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).
- Industry Involvement
- In the Media
- "IP Basics & Beyond" (panelist), Association for Corporate Counsel-Ontario, Toronto, ON, May 28, 2019
- "Get Ready, Get Set: Canadian Patent Law Reform Has Arrived" (with Daphne Lainson), Webinar, February 7, 2019
- “Computer implemented inventions: patent eligibility in Canada,” AIPPI US Global Educational Forum, Chicago, July 2017
- "IP Litigation: A View From the Federal Court of Canada" (moderator) AIPLA Electronic and Computer Patent Law Summit, Toronto, June 2017
- “Bill C-30 – Amending the Patent Act to Implement CETA”, International Association for the Protection of Intellectual Property (AIPPI)’s Canada’s Annual Meeting, November 2016
- "An IP strategy for global business," CPDonline’s inaugural Business Law and Legal Issues Facing Finance Professionals conference, May 2016
- "Bill C-43: Understanding changes to the Patent Act and your practice," Toronto Intellectual Property Group, Toronto, March 2015
- "Business Method Patents: Coming of Age," organized by LEXPERT Magazine, Toronto, November 2012
- "Effective Intellectual Property Management for the Non-IP Specialist," panel discussion/webinar, Canadian Corporate Counsel Association, February 2011
- "Human Autonomy, Law and Technology: A Virtual Conference in Honour of the Late Professor Emeritus Hugh Lawford" (online seminar), Queen’s University, March 2010
- "Watch Out! Compulsory Licensing Lurks Around Global Corners," AIPLA Mid-winter Meeting, Miami, FL, January 2009
- "A Primer on Intellectual Property," Canadian Bar Association – Online Continuing Legal Education Program, December 2007
- "International Developments in Pharma Patents," The Canadian Institute’s 6th Annual Forum on Pharma Patents, Toronto, October 2007
- Member, International Association for the Protection of Intellectual Property (AIPPI);
- Executive Council Member, AIPPI Canada
- Fellow, Intellectual Property Institute of Canada; Chair of the Patent Legislation Committee, past member of the International Patent Issues Committee, past member of the Patent Agent Examination Board (2003-2005)
- Member, American Intellectual Property Law Association
- Member, Institute of Electrical and Electronics Engineers
- Sessional instructor, Queen's University Faculty of Law, Kingston, ON, 2007 – 2010:
- "Patent Law," Fall 2009, 2010
- "Advanced Patent Law and Policy," Winter 2007, 2008
- Instructor - "Advanced Patent Agents Training Course – Infringement & Validity," Intellectual Property Institute of Canada, Toronto, 2009-2017
- Lecturer and Tutor - "Understanding Patents," IPIC-McGill Summer Program, Montreal, 2001 through 2017 (course director – 2003)
- Quoted in the article "Highly patentable: how pot companies are staking claims on legal cannabis," The Globe and Mail, April 21, 2019
- "How the Amazon ruling affected business-method patents" (co-author: Colin B. Ingram), Managing Intellectual Property, September 2013
- "Watch Out! Compulsory Licensing Lurks Around Global Corners (The View From Canada)", presented at the American Intellectual Property Law Association Mid-winter Meeting, 2009
- "Foreign Perspectives on the Patent-Trade Secret Interface: The Canadian Example," presented at the American Intellectual Property Law Association Spring Meeting, Dallas, TX, May 2004
- "Patentability and Patent Claims, An Introduction to Claims Drafting," IPIC-McGill Summer Program course material, 2003 – 2010