Professionals

Sanjay Goorachurn
Partner, Montreal
Barrister and Solicitor,
Trademark Agent

 

CONTACT
Phone: 514.954.1500
Fax: 514.954.1396
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YEAR OF CALL
Quebec Bar 2006
Ontario Bar 1992
QUALIFICATIONS
  • University of Manitoba B.Sc. (Chemistry) 1987
  • University of Manitoba LL.B. 1990
  • CLP™ (Certified Licensing Professional) 2008
  • Registered Trademark Agent 2009
 

Sanjay Goorachurn has significant experience in developing IP management programs and IP strategies globally; structuring, negotiating and drafting IP aspects of complex and multi-jurisdictional M&A transactions, IPOs, licensing, cross-border financing and private equity transactions, regional and global joint ventures, and public and private collaborative research transactions; conducting multi-jurisdictional IP due diligence investigations on both the buy and sell sides of IP-related transactions and financing; and conducting IP audits in the context of assessing, improving and implementing IP management programs for clients in support of their business objectives and corporate strategy.

His clients include innovative start-ups, small and medium-sized enterprises in Canada, the United States, Europe, and other relevant commercial markets, multinational corporations, venture capital/private equity investors, and governmental research organizations. He counsels clients in several industries, including clean tech / energy, industrial, consumer and sport products, transportation, pharmaceutical / animal health, software, telecommunications and gaming. 

Sanjay is appreciative that clients have indicated in the IAM Patent 1000 – The World’s Leading Patent Practitioners that Sanjay is “an outstanding strategist” and that he “provides astute advice across a multitude of sectors”, and in IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers that Sanjay "really strikes the right tone with clients"; that he “has an innate ability to demystify the often complex and confusing realm of IP”; that he is "diligent, responsive and attentive to business needs"; that "he always tries to find the win-win solution between parties"; and that he is “always thinking about how work done today will create value in the future”.

Prior to joining the firm, Sanjay was the Global IP Manager for Imperial Chemicals Industries (ICI) PLC (now Akzo Nobel) for its explosives business. He also worked as IP Counsel for ICI in both the United States (New Jersey) and United Kingdom (London) head offices for various global businesses such as acrylics, paints, fragrances and flavours, polyurethanes and surfactants. He also acted as an IP specialist member of ICI’s central Strategy and Acquisitions projects team in numerous complex and multi-billion dollar M&A transactions in India, Australia, South Africa and North America.

Before that, Sanjay was global licensing counsel based in Toronto for Semi-Tech Corporation / The Singer Company NV, where he provided IP management, including trademark licensing and litigation management services, for a consumer products/electronics business.

Sanjay was also the Canadian co-leader in the Cross-Border Intellectual Property Working Group of the Canada-California Strategic Initiative Project, which was coordinated by the Canadian Department of Foreign Affairs and International Trade.


Rankings and Recognition

  • Recognized in the inaugural edition (2014) and in the second edition (2015) of Managing Intellectual Property’s Trademark & Copyright Handbook  as an 'IP Star'
  • Recognized in the IAM Licensing 250 The World's Leading Patent and Technology Licensing Lawyers – 2010 (inaugural issue), 2011 and 2012/2013
  • Recognized in IAM Patent 1000 – The World’s Leading Patent Practitioners since 2012 (inaugural issue) and in 2013-2015
  • Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2012 and Technology Law since 2015
PRACTICE AREAS
Licensing & IP Transactions
IP Management & Strategic Counselling
Chemical & Industrial Biotechnology
Industrial/Mechanical
Life Sciences
Pharmaceutical
Software/Information Technologies
Life Sciences — Regulatory & Compliance
Cleantech
Energy
 
LANGUAGES SPOKEN
English
French
Hindi
 

Representative IP-related Transactions

M&A:

