Practice Areas

Patents, Trade-marks, Copyright & Media, Litigation, IP Management & Strategic Counselling, Biotechnology/ Pharmaceutical, Chemical, Industrial/ Mechanical

Qualifications

Ontario Bar 1992.
University of Western Ontario B.Eng. (Chemical-Biochemical Engineering) 1985.
University of Ottawa LL.B. 1990.
Registered Trade-mark Agent 1992.
Registered Patent Agent 1993.
Registered to practise before the United States Patent and Trademark Office.
Professional Engineer (Professional Engineers Ontario).

Biography

Steven Garland is a partner in our Ottawa office. His practice focuses primarily on intellectual property litigation of all types including issues relating to patent, trade-mark, copyright, industrial designs, trade secrets and competition law. He has acted on many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, biotechnological, telephony, mechanical and industrial subject matters. Mr. Garland has appeared as counsel in intellectual property cases, both at the trial and appellate level in the Federal Court of Canada, in the Ontario Superior Court and Court of Appeal and before the Supreme Court of Canada. He also regularly appears before the Patent Appeal Board and the Trade-mark Opposition Board. He has also been retained as a mediator in intellectual property disputes. A representative example of some of the parties Mr. Garland has represented is provided below.

Mr. Garland graduated from the University of Ottawa Law School in 1990, magna cum laude, and was called to the Ontario Bar in 1992. He graduated from the University of Western Ontario in 1985 with a degree in Chemical-Biochemical Engineering. While at the University of Western Ontario, Mr. Garland completed a two year research and design project pertaining to the production of Streptomycin by aerobic fermentation methods. Prior to attending law school, Mr. Garland worked as an engineer in the oil and gas industry. Mr. Garland is also a Registered Patent Agent, Registered Trade-mark Agent, and a licensed Professional Engineer of Ontario.

Mr. Garland is a Past President of the Intellectual Property Institute of Canada (IPIC), and is presently the Vice-president of the Canadian Group of the International Association for the Protection of Intellectual Property (AIPPI). He is an adjunct professor at the University of Ottawa Law School where he teaches patent law, and has lectured at a number of other universities, including Oxford University and the University of Victoria.

He is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. A selection of his papers and presentations are provided below. He is also a Member of the Editorial Board of the international publication Patent World.

Mr. Garland is listed in the Chambers Global Guide, the Canadian Legal LEXPERT Directory, Euromoney's Guide to the World's Leading Patent Lawyers, the International Who's Who of Patent Lawyers, The iam 250 – The World’s Leading Life Sciences Patent Litigators, and The Best Lawyers in Canada.

Professional Involvement

• Past President and Fellow, Intellectual Property Institute of Canada
• Vice-president, Canadian Executive Council for the International Association for the Protection of Intellectual Property (AIPPI)
• Member, American Intellectual Property Law Association
• Member, The Advocates' Society (Ontario)
• Member, Editorial Board of Patent World
• Member, Canadian Bar Association

