Smart & BiggarPartner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent

Steven B. Garland

About Steven B. Garland

Steven B. Garland is a lawyer practicing litigation, patents, trademarks and 15 other areas of law. Steven B. received a degree from University of Western Ontario in 1985, and has been licensed for 34 years. Steven B. practices at Smart & Biggar in Ottawa, ON.

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Services

Areas of Law

  • Litigation
  • Intellectual Property 2
    • Patents
    • Trademarks
  • Energy
  • Other 14
    • Copyright & Media
    • Industrial Designs
    • Licensing & IP Transactions
    • IP Management & Strategic Counselling
    • Pharmaceutical
    • Life Sciences
    • Software/Information Technologies
    • Chemical & Industrial Biotechnology
    • Industrial/Mechanical
    • Electrical/Electronics
    • IP Crime
    • Pharmaceutical Regulatory & Compliance
    • Domain Names & Internet Law
    • Marketing & Advertising

Practice Details

  • Firm Information
    Position
    Partner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent
    Firm Name
    Smart & Biggar
  • Representative Cases & Transactions
    Cases
    Experience: Nova Chemicals Corporation v. Dow Chemical Company et al, 2017 FCA 25
    Nova Chemicals Corporation v The Dow Chemical Company et al, 2016 FCA 216
    The Dow Chemical Company et al v Nova Chemicals Corporation, 2016 FC 706
    Nova Chemicals Corporation v The Dow Chemical Company et al, 2016 FCA 66
    The Dow Chemical Company et al v Nova Chemicals Corporation, 2016 FC 91
    Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, 2015 FCA 111
    The Dow Chemical Company et al v Nova Chemicals Corporation, 2014 FC 844
    Yahoo! Inc v Alpha Base Inc, 2014 TMOB 132
    Cathay Pacific Airways Limited v Air Miles International Trading BV, 2014 FC 549
    Dm-drogerie markt GmbH v 911979 Alberta Ltd, 2014 TMOB 59
    Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, 2014 FC 300
    Cheah v McDonald's Corporation, 2013 FC 774
    Iwasaki Electric Co Ltd v Hortilux Schreder BV, 2012 FCA 321, (FCTD)
    Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201
    Amazon.com Inc v Canada (Attorney General), 2010 FC 1011, 2011 FCA 328
    Red Bull GmbH v 9087-1047 Quebec Inc, 2011 TMOB 79
    Corlac Inc v Weatherford Canada Inc, 2011 FCA 228 (for the Intervener, IPIC)
    Hortilux Schreder BV v Iwasaki Electric Co Ltd, 2011 FC 967
    Indigo Books & Music Inc v C & J Clark International Limited, 2010 FC 859
    Copperhead Brewing Co v John Labatt Ltd (1995), 61 CPR (3d) 317
    Lundbeck Canada Inc v ratiopharm Inc, 2009 FC 1102
    Eli Lilly
    Company v Apotex Inc, 2009 FC 991
    J2 Global Communications Inc v Protus IP Solutions Inc, 2009 FCA 42
    McDonald's Corporation
    McDonald's Restaurants of Canada Limited v Chung-Kee Noodle Shop Ltd, 2008 CanLII 88318 (CA TMOB)
    Lundbeck Canada Inc v ratiopharm Inc, 2008 FC 579
    Anchor Brewing Co v Sleeman Brewing & Malting Co, 2005 FCA 170
    Sim & McBurney v Anchor Brewing Co, 2005 FCA 171
    Sleeman Brewing & Malting Co Ltd v Anchor Brewing Co, 2005 FCA 170
    Oakley Inc v Shoppers Drug Mart Inc, 2004 FCA 404
    Anchor Brewing Co v Sleeman Brewing & Malting Co Ltd, 2004 FC 384
    Sim & McBurney v Anchor Brewing Co, 2004 FC 118
    Bauer Nike Hockey Inc v Regan, 2003 FC 1174
    Harvard College v Canada (Commissioner of Patents), 2002 SCC 76, [2004] 4 FC 528, 7 CPR (4th) 1, (CA)
    Diamant Toys Ltd. v Jouets Bo-Jeux Toys Inc, 2002 FCT 384
    Stamicarbon BV v Urea Casale SA, 2002 FCA 10
    Andres Wines Ltd v Vina Concha Y Toro SA, 2001 FCT 575
    President
    Fellows of Harvard College v Canada (Commissioner of Patents) (2000), 4 FC 528, 7 CPR (4th) 1
    Stamicarbon BV v Urea Casale SA (2001), 1 FC 172, 8 CPR (4th) 206
    Osler Harkin & Harcourt v Canada (Registrar of Trademarks) (1997), 77 CPR (3d) 475, (FCTD)
    Allen & Hanburys Ltd v Torpharm Inc, 75 CPR (3d) 417
    Central Transport Inc v Mantha & Associates (1995), 59 CPR (3d) 213, (FCTD)
    Mobil Oil Corp v Hercules Canada Inc, [1994] 57 CPR (3d) 488, (FCTD)
    Bousquet v Barmish Inc, [1993], 46 CPR (3d) 510, (FCA)

