Brian W. Gray

Telephone: +1 416.216.1905
Email: briangray@briangraylaw.com
Fax: +1 416.9171652

View full biography at www.briangraylaw.com.

EDUCATIONAL AND PROFESSIONAL QUALIFICATIONS

• B.A. (1971, Cornell University) Chemistry and History (Dean’s List for academic excellence 1971);
• M.A. (1974, Cornell University) Government, International Relations (Western European Studies Fellowship);
• LL.B. (1977, University of Toronto);
• Ontario Barrister and Solicitor (1979);
• Registered Canadian Trade-mark Agent, 1979;
• Registered Canadian Patent Agent, 1980;
• Registered to practice in the U.S. Patent and Trademark Office, 1980-2024.

LANGUAGES

English

PRESENT POSITION

Brian Gray Law and ADR Chambers

PROFESSIONAL EXPERIENCE BEFORE PRESENT POSITION

• Senior Partner Norton Rose Fulbright 2007-2017
• Head, Intellectual Property at McCarthy Tetrault, Canada 2004-2007;
• Co-founder and partner Intellectual Property Group, Blake, Cassels & Graydon, Canada 1986-2004;
• Lawyer and patent agent Ridout & Maybee Toronto 1979-1986.

MEMBERSHIP IN PROFESSIONAL BODIES

• Fellow Chartered Institute of Arbitrators
• Panel Member Canadian International Internet Dispute Resolution Centre
• Member Toronto Commercial Arbitration Society
• Judge Vis International Commercial Arbitration Moot
• Fellow, Intellectual Property Institute of Canada;
• Speaker on Patents and Copyright Hansen Fordham IP Institute 2017-2024
• International Bar Association, Chairman Committee on Intellectual Property and Entertainment (L), 1994-1998; Chairman Trade mark Sub-committee of Committee, 1990-1994;
• Member, National Biotechnology Advisory Committee 1989-1999, appointed by the Minister of Industry to advise on science policy;
• United States Trade-mark Association (Chairman, Canada Sub-committee of International Trade-mark Committee, 1988-1989); member 1991-1994 of Trade Barriers Committee; Editorial Board, Trade-Mark Reporter 1995-1997, Anti-counterfeiting Committee 2012-2014;
• Editorial Advisory Board and Correspondent for Canada, Bureau of National Affairs, World Intellectual Property Reporter 1989-2010;
• Editorial Advisory Board, Federated Press Intellectual Property Quarterly 2005-2016;
• Editorial Board, American Intellectual Property Association Quarterly Journal 2013-2017;
• Editorial Advisory Board, World E-Commerce and IP Report;
• Member, Intellectual Property Committee of the Industrial Biotechnology Association of Canada (now BIOTECanada) 1990-1999;
• Member, Joint Copyright Committee of the Canadian Bar Association and the Intellectual Property Institute of Canada. (2002-present).
• Member, Copyright Society of the U.S.A.
• International Association for the Protection of Industrial Property (AIPPI), (Chairman, Canadian Group Committee on Q.93 Protection for Biotechnology 1992; Member, Committee on Patent Novelty 1995; Chairman Q130, Unfair Competition and Misleading Advertising 1998); Member Q.194, 2007, Impact of Co-ownership of IP Rights; Chairman Canadian Copyright Committee 2017-2023.
• Instructor, Trade-marks, Law Society of Upper Canada Bar Admission Course, 1982-1984;
• Lecturer – Trade-marks and Patents (assisted W.L. Hayhurst), University of Toronto Law School, 1980-1985;
• Board of Directors, Protein Engineering Network Centres of Excellence (PENCE) 1994-2006;
• Board of Directors, TechLaw Inc., 1996-2004
• Board of Directors, Canadian Biosciences Commercialization Institute (Sciences Sans Frontieres) 2001-2006;
• Board of Directors, Parteq Innovations (technology transfer corporation of Queen’s University), 2006-2013;
• Board of Directors, the International Consortium on Anti-virals, 2006-present;
• Lecturer, Copyright, McGill University 2002, 2003, 2004;
• Lecturer, Graduate Seminar, Patent Law, University of Toronto, 2004;
• Member the Institute of Trade Mark Agents (UK); 1983-2015
• Advocates Society (Toronto).

AREAS OF SPECIALIZATION

Intellectual Property Contentious and Non-Contentious matters. Recently mostly contentious matters relating to patents in the computer/business method field, but in the past mostly patents relating to industrial machinery, mining and chemicals. In addition recently contentious matters for movie studios relating to copyright and for various other copyright holders. Also experience with trade-mark and advertising disputes at all levels.

Represented Nortel in sale and licensing of their patent rights in insolvency proceedings. Represented Blackberry in Patent Licensing and settlement negotiations. 

Non-contentious experience has included the following:

• Television and motion picture-production and financing;
• Technology transfer, software and patent licensing;
• Trade-mark licensing, and co-packing agreements;
• Franchising;
• Technology joint ventures;
• Patent drafting and patent opinions;
• Patent and trade-mark portfolio management and counselling; and
• Advertising review and counselling.

EXPERIENCE IN COURT LITIGATION

Has acted as counsel in over 100 trade-mark cases, in over 50 patent cases and in over 30 copyright cases and 5 trade secret cases, and about 15 technology licensing or contract cases, all in Canada, although many had counterparts in the U.S. or Europe. Has also acted as advisory counsel on many U.S. cases where there was a corresponding case in Canada or our Canadian client was sued or suing in the U.S. (many of these were significant high profile U.S. patent cases such as the NTP v. RIM case (acted for RIM) or the DataTreasury case (acted for a Canadian bank) or motion picture cases (acted for movie studios). I have advised clients in patent disputes in Germany, Denmark, France and the U.K. and a trade-mark disputes in U.S., China, and Thailand. 

Recently been involved as counsel in the following cases, not all of which were reported. The reported cases are attached as a schedule. The types of cases include:

• Patent infringement defence of one of Canada’s largest banks in respect of a technology and business method patent;
• Parallel importation and grey market trade-mark cases;
• Copyright authorship and ownership disputes for major motion picture studios;
• Patent infringement cases through trial and appeal for a major forest machinery company;
• Brand name pharmaceutical patent litigation and NOC cases;
• Inventorship claims and patent disputes for one of Canada’s leading universities;
• Trade secret cases for a graphic chip manufacturer;
• Trade-mark disputes of all kinds, mostly involving confusing similarity or conflicting territorial claims.
• Copyright infringement law suits defending motion picture studios as defendants and authors as plaintiffs.