Stephen is a versatile intellectual property (IP) lawyer, a patent agent, and a trademark agent who advises companies on securing and leveraging IP rights.
Stephen draws on his prior engineering experience to work with clients during all stages of product development to develop and manage IP rights and proprietary information. Stephen assists clients with developing strategies for commercializing innovations, including advising on IP licensing and collaboration matters, freedom-to-operate projects in connection with product launches, and IP enforcement strategies in view of ongoing activity of competitors. Clients also regularly seek Stephen’s counsel on IP matters associated with commercial transactions.
In addition to his practice, Stephen shares his knowledge by teaching an upper-year course on Commercializing IP at Osgoode Hall Law School to both law and engineering students. Stephen also currently serves as a board member of a not-for-profit organization in the early childhood education sector.
Prior to joining Mintz, Stephen was a senior associate in the Intellectual Property Group in the Toronto office of a global law firm, where he developed a mixed IP prosecution and commercial IP advisory practice. Earlier, he practiced at a Toronto-based IP law firm.
Stephen is also a licensed Professional Engineer in Ontario. Before practicing law, Stephen worked as an engineer in both North America and Asia during a five-year tenure with a large multinational semiconductor company.
Experience
- Advised a software-as-a-service technology company in connection with an inbound investment from a global consultancy company involving a collaboration agreement governing IP rights and accompanying shareholder/subscription agreements.
- Advised a major Canadian financial institution on IP portfolio development, which included leading patent mining sessions and drafting originating patent applications involving electronic trading platform technology, machine learning platforms, and other financial technology applications.
- Advised a buried structure engineering company on freedom-to-operate and IP licensing matters in connection with a series of new product launches.
- Advised a golf system development company with ongoing IP portfolio development and with IP enforcement strategies.
- Counseled a buried structure engineering company on a pre-litigation strategy relating to a potential claim for misappropriation of confidential information and intellectual property.
Recognition & Awards
Best Lawyers: Ones to Watch in Canada, Intellectual Property Law (2023 & 2024)
Involvement
- Member, Intellectual Property Institute of Canada
- Member, Professional Engineers Ontario
- Member, Toronto Intellectual Property Group