Professionals

Steven Garland
Partner, Ottawa
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 613.232.2486
Fax: 613.232.8440
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YEAR OF CALL
Ontario Bar 1992
QUALIFICATIONS
  • University of Western Ontario B.Eng. (Chemical-Biochemical) 1985
  • University of Ottawa LL.B. 1990
  • Registered Trademark Agent 1992
  • Registered Patent Agent 1993
  • Registered to practise before the United States Patent and Trademark Office
  • Professional Engineer (Professional Engineers Ontario)
 

Steven Garland has over 20 years of experience in intellectual property litigation of all types, including issues relating to patent, trademark, copyright, industrial designs, trade secrets and competition law. He has acted in many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, biotechnological, telephony, mechanical and industrial matters. Steven has appeared as counsel in intellectual property cases at both the Federal Court and Federal Court of Appeal, the Ontario Superior Court and Court of Appeal, the Nova Scotia Supreme Court and Court of Appeal, the Court of Appeal of British Columbia and the Supreme Court of Canada. He also regularly appears before the Patent Appeal Board and the Trademarks Opposition Board. He has also been retained as a mediator in intellectual property disputes. A representative list of some of the parties on whose behalf Steven has acted is provided below.

Steven regularly acts on behalf of innovator pharmaceutical and biopharmaceutical companies in respect of patent related matters, including patent infringement actions and proceedings under the Patented Medicines (Notice of Compliance) Regulations.

Several recent decisions in which Steven has acted as successful counsel have become leading cases and have been lauded by national and international legal publications, including:

Steven is a Past President of the International Association for the Protection of Intellectual Property (AIPPI) Canadian Group, and a Past President of the Intellectual Property Institute of Canada. He is also an adjunct professor at the University of Ottawa Law School, where he teaches patent law. Steven is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. He is also a member of the editorial board of the international publication Intellectual Property Magazine. Prior to becoming a lawyer, Steven was a Reservoir Engineer in the Canadian oil and gas industry.


Representative list of parties

3M
Amazon.com
Anchor Brewing Company
Barmish Inc.
Bauer/Nike
Bayer Inc.
Bombardier
Clark Shoes
DSM
Dow Chemical
Ferrari
General Electric
Glaxo Wellcome
Harvard College (Harvard Mouse case)
Imperial Tobacco
Labatt
Loeb IGA
H. Lundbeck A/S
McDonalds
MCI
Merz Pharma GmbH
Nautica
Pfizer
Playboy
Progressive Games
sanofi-aventis
Shell Canada
Shoppers Drug Mart
Shionogi & Co.
Stamicarbon B.V.
Takeda
Vina Concha Y Toro


Rankings and recognition

  • Named Canada's Trademark Litigator of the Year for 2013 by Benchmark Canada
  • Named Best Lawyers' 2013 Ottawa Intellectual Property Law Lawyer of the Year
  • Recognized annually since the inaugural edition in 2012 as a 'Local Litigation Star' in Benchmark Canada under Intellectual Property
  • Recognized annually since the inaugural Canada Chapter in 2013 of LMG Life Sciences as a 'Life Science Star' under Intellectual Property
  • Recognized in the inaugural edition of Managing Intellectual Property’s Trade Mark & Copyright Handbook 2014 as an 'IP Star'
  • Recognized in the inaugural edition of Managing Intellectual Property’s Patent Handbook 2014 as an 'IP Star'
  • Recognized annually in the Lexpert® Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada under Intellectual Property Litigation since 2012
  • Selected to appear in The LEXPERT®/American Lawyer Guide to the Leading 500 Lawyers in Canada under Intellectual Property and Intellectual Property Litigation
  • Recognized annually since the inaugural edition in 2011 of World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services
  • Recognized annually since the inaugural edition in 2006 of The Best Lawyers in Canada under Intellectual Property Law
  • Recognized in The Canadian Legal LEXPERT® Directory under Intellectual Property and Litigation — Intellectual Property
  • Recognized annually since the inaugural edition in 2006 of Chambers Global – The World’s Leading Lawyers for Business under Intellectual Property: Litigation
  • Recognized in each edition of Euromoney's Expert Guides: Guide to the World's Leading Patent Law Practitioners since 2007
  • Listed in IAM Life Sciences 250 — The World's Leading Life Sciences Patent Litigators 2010
  • Recognized annually since the inaugural edition in 2012 of IAM Patent 1000 - The World's Leading Patent Practitioners under Litigation
  • Recognized annually since the inaugural edition in 2011 of IAM Patent Litigation 250 — The World's Leading Patent Litigators
  • Recognized annually in Who's Who Legal: Patents since 2010
  • Recognized annually in Who's Who Legal: Life Sciences since 2011
  • Recognized annually since the inaugural edition in 2010 of Who's Who Legal: Canada under Patents
  • Recognized in Who's Who Legal: Canada 2013 under Life Sciences
PRACTICE AREAS
Litigation
Patents
Trademarks
Copyright & Media
Industrial Designs
Licensing & IP Transactions
IP Management & Strategic Counselling
Pharmaceutical
Life Sciences
Software/Internet/Information Technologies
Chemical & Industrial Biotechnology
Industrial/Mechanical
Electrical/Electronics
IP Crime
Pharmaceutical Regulatory & Compliance
Energy
Marketing & Advertising
 

