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Keith Bird is an experienced intellectual property (IP) lawyer with expertise in all aspects of IP including licensing, patent freedom to operate, infringement and validity opinions, due diligence, and regulatory matters. He advises and represents startups and established companies in complex patent prosecution and litigation matters.

Having worked as a research physicist, Keith has a deep understanding of a wide range of technologies. Clients appreciate his ability to break down complex intellectual property matters, and peers respect his success in helping clients build and protect valuable patent and trademark portfolios.

Keith assists clients in a range of industries including manufacturing, payments and fintech, and technology. His extensive experience encompasses matters relating to engine oil additives, mobile commerce applications, telecommunications security, television audience measuring devices, modular housing, pharmaceuticals, and oil patch and tar sand advancements.

A seasoned litigator, Keith has argued disputes relating to conduct of patent, industrial design, and trademarks and copyright before Ontario’s Superior Court of Justice and Court of Appeal, as well as the Federal Court of Canada, the Federal Court of Appeal and the Supreme Court of Canada.

A variety of legal directories have consistently recognized Keith as a leading IP lawyer, including Best Lawyers in Canada and the 2019 edition of Managing Intellectual Property’s MIP IP STARS.



Representative Matters

Selected Patent Counsel Matters:

  • Andrew Robert England Kerr v. Laurence Shaw & Associates Limited, [2010] Case No: HC08 C02343
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No.: T-1745-12
  • M & I Transfer Products Limited v. Mafna Air Technologies Inc., Court File No. T-1032-08
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-649-08
  • Tamglass Ltd. OY v. Horizon Glass & Mirror Ltd. et al., Court File No. T-1108-07
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-1176-06
  • Pitney Bowes Inc. et al. v. Neopost, S.A. et al., Court File No. T-1817-02
  • Nielson Media Research Inc. et al v. Taylor Nelson Sofres PLC and BBM Bureau of Measurement Court File No. T-2298-00
  • Accardis Systems, Inc. v. Transformix Engineering Inc., Court File No. T-1105-00
  • Colt Engineering Corporation et al v. UIL Inc. et al., Court File No. T-928-00
  • Dana Canada Inc. v. Lubrizol Corporation et al., Court File No. 00-CV-190003CM
  • Symtron Systems Inc. v. ICS International Code Fire Services Inc., Court File No. T-1244-99
  • Elkay Manufacturing Company v. Les Produits Thermo-Concepts Inc., Court File No. T-1939-98
  • Elkay Manufacturing Company v. Addico Products Inc., Court File No. T-1938-98
  • ONEAC Corporation v. Raychem, Court File No. T-484-97
  • Intellectual Property Developments Inc. et. al. v. Rogers Communications Inc. et. al., Court File No. T-2300-96
  • Halford et al. v. Seed Hawk Inc. et al., Court No. T-2406-93
  • Imperial Oil Ltd. et al. v. Lubrizol Corp. et al., Court File No. T-577-87

Speaking Engagements

Intellectual Property Ownership Issues - Lang Michener 5 O'clock Lecture Series

March 2003

Practicing Intellectual Property Law University of Toronto and Osgoode Hall Career Day

March 2003

Teaching Engagements

  • Adjunct Professor – Patent Law, Faculty of Law, University of Windsor, 2004 – 2010
  • Lecturer, Intellectual Property Institute of Canada’s Patent Agent Training Course – 2013 to present
  • Instructor, distance-learning component of the Intellectual Property Institute of Canada’s Patent Agent Training Course, 2010 to present

News


Rankings & Recognition

  • Recognized by the Best Lawyers in Canada (2021) as a leading lawyer in the area of Intellectual Property Law
  • Recognized by Best Lawyers in Canada (2020) as a leading lawyer in the area of Intellectual Property Law
  • Listed in 2019 Managing Intellectual Property’s IP Stars – The Guide to the World’s Leading IP Firms and Practitioners
  • Recognized by Best Lawyers in Canada (2019) as a leading lawyer in the area of Intellectual Property Law
  • Martindale-Hubble Peer Review rated AV – Preeminent – 2013 to present
  • Listed in Best Lawyers in Canada as a leading practitioner in Intellectual Property Law 2016 to present
  • Selected as one of the world’s leading patent practitioners and included in the Guide to the World’s Leading Patent Law Practitioners by Legal Media Group/Managing Intellectual Property from 2007 – 2017
  • Finalist, Lexpert’s Rising Stars Top 40 Under 40 – 2007

Community Involvement

  • Captain and coach of Toronto Forest men’s competitive recreational soccer team – 1997 to present
  • Captain of O’Connor Hills inter-county B tennis team – 2008 – 2010; member of team 2005 – present

Education & Admissions

1999
Called to the Ontario bar
Registered Canadian and US Patent Agent
Registered Canadian Trademark Agent
1997
LLBUniversity of Windsor
1994
M.Sc., PhysicsUniversity of Windsor
1990
B.Sc. (Honours), PhysicsUniversity of Windsor

