About Sanjay D. Goorachurn

Sanjay D. Goorachurn is a lawyer practicing licensing & ip transactions, ip management & strategic counselling, chemical & industrial biotechnology and 7 other areas of law. Sanjay D. received a degree from University of Manitoba in 1987, and has been licensed for 34 years. Sanjay D. practices at Smart & Biggar in Montreal, QC.

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Services

Areas of Law

Energy
Other 9
- Licensing & IP Transactions
- IP Management & Strategic Counselling
- Chemical & Industrial Biotechnology
- Industrial/Mechanical
- Life Sciences
- Pharmaceutical
- Software/Internet/Information Technologies
- Pharmaceutical Regulatory & Compliance
- Cleantech

Practice Details

Languages

English
French
Hindi
Firm Information

Position
Partner, Montreal; Barrister and Solicitor; Trademark Agent

Firm Name
Smart & Biggar
Representative Cases & Transactions

Cases
Experience: Representative IP-related Transactions
M& A: IP co-counsel for a leading US private equity-backed sports
apparel company in the sale
transfer of IP assets of a major asset purchase during creditor protection
IP counsel for a global industrial company in the strategic acquisition of technology
IP assets
IP co-counsel for a leading private equity-backed sports
apparel company in the structuring, negotiation
drafting the IP aspects of a major asset purchase of a leading baseball/softball manufacturer
related IP assets
technologies, including IP support for the listing of such company on NASDAQ
IP co-counsel for a leading Canadian-based sports
apparel company in the acquisition of a major US-based sports apparel manufacturer
IP co-counsel for a leading Canadian-based sports
apparel company in structuring, negotiating
drafting IP aspects of a share purchase of an Ottawa-based sports apparel manufacturer
IP counsel for a Quebec-based biotechnology company in an IP asset purchase of know how/ technical data from a leading Quebec university
IP co-counsel for a leading Canadian-based sports
apparel company in structuring, negotiating
drafting IP aspects of a share purchase of a well-known U.S. sports manufacturer
IP counsel for a Canadian-based sports
apparel company in structuring, negotiating
drafting IP aspects of a hybrid share purchase agreement
IP asset purchase agreement with a significant European consumer products company
IP co-counsel for a Canadian-based Software as a Service technology company in structuring, negotiating
drafting IP aspects of a cross-border acquisition by a leading US-based technology company
IP counsel for a Canadian subsidiary of a major U.S. software company in a management buy-out
related financing by Quebec investors
IP co-counsel for a U.S. private-equity backed
well-known North American consumer products company in a share purchase of a U.S. sports company
IP co-counsel for a global U.S.-based biotechnology company in the acquisition of a Quebec-based biotechnology company
IP co-counsel for a U.S. private-equity backed
well-known North American consumer products company in a share purchase of a major North American consumer products company
IP co-counsel for a well-known global consumer products company in the sale of another well-known consumer products business unit to a U.S. private equity fund
IP counsel for a French multinational in an asset acquisition of a U.S.-based
VC-backed clean tech company
Financing:: IP counsel for a Quebec VC-backed agri-food biotechnology company in a Series B financing round by North-American
European investors
IP counsel for Quebec-based
Paris-based co-investors in the financing of a Quebec-based clean tech start-up
IP counsel for a Quebec VC-backed industrial materials start-up in the financing by French private equity investment company
IP counsel on behalf of a Quebec VC syndicate in significant financing of several Quebec biotechnology companies
IP counsel on behalf of a Canadian VC investor in several software, industrial
Internet start-ups
Licensing:: IP counsel for a Quebec-based clean tech engineering company in negotiating, structuring
drafting a license
collaboration agreement with a leading public utility company
IP counsel for a reputed pharmaceutical compounding company in negotiating, structuring
drafting a trademark license agreement
a patent technology license agreement
IP counsel for a Quebec-based clean tech engineering company in negotiating, structuring
drafting potential license agreements with the world's largest nonprofit research
development organization
IP counsel for a Quebec-based pharmaceutical company in negotiating, structuring
drafting an exclusive patent license agreement
research
development agreements with a major Quebec University
IP counsel for a Quebec VC-backed agri-food biotechnology company in negotiating, structuring,
drafting a potential patent license agreement with a major Quebec University
IP counsel for a Quebec VC-backed biotechnology company in structuring, negotiating
drafting a distribution
license agreement with a Chinese distributor for the Chinese market
IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating
drafting a distribution
license agreement with a major pharmaceutical company for the Canadian market
IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating
drafting a distribution
license agreement with a major pharmaceutical company for European market
IP counsel for a Quebec VC-backed biotechnology company in structuring, negotiating
drafting a contract manufacturing
license agreement with a well-known US-based contract manufacturer
IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating
drafting IP aspects of a distribution
trademark license agreement with a major European animal health company for the Brazilian market
IP co-counsel for a major biopharmaceutical company in re-negotiating global license agreements with another major pharmaceutical company
IP counsel for a Quebec VC-backed agri-food biotechnology company in structuring, negotiating
drafting IP aspects of a distribution
trade mark license agreement with a Russian distributor for the Russian market
IP counsel for a Quebec VC-backed clean tech start-up in structuring, negotiating
drafting the IP aspects of a global distribution
license agreement with a major European partner
multinational corporation
IP counsel for a Quebec-based sports
technology equipment company in a supply
license agreement with a major U.S. telecommunications company
IP counsel for a Quebec VC-backed clean tech company in structuring, negotiating
drafting IP aspects of a design
development agreement with a global agricultural equipment manufacturer
IP Management / IP Strategy:: IP audit of a major North America cosmeceutical company to implement an IP management
IP strategy to enhance overall corporate value
exit strategy
IP audit of US based industrial manufacturer in support / collaboration with a leading accounting firm for a strategic US/Canada transfer pricing project
IP audit of a Quebec-based pharmaceutical compounding company in support / collaboration with a leading accounting firm for a strategic US/Canada transfer pricing project
IP audit
IP strategy for a global recognized leader in nuclear science
technology
Strategic IP document for a Canadian-based venture-backed clean tech company
to assist in implementation
IP audit for a Quebec-based research company to provide recommendations in implementing an IP management program
to assist in implementation to enhance overall corporate value
business growth
IP audit for a major Quebec-based multinational to provide recommendations to improve IP management function, role
responsibilities
IP audit for a global
major industrial manufacturer to provide recommendations to implement an IP management structure
to assist in implementation to enhance overall corporate value
business growth
Strategic IP advice to convert a publicly listed small technology company from a manufacturing to an IP holding/licensing model
IP audit for a Quebec-based major natural resources company to improve IP management for a key business unit
Developing
implementing IP management plans
IP strategy documents for several VC-backed small technology companies in several industries to enhance corporate value
return on investment
IP Valuation: Provided qualitative IP valuation of IP assets of a leading North American cosmeceutical company in collaboration with leading US
Canadian valuation firms for purchase price allocation
Provided qualitative IP valuation of IP assets of a US-based sports company for a potential acquisition, in collaboration with US chartered valuation firm
Collaborated with Canadian chartered valuation firm to provide IP valuation of IP
intangible assets of a Quebec-based leader in gaming innovation
Provided qualitative IP valuation to a global number one Asian-based client for strategic acquisition of a Canadian software company, in collaboration with client's internal valuation team
Collaborated with Canadian chartered valuation firm on valuation of IP
intangible assets for transfer pricing
Estimate of fair value market of IP assets of a US-based sports company for a potential acquisition
Estimate of fair value market of IP assets of a Quebec-based leader in gaming innovation
Trademarks valuation of a Canadian software company for the acquisition of its trademarks by an Asian-based company

