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Alan Macek

Alan Macek

Partner

Patent Agent and Trade-mark Agent

Vastly experienced at coordinating cross-border disputes.
IAM Patents 1000
About

Alan Macek practises intellectual property litigation and patent prosecution, with a focus on electrical and computer-related technology.

Alan has litigated cases in the Federal Court, Federal Court of Appeal, the Ontario Superior Court and the Court of Queen's Bench of Alberta. His experience in litigation often involves cross-border proceedings, and he frequently works closely with counsel from the United States to coordinate parallel lawsuits.

Alan founded and publishes the IPPractice blog and daily email on developments in intellectual property law in Canada and is a regular columnist for Slaw on issues in intellectual property.

Alan works with clients on all aspects of the patent process, from preparing and filing patent applications, strategic advice on developing a patent portfolio, patent landscaping, non-infringement and validity opinions, as well as defending or advancing patent litigation. He is frequently invited to speak on intellectual property topics including issues for emerging technology such as blockchain/cryptocurrencies and AI/machine learning.

Prior to earning his J.D., Alan studied engineering physics and math, as well as worked at several computer and communication engineering firms.

Bar admissionsOntario, 2006

EXPERIENCE

  • Tivo Solutions Inc. and Rovi Guides Inc. v Videotron Ltd (T-921-17) - represented Videotron against patent infringement allegations relating to electronic program guides and personal video recording technology including in Canada’s first virtual patent trial
  • Canadian Energy Services Inc v Secure Energy Services Inc (2020 ABQB 473) - represented the patentee, CES, in patent infringement proceedings relating to downhole oil and gas technology
  • WRNCH Inc. - assisting with patent strategy and patent prosecution on computer vision technology (US10,949,658)
  • Spin Master Ltd. v Mattel Inc. (T-1231-17) and Spin Master Ltd. v Alpha Group (T-222-18) - represented the patentee, Spin Master Ltd., in the enforcement of its patent relating to its successful Bakugan toys
  • E. Mishan & Sons Inc. et al. v Supertek Canada Inc. et al. (T-1112-13) – represented the patentee and a licensee in a patent infringement proceeding relating to consumer products
  • Magna Powertrain Inc. v Stackpole Powertrain International ULC (T-1274-12) – represented a patentee in asserting an automotive oil pump patent against a competitor
  • Valence Technology Inc. v Phostech Lithium Inc. (T-219-07) – represented a patentee assert its patent on lithium-ion battery technology
  • DataTreasury Corporation v Royal Bank of Canada et al (T-1472-07) - represented several of the banks in defending patent infringement litigation relating to computerized check processing technology
Languages
  • English
Education
  • J.D., University of Toronto , 2005
  • B.A.Sc. ( Computer Science Option, Math Honours with Distinction ), University of British Columbia, 2002

Awards

  • Best Lawyers in Canada (Intellectual Property Law) 2021-2023
  • Canadian Legal Lexpert® Directory (Intellectual Property; Litigation: Intellectual Property), 2019-2022
  • Lexpert® ALM 500 Directory (Intellectual Property), 2022-2023
  • The Legal 500 Canada (Intellectual Property), 2019-2020, 2022
  • IP Star (Patent), Managing Intellectual Property, 2018-2022
  • IAM Patents 1000, (Litigation) 2016-2022

Publications

  • Contributor, "Patent Litigation 2022," Chambers Global Practice Guides
  • Canadian Patent Office’s approach to computer-implemented inventions rejected by Federal Court, 9 Sep 2020
  • Trade Secrets in Canada - now strengthened with criminal remedies, 24 Mar 2020
  • Deadlines suspended at the Canadian Intellectual Property Office, 23 Mar 2020
  • Canadian patent rules streamlined, 2 Oct 2019
  • Federal Court’s Jurisdiction over contractual intellectual property issues”, Slaw, November 2020
  • Co-author, "Risks and Benefits of Blockchain Patents", Electronic Commerce & Law Report, July 5, 2017
  • "Protecting FinTech Innovation," Slaw, January 2017
  • Co-author, Intellectual Property chapter, Canadian Commercial Law Guide, CCH
  • "Jail time used in trademark enforcement," The Lawyers Weekly, November 25, 2016
  • "Is File History Estoppel Coming to Canada?," Slaw, September 2016
  • Co-author, "Protecting websites in the copycat age," The Lawyers Weekly, June 2015
  • Co-author, “Patents”, Intellectual Property Disputes: Resolutions and Remedies (Toronto: Ontario: Thomson Reuters)
  • Co-author, “Computer-Related Disputes”, Intellectual Property Disputes: Resolutions and ‎Remedies (Toronto: Ontario: Thomson Reuters)‎

Seminars

Media Mentions

MEDIA MENTION

Memberships And Affiliations

  • Chair, Canadian Bar Association Patents Committee
  • Member, Canadian Bar Association
  • IEEE Member
  • Fellow, Intellectual Property Institute of Canada and its Information, Communication & Technology ‎Committee ‎

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