Prior to joining Field Law, Richard practiced in Calgary and in Vancouver, B.C. and has worked and studied in the field of IP law, including in the areas of IP licensing, software and patent licensing, IP due diligence, technology transfer, digital media law, trade-mark prosecution and dispute resolution, domain name law, internet law, e-commerce law and privacy law.
Intellectual property is never created or used in a vacuum and Richard's extensive experience in corporate and business law matters allows him to advise his clients with a very practical and solutions-oriented approach.
Richard has been a course instructor in intellectual property law for the Masters of Biotechnology class at the University of Calgary, for the Bissett School of Business at Mount Royal University, and has been a guest lecturer at the University of British Columbia Faculty of Law in Vancouver. Richard has taught "Business Law" at the Southern Alberta Institute of Technology, and "Internet Law and New Media" at the University of British Columbia and also instructed the course "Internet Law - The Law and New Media" at the British Columbia Institute of Technology.
Richard has been invited to speak to a number of industry groups on a variety of topics, particularly in the areas of IP law and privacy law, including to the Vancouver iPhone Forum, the iP3 Forum, the Digital Media Association of Alberta, AWE (Alberta Women Entrepreneurs), UTI (University Technologies International), the BCIT Advanced Research Forum, Annual Conference of Chartered Accountants, the Northern New Media and IT Conference, the British Columbia Internet Association and New Media BC, a Vancouver-based new media industry group. Richard's articles have been published in the Lawyers Weekly, the Canadian International Lawyer and the Journal of Taxation of Financial Institutions. His community involvement has included advising the Law Society of B.C. and the Canadian Bar Association in a pro bono capacity and acting as a director and co-president of a Vancouver-based charity and acting for Calgary-based non-profit organizations.
Richard is the editor of ipblog.ca, the first Calgary-based law blog to focus on intellectual property law, copyright, trade-marks and internet law in Canada. This blog reviews developments in Canadian intellectual property law, including practical information and commentary on intellectual property business issues, technology commercialization and developments in the law, copyright and patent questions, trade-mark law, software and IT outsourcing, and emerging areas including cleantech licensing and app law, with a practical, business-oriented focus.
Accreditations, Certifications and Continuing Education
Registered Trade-Mark Agent, Government of Canada, Canadian Intellectual Property Office, 2001
American Intellectual Property Law Association, Member, 2013-Present
Canadian Bar Association, Intellectual Property Section, Vice-Chair, 2012-Present
Canadian Bar Association, Intellectual Property Section, Member
Canadian Bar Association, Privacy and Access Law Section, Member
Intellectual Property Institute of Canada (IPIC), Member, 2012-Present
Law Society of Alberta, Member, 2005-Present
Law Society of British Columbia, Member, 1999-Present
Licensing Executives Society, Calgary Chapter, Chair
Licensing Executives Society, Clean Tech Committee, High Tech Sector, Member
Deals and Cases
The following represents some of Richard's past and present experience:
· Acted as counsel for the vendor in the purchase and sale of shares of a cloud-computing (software-as-a-service) company
· Acted as counsel for health services company in its acquisition by a public company for aggregate consideration of up to $215 million, including the sale of intellectual property to the purchaser for an aggregate purchase price of $55 million in cash
· Acting as counsel for borrower in connection with $90 million credit facility including preparation and drafting of closing documents, credit agreement and subsidiary guarantees and security
· Licensing and protection of intellectual property (IP) rights, including software licensing, trade-mark licensing, licensing of mobile applications, patent licensing and assignments of IP rights
· Advising multinational company on IT outsourcing, including software licensing, customization, technical support agreement and IT services agreement
· Acting in negotiation and settlement of disputes regarding ownership of IP rights
· Acting in negotiation and settlement of domain name disputes including drafting domain name transfer agreements, and arbitration claims pursuant to dispute resolution procedures
· Acting for university tech-transfer office in connection with out-bound licensing of intellectual property rights
· Acting for internet-based software service providers in licensing of technology
· Advising on and creating national franchise agreements
· Trade-mark protection strategies, licensing, assignments and transfers, trade-mark prosecution and re-branding projects for companies with worldwide operations
· Advising on website development agreements, online contracting and e-commerce agreements
· Acting for multinational oil company in preparation and drafting of closing documents in connection with $45 million amended credit agreement and subsidiary guarantees
· Preparation and drafting of documents for $15 million investment in manufacturing company by way of issuance of series of secured debentures
· Conducting due diligence review, acting for syndicate of venture capitalists and other private investors in $14.5 million equity financing of biotechnology company, drafting and negotiating shareholder and share subscription agreements
· Acting in acquisition and financing of $5.6 million fibre-optic network, and drafting related agreements, including indefeasible rights of use agreements
· Establishing security in connection with various transactions, including inventory financing, purchase and sale of real estate, inter-company loans
· Preparing and advising on OEM, manufacturing and distribution agreements
· Drafting and advising on multi-party joint venture agreements
· Acting for companies and shareholders in the negotiation and drafting of shareholders agreements and share subscription agreements
· Acting for purchasers / vendors in purchase and sale of business assets and shares, including drafting and negotiation of purchase agreements, conducting due diligence, reviewing and preparing financing documents, obtaining security
As a service to our clients, our lawyers regularly present at seminars and speaking engagements to audiences in cities across Alberta, the Northwest Territories and North America.
