Canada
Alan Macek
PartnerPatent Agent and Trade-mark Agent
Vastly experienced at coordinating cross-border disputes.
— IAM Patents 1000About
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.
Areas of FocusFinancial ServicesTechnologyIntellectual PropertyPatent LitigationPatent Development and StrategyTrademark and Copyright LitigationArtificial Intelligence and Data Analytics
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) 2021-2025
- Canadian Legal Lexpert® Directory (Intellectual Property), 2019-2024; (Litigation: Intellectual Property) 2019-2023
- Lexpert® ALM 500 Directory (Intellectual Property), 2022-2024
- Listed in Lexpert Special Edition: Technology and Health Sciences, 2023-2024
- The Legal 500 Canada (Intellectual Property), 2019-2020, 2022-2024
- Managing Intellectual Property (IP Star: Patent), 2018-2022, 2024
- IAM Patents 1000, (Litigation) 2016-2024
Publications
- 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, 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
- Speaker, "Intellectual property, ethical, and legal implications of AI in commercial activity", PharmaBrands, June 18, 2024
- Panelist, "Mastering the Use of E-filing and E-trial Tools in the Federal Court", The Ontario Bar Association, April 10, 2024
- Speaker, "Generative AI (ChatGPT) and Related Legal Issues", 13th Business Law Summit, Law Society of Ontario, November 9, 2023
- Panelist, “Are the Robots Taking Over? A Debate that AI Be Considered a Creator/Inventor”, Intellectual Property Institute of Canada, Annual General Meeting, September 29, 2022
- Panelist, "IP Blogs: the most efficient tool for sharing IP knowledge worldwide", World IP Forum, April 26 to May 5, 2021
- Panelist, "Patent Litigation by Zoom, Pros and Cons", Ninth Annual University Toronto Patent Colloquium, November 20, 2020
- Speaker, "Dealing with Experts Remotely - the Virtual Trial", Ontario Bar Association, November 18, 2020
- Panelist, “File Wrapper Estoppel in Canada and the United States: What You Say Can and Will Be Used Against You”, Intellectual Property Institute of Canada, Annual General Meeting, October 2, 2020.
- Panelist, "The Virtual IP Court Hearing: What You Should Know Before You 'Zoom' into Court", Intellectual Property Institute of Canada, July 10, 2020
- Speaker, "Ethical Dilemmas in IP," 23rd Intellectual Property Law: The Year in Review, Law Society of Ontario, January 17, 2019
- Speaker, "Your Comprehensive Guide to Blockchain", Ontario Bar Association, June 18, 2018
- Speaker, "Bitcoin, Blockchain, and IP Law", CBA Intellectual Property Section, The Canadian Bar Association, May 31, 2018
- Speaker, "Blockchain, Smart Contracts & Al: Legal Challenges and Opportunities in Emerging Technologies", Ontario Bar Association, February 7, 2018
- Speaker, "Updating Your Toolkit for Fighting Obviousness Issues Post-Sanofi", Intellectual Property Institute of Canada Annual Meeting, October 12, 2017
- Co-presenter, "Are you protecting your intellectual property?", Toronto Public Library - Small Business Network, March 29, 2017
- Co-presenter, “Decoding the Framework of Double Patenting: Legal Issues and Insights Uncovered!”, The Knowledge Group, October 24, 2016
Media Mentions
MEDIA MENTION
- Quoted, "Virtual patent trials: what we can learn from Canada", Managing Intellectual Property, July 2020
- Quoted, "Proceedings in first-ever Zoom trial at Federal Court met with praise by judge, counsel", The Lawyer's Daily, June 26, 2020
- Quoted, "Free Trade deal impacts IP", Law Times, December 10, 2018
- Quoted, "Canada's Patent Agreement with Europe Extended until 2021", The Lawyers Daily, February 16, 2018
- Quoted, "Cases to look out for in 2017 – Canada", Managing Intellectual Property, January 2017
- Quoted, "IP law changes coming after Europe deal", Law Times, December 5, 2016
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
My latest insights
Connect
Phone
+1 416 862 3374
(Work, Toronto)
