide to the World's Leading Patent Law Experts.

Marcel Mongeon is the Executive Director and Legal Counsel, Office of Research Contracts and Intellectual Property at McMaster University. Mr. Mongeon is responsible for the commercialization of research generated at the University, including appropriate legal protection, negotiation of licenses or transfers, administration of license portfolio and institution and defense of legal actions in association with external counsel. He has successfully implemented an Intellectual Property Policy used as a model for other universities and negotiated a Joint Intellectual Property Policy with affiliated teaching hospitals. He holds business and law degrees from McGill University (B.Com, LL.B. and BCL) and McMaster (MBA) and is a lawyer qualified to practice law in the provinces of Quebec and Ontario and in the State of New York. Mr. Mongeon is a member of many professional and community organizations and currently serves on the board of the Canadian University Intellectual Property Group. Mr. Mongeon also serves on a part-time basis as a Deputy Judge of the Hamilton Small Claims Court.

James D. Skippen is Senior Vice President, Patent Licensing and General Counsel of MOSAID Technologies Incorporated. Reporting directly to the President and CEO, Mr. Skippen is responsible for all patent licensing, legal and corporate secretarial matters. MOSAID is a leading supplier of intellectual property and has generated more revenue from patent licensing than any other company in Canada. Prior to joining MOSAID in 1996, Mr. Skippen was a partner in the Toronto law firm of Borden & Elliot, practicing in the computer and technology law group. He is a former Chairman of the Toronto Computer Lawyers Group and a former Contributing Editor of Carswell's Information and Technology Law Service. He is also a member of the Executive for the Ottawa Technology Law Group. He has written articles relating to technology and the law, and various other legal topics that have appeared in numerous publications and writes a monthly column in Silicon Valley North. Mr. Skippen holds an LLB degree from the University of Ottawa's Law School and was called to the bar in 1988.

Chris Hunter is an associate in our Technology, Communications and Intellectual Property Group in Toronto. He represents clients in the acquisition, enforcement and exploitation of all forms of intellectual property including trade-marks, copyright and industrial designs. Mr. Hunter also regularly negotiates and drafts agreements, including licences, joint development agreements and various other technology-related agreements.

His professional memberships include the Intellectual Property Institute of Canada (IPIC), the Toronto Intellectual Property Group and the American Intellectual Property Law Association. He is also a member of the IPIC's Patent Legislation Committee and Joint Liaison Committee.

Mr. Hunter received his LLB from the University of Victoria in 1998, his M.A.Sc. (Engineering) from the University of Toronto in 1995 (funded by an NSERC scholarship) and his B.A.Sc. (Engineering) from the University of Toronto in 1991. He is also a patent agent registered to practise before both the Canadian Intellectual Property Office and the United States Patent and Trademark Office (Canadian Applicants). Mr. Hunter was called to the Ontario bar in 2000. Prior to becoming a lawyer, Mr. Hunter was a management consultant with Andersen Consulting (now Accenture).

Stuart Wilkinson is the President of ipsoIP Inc., an IP management and consulting company that he founded shortly after leaving Nortel Networks, where he held the position of Vice-President, Intellectual Property Licensing and Transactions and led the corporation's IP strategy team. ipsoIP works with clients to formulate IP strategy and to manage the commercial side of IP - assessing and building an IP portfolio, dealing with adverse IP assertions and licensing and litigation management. Stuart is a Past-President of the Intellectual Property Institute of Canada.

Arnold Rosen is a Senior Patent Attorney in the Intellectual Property Department of IBM Canada Ltd., providing IP support for a number of its development groups, including Database Technology, e-Commerce, IBM Global Services, Sales and Distribution, and many others. Mr. Rosen is active in licensing computer software and hardware producers under IBM patents and technology in North America. He has also been active in enforcing the IP rights of IBM through patent, trademark and copyright litigation, and in investigating and pursuing computer software piracy in Canada, by assisting in criminal prosecutions. Mr. Rosen also holds degrees in Engineering Science and Aerospace Engineering from the University of Toronto. He is a registered Patent and Trademark Agent in Canada as well as a registered Patent Agent in the U.S. Patent Office.

Dino Clarizio is a partner in the Toronto Litigation Department at Bennett Jones LLP. His practice focuses on intellectual property litigation and patent prosecution. Dino is a Registered Patent and Trademark Agent in both Canada and the U.S., and won the J. Edward Maybee Prize for placing first in the Canadian qualifying examinations. Dino's work includes all types of intellectual property litigation, and in particular patent litigation in the pharmaceutical area. Dino also has a large patent prosecution practice, with an emphasis on patenting in the chemical and biotech industries. Dino is the author of many papers and articles in the area of intellectual property and litigation. Dino is involved with the Intellectual Property Institute of Canada, sitting on several committees and presenting at various conferences and seminars. He is also a member of a number of professional associations, including the Advocates' Society, the American Bar Association, the American Intellectual Property Law Association, the Licensing Executives Society and the Canadian Bar Association.

Brian Gray is National Head of the Intellectual Property Group at McCarthy Tétrault LLP, in Toronto. Mr. Gray's practice focuses on all aspects of intellectual property including patents, copyright, entertainment, trademarks and advertising areas and a particular expertise in biotechnology. A former chair of the International Bar Association's Intellectual Property Committee, he has appeared before the Federal and Ontario courts on patent, trademark and copyright matters. For over a decade, Mr. Gray had served on the National Biotechnology Advisory Committee of the federal government. Mr. Gray has taught patent and trademark law at the University of Toronto and copyright law at McGill University. He has authored numerous papers on biotechnology and pharmaceutical patent issues and on technology transfer and patent licensing issues. Mr. Gray is on the editorial board of World Intellectual Property Report and of World E-Commerce Report. He has also served on the editorial board of the TradeMark Reporter. Mr. Gray received his LLB from the University of Toronto, and his MA (Government) and his BA (Chemistry and History) from Cornell University.