Professionals

Matthew Zischka
Partner, Toronto
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 416.593.5514
Fax: 416.591.1690
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YEAR OF CALL
Ontario Bar 1995
QUALIFICATIONS
  • University of Waterloo B.A.Sc. (Electrical Engineering) 1990
  • Queen's University LL.B. 1993
  • Registered Trademark Agent 1995
  • Registered Patent Agent 1997
  • Registered to practise before the United States Patent and Trademark Office
 

Matthew Zischka has over 20 years’ experience helping clients secure and exploit intellectual property rights. His experience extends from simple mechanical inventions to complex inventions in the telecommunications, microprocessor and graphics industries and his practice focuses heavily on the preparation and prosecution of patent applications in the electrical, software, electronics, mechanical, electro-mechanical, scientific and medical devices fields.

Matt frequently provides legal opinions and strategic counsel relating to intellectual property matters. In particular, he provides freedom to operate opinions, patent infringement opinions, and opinions on copyright and infringement. In addition, Matt provides strategic guidance to clients on establishing intellectual property policies; licensing programs; structuring transactions; conducting due diligence; and often counsels clients on questions of contractual interpretation

Matt frequently lectures on intellectual property law topics, and has been consistently rated as an expert in Canadian Intellectual Property Law and patent law in various national and international surveys.

Clients and colleagues have noted that Matthew is “an incredible practitioner and clients love him” (IAM Patents 1000, 2016), and that he is an “excellent” lawyer and is admired by clients and peers alike: “You need to meet him to understand how good he is; he’s a great ambassador for the profession. Matthew is a wonderful drafter – he is very technical and keeps up to date with the latest changes in the law. You can go to him with the most puzzling questions and can refer work to him with total trust” (IAM Patents 1000, 2017).  

Recent strategic work experience includes:

  • Advised scientific instrument manufacturer in structuring and building a patent portfolio leading to a major M&A deal
  • Provided IP litigation/infringement opinion and litigation support to major financial services provider
  • Provided IP litigation support and advice to IPO’d internet social media provider
  • Provided IP licensing advice to major theater chain for point of sale of software 


Rankings and recognition

  • One of only 7 “Highly Recommended” Canadian patent prosecution practitioners in Canada in  IAM Patent 1000 - The World's Leading Patent Practitioners, and recognized annually since 2012
  • Recognized in 2016 as a leading Patent Agent in Who’s Who Legal: Canada
  • Recognized annually in The Best Lawyers in Canada, for Intellectual Property Law since 2010
  • Recognized in The Canadian Legal LEXPERT® Directory under Intellectual Property since 2015
  • Recognized annually as an 'IP Star' in Managing Intellectual Property’s IP Stars Handbook: Patents since the inaugural edition in 2014
  • Martindale-Hubbell, Peer Review Rated, BV® Distinguished™
PRACTICE AREAS
Patents
IP Management & Strategic Counselling
Licensing & IP Transactions
Industrial Designs
Electrical/Electronics
Cleantech
Software/Information Technologies
Industrial/Mechanical
Energy
Trademarks
 
LANGUAGES SPOKEN
English
French
German
 

Memberships

  • Member, International Association for the Protection of Intellectual Property (AIPPI);
  • Executive Council Member, AIPPI Canada
  • Fellow, Intellectual Property Institute of Canada; Chair of the Patent Legislation Committee, past member of the International Patent Issues Committee, past member of thePatent Agent Examination Board (2003-2005)
  • Member, American Intellectual Property Law Association
  • Member, Institute of Electrical and Electronics Engineers

Speaking engagements

  • “Computer implemented inventions: patent eligibility in Canada,” AIPPI US Global Educational Forum, Chicago, July 2017
  • "IP Litigation: A View From the Federal Court of Canada" (moderator) AIPLA Electronic and Computer Patent Law Summit, Toronto, June 2017
  • “Bill C-30 – Amending the Patent Act to Implement CETA”, International Association for the Protection of Intellectual Property (AIPPI)’s Canada’s Annual Meeting, November 2016
  • "An IP strategy for global business," CPDonline’s inaugural Business Law and Legal Issues Facing Finance Professionals conference, May 2016
  • "Bill C-43: Understanding changes to the Patent Act and your practice," Toronto Intellectual Property Group, Toronto, March 2015
  • "Business Method Patents: Coming of Age," organized by LEXPERT Magazine, Toronto, November 2012
  • "Effective Intellectual Property Management for the Non-IP Specialist," panel discussion/webinar, Canadian Corporate Counsel Association, February 2011
  • "Human Autonomy, Law and Technology: A Virtual Conference in Honour of the Late Professor Emeritus Hugh Lawford" (online seminar), Queen’s University, March 2010
  • "Watch Out! Compulsory Licensing Lurks Around Global Corners," AIPLA Mid-winter Meeting, Miami, FL, January 2009
  • "A Primer on Intellectual Property," Canadian Bar Association – Online Continuing Legal Education Program, December 2007
  • "International Developments in Pharma Patents," The Canadian Institute’s 6th Annual Forum on Pharma Patents, Toronto, October 2007


Teaching activities

  • Sessional instructor, Queen's University Faculty of Law, Kingston, ON, 2007 – 2010:
    • "Patent Law," Fall 2009, 2010
    • "Advanced Patent Law and Policy," Winter 2007, 2008
  • Instructor - "Advanced Patent Agents Training Course – Infringement & Validity," Intellectual Property Institute of Canada, Toronto, 2009-2017
  • Lecturer and Tutor - "Understanding Patents," IPIC-McGill Summer Program, Montreal, 2001 through 2017 (course director – 2003)

Publications

  • "How the Amazon ruling affected business-method patents" (co-author: Colin B. Ingram), Managing Intellectual Property, September 2013
  • "Watch Out! Compulsory Licensing Lurks Around Global Corners (The View From Canada)", presented at the American Intellectual Property Law Association Mid-winter Meeting, 2009
  • "Foreign Perspectives on the Patent-Trade Secret Interface: The Canadian Example," presented at the American Intellectual Property Law Association Spring Meeting, Dallas, TX, May 2004
  • "Patentability and Patent Claims, An Introduction to Claims Drafting," IPIC-McGill Summer Program course material, 2003 – 2010
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