Matthew Zischka

Internationally recognized and strategic IP counsel

With exceptional problem-solving abilities and a superior eye for detail, Matt is adept at counselling and guiding electrical, electronics, software and mechanical clients through complex IP challenges. He provides legal opinions and advice on transactions, licensing, assertions of patent infringement, and interpretation of commercial contracts and agreements.

Matt leverages 20 years of patent prosecution, licensing and litigation support experience with deep industry knowledge to help his clients successfully commercialize and protect their intellectual property. Harnessing his experience and technical expertise Matt  also lead’s the patent and industrial design group in Smart & Biggar’s Toronto office. The group provides sophisticated legal counsel and manages patent portfolios across a wide range of client industries.

Skilled in electrical, electronics, software and mechanical patent applications

Matt is in high demand for his capacity to solve complex patent issues, as well as to prepare and prosecute patent applications. As a lawyer, engineer and patent agent, he has specialized expertise advising public and private companies in the electrical, software, electronics, cloud, mobile, mechanical, and medical device fields, and in emerging technologies such as AI, cryptography and Fintech.

Strategic guidance on complicated IP issues

Clients frequently ask Matt for his legal opinions and strategic counsel on complex IP areas including freedom to operate opinions, patent infringement opinions, and opinions on copyright and infringement. In addition, clients turn to him for strategic guidance on establishing intellectual property policies, licensing programs, structuring transactions, conducting due diligence and contractual interpretation.

His work on complex transactions spans several industries and he has provided expert advisory guidance on M&A, IPO and licensing matters including: advising a scientific instrument manufacturer on patent portfolio strategy in advance of the company being acquired in a significant M&A transaction and in the acquisition; advising a leading Canadian financial services organization in a significant patent litigation matter; providing strategic counseling and litigation support to a social media company shortly after their Initial Public Offering; and advising a media/entertainment company in an important licensing transaction of point of sale software.

Matt is a trusted advisor in the development and execution of revenue-generating software licensing programs. He expertly renders opinions on license agreements that are uniquely tailored to each of his clients with their business objectives in mind. He also negotiates license terms such as specific rights and limitations, license fees or royalties, duration, allocation of risk and liability and territorial limitations.

An expert and exceptional practitioner

Matt often lectures on intellectual property law topics and is consistently recognized as an expert in Canadian Intellectual Property Law and patent law in various national and international surveys. 

He receives extensive praise from clients and colleagues, noting he’s a “great ambassador for the profession.” Matt is known for his attention to detail, technical knowledge and understanding of the latest industry changes. As clients have commented: “You can go to him with the most puzzling questions and can refer work to him with total trust” (IAM Patents 1000, 2017).