Canada’s Intellectual Property Law Firm

Steven Garland

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Steven Garland

Partner
  • Smart & Biggar LLP
Barrister and Solicitor
  • Patent and Trademark Agent

A proven track record of IP success for the world’s most successful brands

With over 25 years of trial and appellate experience in all areas of IP and numerous landmark decisions under his belt, Steven brings the level of attention, dedication, and strategy required to be successful for high-calibre clients such as Amazon.com, Dow Chemical, Labatt, Shell, Bayer, McDonald’s, Parmalat and Cenovus.

Steven has earned an outstanding reputation amongst colleagues and clients who view him as “the full package – he provides innovative legal strategy; he is unflappable in the courtroom and highly effective in cross-examination” (Lexology 2018 Client Choice) and “one of the most versatile trial lawyers in the Canadian IP community” (IAM Patents 1000, 2019).

He has litigated on matters relating to patents, trademarks, copyright, industrial designs, trade secrets, breach of confidential information, and competition law. In respect of patents, Steven has acted in matters that have involved a wide variety of subjects, including chemical, electrical, biochemical, pharmaceutical, biotechnological, telephony, mechanical and computer/internet subject matter.

Exceptional results including the largest reported damages award in a Canadian patent infringement case

He has appeared as counsel before the Supreme Court of Canada, the Federal Court and Federal Court of Appeal, appellate and trial courts for the provinces of Ontario, British Columbia, Alberta and Nova Scotia, and the Patent Appeal Board and the Trademarks Opposition Board.

Steven also acts on behalf of innovator pharmaceutical and biopharmaceutical companies in respect of patent-related matters, including patent infringement actions and proceedings under the Patented Medicines (Notice of Compliance) Regulations.

In numerous surveys, Steven is noted as being a “fantastic lawyer” who competes in a “broad array of contests”, he is “top of mind for savvy representation”, “very skilled”, "a courtroom ace", “an exceptional litigator”, “really stands out from the crowd due to the high-profile cases he’s had”, and “among the best”He was also praised as a “stellar litigator” whose victory for the Dow Chemical Company netted the largest reported damages award in a Canadian patent infringement case on infringing revenues of over 1B dollars (IAM Patents 1000, 2018).

Steven is a Past President of the International Association for the Protection of Intellectual Property (AIPPI) Canadian Group, and a Past President of the Intellectual Property Institute of Canada (IPIC). He is also an adjunct professor at the University of Ottawa Law School, where he teaches patent law. Steven is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. He is also a member of the editorial board of the international publication Intellectual Property Magazine. Prior to becoming a lawyer, Steven was a Reservoir Engineer in the Canadian oil and gas industry.

