Neil Kathol: Attorney with Field Law

Biography

Neil Kathol is a senior intellectual property lawyer, registered in Canada and the US, who helps clients with complex patent, trademark and copyright issues, primarily in the oil and gas industry in Alberta. Clients rely on Neil for litigation and advice for patent infringement, breach of confidence and misuse of trade-secrets, trademark infringement, design and copyright infringement and related claims and disputes. In addition, his practice includes:

•Resolving invention ownership issues
•Reviewing patents and advising on freedom-to-operate questions and advice to sellers/buyers
•Managing international, North American and Canadian patent (with our patent team) and trademark portfolios
•Performing patent, trade-mark, copyright and industrial design searches and freedom to operate due diligence
•Litigating claims involving patents, copyrights, trademarks, trade secrets and designs along with other contractual and fiduciary issues

I deeply care about my clients' problems and am a hard worker. I do the heavy lifting, which takes determination and collaboration with clients and their team. Strategically and technically, I do what it takes to get my clients what they deserve.

People want to know their lawyer will take over a good share of their burden. So, I get to bottom of the case. I dump it all out on the table, which helps ensure that all of the evidence and the entire playing field are considered before settling on a strategy.

This is one of the reasons that many of my long-standing clients call me for my feedback on non-IP business questions, too. With more than 25 years of experience, clients think of me as their trusted advisor.

Neil is a registered Trade-mark Agent in Canada and enrolled for prosecuting trademarks in the United States. He has also advised many clients with issues ranging from infringement concerns to knowing the playing field of the competition, often relating to technology used in the oil and gas industry. In addition to his work with energy-related IP, Neil has helped with the technology issues arising in many kinds of commercial transactions. He has led IP teams who analyze new technology being considered for purchase or license, acted on sales and acquisitions of technology assets, drafted technology transfer documentation and advised on design and development agreements which protect clients during the development, testing and commercialization of technology.

Neil is a member of the Field Law Executive Committee.

Outside of Work

Neil sculpts and paints in his spare time. My style is contemporary, and I like plein aire painting, especially the edge and emotion of sitting outdoors in a quiet place and producing art.

He also snowboards and runs, including participating in his extended family's annual 100-mile relay run in the Kananaskis Range. I'm a car nut, too, with a weakness for both vintage style and the ever-quickening new.

Presentations

Past Presentations

The following is a list of presentations, seminars or speaking engagements previously given by Neil:

Patent Law, Software Licensing and IT Transactions Mini MBA for Lawyers Cconference December 2015
Understanding Pervasive IP/IT Issues Federated Press Mini MBA for Lawyers Program October 2014
Intellectual Property Protection and Patents The Association of Professional Engineers and Geoscientists of Alberta March 2013
Patents: We Sweat The Small Stuff Feb 2013
Copyright for Architects: Existence, Enforcement and Succession Issues Alberta Association of Architects October 2012
Intellectual Property and Technology June 2012
Copyright Issues for Graphic Artists Alberta College of Art & Design (Instructors and Students) December 8
Mentmore and More: When is the Abettor Also Liable? Intellectual Property Institute of Canada (IPIC) November 2010
Venture Prize - The Legal Perspective Venture Prize Competitors November 2010
IP In Commercial Transactions 43rd Annual Refresher - Legal Education Society of Alberta May 2010
Non-traditional Marks and INTA's Non-Traditional Marks Committee Canadian Bar Association Alberta Branch November 2008
CIPO Basics of Law Series (Contracts Module) 2008
Intellectual Property for Law 685: Business Clinical University of Calgary 2008
Intellectual Property for Law 685: Business Clinical University of Calgary 2007
Trade-marks Oppositions Canadian Bar Association Alberta Branch October 2006
Copyright Law The Canadian Institute June 2006
Intellectual Property for Law 685: Business Clinical University of Calgary 2006
US Trade-mark Use and Registration Canadian Bar Association Alberta Branch January 2005
Copyright Law Alberta College of Art & Design 2000-2009