  • IP counsel for a global industrial company in the strategic acquisition of technology and IP assets
  • IP co-counsel for a leading private equity-backed sports and apparel company in the structuring, negotiation and drafting the IP aspects of a major asset purchase of a leading baseball/softball manufacturer and related IP assets and technologies, including IP support for the listing of such company on NASDAQ
  • IP co-counsel for a leading Canadian-based sports and apparel company in the acquisition of a major US-based sports apparel manufacturer
  • IP co-counsel for a leading Canadian-based sports and apparel company in structuring, negotiating and drafting IP aspects of a share purchase of an Ottawa-based sports apparel manufacturer
  • IP counsel for a Quebec-based biotechnology company in an IP asset purchase of know how/ technical data from a leading Quebec university
  • IP co-counsel for a leading Canadian-based sports and apparel company in structuring, negotiating and drafting IP aspects of a share purchase of a well-known U.S. sports manufacturer
  • IP counsel for a Canadian-based sports and apparel company in structuring, negotiating and drafting IP aspects of a hybrid share purchase agreement and IP asset purchase agreement with a significant European consumer products company
  • IP co-counsel for a Canadian-based Software as a Service technology company in structuring, negotiating and drafting IP aspects of a cross-border acquisition by a leading US-based technology company
  • IP counsel for a Canadian subsidiary of a major U.S. software company in a management buy-out and related financing by Quebec investors
  • IP co-counsel for a U.S. private-equity backed and well-known North American consumer products company in a share purchase of a U.S. sports company
  • IP co-counsel for a global U.S.-based biotechnology company in the acquisition of a Quebec-based biotechnology company
  • IP co-counsel for a U.S. private-equity backed and well-known North American consumer products company in a share purchase of a major North American consumer products company
  • IP co-counsel for a well-known global consumer products company in the sale of another well-known consumer products business unit to a U.S. private equity fund
  • IP counsel for a French multinational in an asset acquisition of a U.S.-based and VC-backed clean tech company


Financing:

  • IP counsel for a Quebec VC-backed agri-food biotechnology company in a Series B financing round by North-American and European investors
  • IP counsel for Quebec-based and Paris-based co-investors in the financing of a Quebec-based clean tech start-up
  • IP counsel for a Quebec VC-backed industrial materials start-up in the financing by French private equity investment company
  • IP counsel on behalf of a Quebec VC syndicate in significant financing of several Quebec biotechnology companies
  • IP counsel on behalf of a Canadian VC investor in several software, industrial and Internet start-ups


Licensing:

  • IP counsel for a Quebec-based clean tech engineering company in negotiating, structuring and drafting a license and collaboration agreement with a leading public utility company
  • IP counsel for a reputed pharmaceutical compounding company in negotiating, structuring and drafting a trademark license agreement and a patent technology license agreement
  • IP counsel for a Quebec-based clean tech engineering company in negotiating, structuring and drafting potential license agreements with the world’s largest nonprofit research and development organization
  • IP counsel for a Quebec-based pharmaceutical company in negotiating, structuring and drafting an exclusive patent license agreement and research and development agreements with a major Quebec University
  • IP counsel for a Quebec VC-backed agri-food biotechnology company in negotiating, structuring, and drafting a potential patent license agreement with a major Quebec University
  • IP counsel for a Quebec VC-backed biotechnology company in structuring, negotiating and drafting a distribution and license agreement with a Chinese distributor for the Chinese market
  • IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating and drafting a distribution and license agreement with a major pharmaceutical company for the Canadian market
  • IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating and drafting a distribution and license agreement with a major pharmaceutical company for European market
  • IP counsel for a Quebec VC-backed biotechnology company in structuring, negotiating and drafting a contract manufacturing and license agreement with a well-known US-based contract manufacturer
  • IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating and drafting IP aspects of a distribution and trademark license agreement with a major European animal health company for the Brazilian market
  • IP co-counsel for a major biopharmaceutical company in re-negotiating global license agreements with another major pharmaceutical company
  • IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating and drafting IP aspects of a distribution and trade mark license agreement with a Russian distributor for the Russian market  
  • IP counsel for a Quebec VC-backed clean tech start-up in structuring, negotiating and drafting the IP aspects of a global distribution and license agreement with a major European partner and multinational corporation
  • IP counsel for a Quebec-based sports and technology equipment company in a supply and license agreement with a major U.S. telecommunications company
  • IP counsel for a Quebec VC-backed clean tech company in structuring, negotiating and drafting IP aspects of a design and development agreement with a global agricultural equipment manufacturer