Experience

  • Bar Admission & Memberships
    Admissions
    1992, Ontario Bar
    2017, Alberta Bar
    Memberships

    Professional Involvement

    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

    Bar Fellowship
    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, The Advocates' Society (Ontario)
    •Member, Society of Petroleum Engineers
    •Member, Canadian Bar Association

    Speaking engagements

    •Updates on Patents 2014, presentation to the Canadian Intellectual Property Office, Ottawa, April 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
    •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

    Teaching activities

    •Patent Law, University of Ottawa, 1995-2007 and 2011-2012 Fellow: and Past President); Vice-Chair of the Self-Governance Committee

    • Past President of the Canadian Group and Member, 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, The Advocates' Society (Ontario)

    • Member, Canadian Bar Association

    Speaking Engagements

    • "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 of 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

    • "Trade-mark 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," pesentation 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

    • "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

    Teaching Activities

    • Patent Law, University of Ottawa, 1995-2007 and 2011-2012

    Media

    Publications

    • "Patentable subject matter" (co-authors: Daphne C. Lainson and Kevin K. Graham), Canadian Patent Law Benchbook 2012

    • "Software Patents Worldwide: Canada" (co-author: Colin B. Ingram), Software Patents Worldwide, Wolters Kluwer Law, September 2012

    • "Business-Method Patent Law in U.S., Canada, Seemingly in Synch" (co-author: Colin B. Ingram), Executive Counsel, August/September 2012

    • "More effective protection for pharmaceuticals" (co-author: Daphne C. Lainson), Intellectual Property Magazine, July/August 2012

    • "The Duty of Candour in Canada" (co-author: Cameron P. Weir), Canadian Intellectual Property Review, Vol. 27, No. 2 (December 2011), p. 219-256

    • "Canada and the duty of candour" (co-authors: Colin B. Ingram and Cameron P. 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 R. Morrissey and Colin B. 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 B. Ingram and John R. 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

    • "Intellectual Property and Advisor/Client Privilege," AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, South Korea, November 15, 2009

    • "Making IP Litigation in Canada More Attractive," Law360, August 7, 2009

    • "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 6-11, 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 22 and 23, 2008

    • "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada" (co-authors: J. 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 K. Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006

  • Education & Certifications
    Law School
    University of Ottawa
    Class of 1990
    LL.B.
    Other Education
    University of Western Ontario
    Class of 1985
    B.Eng.

    University of Western Ontario
    Class of 1985
    Chemical-Biochemical

    Professional Engineer
    Professional Engineers Ontario

Steven B. Garland

Partner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent at Smart & Biggar
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55 Metcalfe Street Suite 900P.O. Box 2999 Station DOttawa, ON K1P 5Y6Canada

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