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

Theodore W. Sum

About Theodore W. Sum

Theodore W. Sum is a lawyer practicing licensing & ip transactions, patents, ip management & strategic counselling and 8 other areas of law. Theodore W. received a degree from University of British Columbia in 1994, and has been licensed for 30 years. Theodore W. practices at Smart & Biggar in Vancouver, BC.

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Services

Areas of Law

  • Intellectual Property 2
    • Patents
    • Trademarks
  • Energy
  • Other 8
    • Licensing & IP Transactions
    • IP Management & Strategic Counselling
    • Copyright & Media
    • Industrial Designs
    • Electrical/Electronics
    • Software/Internet/Information Technologies
    • Cleantech
    • Industrial/Mechanical

Practice Details

  • Firm Information
    Position
    Partner, Vancouver; Barrister and Solicitor; Patent and Trademark Agent
    Firm Name
    Smart & Biggar

Experience

  • Bar Admission & Memberships
    Admissions
    2016, Alberta Bar
    1996, British Columbia Bar
    Memberships

    Professional Involvement

    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

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

    Speaking engagements

    •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

    Teaching activities

    •Managing Intellectual Property (with Timothy P. Lo), Faculty of Law, University of Victoria, spring 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

  • Education & Certifications
    Law School
    University of British Columbia
    Class of 1995
    LL.B.
    Other Education
    University of British Columbia
    Class of 1994
    B.Sc.

    University of British Columbia
    Class of 1994
    Mathematics

Theodore W. Sum

Partner, Vancouver; Barrister and Solicitor; Patent and Trademark Agent at Smart & Biggar
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1055 West Georgia St., Ste. 2300PO Box 11115Vancouver, BC M5G 2K8Canada

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