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • "Patent Claim Construction: Jurisprudential Building Blocks and a Comparison of Canadian, U.S., and U.K. Approaches," speaker, IPIC Webinar, October 18, 2019
  • "AIPLA Giles S. Rich IP Moot Court Competition," Moot Court Judge, Washington, D.C., April 2019
  • "Canadian patent litigation: practical guide for in-house counsel," presentation at the 30th annual Silicon Valley Association for General Counsel (SVAGC) All Hands Meeting, Santa Clara, CA, October 15-16, 2018
  • "IP Enforcement in Oil & Ag: Risk Management and Asserting Your Rights," presentation to the Association of Corporate Counsel of Canada, Calgary, AB, May 16, 2018
  • "Patent Law Year in Review," presentation to CIPO Patent Examiners, Gatineau, QC, September 20, 2017
  • "Patent Litigation: Practical Do’s and Don’ts," LES (USA & Canda), Calgary, September 2016
  • "Update on Patents 2016," Law Society of Upper Canada's 20th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2016
  • "Recent Developments on Patent Law Before the Federal Courts," Federal Court Annual Education Seminar, Montebello, October 2015
  • "Update on Global Initiatives," 2015 Global Network of National IP Practitioner Associations Summit, Rio De Janeiro, October 2015
  • "Pharma Session I: Don’t Miss the (Right) Mark." AIPPI – Rio Panel Session, Rio De Janeiro October 2015
  • "Patent Year in Review," presentation to CIPO Patent Examiners, Gatineau, QC, May 2015
  • "The Year in Review in IP Law," Intellectual Property Institute of Canada Webinar — Patent Law Update, February 2015
  • "Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and their Clients" (roundtable), United States Patent and Trademark Office, Alexandria, VA, February 2015
  • "Update on Patents 2015," Law Society of Upper Canada's 19th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2015
  • "A Review of Patentable Subject Matter Post-Amazon and Post-Alice," presented at the LES Calgary Chapter Meeting, Calgary, December 2014
  • "AIPPI’s Involvement in the Plavix Appeal," presented at AIPPI's Annual General Meeting, Ottawa, November 2014
  • "Effective Patent Enforcement Strategies," 2014 Oil and Gas IP Summit, Calgary, November 2014
  • "That’s Privileged: Ethical Considerations in a Global Environment," INTA 2014 Leadership Meeting, Phoenix, AZ, November 2014
  • "Recent Developments in Canadian Trademark Law," 89th Annual PTMG Autumn Conference, Chicago, IL, October 2014
  • "Client-Attorney Privilege — Issues for Harmonization" (moderator), AIPPI 2014 World Intellectual Property Congress, Toronto, September 2014
  • "Confidentiality of Communications Between Clients and Patent Advisors," summary of oral submissions given on behalf of AIPPI at the WIPO Standing Committee on Patents (SCP), Geneva, Switzerland, January 2014
  • "Foreign IP Advisor Communications: Are They Protected from Forcible Disclosure?," 2014 AIPLA Mid Winter Meeting, Phoenix, AZ, January 2014
  • "Update on Patents 2014," Law Society of Upper Canada's 18th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2014
  • "Resume of and discussion on national positions; the way forward," AIPPI/AIPLA/FICPI Colloquium, Paris, France, June 2013
  • "Recommendations and Communique," AIPPI/AIPLA/FICPI Colloquium, Paris, France, June 2013
  • "Patent Law Updates," presentation to the Canadian Intellectual Property Office, Ottawa, April 2013
  • "The Year in Review in IP Law," Intellectual Property Institute of Canada Webinar — Patent Law Update, February 2013
  • "Update on Patents 2013," Law Society of Upper Canada's 17th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2013
  • "Obtaining and Enforcing Patent Rights in Canada," 2012 International IP Forum & AIPPI  - U.S. Special Meeting, Houston, Texas, June 2012
  • "Confidentiality of Communications Between Clients and Patent Advisors," summary of oral submissions given on behalf of AIPPI at the WIPO Standing Committee on Patents (SCP), Geneva, Switzerland, May 2012
  • "Trademark Cancellation Proceedings in Canada," 2012 AIPPI China/Asia IP Seminar, Beijing, China, April 2012
  • "The 'Utility' Requirement: What is a 'useful' invention under Canadian law?" (co-presenters: Daphne C. Lainson and Hongbin Li) and "Canada: The Statutory Basis for and Judicial Application of the Utility Requirement," Comparative Intellectual Property Law Symposium, Ottawa, April 2012
  • "Current topics in Patent Law," presentation to the Canadian Intellectual Property Office, Ottawa, April 2012
  • Participant in IPIC's 2012 Patent Law Update Webinar, February 24, 2012
  • "Update on Patents 2012" Law Society of Upper Canada's 13th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2012
  • "IP Goes Digital – How the Internet Has Changed the Way We Look at IP Patents" (panelist) Law Society of Upper Canada's 16th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2012
  • "The Duty of Candour in Canada" presented at IPIC's Annual General Meeting, Chicago, IL, September 2011
  • "The Weatherford Decision" presented at IPIC's The Weatherford Decision Webinar, Toronto, September 2011
  • "Patent Law Review: The Top 20 of 2010," presentation to CIPO Patent Examiners, Gatineau, QC, May 2011
  • "Patentable Subject Matter: A Canadian Perspective," 2011 AIPLA Spring Meeting, San Francisco, May 2011
  • "Update on Patents," Intellectual Property Institute of Canada webinar, March 2011
  • "Canadian IP Law Update - Practical Tips and Information for U.S. Attorneys - Litigation," Smart & Biggar Seminar, Minneapolis, January 2011
  • "Duty of Candour in Canada," Canadian Intellectual Property Office (CIPO) Patent Examiners, January 2011
  • "Update on Patents 2011," Law Society of Upper Canada's 15th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2011
  • "The Amazon.com decision and the patenting of business methods in Canada," Intellectual Property Institute of Canada webinar, December 2010
  • "Duty of Candour in Canada," Canadian Institute's 9th Annual Forum on Pharma Patents, Toronto, November 2010
  • "Update on Patents," Intellectual Property Institute of Canada Webinar — Patent Law Update, April 2010
  • "Successful Management of IP Litigation and Dispute Resolution" (moderator), Canadian Corporate Counsel Association 2010 National Spring Conference, April 2010
  • "Intellectual Property and Advisor/Client Privilege," AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, South Korea, November 15, 2009
  • "Opening Statements & Closing Arguments," Federal Court Annual Education Seminar, Montreal, October 2009
  • "Patent Law Update," Intellectual Property Institute of Canada Webinar — Update on Patent Law, April 2009
  • "Update on Patents 2009," Law Society of Upper Canada's 13th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2009
  • "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 2008
  • "Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions," WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, Geneva, Switzerland, May 2008
  • "International and Comparative Patent and Trade Secret Protection: The Canadian Perspective," Intellectual Property Law Program, Oxford College, England, 2003, 2005, 2007
  • "International Enforcement of Patents: Applications/Implications of Voda," Fourth Annual Intellectual Property Law Seminar, Howard University School of Law, Washington, DC, March 2007
  • "Intellectual Property Rights: Practical Advice for the non-IP Practitioner," CCLA Continuing Education Program — Intellectual Property Rights, Ottawa, October 2006
  • "Double Patenting and Patent Listing," AstraZeneca Patent Attorneys Workshop, Stockholm, Sweden, October 2006
  • "Advocacy Before the Federal Court in Intellectual Property Matters — Trial Advocacy Part II — Examination in Chief," Canadian Bar Association Advocacy Program, Ottawa, May 2006