Publications

  • “Patents; Industrial Design,” Contributer, (2006-2008)
  • “Ultimate Corporate” Counsel Guide, CCH (January 2008)
  • “Intellectual Property (Patent) Litigation: Recent Developments of Importance,” The 2008 Guide to the Leading 500 Lawyers in Canada, ALM/Lexpert (2008)
  • “Supreme Court Dismisses Application for Leave to Consider Small Entity Status,” Lang Michener Intellectual Property Brief (Spring 2004)
  • “Dutch Industries to be Statutorily Overruled,” Lang Michener Intellectual Property Brief (October 2003)
  • “Choosing a Domain Name May Require More Homework,” Lang Michener Intellectual Property Brief (November 2002)
  • “Tips on Conducting Your Own Patent Search,” BIOTECH (May 2002)
  • “New Time Limit for Filing National Patents Under the Patent Cooperation Treaty,” Lang Michener Intellectual Property Brief (April 2002)
  • “Domain Name Issues in Commercial Transactions,” Lang Michener Intellectual Property Brief (July 2001)
  • “TRIPs Amendment May Extend Term of Protection,” The Lawyers Weekly, Vol. 20, No. 46 (April 2001)
  • “Bill Introduces Additional Retroactive Patent Protection,” www.internationallawoffice.com (April 2001)
  • “Anticipated Patent Act Amendment May Extend Term of Protection for Certain Patents,” Lang Michener Intellectual Property Brief (March 2001)
  • “Giant Magnetoresistance in Electrodeposited Ni/Cu and Co/Cu Multilayers,” Journal of the Electrochemical Society, Vol. 142, No. 4 (April 1995)
  • “Giant Magnetoresistance in Electrodeposited Nickel-Copper and Cobalt-Copper Multilayers,” University of Windsor Press (January 1994)
  • Anticipated Patent Act Amendment May Extend Term of Protection for Certain Patents
  • Lang Michener Intellectual Property Brief March 2001
  • Giant Magnetoresistance in Electrodeposited Ni/Cu and Co/Cu Multilayers
  • Journal of the Electrochemical Society, Vol. 142, No. 4 April 1995
  • Giant Magnetoresistance in Electrodeposited Nickel-Copper and Cobalt-Copper Multilayers
  • University of Windsor Press January 1994

Insights by Keith Bird (12 Posts)

COVID-19: Expedited Examination of Canadian Trademark Applications

Dec 16, 2020

CIPO is now taking requests to expedite the examination of Canadian trademark applications related to COVID-19 goods and services.

The Intersection between Drop-Shipping and Patent Infringement

Nov 4, 2020

The drop-shipping business model is picking up steam in the online world. But is it immune from the reaches of patent law? Find out in this bulletin.

Out with the New, In with the Old: The F.C.A. provides Clarity on its Ability to interpret Contracts

Sep 28, 2020

The FCA re-affirms the Kellogg and Clopay decisions regarding the Federal Court's ability to interpret contracts. For more details, please read the bulletin.

No Solution? No Problem! The Federal Court of Canada Puts a Dagger in the “Problem-Solution” Approach to Patent Claims Construction

Aug 27, 2020

Patents: the Federal Court has confirmed that the "problem-solution" approach to claims construction is not correct. For more details, read this bulletin.

Trademark Law: Change in Practice Regarding Extensions of Time in Examination

Aug 4, 2020

CIPO has changed its practice regarding time extensions to file responses to examiner's reports. Such guidance will affect Canadian prosecution strategies.

Clorox v Chloretec: The Application of Vavilov in the Trademarks Context

Jul 23, 2020

The Federal Court of Appeal confirms the application of the appellate standard of review framework to trademark opposition board decisions.

Bill C-13 Receives Royal Assent: Change to the Canadian Patent Landscape in Response to COVID-19

Mar 27, 2020

All levels of Canadian government are taking extraordinary steps in response to the public health emergency of COVID-19.

Bill C-4 Receives Royal Assent: Incoming Changes to the Intellectual Property Landscape

Mar 24, 2020

New intellectual property provisions passed into law following Canada's ratification of the "new NAFTA", the
Canada-United States-Mexico Agreement (CUSMA)

Last Chance for Late National Phase Entry into Canada

Aug 9, 2019

It is official - Canada's new Patent Rules will come into force on October 30, 2019.

TOP TWELVE THINGS TO KNOW – New Canadian Trademarks Act June 17, 2019

Jun 4, 2019

On June 17, 2019 major changes to Canada’s Trademarks Act will come into force.

The Hague System For Industrial Designs is in Force in Canada

Nov 21, 2018

Canadian companies and designers can now seek to protect their industrial designs in multiple foreign jurisdictions through a single international application.

Short Window of Opportunity to Take Advantage of Canada’s Late National Phase Entry Regime

Nov 13, 2018

Canada is one of a few contracting states to the Patent Cooperation Treaty that permits late entry into national phase for an international patent application.