IP Management / IP Strategy:

  • IP audit of a Quebec-based pharmaceutical compounding company in support / collaboration with a leading accounting firm for a strategic US/Canada transfer pricing project
  • IP audit and IP strategy for a global recognized leader in nuclear science and technology;
  • Strategic IP document for a Canadian-based venture-backed clean tech company and to assist in implementation
  • IP audit for a Quebec-based research company to provide recommendations in implementing an IP management program and to assist in implementation to enhance overall corporate value and business growth
  • IP audit for a major Quebec-based multinational to provide recommendations to improve IP management function, role and responsibilities
  • IP audit for a global and major industrial manufacturer to provide recommendations to implement an IP management structure and to assist in implementation to enhance overall corporate value and business growth
  • Strategic IP advice to convert a publicly listed small technology company from a manufacturing to an IP holding/licensing model
  • IP audit for a Quebec-based major natural resources company to improve IP management for a key business unit
  • Developing and implementing IP management plans and IP strategy documents for several VC-backed small technology companies in several industries to enhance corporate value and return on investment


IP Valuation
:

  • Provided qualitative IP valuation of IP assets of a US-based sports company for a potential acquisition, in collaboration with US chartered valuation firm
  • Collaborated with Canadian chartered valuation firm to provide IP valuation of IP and intangible assets of a Quebec-based leader in gaming innovation
  • Provided qualitative IP valuation to a global number one Asian-based client for strategic acquisition of a Canadian software company, in collaboration with client's internal valuation team
  • Collaborated with Canadian chartered valuation firm on valuation of IP and intangible assets for transfer pricing
  • Estimate of fair value market of IP assets of a US-based sports company for a potential acquisition
  • Estimate of fair value market of IP assets of a Quebec-based leader in gaming innovation
  • Trademarks valuation of a Canadian software company for the acquisition of its trademarks by an Asian-based company

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, Canadian Healthcare Licensing Association
  • Member, American Intellectual Property Law Association
  • Member, Licensing Executives Society
  • Member, Committee on the Integration of Immigrant Lawyers, Barreau du Québec
  • Jury Member on the admission of Lawyers qualified in France to the Barreau du Québec
  • Member, Canadian Bar Association


