Professionals

Theodore Sum
Partner, Vancouver
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 604.682.7780
Fax: 604.682.0274
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YEAR OF CALL
British Columbia Bar 1996
Alberta Bar 2016
QUALIFICATIONS
  • University of British Columbia B.Sc. (Mathematics) 1994
  • University of British Columbia LL.B. 1995
  • Registered Trademark Agent 1998
  • Registered Patent Agent 2000
 

Ted Sum’s practice covers all aspects of intellectual property, with particular emphasis on licensing, commercialization and procurement, patent and trademark prosecution, due diligence, e-commerce, privacy and security, and counselling clients on IP strategy and the management and exploitation of their assets.

Ted works with clients across a wide range of sectors and industries, including clients involved in high tech, software and IT, energy, clean tech, telecommunications, robotics, AI and machine learning, aerospace, defence, life science, chemicals, transportation, mining and forestry.  He has extensive experience advising on a broad range of IP matters involving the research, development, acquisition, clearance, commercialization and exploitation of products, technology and related intellectual property assets.  His practice regularly includes advising on the IP aspects of joint ventures, strategic alliances, M&A deals, cross-border transactions, technology transfers, large procurement projects, e-commerce and other online-related matters. Ted is known for “blending creative flair with diligence and microscopic attention to detail when shepherding deals to close (IAM Patents 1000, 2017).

Ted is frequently involved in public speaking engagements covering a broad range of intellectual property and information technology issues, and is the author of several papers.  He is currently an adjunct professor and lecturer on IP law at the University of Victoria Law School. Ted also served as an instructor on IP law at the University of British Columbia Law School for many years.

Rankings and recognition

  • Recognized in 2017 edition of IAM Patent 1000, The World’s Leading Patent Professionals
  • Selected to appear in 2016 edition of The Canadian Legal LEXPERT® Directory under Computer & IT Law
  • Recognized as being among the world's leading patent lawyers in IAM Patent 1000 – The World's Leading Patent Practitioners for 2012, 2013, 2014 and 2015
  • Recognized as being among the world's 250 leading patent and technology licensing lawyers in Intellectual Asset Management’s IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers for 2010, 2011, 2012 (publication now part of IAM Patent 1000)
  • Recognized annually in The Canadian Legal Lexpert Directory under Computer & IT Law since 2013
  • Selected to appear in The Best Lawyers in Canada under Intellectual Property Law (since 2011), Information Technology Law (since 2013) and Technology Law (since 2014)
PRACTICE AREAS
Licensing & IP Transactions
Patents
IP Management & Strategic Counselling
Copyright & Media
Trademarks
Industrial Designs
Electrical/Electronics
Software/Information Technologies
Cleantech
Industrial/Mechanical
Energy
 

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, Licensing Executives Society (United States and Canada)
  • Member, Canadian Corporate Counsel Association
  • Member, Vancouver Board of Trade


Speaking engagements

  • "Profiting from your Organization's IP Licenses," Canadian Institute conference Protecting Intellectual Property in the Energy Sector, Calgary, AB, October 2007
  • "Select IT Issues for Customers," Canadian Airport Procurement Association, Banff, AB, June 2007
  • "Protecting Key IP Assets: Patents and Confidential Information," Law for Project Managers Course, University of Calgary, Calgary, AB, October 2006
  • "Best Practices for Drafting IP Licensing Agreements," Canadian Institute conference Negotiating and Drafting Intellectual Property License Agreements, Calgary, AB, June 2006
  • "Advanced IT and IP Legal Issues – When Deals Go Bad," Canadian Airport Counsel Committee Association, Vancouver, April 2006
  • "License Agreements: Common Pitfalls," Insight Information conference Negotiating and Drafting Major Business Agreements Conference, Vancouver, March 2006
  • "Key Aspects of IP License Agreements," Canadian Institute conference Key Business Agreements, Vancouver, March 2006
  • "Legal Considerations with Open Source Licensing," Ninth Annual Canadian IT Law Association Conference, Montreal, October 2005
  • "Legal Considerations with Open Source Licensing," Licensing Executives Society (United States and Canada) Annual Meeting, Pheonix, AZ, October 2005
  • "Competition Law Issues When Licensing Intellectual Property: Tips and Traps," Canadian Institute Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2005
  • "Negotiating and Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute for Professional Development, Vancouver, April 2005
  • "Traditional and Internet Software Licensing Issues," Licensing Executives Society Vancouver Chapter IP Seminar, Vancouver, January 2005
  • "Copyright Issues for Educators," Simon Fraser University, Burnaby, BC, October 2004
  • "Protecting IP in Cyberspace: Patenting and Commercializing Software and Business Methods in a Virtual World," Canadian Corporate Counsel Association Annual Meeting, Winnipeg, MB, August 2004
  • "Protecting IP in Cyberspace: Contracting Challenges for Licensors, Service Providers, Customers and Users," International Intellectual Property Law Conference, University of Victoria, St. Peter's College of Oxford University and University of Illinois, Vancouver, July 2004
  • "Hot Topics in Licensing," Vancouver Chapter of the Licensing Executives Society (United States and Canada), Vancouver, January 2004
  • "Issues and Problems in Software and IT Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
  • "Workshop on Software Development Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
  • "Key Issues in Software Development Agreements and Software Licenses," Canadian Corporate Counsel Association, Winnipeg, MB, May 2004
  • "Open Issues on Open Source," Intellectual Property Institute of Canada Spring Conference, Ottawa, April 2004
  • "Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute of Professional Development Conference, Vancouver, March 2004
  • "Commercializing Research Tools," AUTM Annual Meeting, San Antonio, TX, March 2004
  • "The Art and Science of Drafting License Agreements," Licensing Executives Society (United States and Canada) Annual General Meeting, San Diego, CA, September 2003
  • "Troublesome Licensing Issues: Reach-Through Royalties and Open Source," Intellectual Property Institute of Canada Annual General Meeting, Halifax, September 2003
  • "Pitfalls to Mishandling Technology Improvements," Licensing Executives Society and the Canadian Bar Association, Edmonton, AB, November 2002
  • "Recent Developments on Copyright, Privacy and Data Protection in Canada," International IP Conference, Chicago, October 2002
  • "The Responsibility to Obtain and Maintain Intellectual Property," Canadian Institute conference Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2002
  • "Key Terms in Software Licensing and Software Development," IT Law Spring Training Program, IT.Can, Vancouver, May 2002
  • "Strategies for Protecting an Employer's Confidential Information and Other Intellectual Property," Canadian Institute conference Advanced Forum on Employment Law, Vancouver, November 2001


Teaching activities

  • "Managing Intellectual Property", Faculty of Law, University of Victoria, since 2013
  • Instructor, University of British Columbia Law School, Vancouver, 2001 to 2006
  • Lecturer on the topic of licensing, University of Victoria Law School, Victoria, BC, 2002

Publications

  • "Licensing Issues with Research Tools and Reach-Through Royalties," (2005) 2 Canadian Intellectual Property Review 21.1
  • "Open Issues on Open Source," (2005) 1 Canadian Intellectual Property Review 21.1
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