Donald Plumley, QC  

Donald Plumley, QC

Toronto
Brookfield Place, Suite 4400
181 Bay Street
Toronto, Ontario M5J 2T3

t: 416.307.4046
e: donald.plumley@mcmillan.ca

overview

  • Appointed Queen's Counsel, 1983.
  • Registered Trade Mark Agent, Canada, 1966.

Donald Plumley, Q.C. is counsel in the Intellectual Property Group in the Toronto office. He was a partner in the firm from1966 to 2008. Don has conducted commercial litigation, involving class actions, and intellectual property litigation at all levels before the Courts of Ontario, the Federal Court of Canada, the Supreme Court of Canada and various Administrative Tribunals for over 30 years. He has also conducted mediations and arbitrations to resolve infringement and validity issues as well as to resolve licensing issues for patents, in turn including Patented Medicines (Notice of Compliance) Regulations issues relating to pharmaceutical patents, as well as trade marks, copyrights, industrial designs, confidential information, and unfair competition.

Representative Matters

Donald Plumley has participated in an extensive range of technically oriented commercial agreements dealing with licensing the use of, assignment of, or granting security in, intellectual property, as well as a full range of ownership and registration issues. He has also represented clients in disputes regarding this subject matter including:

  • Asserting and defending patent and trade mark infringement proceedings;
  • Defence and resolution of significant class actions including in foreign jurisdictions;
  • Advising and overseeing representation of clients in international insolvency proceedings;
  • Instituting Class Actions in Ontario; and,
  • Representing officers and directors.

Don has also conducted oppression and valuation remedy proceedings, and various proceedings including mediation and arbitration and has been an instructor with respect to principled negotiation.

Presentations

Terms, Renewal, Termination and Post-Termination Issues, Intellectual Property License Agreements
Session Chair, "Assessing Opportunities" and Speaker "Antitrust and Misuse Restraints on Licensing IP Rights"
Changes in the Courtroom: Update on Infringement and Remedies

Publications

The Intellectual Property and Regulated Conduct Interface with Competition Law
Changes to the PMNOC Regulations
Review of Selected Clauses of an Intellectual Property License

Education

  • Queen's University, LLB - 1963
  • Queen's University, B.Sc. (Chemical Engineering) - 1960

Year Of Call

  • Called to the Ontario bar - 1965

Practices

supreme court

Directorships and Professional Associations

  • International Association for the Protection of Intellectual Property (AIPPI)
  • Licensing Executives Society (LES)
  • Intellectual Property Institute of Canada (IPIC)
  • International Trademark Association (INTA)
  • International Bar Association (IBA)
  • Canadian Bar Association
  • Advocates' Society
  • Metropolitan Toronto Lawyers Association
  • Ontario Bar Association

Awards & Rankings

  • Listed in the  Best Lawyers in Canada 2010 as an expert in Intellectual Property Law.
  • Listed in the Legal Media Group's Expert Guides Leading Patent Practitioners 2009 .
  • Listed in the PLC Which Lawyer? Yearbook 2009 as a recommended practitioner in Life Sciences - Intellectual Property and IP - Patent Litigation.
  • Recommended as a prominent practitioner in the  PLC Cross-border Life Sciences Handbook 2007/2008 .
  • Included in the 2007  Guide to World's Leading Patent Law Practitioners published by Legal Media Group.
vcard
  • Appointed Queen's Counsel, 1983.
  • Registered Trade Mark Agent, Canada, 1966.

Donald Plumley, Q.C. is counsel in the Intellectual Property Group in the Toronto office. He was a partner in the firm from1966 to 2008. Don has conducted commercial litigation, involving class actions, and intellectual property litigation at all levels before the Courts of Ontario, the Federal Court of Canada, the Supreme Court of Canada and various Administrative Tribunals for over 30 years. He has also conducted mediations and arbitrations to resolve infringement and validity issues as well as to resolve licensing issues for patents, in turn including Patented Medicines (Notice of Compliance) Regulations issues relating to pharmaceutical patents, as well as trade marks, copyrights, industrial designs, confidential information, and unfair competition.

Donald Plumley has participated in an extensive range of technically oriented commercial agreements dealing with licensing the use of, assignment of, or granting security in, intellectual property, as well as a full range of ownership and registration issues. He has also represented clients in disputes regarding this subject matter including:

  • Asserting and defending patent and trade mark infringement proceedings;
  • Defence and resolution of significant class actions including in foreign jurisdictions;
  • Advising and overseeing representation of clients in international insolvency proceedings;
  • Instituting Class Actions in Ontario; and,
  • Representing officers and directors.

Don has also conducted oppression and valuation remedy proceedings, and various proceedings including mediation and arbitration and has been an instructor with respect to principled negotiation.

2007
The Intellectual Property and Regulated Conduct Interface with Competition Law
Co-author, Fundamentals of Canadian Competition Law , Chapter 15, CBA/Carswell
Fall 2006
Changes to the PMNOC Regulations
Lang Michener Intellectual Property Brief Winter 2006
May 2003
Review of Selected Clauses of an Intellectual Property License
Canadian Intellectual Property Review, Vol. 19, No. 1
2004
Terms, Renewal, Termination and Post-Termination Issues, Intellectual Property License Agreements
The Canadian Institute
April 24, 2002
Session Chair, "Assessing Opportunities" and Speaker "Antitrust and Misuse Restraints on Licensing IP Rights"
Negotiating and Drafting IP Licensing Agreements Conference presented by the Federated Press
June 18, 2001
Changes in the Courtroom: Update on Infringement and Remedies
Patent Practice Update Conference presented by INFONEX