The following is a list of presentations, seminars or speaking engagements previously given by Richard:
Intellectual Property Protection and Patents, The Association of Professional Engineers and Geoscientists of Alberta, March 2013
Protecting Intellectual Property, University of Calgary, March 2013
Cloud Computing, 5th Cloud Computing Law Conference, October 2012
The Perils of Disclosure: Invention Disclosure and Patent Grace Periods, Licensing Executives Society - Calgary Chapter, September 2012
Software Licensing: The Good, The Bad and the Virtual, Calgary Chapter of the Licensing Executives Society, May 2012
Copyright Reform is Dead.... Long Live Copyright Reform!, The Licensing Executives Society - Calgary Chapter, April 2011
The Law of Open Source Licensing, Cossfest, April 2010
Introduction to Intellectual Property and Licensing, MDSC 677 Masters of Biotechnology class - Biotechnology Commercialization - University of Calgary, February 2010
Apps: The Legal Side, iPhone Forum, November 2009
10 Cases / 10 Clauses, Licensing Executives Society, April 2009
Introduction to Intellectual Property and Licensing, MDSC 677 Masters of Biotechnology class - Biotechnology Commercialization - University of Calgary, March 2009
Open Source: Software, Biotech & Beyond, Licensing Executives Society, Edmonton Chapter, December 2007
Business Law 200, Southern Alberta Institute of Technology, 2006
Managing and Protecting Your Intellectual Property, BCIT Advanced Research Forum, June 2003
Internet Law and New Media, University of British Columbia, Continuing Education, 2003
Key Issues to Building a Solid High-Tech Company, Northern New Media and IT Conference, November 2001
Canadian Privacy Law, British Columbia Internet Association Annual Conference, May 2001
Analysis of the Personal Information Protection and Electronic Documents Act and Intellectual Property Overview, New Media BC, February 2001
Internet Law - The Law and New Media, British Columbia Institute of Technology, 2000
We are committed to keeping our clients educated and informed on the issues affecting them. The following published works were written, or contributed to, by Richard.
Software Licenses and Indemnities: What Obligations Are You Taking On?, The Medium, June 2013
Protection By Design: Industrial Design Law In Canada, The Medium, March 2013
Trade-Mark Rights: Across the Border & on the Web, The Medium, March 2013
Outsourcing by Canadian Companies: Another Look at the USA Patriot Act, IP/Tech E-Bulletin, January 2013
Click and Copy: Breach of Online License Agreements and Copyright Infringement, Canadian Intellectual Property Review, Dec 2012
Intellectual Property Issues in Corporate-Commercial Transactions, The Medium, April 2012
You Can't Have Clouds Without a Little Bit of Lightning: Cloud Computing in 2012, The Advisor, February 2012
Software Licensing and Development: A Case Study, The Medium, Winter 2012
Canada's New Anti-Spam Legislation: How can it impact your business?, The Advisor, Fall 2011
Canadian Trade-Mark Update: .XXX Blocking Process, IP/Tech E-Bulletin, Aug 2011
Software licensing in the cloud, Lawyers' Weekly, May 2011
Tips For Software Licensing in 2011, The Medium, Spring 2011
Executive Compensation: Looking at the Whole Package, The Advisor, Winter 2011
CleanTech in Calgary, January 2011
The legal implications of app development, Lawyers' Weekly, November 2010
Tips and Trends in CleanTech Licensing, Lawyers' Weekly, November 2009
Coca-Cola vs. Pardhan, Canadian International Lawyer, June 2000
Publisher of ipblog.ca, the first Calgary-based law-blog to focus on intellectual property law, trade-marks and internet law in Canada, October 2006 - present.
Interviewed by Maclean's magazine on the topic of online defamation (May, 2009)
Interviewed by Montreal Gazette (January, 2008) on the topic of copyright and digital rights management.
Interviewed by Oilweek Magazine (January 2007) on the subject of IP licensing.
National Post interview on the plan to fast-track cleantech patent applications: Canada plays catch-up on cleantech patents