Select speaking engagements

  • “Five Practical IP Recommendations for Canadian Biotech Companies with an International Business Strategy” presented at 2013 BIO International Convention Show Case Series, Chicago, IL, April 2013
  • "Practical relevance and importance of an Intellectual Property Strategy for Quebec SMEs in Supporting Financing and Licensing Deals," LES Montreal Chapter Meeting, September 2012
  • “IP-based Transaction to enhance Business Value in Canada” presented at 2012 BIO International Convention Show Case Series, Boston, MA, June 2012
  • "Cross–border Intellectual Property Challenges in Strategic Research Collaboration between Canada and California" (panelist), 2012 BIO International Convention, Boston, MA, June 2012
  • "Myth or reality in the context of university enterprise collaboration and IP transfer," Open Innovation 2011, Montreal (panelist on École de technologie supérieure’s Panel), November 2011
  • "Sharing the risk in R&D relationships," Open Innovation 2011, Montreal (panelist on Department of Foreign Affairs and International Trade's Panel), November 2011
  • "IP Strategy during Mergers & Acquisitions," Federated Press's 4th Conference on Patents as a Competitive Strategy, Toronto, June 2011
  • "IP Strategy during Mergers & Acquisitions," Federated Press's 3rd Conference on Patents as a Competitive Strategy, Toronto, May 2010
  • "Relevance of IP Management in Creating IP Value for Investors and Investee Companies in M&A and Strategic Alliances" (panel discussion), Tremblant Venture Forum, Mont-Tremblant, QC, May 2010
  • "Tax Aspects of Licensing IP" (co-presenter: Mr. McShane, Barsalou Lawson), Canadian Institute conference Aspects fiscaux des conventions commercials, Montreal, February 2010
  • "Redefining relationships: the evolving role of the key stakeholders in the Canadian technology transfer landscape" (moderator), IPIC 83rd Annual Meeting, St. John's, NL, September 2009
  • "Les aspects commerciaux et transactionnels de la PI pour aborder le marché nord américain, Chambre de commerce industriel de l'Essonne, Evry, France, June 2009
  • "La contrefaçon et ses impacts sur l'économie et les entreprises canadiennes" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Montreal, May 2009
  • "La gestion efficace d'un portefeuille de PI en contentieux d'entreprise — un outil de croissance et de compétitivité" (co-presenter: Luc Bérubé, Sandoz), Canadian Institute conference, Montreal, November 2008
  • "Cross-Border IP Framework" (co-presenters: Tom Sweeney, Garage Technology Venture and Angus Livingstone, UBC OTT), 3rd Summit of the Canada-California Strategic Innovation Partnership, Montreal, October 2008
  • "Managing and Leveraging IP for Corporate Value" (co-presenter: Stephan P. Georgiev), Emerging Partners in Private Equity, Montreal, February 2008
  • "Commercialization of Canadian Publicly Funded R&D," presentation to the Government of Canada Department of Foreign Affairs and International Trade, Ottawa, January 2008
  • "International Licensing Agreements and IP Considerations," ACTI-ITAC, Information Technology Association of Canada, Montreal, September 2007
  • "Aspects commerciaux et litigieux reliés aux transactions de fusions et acquisitions" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2007
  • "Managing and leveraging IP for commercial success — Guidelines for Entrepreneurs" (co-presenter: Brigide Mattar), Concours les Anges financiers, Quebec City, February 2007
  • "Valoriser et commercialiser les actifs de propriété intellectuelle," Insight conference, Montreal, April 2006
  • "La vérification diligente de la propriété intellectuelle lors de financements ou de fusions et acquisitions," Canadian Institute conference, Montreal, March 2006
  • "Contrats mettant en cause des actifs de propriété intellectuelle" (co-presenter: François Guay), Insight conference La negotiation et la redaction de conventions commerciales, Montreal, September 2005
  • "Reconnaitre et ne plus occulter l'importance de la propriété intellectuelle" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2005


Select teaching activities

  • "Intellectual Property Protection and Management Strategies Workshop" (co-presenter: Stephan Georgiev), 2014 Oil & Gas IP Summit, November 2014
  • “LES CLP Review Course”, LES Montreal Chapter, Montreal, Module II on IP Protection and Module VI on Agreement Development, September 2013
  • "Patent License Negotiation" (workshop), 2010 IPIC/McGill Understanding Patents Course Module 2, Montreal, July 2010
  • "Interactive Workshop on Licensing Negotiations" (workshop), The Trademarks Practitioner, 2009 IPIC/McGill Advanced Trademarks Course, August 2009
  • "IP and M&A: Impact on the Global Economy," Annual Canadian International Law Students' Conference, Osgoode Hall Law School of York University, Toronto, February 2008
  • "IP Management, Managing the Small Business Enterprise" (co-presenter: Stephan P. Georgiev), Dobson Centre for Entrepreneurial Studies, McGill University, Montreal, March 2007
  • "IP Management, Managing the Small Business Enterprise" (co-presenter: Stephan P. Georgiev), Dobson Centre for Entrepreneurial Studies, McGill University, Montreal, January 2006

Publications

  • Quoted in the article "IP: Monetization is the message," which appeared in IP Monetization on August 24, 2014

  • "Key and Practical IP factors to consider from Canadian and US / European perspectives in Distribution / License and M&A transactions," distributed at the 2012 BIO International Convention, Boston, MA, June 2012
  • "Canada-California Cross-Border Intellectual Property Framework" (co-authors: Tom Sweeney, Brett Sharp and Angus Livingstone), July 7, 2009 (Revised August 15, 2011)
  • "Key and Practical IP issues in Distribution / License and M&A Deals in Canada," distributed at the 2011 BIO International Convention, Washington, DC, June 2011

Canada-California Cross-Border Intellectual Property Framework

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