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 represented clients before the Federal Court, the Federal Court of Appeal, the Ontario Superior Court of Justice and Court of King's Bench of Alberta and the Court of Appeal of Alberta. His litigation practice frequently involves cross-border proceedings, and he regularly collaborates with counsel in the United States to coordinate parallel lawsuits across jurisdictions.

A well-recognized voice in the Canadian IP community, Alan founded and publishes IPPractice, a widely followed blog and daily email tracking developments in intellectual property law across Canada. He is also a regular columnist for Slaw, contributing commentary on pressing intellectual property issues.

Alan guides clients on all aspects of the patent lifecycle, including the preparation and filing of patent applications, strategic advice on developing a patent portfolio, patent landscaping, and non-infringement and validity opinions, as well as the defence or advancement of patent litigation. A sought-after speaker, he is frequently invited to speak on intellectual property topics including the complex legal challenges posed by emerging technologies such as blockchain and artificial intelligence.

Alan brings a strong technical foundation to his practice. Prior to law school, he studied engineering physics, computer science and mathematics, and gained hands-on experience at several computer and communication engineering firms.

Bar admissionsOntario, 2006

EXPERIENCE

  • Tivo Solutions Inc. and Rovi Guides Inc. v Videotron Ltd (2022 FC 874 affirmed 2024 FCA 125) and Adeia Guides, Inc. v Videotron (2025 FC 1725)  - represented Videotron against patent infringement allegations relating to electronic program guides and personal video recording technology including in Canada's first virtual patent trial and one of Lexpert's Top 10 Business Decisions
  • Sandvik Mining and Construction OY et al. v Epiroc Canada (T-754-22) – represented Sandvik in enforcing its patent on battery-enabled underground mining equipment
  • Canadian Energy Services Inc v Secure Energy Services Inc (2020 ABQB 473 affirmed 2022 ABCA 200) - represented the patentee, CES, in patent infringement and ownership 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 Royal Bank of Canada, TD Bank and Bank of Montreal in defending patent infringement litigation relating to computerized check processing technology
Languages
  • English

Awards

  • Recognized, Toronto Intellectual Property Law, Best Lawyers in Canada, (2021 – 2027)
  • Listed, Lexpert Special Edition: Health Sciences, (2024 – 2025)
  • Intellectual Property, Canadian Legal Lexpert® Directory, (2019 – 2026)
  • Litigation: Intellectual Property, Canadian Legal Lexpert® Directory, (2019 – 2023, 2026)
  • Intellectual Property, Lexpert 500 (formerly ALM 500), (2022 – 2026)
  • Listed, Lexpert Special Edition: Technology, (2023 – 2026)
  • Intellectual Property, The Legal 500 Canada, (2019 – 2020, 2022 – 2024)
  • Patent Star, Managing Intellectual Property IP Stars, (2018 – 2022, 2024 – 2026)
  • Recommended Individual, IAM Patent 1000, (2016 – 2025)
Education
  • J.D., University of Toronto , 2005
  • B.A.Sc., Computer Science Option, Math Honours with Distinction, University of British Columbia, 2002

Publications

  • Quoted, "Patent litigation in Canada at record low despite capable courts", Canadian Lawyer, July 29, 2026
  • Co-author, "Generative AI and Copyright (Canada)," Thomson Reuters Practical Law, April 1, 2026 [Reproduced from Practical Law with the permission of the publishers. For further information, visit practicallaw.com.]
  • Co-author, "Expert Q&A on Generative AI and Hallucination Risk," Thomson Reuters, March 2024
  • Co-author, "Intellectual Property in an AI World," Thomson Reuters Legal Update, May 25, 2023
  • Contributor, "Patent Litigation - Canada," chapter of Chambers Global Practice Guides, 2022 – 2023
  • Contributor, "Patent Litigation 2022," Chambers Global Practice Guides
  • Canadian Patent Office's approach to computer-implemented inventions rejected by Federal Court, September 9, 2020
  • Trade Secrets in Canada - now strengthened with criminal remedies, March 24, 2020
  • Deadlines suspended at the Canadian Intellectual Property Office, March 23, 2020
  • Canadian patent rules streamlined, October 2, 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
  • "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

Teaching and Community Involvement

  • LAWL 6756A - Intellectual Property Remedies and Litigation, Osgoode Hall Law School, York University, Summer 2026

Memberships And Affiliations

  • Member, Canadian Bar Association
  • Fellow, Intellectual Property Institute of Canada

Connect