Dow Chemical Company v Nova Chemicals Corporation, 2012 FC 754

Dm-drogerie markt GmbH v 911979 Alberta Ltd, 2014 TMOB 59

Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, 2014 FC 300

Cheah v McDonald's Corporation, 2013 FC 774

Iwasaki Electric Co Ltd v Hortilux Schreder BV, 2012 FCA 321, (FCTD)

Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201

Amazon.com Inc v Canada (Attorney General), 2010 FC 1011, 2011 FCA 328

Red Bull GmbH v 9087-1047 Quebec Inc, 2011 TMOB 79

Corlac Inc v Weatherford Canada Inc, 2011 FCA 228 (for the Intervener, IPIC)

Hortilux Schreder BV v Iwasaki Electric Co Ltd, 2011 FC 967

Indigo Books & Music Inc v C & J Clark International Limited, 2010 FC 859 

Copperhead Brewing Co v John Labatt Ltd (1995), 61 CPR (3d) 317

Harvard College v Canada (Commissioner of Patents)2002 SCC 76, [2004] 4 FC 528, 7 CPR (4th) 1, (CA)

Lundbeck Canada Inc v ratiopharm Inc, 2009 FC 1102

Eli Lilly and Company v Apotex Inc, 2009 FC 991

J2 Global Communications Inc v Protus IP Solutions Inc, 2009 FCA 42

Lundbeck Canada Inc v ratiopharm Inc, 2008 FC 579

Anchor Brewing Co v Sleeman Brewing & Malting Co, 2005 FCA 170

Sim & McBurney v Anchor Brewing Co, 2005 FCA 171

Sleeman Brewing & Malting Co Ltd v Anchor Brewing Co, 2005 FCA 170

Oakley Inc v Shoppers Drug Mart Inc, 2004 FCA 404

Anchor Brewing Co v Sleeman Brewing & Malting Co Ltd, 2004 FC 384

Sim & McBurney v Anchor Brewing Co, 2004 FC 118

Bauer Nike Hockey Inc v Regan, 2003 FC 1174

Diamant Toys Ltd. v Jouets Bo-Jeux Toys Inc, 2002 FCT 384

Stamicarbon BV v Urea Casale SA, 2002 FCA 10

Andrés Wines Ltd v Vina Concha Y Toro SA, 2001 FCT 575

President and Fellows of Harvard College v Canada (Commissioner of Patents) (2000),
4 FC 528, 7 CPR (4th) 1

Stamicarbon BV v Urea Casale SA (2001), 1 FC 172, 8 CPR (4th) 206

Osler Harkin & Harcourt v Canada (Registrar of Trademarks) (1997), 77 CPR (3d) 475, (FCTD)

Allen & Hanburys Ltd v Torpharm Inc, 75 CPR (3d) 417

Central Transport Inc v Mantha & Associates (1995), 59 CPR (3d) 213, (FCTD) 

Mobil Oil Corp v Hercules Canada Inc, [1994] 57 CPR (3d) 488, (FCTD)

Bousquet v Barmish Inc, [1993], 46 CPR (3d) 510, (FCA)

