Canada’s Intellectual Property Law Firm

Sanjay Goorachurn

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Sanjay Goorachurn

Partner
  • Smart & Biggar LLP
Barrister and Solicitor
  • Trademark Agent
English | French | Hindi

Experienced IP manager and strategist delivering tangible business value

As lead IP transactional lawyer in complex and multi-jurisdictional transactions, Sanjay’s expertise stands out through his negotiating skills and ability to draft IP aspects of complex and multi-jurisdictional M&A, IPOs, licensing, cross-border financing (venture capital and private equity), regional and global joint ventures, and public and private collaborative research transactions. As a seasoned IP strategist, Sanjay has significant experience in customizing, developing and implementing IP management programs and IP strategies globally for Canadian and foreign clients that align with his clients’ business objectives and corporate strategies, which result in tangible and measurable business value to senior management.

IP transactional lawyer experienced in complex, multi-jurisdictional M&A transactions

Sanjay's expertise includes structuring, negotiating and drafting the IP aspects of complex and multi-jurisdictional M&A, IPOs, licensing, cross-border financing (venture capital and private equity), regional and global joint ventures, and public and private collaborative research transactions. He also leads his patent, trademark and litigation colleagues in multi-jurisdictional IP due diligence investigations on both the buy and sell sides of such transactions.

Meeting the needs and earning the praise of diverse clients

Sanjay’s extensive and diverse experience enables him to understand and meet the needs of innovative start-ups, small and medium-sized enterprises, multinational corporations, venture capital/private equity investors and governmental research organizations. He counsels clients in several industries, including clean tech/energy, industrial, consumer and sport products, transportation, pharmaceutical/animal health, software and telecommunications.

In independent surveys and publications, clients, peers and colleagues have said:

“one of the very best in Canada" and “ a highly experienced, articulate and creative individual whose advice leads companies to see intellectual property as an investment, not a cost, and approach it in a strategic manner.” (IAM Strategy 300: The World’s Leading IP Strategists)

“He knows his trade. He’s also a great person to work with – a real gentleman” (IAM Patent 1000 – The World’s Leading Patent Practitioners 2018)

"As a former global IP manager for ICI PLC (now Akzo Nobel), he knows better than most how to extract maximum value from portfolios” (IAM Patent 1000 – The World’s Leading Patent Practitioners 2017)

"A pro at creating value for companies and can always be counted on to manage the IP aspects of complex transactions with a steady hand” (IAM Patent 1000 – The World's Leading Patent Practitioners 2016)

“An outstanding strategist” (IAM Patent 1000 – The World's Leading Patent Practitioners)

“Provides astute advice across a multitude of sectors” (IAM Patent 1000 – The World's Leading Patent Practitioners)

"Really strikes the right tone with clients" (IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers)

“...has an innate ability to demystify the often complex and confusing realm of IP” (IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers)

"...diligent, responsive and attentive to business needs" (IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers)

"he always tries to find the win-win solution between parties" (IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers)

“...always thinking about how work done today will create value in the future” (IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers)

Deep industry expertise and leadership

In his more-than 25-year career, Sanjay has developed solid IP management skills and experiences. Prior to joining Smart & Biggar, Sanjay was a Global IP Manager at Imperial Chemicals Industries (ICI) PLC (now Akzo Nobel). He previously worked as IP Counsel for ICI in both the United States (New Jersey) and United Kingdom (London) head offices for various global businesses such as acrylics, paints, fragrances and flavours, polyurethanes and surfactants. He also acted as an IP specialist member of ICI’s central Strategy and Acquisitions projects team in numerous complex and multi-billion-dollar M&A transactions in India, Australia, South Africa and North America.

Sanjay was appointed the Canadian co-leader in the Cross-Border Intellectual Property Working Group of the Canada-California Strategic Initiative Project, which was coordinated by the Canadian Department of Foreign Affairs and International Trade.