Representative List of Parties

3M
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.
Vina Concha Y Toro

Selection of Papers and Presentations

1. "Successful Management of IP Litigation and Dispute Resolution", Moderator (Canadian Corporate Counsel Association (CCCA) 2010 National Spring Conference, April 13, 2010).
2. "Update on Patents" (Intellectual Property Institute of Canada (IPIC) Webinar - Patent Law Update, April 29, 2010).
3. “Intellectual Property & Advisor/Client Privilege” (AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, Korea, November 13-15, 2009).
4. “Opening Statements & Closing Arguments” (Federal Court Annual Education Seminar, Montreal, October 7, 2009).
5. “Making IP Litigation in Canada More Attractive” (Law360, August 7, 2009).
6. “Patent Law Update” (Intellectual Property Institute of Canada (IPIC) Webinar - Update on Patent Law, April 7, 2009).
7. “Update on Patents 2009” (Law Society of Upper Canada 13th Annual Intellectual Property Law The Year in Review, Ottawa, January 16, 2009).
8. “Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal” (AIPPI 41st World Intellectual Property Congress, Boston, U.S.A., September 6-11, 2008).
9. “Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions” (Presented at the WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, WIPO, Geneva, Switzerland, May 22 and 23, 2008).
10. “Recent Developments Lead to Changing Face (and Pace) of Patent Litigation in Canada” (Patent World, 2007).
11. “The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada” (Patent World, October 2007).
12. “Pharma Litigation Continues to Drive Canadian Patent Law” (The Guide to the World’s Leading Law Practitioners (Canada), 2007).
13. “International and Comparative Patent and Trade Secret Protection: The Canadian Perspective” (Presented at the Intellectual Property Law Program, Oxford University, Oxford, England, 2003, 2005, 2007).
14. “International Enforcement of Patents: Application/Implications of Voda” (Presented at the Fourth Annual Intellectual Property Law Seminar, Howard University School of Law, Washington, D.C., March 2, 2007).
15. “Intellectual Property Rights: Practical Advice for the non-I.P. Practitioner” (Presented at the CCLA Continuing Education Program – Intellectual Property Rights, Ottawa, October 17, 2006).
16. “Double Patenting and Patent Listing” (Presented at AstraZeneca Patent Attorneys’ Workshop, Stockholm, Sweden, October 12, 2006).
17. “Canada: Are Computer-Implemented Inventions Patentable?” (World Focus: IP & High Technology, October 2006).
18. “A Point of Privilege: Jurisdictional Variations” (Patent World, October 2006).
19. “Global Patent Litigation: Canada” (Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006).
20. “Advocacy Before the Federal Court in Intellectual Property Matters – Trial Advocacy Part II – Examination in Chief” (Presented at the Canadian Bar Association Advocacy Program, Ottawa, May 18, 2006).
21. “A Shift on the Horizon or the Conspiracy of Assignment” (Patent World, May 2006).
22. “Lego, Canola and the Harvard Mouse: Trends in Intellectual Property Law” (Presented to the Harvard Club of Ottawa, October 6, 2005).
23. “Canada Amends Acts in Accordance with the Doha Declaration” (Jean Crétien Pledge to Africa Act) (Patent World, July 2005).
24. Canadian Patent Office Roundtable (Moderator) (IPIC’s 39th Spring Meeting, Ottawa, April 25-26, 2005).
25. “Summary Judgment in the Federal Court” (Presented at the Canadian Bar Association’s Advocacy Before the Federal Court in IP Matters – Pre-Trial Issues, April 21, 2005).
26. “Intellectual Property: What Every Engineer Should Know” (Presented to the University of Ottawa, School of Engineering, Intellectual Property and Information Technology Law class, February 28, 2005).
27. “The Death of Summary Judgment in the Federal Court?” (Presented at the Law Society of Upper Canada’s Return of the Six-Minute Intellectual Property Law Lawyer Conference, November 10, 2004).
28. “Contingency Fee Patent Litigation in Canada” (Presented at IPIC’s 78th Annual Meeting, Banff, Alberta, October 14-16, 2004).
29. “Prairie Showdown” (Monsanto Canada Inc. v. Schmeiser) (Patent World, February 2004).
30. “The Harvard Mouse Decision and its Future Implications” (Presented at the Symposium on the Harvard Mouse Decision of the Supreme Court of Canada at the Faculty of Law: University of Toronto, February 2003; Canadian Business Law Journal, December 2003).
31. “High Maintenance: When is an applicant’s status “small entity” or “large entity”?” (Patent World, July/August, 2003).
32. “IP Litigation in Canada and the United States of America: A Comparative Analysis” (Presented at the International and Comparative Intellectual Property Law Program, University of Victoria, B.C., 2002).
33. “Canadian Skirmishes in the Copyright Wars Lead to a Split Decision” (Copyright World, June-July 2002).
34. “The Enforcement of Intellectual Property Rights in Canada” (Presented at the Conference on Intellectual Property and Innovation hosted by the Centre for Innovation, Law and Policy (University of Toronto) and Industry Canada, May 2002).
35. “The Canadian Patent System: An Appropriate Balance Between the Rights of the Public and the Patentee” (Presented at IPIC’s 73rd Annual Meeting, September 1999; (1999-2000) 16 CIPR 43).
36. “Canadian Competition Bureau Releases Intellectual Property Enforcement Guidelines” (Patent World, September 1999).
37. “Canada: The Best Jurisdiction for Patentees?” (IP Worldwide, January/February 1998).
38. “File Wrapper Estoppel in Patent Litigation in Canada” (Presented at the Canadian Bar Association’s IP Practice Tips and Trends Seminar, June 14, 1996).