Memberships

  • Fellow and past President, Intellectual Property Institute of Canada; Vice-Chair of the Self-Governance Committee
  • Member and Past President of the Canadian Group, International Association for the Protection of Intellectual Property (AIPPI); Chairman of the Q199 Attorney-Client Privilege Committee; Member of the Programme Committee
  • Member, American Intellectual Property Law Association
  • Member, The Advocates' Society (Ontario)
  • Member, Society of Petroleum Engineers
  • Member, Canadian Bar Association


Speaking engagements

  • "Client-Attorney Privilege — Issues for Harmonization" (moderator), AIPPI 2014 World Intellectual Property Congress, Toronto, September 2014
  • "Confidentiality of Communications Between Clients and Patent Advisors," summary of oral submissions given on behalf of AIPPI at the WIPO Standing Committee on Patents (SCP), Geneva, Switzerland, January 2014
  • "Foreign IP Advisor Communications: Are They Protected from Forcible Disclosure?," 2014 AIPLA Mid Winter Meeting, Phoenix, AZ, January 2014
  • "Update on Patents 2014," Law Society of Upper Canada's 18th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2014
  • "Resume of and discussion on national positions; the way forward," AIPPI/AIPLA/FICPI Colloquium, Paris, France, June 2013
  • "Recommendations and Communique," AIPPI/AIPLA/FICPI Colloquium, Paris, France, June 2013
  • "Patent Law Updates," presentation to the Canadian Intellectual Property Office, Ottawa, April 2013
  • "The Year in Review in IP Law," Intellectual Property Institute of Canada Webinar — Patent Law Update, February 2013
  • "Update on Patents 2013," Law Society of Upper Canada's 17th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2013
  • "Obtaining and Enforcing Patent Rights in Canada," 2012 International IP Forum & AIPPI  - U.S. Special Meeting, Houston, Texas, June 2012
  • "Confidentiality of Communications Between Clients and Patent Advisors," summary of oral submissions given on behalf of AIPPI at the WIPO Standing Committee on Patents (SCP), Geneva, Switzerland, May 2012
  • "Trademark Cancellation Proceedings in Canada," 2012 AIPPI China/Asia IP Seminar, Beijing, China, April 2012
  • "The 'Utility' Requirement: What is a 'useful' invention under Canadian law?" (co-presenters: Daphne C. Lainson and Hongbin Li) and "Canada: The Statutory Basis for and Judicial Application of the Utility Requirement," Comparative Intellectual Property Law Symposium, Ottawa, April 2012
  • "Current topics in Patent Law," presentation to the Canadian Intellectual Property Office, Ottawa, April 2012
  • Participant in IPIC's 2012 Patent Law Update Webinar, February 24, 2012
  • "Update on Patents 2012" Law Society of Upper Canada's 13th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2012
  • "IP Goes Digital – How the Internet Has Changed the Way We Look at IP Patents" (panelist) Law Society of Upper Canada's 16th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2012
  • "The Duty of Candour in Canada" presented at IPIC's Annual General Meeting, Chicago, IL, September 2011
  • "The Weatherford Decision" presented at IPIC's The Weatherford Decision Webinar, Toronto, September 2011
  • "Patent Law Review: The Top 20 of 2010," presentation to CIPO Patent Examiners, Gatineau, QC, May 2011
  • "Patentable Subject Matter: A Canadian Perspective," 2011 AIPLA Spring Meeting, San Francisco, May 2011
  • "Update on Patents," Intellectual Property Institute of Canada webinar, March 2011
  • "Canadian IP Law Update - Practical Tips and Information for U.S. Attorneys - Litigation," Smart & Biggar Seminar, Minneapolis, January 2011
  • "Duty of Candour in Canada," Canadian Intellectual Property Office (CIPO) Patent Examiners, January 2011
  • "Update on Patents 2011," Law Society of Upper Canada's 15th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2011
  • "The Amazon.com decision and the patenting of business methods in Canada," Intellectual Property Institute of Canada webinar, December 2010
  • "Duty of Candour in Canada," Canadian Institute's 9th Annual Forum on Pharma Patents, Toronto, November 2010
  • "Update on Patents," Intellectual Property Institute of Canada Webinar — Patent Law Update, April 2010
  • "Successful Management of IP Litigation and Dispute Resolution" (moderator), Canadian Corporate Counsel Association 2010 National Spring Conference, April 2010
  • "Intellectual Property and Advisor/Client Privilege," AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, South Korea, November 15, 2009
  • "Opening Statements & Closing Arguments," Federal Court Annual Education Seminar, Montreal, October 2009
  • "Patent Law Update," Intellectual Property Institute of Canada Webinar — Update on Patent Law, April 2009
  • "Update on Patents 2009," Law Society of Upper Canada's 13th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2009
  • "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 2008
  • "Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions," WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, Geneva, Switzerland, May 2008
  • "International and Comparative Patent and Trade Secret Protection: The Canadian Perspective," Intellectual Property Law Program, Oxford College, England, 2003, 2005, 2007
  • "International Enforcement of Patents: Applications/Implications of Voda," Fourth Annual Intellectual Property Law Seminar, Howard University School of Law, Washington, DC, March 2007
  • "Intellectual Property Rights: Practical Advice for the non-IP Practitioner," CCLA Continuing Education Program — Intellectual Property Rights, Ottawa, October 2006
  • "Double Patenting and Patent Listing," AstraZeneca Patent Attorneys Workshop, Stockholm, Sweden, October 2006
  • "Advocacy Before the Federal Court in Intellectual Property Matters — Trial Advocacy Part II — Examination in Chief," Canadian Bar Association Advocacy Program, Ottawa, May 2006


