Canada’s Intellectual Property Law Firm

Theodore Sum

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Theodore Sum

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

IP strategist offers innovative thinking during business-critical transactions

A steady hand during business-critical transactions, Ted is praised for his ability to blend innovative thinking with client attentiveness and a microscopic attention to detail. He regularly advises clients on the IP aspects of joint ventures, strategic alliances, M&A deals, cross-border transactions, technology transfers and procurement projects.

Ted has broad IP expertise with an emphasis on licensing, commercialization and procurement, patent and trademark prosecution, due diligence, e-commerce, privacy and security. He’s often asked to counsel clients on IP strategy and advise them on the most effective methods to protect, manage and capitalize on their IP assets.

Entrusted by a broad range of clients for his thoughtful, diligent approach

Known for his thoughtful, thorough and diligent approach, Ted works with clients across a wide range of sectors including high tech, software and IT, energy, clean tech, telecommunications, robotics, AI and machine learning, aerospace, defence, life science, chemicals, transportation, mining and forestry. In addition to his guidance during significant transactions, Ted advises clients on a broad range of IP matters involving the research, development, acquisition, clearance, commercialization and exploitation of products, technology and related intellectual property assets.

IP thought leader and educator

Ted is often requested for speaking engagements covering a broad range of intellectual property and information technology issues. Ted is currently an adjunct professor and lecturer on IP law at the University of Victoria Law School. Ted also served as an instructor on IP law at the University of British Columbia Law School.

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • "Profiting from your Organization's IP Licenses," Canadian Institute conference Protecting Intellectual Property in the Energy Sector, Calgary, AB, October 2007
  • "Select IT Issues for Customers," Canadian Airport Procurement Association, Banff, AB, June 2007
  • "Protecting Key IP Assets: Patents and Confidential Information," Law for Project Managers Course, University of Calgary, Calgary, AB, October 2006
  • "Best Practices for Drafting IP Licensing Agreements," Canadian Institute conference Negotiating and Drafting Intellectual Property License Agreements, Calgary, AB, June 2006
  • "Advanced IT and IP Legal Issues – When Deals Go Bad," Canadian Airport Counsel Committee Association, Vancouver, April 2006
  • "License Agreements: Common Pitfalls," Insight Information conference Negotiating and Drafting Major Business Agreements Conference, Vancouver, March 2006
  • "Key Aspects of IP License Agreements," Canadian Institute conference Key Business Agreements, Vancouver, March 2006
  • "Legal Considerations with Open Source Licensing," Ninth Annual Canadian IT Law Association Conference, Montreal, October 2005
  • "Legal Considerations with Open Source Licensing," Licensing Executives Society (United States and Canada) Annual Meeting, Pheonix, AZ, October 2005
  • "Competition Law Issues When Licensing Intellectual Property: Tips and Traps," Canadian Institute Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2005
  • "Negotiating and Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute for Professional Development, Vancouver, April 2005
  • "Traditional and Internet Software Licensing Issues," Licensing Executives Society Vancouver Chapter IP Seminar, Vancouver, January 2005
  • "Copyright Issues for Educators," Simon Fraser University, Burnaby, BC, October 2004
  • "Protecting IP in Cyberspace: Patenting and Commercializing Software and Business Methods in a Virtual World," Canadian Corporate Counsel Association Annual Meeting, Winnipeg, MB, August 2004
  • "Protecting IP in Cyberspace: Contracting Challenges for Licensors, Service Providers, Customers and Users," International Intellectual Property Law Conference, University of Victoria, St. Peter's College of Oxford University and University of Illinois, Vancouver, July 2004
  • "Hot Topics in Licensing," Vancouver Chapter of the Licensing Executives Society (United States and Canada), Vancouver, January 2004
  • "Issues and Problems in Software and IT Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
  • "Workshop on Software Development Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
  • "Key Issues in Software Development Agreements and Software Licenses," Canadian Corporate Counsel Association, Winnipeg, MB, May 2004
  • "Open Issues on Open Source," Intellectual Property Institute of Canada Spring Conference, Ottawa, April 2004
  • "Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute of Professional Development Conference, Vancouver, March 2004
  • "Commercializing Research Tools," AUTM Annual Meeting, San Antonio, TX, March 2004
  • "The Art and Science of Drafting License Agreements," Licensing Executives Society (United States and Canada) Annual General Meeting, San Diego, CA, September 2003
  • "Troublesome Licensing Issues: Reach-Through Royalties and Open Source," Intellectual Property Institute of Canada Annual General Meeting, Halifax, September 2003
  • "Pitfalls to Mishandling Technology Improvements," Licensing Executives Society and the Canadian Bar Association, Edmonton, AB, November 2002
  • "Recent Developments on Copyright, Privacy and Data Protection in Canada," International IP Conference, Chicago, October 2002
  • "The Responsibility to Obtain and Maintain Intellectual Property," Canadian Institute conference Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2002
  • "Key Terms in Software Licensing and Software Development," IT Law Spring Training Program, IT.Can, Vancouver, May 2002
  • "Strategies for Protecting an Employer's Confidential Information and Other Intellectual Property," Canadian Institute conference Advanced Forum on Employment Law, Vancouver, November 2001

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, Licensing Executives Society (United States and Canada)
  • Member, Canadian Corporate Counsel Association
  • Member, Vancouver Board of Trade

Teaching Activities

  • "Managing Intellectual Property", Faculty of Law, University of Victoria, since 2013
  • Instructor, University of British Columbia Law School, Vancouver, 2001 to 2006
  • Lecturer on the topic of licensing, University of Victoria Law School, Victoria, BC, 2002
  • "Licensing Issues with Research Tools and Reach-Through Royalties," (2005) 2 Canadian Intellectual Property Review 21.1
  • "Open Issues on Open Source," (2005) 1 Canadian Intellectual Property Review 21.1