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Experience

Bar Admission & Memberships

Admissions
1992, Ontario
2006, Quebec
2008, CLP™ (Certified Licensing Professional)
2009, Registered Trade-mark Agent

Memberships

Professional Involvement
Memberships
•Member of the Law Society of Upper Canada
•Member of the Barreau du Quebec
•fellow, Intellectual Property Institute of Canada
•Member, Canadian Healthcare Licensing Association
•Member, Licensing Executives Society
•Member, Committee on the Integration of Immigrant Lawyers, Barreau du Quebec
•Jury Member on the admission of Lawyers qualified in France to the Barreau du Quebec
•Member, Canadian Bar Association

Bar Fellowship
Intellectual Property Institute of Canada
•Member, Canadian Healthcare Licensing Association
•Member, American Intellectual Property Law Association
•Member, Licensing Executives Society
•Member, Committee on the Integration of Immigrant Lawyers, Barreau du Quebec
•Jury Member on the admission of Lawyers qualified in France to the Barreau du Quebec
•Member, Calgary Bar Association
•Member, Canadian Bar Association
Select speaking engagements
•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 ecole de technologie superieure'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 conferenceAspects 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 marche nord americain,Chambre de commerce industriel de l'Essonne, Evry, France, June 2009
•La contrefa,on et ses impacts sur l'economie et les entreprises canadiennes(co-presenter: Francois Guay),Congres annuel du Barreau du Quebec, Montreal, May 2009
•La gestion efficace d'un portefeuille de PI en contentieux d'entreprise - un outil de croissance et de competitivite(co-presenter: Luc Berube, 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 relies aux transactions de fusions et acquisitions (co-presenter: Francois Guay),Congres annuel du Barreau du Quebec, 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 propriete intellectuelle, Insight conference, Montreal, April 2006
•La verification diligente de la propriete intellectuelle lors de financements ou de fusions et acquisitions, Canadian Institute conference, Montreal, March 2006
•Contrats mettant en cause des actifs de propriete intellectuelle (co-presenter: Francois Guay), Insight conferenceLa negotiation et la redaction de conventions commerciales,Montreal, September 2005
•Reconnaitre et ne plus occulter l'importance de la propriete intellectuelle (co-presenter: Francois Guay),Congres annuel du Barreau du Quebec, Mont-Tremblant, QC, June 2005
Select teaching activities
•LES CLP Review Course, LES Montreal Chapter, Montreal, Module II on IP Protection and Module VI on Agreement Development, September 2013
•In-house presentation to articling students on IP Transactions, Montreal and via webcam Ottawa, Toronto and Vancouver, July 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
Education & Certifications

Law School
University of Manitoba
Class of 1990
LL.B.

Other Education
University of Manitoba
Class of 1987
B.Sc.

University of Manitoba
Class of 1987
Chemistry

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