Memberships

  • Fellow and past President, Intellectual Property Institute of Canada; Vice-Chair of the Self-Governance Committee
  • Member and Past President of the Canadian Group, International Association for the Protection of Intellectual Property (AIPPI); Chairman of the Q199 Attorney-Client Privilege Committee; Member of the Programme Committee
  • Member, American Intellectual Property Law Association
  • Member, Society of Petroleum Engineers
  • Member, Canadian Bar Association

Teaching Activities

  • "Exchequer Cup Moot" – Judge for law clerks of the Federal Court and Federal Court of Appeal, May 2016
  • Patent Law, University of Ottawa (since 1995)
  • Canada: Patent Litigation” (co-authors: Jeremy Want and Laura Easton), The Legal 500: Patent Litigation Country Comparative Guide, November 2019
  • Patent Litigation 2019 - Canada” (co-authors: Jeremy Want and Daniel Hnatchuk), Chambers Global Practice Guides, July 2019
  • Patent Litigation in Canada: Overview” (co-authors: Jeremy Want, Daniel Hnatchuk and Matthew Burt), Practical Law, Thomson Reuters, July 2018
  • "Patent Litigation 2018 – Canada,” (co-authors: Jeremy Want, Daniel Davies and Lei Liu), Chambers Global Practice Guides, February 2018
  • "Patentable subject matter" (co-authors: Daphne Lainson and Kevin Graham), Canadian Patent Law Benchbook, 2017
  • "Patents, trade marks, copyrights and designs in Canada: overview," (co-authors: Sanjay Goorachurn, Andrea Kroetch, Jeff Leuschner) IP in Business Transactions Global Guide 2017, Thomson Reuters, October 2017
  • "IP in business transactions: Canada overview," (co-authors: Sanjay Goorachurn, Andrea Kroetch, Jeff Leuschner) IP in Business Transactions Global Guide 2017, Thomson Reuters, October 2017
  • "Canada," (co-author: Kevin Graham) The Patent Litigation Law Review, 1st ed., Law Business Research Ltd, 2017
  • "Patent Protection for Second Medical Uses: Canada Chapter" (co-authors: Daniel Davies, Dr. Lei Liu), Patent Protection for Second Medical Uses, Wolters Kluwer Law, September 26 2016
  • Global Patent Law Litigation: Canada” (co-author: Kevin K. Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, August 2016
  • "Patentable subject matter" (co-author: Kevin Graham), Canadian Patent Law Benchbook, 2014
  • "Intellectual Property Litigation: Top 10 Differences between Canada and the U.S." (co-author: Jeremy E. Want), Corporate Counsel, January 2014
  • "Software Patents Worldwide: Canada" (co-author: Colin Ingram), Software Patents Worldwide, Wolters Kluwer Law, December 2013
  • "Patentable subject matter" (co-authors: Daphne Lainson and Kevin Graham), Canadian Patent Law Benchbook, 2012
  • "Software Patents Worldwide: Canada" (co-author: Colin Ingram), Software Patents Worldwide, Wolters Kluwer Law, September 2012
  • “Business-Method Patent Law in U.S., Canada, Seemingly in Synch” (co-author: Colin Ingram), Executive Counsel, August/September 2012
  • "More effective protection for pharmaceuticals" (co-author: Daphne Lainson), Intellectual Property Magazine, July/August 2012
  • "The Duty of Candour in Canada" (co-author: Cameron Weir), Canadian Intellectual Property Review, Vol. 27, No. 2 (December 2011), p. 219-256
  • "Canada and the duty of candour" (co-authors: Colin Ingram and Cameron Weir), Intellectual Property Magazine, November 2011
  • "Amazon.com's 'single action ordering' patent application and the patenting of 'business methods' in Canada" (co-authors: John Morrissey and Colin Ingram), CBA Business & Corporate Bulletin, March 2011
  • "An Update on the Scope of Patentable Subject Matter in Canada: The Amazon.com's "single action ordering" patent application and the patenting of "business methods" in Canada" (co-authors: Colin Ingram and John Morrissey), American Bar Association's LANDSLIDE magazine, May/June 2011
  • Chapter Update – "Global Patent Litigation: Canada" (co-author: Kevin Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, 2011
  • "Amazon single action ordering patent and the scope of patentable subject matter in Canada," Intellectual Property Magazine, February 2011
  • "Making IP Litigation in Canada More Attractive," Law360, August 7, 2009
  • "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada" (co-authors: Sheldon Hamilton and Amelia Choi), Patent World, October 2007
  • "Recent Developments Lead to Changing Face (and Pace) of Patent Litigation in Canada," Patent World, 2007
  • "Pharma Litigation Continues to Drive Canadian Patent Law," The Guide to the World's Leading Law Practitioners (Canada), 2007
  • "Canada: Are Computer-Implemented Inventions Patentable?" World Focus: IP & High Technology, October 2006
  • "Global Patent Litigation: Canada" (co-author: Kevin Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006