Published Works

Articles

Texas Justice Provides an Evidence Solution The Medium April 2015
Illustrator Wins Copyright Infringement Case at the Supreme Court The Medium May 2014
Patenting, Publishing and Trade Secrets: Strategies for Inventors The Medium November 2013
Protection By Design: Industrial Design Law In Canada The Medium March 2013
Canadian Patents: Not Invalid for Lack of Good Faith The Medium Winter 2012
Invention Assignments: A Cautionary Tale The Medium Spring 2011
Target Wars The Advisor Winter 2011
Google AdWords/Adsense policy December 2010
Protecting the Look & Feel of your Website The Advisor Fall 2010
IP In Commercial Transactions - 43rd Annual Refresher Legal Education Society of Alberta June 2010
Non-traditional Marks and INTA's Non-Traditional Marks Committee November 2008
Trade-marks Oppositions Canadian Bar Association Alberta Branch, Calgary October 2006
Overview of Copyright and Some Software Issues Intellectual Property License Agreements June 2006
FCA Decides Whether Displayed Material Constituted a Trade-mark Lawyers' Weekly February 2005
US Trade-mark Use and Registration Canadian Bar Association Alberta Branch, Calgary January 2005
Long-Arm Acts Enable Courts To Take Jurisdiction Lawyers' Weekly February 2002
Intellectual Property For Corporate Counsel 1999
Topics in Patent, Trademark and Copyright Canadian Bar Association Alberta Branch, Calgary 1997

Accolades

2017 - Distinguished - Peer Rated for High Professional Achievement
2013 - 2017 - Best Lawyers International

Experience

Neil has represented clients in multi-party trials and judicial mediations before both the Court of Queen's Bench of Alberta and in the Federal Court, often involving energy services, high-tech equipment and tools as well as many industrial and consumer products. These products include hardware for field equipment, optical equipment, bedding products, printed directories, specialty consumer foods and residential home construction materials. He has argued before the Alberta Court of Appeal and at many registries across Canada of the Federal Court of Appeal, has appeared before the Trademarks Opposition Board and has participated in several intellectual property law mediations and arbitrations, both as counsel for a party and as a neutral mediator. He is a member of the Federal Court of Appeal and Federal Court Rules Committee.

Recent Assignments

Oil and gas trade secret misappropriation case

Our Client: An oil and gas service industry based in Western Canada.

Where we began: An ex-employee took confidential information about how our client's equipment was built, found a financial backer and began to compete using a fleet of copycatted equipment.

Our approach: Neil emphasized to his client that the odds might not be in its favour, given the client hadn't really done much to try and safeguard the internal workings of its equipment. But, knowing the law favours instances where that factor is less important, when Neil's client directed him to find a way to win, then an understanding formed that the case would be pushed hard to trial if needed.

The result: Victory for the client. Enough evidence was proven to satisfy the judge that the ex-employee had been caught stealing trade secrets and had to pay and to stop using the equipment. The client's efforts to park its equipment in locked areas for the most part along with other factors didn't impede the conclusion the information was sufficiently maintained. We also curtailed a Hail Mary attempt on the ex-employee's behalf to sell the equipment or hood-wink another investor into making more.

Oilfield computer software protected

Our Client: An oilfield service provider with an offering that leveraged off of proprietary computer software.

Where we began: Our client had built a very successful sales book. When that happened, a prior employee involved in the software development and roll-out issued suit against our client claiming he was a co-author of the software.

Our approach: Neil applied what he'd learned through the years on copyright cases - in Canada the author is the owner; that is, the person holding the pen (in this case, coding the software by tapping the keyboard). In addition, it was clear that the true author had reams of experience and success in developing software and that the prior employee had little or no training and didn't know computer languages. In other words, the claim didn't add up. Neil oversaw his own client's case and also advised two consecutive teams of lawyers handling the case for the client's Director who was also sued. Keep it simple, get the necessary facts in, don't complicate it and get it to trial was the mantra.

The result: Neil got the team to follow the mantra against all temptations otherwise. The case was dismissed by the Federal Court in a relatively quick manner, relatively cheaply, and without any live testimony or cross-examination required along the way or at trial. The case is now the only Canada precedent on what activities give rise to software authorship.

Defending against a patent infringement claim in a fracking operation

Our Client: A major provider of well completion services and equipment to operators of fracking wells.

Where we began: Our client and three other completion companies along with one operator were sued for patent infringement.

Our approach: The main defences are that the patent is obvious due to prior art and that the invention was disclosed by the plaintiff more than a year prior to filing. While we've had various roles on the defence team (20 or so lawyers), one focus has been on the plaintiff's claim that its prior disclosure was in confidence. We have been applying our experience in trade secret law to identify the holes in the plaintiff's claim of confidentiality.

The Result: The four-week trial is presently scheduled to commence in early 2017.

Textile trademark infringement claim defeated

Our Client: A manufacturer and retailer of textiles for the bedding industry based in Western Canada.

Where we began: Our client was facing a trademark infringement claim, asking for millions of dollars in damages as well as demanding that our client stop using the trademark.