Teaching activities

  • Patent Law, University of Ottawa, 1995-2007 and 2011-2012

Publications

  • "Federal Court confirms protection for colour trademarks in Canada" (co-author: Timothy Stevenson), IP Update — Canada, April 2, 2014; Lexology, April 2, 2014; Mondaq, April 2, 2014; World Trademark Review, April 16, 2014; International Law Office Intellectual Property Newsletter, April 22, 2014; CCCA Members Knowledge Centre, April 2014
  • "Intellectual Property Litigation: Top 10 Differences between Canada and the U.S." (co-author: Jeremy E. Want), Corporate Counsel, January 2014
  • "Software Patents Worldwide: Canada" (co-author: Colin B. Ingram), Software Patents Worldwide, Wolters Kluwer Law, December 2013
  • "Patentable subject matter" (co-authors: Daphne C. Lainson and Kevin K. Graham), Canadian Patent Law Benchbook, 2012
  • "Software Patents Worldwide: Canada" (co-author: Colin B. Ingram), Software Patents Worldwide, Wolters Kluwer Law, September 2012
  • “Business-Method Patent Law in U.S., Canada, Seemingly in Synch” (co-author: Colin B. Ingram), Executive Counsel, August/September 2012
  • "More effective protection for pharmaceuticals" (co-author: Daphne C. Lainson), Intellectual Property Magazine, July/August 2012
  • "The Duty of Candour in Canada" (co-author: Cameron P. Weir), Canadian Intellectual Property Review, Vol. 27, No. 2 (December 2011), p. 219-256
  • "Canada and the duty of candour" (co-authors: Colin B. Ingram and Cameron P. Weir), Intellectual Property Magazine, November 2011
  • "Amazon.com's 'single action ordering' patent application and the patenting of 'business methods' in Canada" (co-authors: John R. Morrissey and Colin B. Ingram), CBA Business & Corporate Bulletin, March 2011
  • "An Update on the Scope of Patentable Subject Matter in Canada: The Amazon.com's "single action ordering" patent application and the patenting of "business methods" in Canada" (co-authors: Colin B. Ingram and John R. Morrissey), American Bar Association's LANDSLIDE magazine, May/June 2011
  • Chapter Update – "Global Patent Litigation: Canada" (co-author: Kevin Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, 2011
  • "Amazon single action ordering patent and the scope of patentable subject matter in Canada," Intellectual Property Magazine, February 2011
  • "Making IP Litigation in Canada More Attractive," Law360, August 7, 2009
  • "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada" (co-authors: J. Sheldon Hamilton and Amelia Choi), Patent World, October 2007
  • "Recent Developments Lead to Changing Face (and Pace) of Patent Litigation in Canada," Patent World, 2007
  • "Pharma Litigation Continues to Drive Canadian Patent Law," The Guide to the World's Leading Law Practitioners (Canada), 2007
  • "Canada: Are Computer-Implemented Inventions Patentable?" World Focus: IP & High Technology, October 2006
  • "Global Patent Litigation: Canada" (co-author: Kevin K. Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006
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