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • “A Collaborative Approach to Create Enhanced Business / IP Value for Biotech Companies” presented at BIOTECanada, Ottawa, September 2015
  • “Five Practical IP Recommendations for Canadian Biotech Companies with an International Business Strategy” presented at 2013 BIO International Convention Show Case Series, Chicago, IL, April 2013
  • "Practical relevance and importance of an Intellectual Property Strategy for Quebec SMEs in Supporting Financing and Licensing Deals," LES Montreal Chapter Meeting, September 2012
  • “IP-based Transaction to enhance Business Value in Canada” presented at 2012 BIO International Convention Show Case Series, Boston, MA, June 2012
  • "Cross–border Intellectual Property Challenges in Strategic Research Collaboration between Canada and California" (panelist), 2012 BIO International Convention, Boston, MA, June 2012
  • "Myth or reality in the context of university enterprise collaboration and IP transfer," Open Innovation 2011, Montreal (panelist on École de technologie supérieure’s Panel), November 2011
  • "Sharing the risk in R&D relationships," Open Innovation 2011, Montreal (panelist on Department of Foreign Affairs and International Trade's Panel), November 2011
  • "IP Strategy during Mergers & Acquisitions," Federated Press's 4th Conference on Patents as a Competitive Strategy, Toronto, June 2011
  • "IP Strategy during Mergers & Acquisitions," Federated Press's 3rd Conference on Patents as a Competitive Strategy, Toronto, May 2010
  • "Relevance of IP Management in Creating IP Value for Investors and Investee Companies in M&A and Strategic Alliances" (panel discussion), Tremblant Venture Forum, Mont-Tremblant, QC, May 2010
  • "Tax Aspects of Licensing IP" (co-presenter: Mr. McShane, Barsalou Lawson), Canadian Institute conference Aspects fiscaux des conventions commercials, Montreal, February 2010
  • "Redefining relationships: the evolving role of the key stakeholders in the Canadian technology transfer landscape" (moderator), IPIC 83rd Annual Meeting, St. John's, NL, September 2009
  • "Les aspects commerciaux et transactionnels de la PI pour aborder le marché nord américain, Chambre de commerce industriel de l'Essonne, Evry, France, June 2009
  • "La contrefaçon et ses impacts sur l'économie et les entreprises canadiennes" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Montreal, May 2009
  • "La gestion efficace d'un portefeuille de PI en contentieux d'entreprise — un outil de croissance et de compétitivité" (co-presenter: Luc Bérubé, Sandoz), Canadian Institute conference, Montreal, November 2008
  • "Cross-Border IP Framework" (co-presenters: Tom Sweeney, Garage Technology Venture and Angus Livingstone, UBC OTT), 3rd Summit of the Canada-California Strategic Innovation Partnership, Montreal, October 2008
  • "Managing and Leveraging IP for Corporate Value" (co-presenter: Stephan P. Georgiev), Emerging Partners in Private Equity, Montreal, February 2008
  • "Commercialization of Canadian Publicly Funded R&D," presentation to the Government of Canada Department of Foreign Affairs and International Trade, Ottawa, January 2008
  • "International Licensing Agreements and IP Considerations," ACTI-ITAC, Information Technology Association of Canada, Montreal, September 2007
  • "Aspects commerciaux et litigieux reliés aux transactions de fusions et acquisitions" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2007
  • "Managing and leveraging IP for commercial success — Guidelines for Entrepreneurs" (co-presenter: Brigide Mattar), Concours les Anges financiers, Quebec City, February 2007
  • "Valoriser et commercialiser les actifs de propriété intellectuelle," Insight conference, Montreal, April 2006
  • "La vérification diligente de la propriété intellectuelle lors de financements ou de fusions et acquisitions," Canadian Institute conference, Montreal, March 2006
  • "Contrats mettant en cause des actifs de propriété intellectuelle" (co-presenter: François Guay), Insight conference La negotiation et la redaction de conventions commerciales, Montreal, September 2005
  • "Reconnaitre et ne plus occulter l'importance de la propriété intellectuelle" (co-presenter: François Guay), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2005

Memberships

  • Member, Law Society of Upper Canada
  • Member, Barreau du Québec
  • Fellow, Intellectual Property Institute of Canada
  • Member, Canadian Healthcare Licensing Association
  • Member, Licensing Executives Society
  • Member, Canadian Bar Association

Teaching Activities

  • "Masters in Innovation and Entrepreneurship in Healthcare" (guest lecturer), ESADE MBA Business School,  Barcelona, Spain, May 2018
  • “IP Tax/Management in Healthcare” (guest lecturer), ESADE MBA Business School, Barcelona, Spain, June 2017
  • “IP in a Global and Competitive Knowledge-based Economy”, presented at McGill University, January 2016
  • "Intellectual Property Protection and Management Strategies Workshop" (co-presenter: Stephan Georgiev), 2014 Oil & Gas IP Summit, November 2014
  • “LES CLP Review Course”, LES Montreal Chapter, Montreal, Module II on IP Protection and Module VI on Agreement Development, September 2013
  • "Patent License Negotiation" (workshop), 2010 IPIC/McGill Understanding Patents Course Module 2, Montreal, July 2010
  • "Interactive Workshop on Licensing Negotiations" (workshop), The Trademarks Practitioner, 2009 IPIC/McGill Advanced Trademarks Course, August 2009
  • "IP and M&A: Impact on the Global Economy," Annual Canadian International Law Students' Conference, Osgoode Hall Law School of York University, Toronto, February 2008
  • "IP Management, Managing the Small Business Enterprise" (co-presenter: Stephan P. Georgiev), Dobson Centre for Entrepreneurial Studies, McGill University, Montreal, March 2007
  • "IP Management, Managing the Small Business Enterprise" (co-presenter: Stephan P. Georgiev), Dobson Centre for Entrepreneurial Studies, McGill University, Montreal, January 2006
  • "Patents, trade marks, copyrights and designs in Canada: overview," (co-authors: Steve Garland, Andrea Kroetch, Jeff Leuschner) IP in Business Transactions Global Guide 2017, Thomson Reuters, October 2017
  • "IP in business transactions: Canada overview," (co-authors: Steve Garland, Andrea Kroetch, Jeff Leuschner) IP in Business Transactions Global Guide 2017, Thomson Reuters, October 2017
  • Quoted in the article “Protecting trade secrets” which appeared in the Canadian Lawyer Magazine, May 2017 
  • Quoted in the article "IP: Monetization is the message," which appeared in IP Monetization on August 24, 2014
  • "Key and Practical IP factors to consider from Canadian and US / European perspectives in Distribution / License and M&A transactions," distributed at the 2012 BIO International Convention, Boston, MA, June 2012
  • "Canada-California Cross-Border Intellectual Property Framework" (co-authors: Tom Sweeney, Brett Sharp and Angus Livingstone), July 7, 2009 (Revised August 15, 2011)
  • "Key and Practical IP issues in Distribution / License and M&A Deals in Canada," distributed at the 2011 BIO International Convention, Washington, DC, June 2011