Our approach: Neil argued that instead of a being a protected Descriptive Mark, his client had named its product using ordinary words common to the bedding industry. When the other side stubbornly dug in its heels, Neil produced a 17-volume affidavit that documented over 500 references to the use of the words in question. We put the issue on the doorstep of the public realm where others could see what happened.

The result: The plaintiff agreed to mediation, which eventually led to a very favorable outcome for our client. As Neil put it, A creative, strategic, team approach and hard work meant that our client obtained a favourable outcome, so favourable that the other side required it be kept confidential lest other competitors find out.

Areas of Practice (3)

  • Intellectual Property and Technology
  • Litigation
  • CleanTech and Clean Energy

Education & Credentials

Contact Information:
403 260 8564  Phone
403 264 7084  Fax
www.fieldlaw.com
University Attended:
University of Calgary, Bachelor of Commerce, 1983
Law School Attended:
University of Alberta, Bachelor of Laws, 1986
Year of First admission:
1988
Admission:
1988, Alberta
Memberships:

Professional Associations

Federal Courts Rules Committee Member 2013-Present
Canadian Bar Association Member 1987-Present
Law Society of Alberta Member 1987-Present
Intellectual Property Institute of Canada (IPIC) Member 2005-Present
International Trade-Mark Association (INTA) Member 2005-Present
Canadian Bar Association, Intellectual Property Section Chair 1997-1997
Canadian Bar Association, Intellectual Property Section President 2007-2008
Canadian Bar Association, Intellectual Property Section Member 2000-Present

Reported Cases:
Reported Cases: Andrews v. McHale 2016 FC 624 Federal Court 2016; College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition) 2015 FC 449 Federal Court 2015; Resource Well Completion Technologies Inc. v Canuck Completions Ltd. 2014 ABQB 209 Alberta Court of Queen's Bench 2014; Online Constructors Ltd. v. Speers Construction Inc. 2011 ABQB 43 Alberta Court of Queen's Bench 2011; Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law 2010 FC 73 Federal Court 2010; Pat's Off-Road Transport vs. Campbell et al 2010 ABQB 443 Alberta Court of Queen's Bench 2010; Stonetile (Canada) Ltd. v. Castcon Ltd. 2010 ABQB 392 Alberta Court of Queen's Bench 2010; Community Credit Union Ltd. v. Canada (Registrar of Trade Marks) 2006 FC 1119, 300 F.T.R. 35 (Eng.), 53 C.P.R. (4th) 296 Federal Court 2006; Credit Union Central of Canada v. Community Credit Union Ltd. (2005) 48 C.P.R. (4th) 226 Trade-mark Opposition Board 2005; Excalibre Oil Tools Ltd. V. Garay [1999] F.C.J. No. 1581 Federal Court of Canada - Trail Division 1999; Ital-Press Ltd. v. Sicoli (1999) 86 C.P.R. (3d) 129, 170 F.T.R. 66 Federal Court 1999; Ital-Press Ltd. v. Sicoli [1999] F.C.J. No. 837 Federal Court of Canada 1998; Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.) [1998] F.C.J. No. 932 Federal Court of Appeal 1998; Pieroway v. Pieroway [1998] A.J. No. 203 Alberta Court of Appeal 1998; Norac Systems International Inc. v. Massload Technologies Inc. [1996] F.C.J. No. 934 Federal Court of Canada - Trail Division 1996; Norac Systems International Inc. v. Massload Technologies Inc. [1996] F.C.J. No. 1655 Federal Court of Canada - Trial Division 1996; Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.) [1996] F.C.J. No. 1598 Federal Court of Canada - Trial Division 1996; Ital-Press Ltd. v. Sicoli [1996] F.C.J. No. 1119 Federal Court of Canada - Trial Division 1996; Alwest Neon Signs Ltd. v. 464460 Alberta Ltd. (1994) 24 Alta. L.R. (3d) 420, 58 C.P.R. (3d) 176, 161 A.R. 273 Alberta Provincial Court 1994; Gunther's Building Centre Ltd. V. Moli Industries Ltd. [1993] A.J. No. 1037 Alberta Court of Queen's Bench 1993; Nutman Co. v. Magic Afterburners Inc. [1991] F.C.J. No. 1112 Federal Court of Canada - Trial Division 1991; Strait Line Contractors Ltd. V. Rainbow Oilfield Maintenance Ltd. (Alta. C.A.) [1991] A.J. No. 229 Alberta Court of Appeal 1991
ISLN:
906009596

Peer Reviews

  • 4.4/5.0
  • A Martindale-Hubbell Peer Rating reflects a combination of achieving a Very High General Ethical Standards rating and a Legal Ability numerical rating.

*Peer Reviews provided before April 15, 2008 are not displayed.

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