2018 TECHNOLOGY LAW SPRING FORUM


The 2018 Technology Law Spring Forum offers either 1 or 2 full days of technology law related subjects to achieve your professional development goals.

Both days allow you to have In-Class or Live Online Access, as well as a 30 days recordings of the live events for both in-class and online attendants.

DAY 1

Co-Chairs:
Donald B. Johnston, Aird & Berlis LLP
Natasha Ell Saunders, Vice President, Legal Affairs, TekSavvy Solutions Inc.
Speaker: Victor Krichker, Bereskin & Parr LLP
  • Evaluating the invention and deciding whether to file for a patent
    • Overview of rights granted by a patent
    • Understanding patentable subject matter in the IT field
    • Substantive patentability analysis: Novelty and obviousness
    • Determining inventorship and ownership considerations
    • Cost-effective patent filing and prosecution strategies
  • Patent enforcement
    • Understanding requirements for infringement
    • Types of remedies available
  • Patent licensing considerations
    • Jurisdictional differences
Speaker: A. Kelly Gill, Gowling WLG
  • Benefits to trademark registration
  • What can be protected and registered as a trademark?
  • Requirements to maintain a registration in good standing
  • Enforcement strategies:
    • What to include in a trademark infringement letter
    • Trademark interlocutory injunctions
    • Damages and other monetary remedies
    • International enforcement strategies
  • Trademark infringement and the internet:
    • Meta tags
    • Initial interest confusion and keyword advertising
  • Protecting trademarks rights in foreign jurisdictions
Speaker: Barry Sookman, McCarthy Tétrault LLP
  • What digital works and product subject matter does copyright protect?
  • Key interpretive principles including technological neutrality
  • Moral rights
  • Pre-requisites for protection including originality
  • Exclusive and remunerative rights including:
    • Reproduction; communication to the public and making available
  • What constitutes infringement for:
    • Computer programs
    • Hyperlinking
    • Databases
  • Exceptions and defences to infringement:
  • Fair dealing
    • Exceptions for intermediaries
    • Exceptions for users
  • Remedies:
    • Injunctions
    • Relief against internet intermediaries
    • Statutory damages
    • Notice and notice
    • Online enforcement
  • Technological Protection Measures
Speaker: Brian Gray, Brian Gray Law

  • The power of industrial designs: A cheap and quick tool to protect electronics
  • Case study: Apple Samsung wars
  • How do designs differ from copyrights, trade-marks or patents and why use them?
  • Types of Designs in practice: Can they apply to GUI’s?
  • Recognizing and maximizing the value of Trade Secrets for software
  • Controlling employees/disciplining competitors
  • Enforcing restrictive covenants: Is inevitable disclosure, inevitable?
  • Confidentiality orders
Moderator: Robert Percival, Norton Rose Fulbright
Speakers: Steven Hennig, Senior Transaction Counsel (Complex Group), Accenture
Andrea Safer, Senior Counsel, Royal Bank of Canada


  • License grant and scope of rights/use: The importance of being precise
  • Performance warranties: Do’s & don’ts
  • Limitations and exclusions
  • Allocation of risks and responsibilities – supplier and customer perspectives
  • Effective & practical risk management: Indemnities and liability
  • Managing technology implementation / multiple / international vendors
  • Addressing technology enhancement and ownership
  • Service level agreements and remedies
  • Termination, transitioning and suspension of services
Speakers: Fraser Mann, Mann Symons LLP
Jill Renaud, Senior Corporate Counsel, Economical Insurance

  • Open Source and source code management: Compliance challenges
  • Cross border licensing issues: International vendors/ Choice of law/ Jurisdiction
  • Insolvency
  • Payment terms:
    • Payment methods: Shares, royalties, license back
    • Payment timing: Tying payment due dates when procuring both license and services
    • One time/periodic payments
  • Ancillary clauses: What is reasonable? What is standard?
  • Allocation of risk
  • Affiliates: Use by vendors and purchasers
  • Multiple vendors and complex integrated solutions

DAY 2

Co-Chairs:
Donald B. Johnston, Aird & Berlis LLP
Natasha Ell Saunders, Vice President, Legal Affairs, TekSavvy Solutions Inc.

Moderator: Maya Medeiros, Norton Rose Fulbright Canada LLP

Speakers: Jane Caskey, Norton Rose Fulbright Canada LLP
Kathryn Hume, VP Product & Strategy, integrate.ai
Ziad Katul, Sr. Counsel, IP Centre for Excellence, Legal, Corporate & Compliance Group, BMO Financial Group
Kuyler Neable, Legal Counsel, Clearpath Robotics

  • Artificial intelligence (AI): Will it transform businesses industry sectors including energy, agriculture, law, finance, healthcare, and transport?
  • Use cases for AI technology
  • Commercialization strategies for AI systems
  • IP strategy with layered IP rights to protect different aspects of the innovation
  • Risk assessment matrix
  • AI procurement: Strategies for managing security, privacy and other AI risk factors
  • Legal toolkit to navigate ethical and legal considerations
  • Data and AI technology licensing best practices
Moderator: Parna Sabet-Stephenson, Gowling WLG

Speakers: Anne Butler, General Counsel & VP Policy and Research, Payments Canada
Addison Cameron-Huff, President, Decentral Inc.
Iliana Oris Valiente, Managing Director, Global Blockchain Innovation Lead, Accenture

  • Decrypting blockchain technology and smart contracts – opportunities and challenges
  • Potential obstacles to blockchain adoption
  • International standardization efforts
  • Current legislative and regulatory landscape for blockchain and smart contracts
  • Case studies in Fintech: Payments Canada’s multi-phase Project Jasper
  • Beyond cryptocurrencies: Blockchain 2.0 and the future of blockchain technology
Speakers: Hartley Borst, Senior Corporate Counsel, Connexall
Susan Foran, Venture Law Associates LLP

  • Form of contract flexibility in procurements
  • Non-Contract “A” procurements
    • Procurement formats to be used for flexibility in the vendor community
    • P3s and IT contractors and subcontractors
  • Common terms and conditions
    • Privacy and security terms
    • Service levels and service level credits
    • Interaction between Limitation of Liability clauses, Indemnifications and Warranties
  • Importance of Statement of Works/transaction documents
Speakers: Andrew C. Alleyne, Fasken
Mario Fiorino, Insurance Bureau of Canada
Avi Sharabi, Blaney McMurtry LLP


  • Technology insurance: When is it appropriate? What is the actual risk?
  • Insurance clauses you need and those you don’t
  • D & O, data breach and cybersecurity insurance: What is covered?
  • Is the insurance contract a Services Agreement? License Agreement? Development Agreement?
  • Cyberliability policies and 3rd party insurance
  • Limiting liability exposure in technology contracts
  • Clauses that trigger insurance coverage
  • Indemnity clauses
Speakers: Paige Backman, Aird & Berlis LLP
Brad Freedman, Borden Ladner Gervais LLP

  • Key provisions in commercial contracts for Canadian privacy law compliance
    • Terms to meet breach reporting obligations and security incident obligations
  • Cyber risk management contract terms
  • Special considerations for cloud service agreements
  • Privacy focused due diligence in the contract process
  • Mitigation of risks when contract terms are not fully negotiable