Aiyaz Alibhai is an intellectual property lawyer who takes a creative, scientific, and results-oriented approach to his practice. He provides strategic and practical advice on a wide range of intellectual property and information technology matters and transactions and represents his clients in litigation when needed.
Aiyaz has appeared before the Federal Court and courts in British Columbia, Alberta, and Ontario. He has also appeared before the Trademark Opposition Board and Patent Appeal Board.
Aiyaz has worked with companies in many technology and knowledge industries, including aerospace, consumer and industrial products, energy, entertainment, financial services, information technology, manufacturing, medical devices, pharmaceutical, robotic, software, telecommunications, and wireless technologies.
Aiyaz’s counselling practice comprises:
- intellectual property protection (copyright, trademark, patents and industrial designs);
- infringement, validity, clearance and freedom-to-practice opinions;
- intellectual property due diligence for financing, merger and acquisition transactions;
- technology licensing;
- technology-related agreements for the implementation, management and monitoring of performance and service level standards arising from outsourcing, procurement and infrastructure development transactions; and
- advice for executive employment, termination and compensation.
Aiyaz’s litigation practice comprises:
- enforcement of infringement and misappropriation of intellectual property rights (patents, trademarks, copyright and industrial designs);
- expungement and cancellation proceedings for trademarks, including pretrial injunctions and Anton Piller Orders for breach of confidential information, trade secrets, and unfair competition;
- fiduciary and contractual obligations relating to breach of restrictive covenants and non-disclosure agreements by employees and contracting parties.
Aiyaz was a design and software engineer for Pratt & Whitney Aircraft prior to pursuing a career in law. He was a founder and a managing partner with a national intellectual property law firm, practising in the areas of development, protection, and commercialization of intellectual property rights. After obtaining his law degree, Aiyaz clerked with the British Columbia Supreme Court, and later practised litigation and intellectual property law.
Professional achievements & leadership
- Professional Engineer
- Trademark Agent
- Certified Licensing Professional
REPRESENTATIVE COUNSELLING WORK
- Advised clients, negotiated and prepared agreements for commercial and licensing transactions with international corporations relating to information technologies, outsourcing, electronic commerce and mobile banking, and wireless telecommunications.
- Advised clients in technology and software industries on the development and implementation of intellectual property strategies on technology transactions and due diligence investigations, including risk management and clearance opinions for intellectual property issues.
- Advised companies on the effect of data protection laws and protection of privacy in cross-border transactions and licensing, including the effect of export controls on technology transfer.
- Negotiated and prepared technology and licensing agreements with leading big data companies, including Google, Microsoft, Amazon, Cloudera, Oracle, and SAP.
- Conducted due diligence of intellectual property assets, and prepared technology transfer agreement for a university involving robotics in regard to selling a research company developing methods and procedures for robotic surgery.
- Provided patent infringement and validity opinions to wireless companies and leading LED companies regarding wireless telecommunications standards and LED technology, respectively.
- Provided copyright opinions regarding rights of famous authors and infringement of university works, and developed and intellectual property policy for an international university.
- Counselled health authorities and commercial entities on defamation issues relating to board members and postings by anonymous persons on a website.
- Counselled leading software and technology companies on employment and termination policies, including the protection of intellectual property rights. Prepared employment contracts for technology personnel.
- Counselled senior executives on employment matters, and negotiated executive employment and compensation and option agreements.
- U.S. Philips Electronics v. Maple Technologies Ltd. et al. (Cal. Dist.) Instructed and coordinated US attorneys for the defendant in US Federal Court proceedings in alleged patent infringement case involving optical discs technology.
- Color Kinetics Incorporated v. TIR Systems Ltd. (U.S. District Court of Massachusetts) Acted for the defendant in a patent infringement case involving LED technology. Case successfully settled following acquisition of both parties by Philips. Represented the Defendant TIR Systems and later Philips.
Representative intellectual property rights cases
- Advanced Biotechnologies Ltd. v. Simport Plastics Ltd. (F.C.) Successfully represented the plaintiff in an action for infringement of an industrial design and obtained settlement.
- Koninklijke Philips Electronics N.V. v. Gold Light Digital Media International Inc. (F.C.) Represented the defendants in a patent infringement case involving optical discs technology.
- Koninklijke Philips Electronics N.V. v. Maple Technologies Ltd. (F.C.) (BCSC) Represented Maple Technologies Ltd. as a defendant in alleged patent infringement case involving optical discs technology and as a plaintiff in a related Provincial Court action for Breach of Contract.
- Color Kinetics Incorporated v. TIR Systems Ltd. (U.S. District Court of Massachusetts) (Fed. Ct) Represented the defendant TIR Systems Ltd. in Canadian Federal Court and coordinating with US attorneys for the defendant in US Federal Court proceedings in alleged patent infringement case involving LED technology. Successfully settled.
- Cryocor, Inc. and AMS Research Corp. and Cryocath Technologies, Inc. (Fed Ct.) Successfully positioned defendant for sale in resolution of medical device case.
- Galaxy Plastics Ltd. et al. v. Le-Ron Plastics Inc. (F.C.) (BCSC) Represented the plaintiffs in action for impeachment of a patent in the Federal Court and an action for interference in economic relations in the Superior Court, leading to a settlement of all claims and licensing arrangement.
- Gerhard Reichert and others. v. Lauren International Inc. (Ont. Ct. of Appeal) (application to S.C.C. denied) Represented the applicant in a contract interpretation dispute as to royalty payment provisions.
- Peak Innovations Inc. v. Produits Pylex Inc. and Pierre Charette (F.C.) Represented the defendants in an action for alleged industrial design infringement. Represented and resolved a matter involving the defendants in an action for alleged industrial design infringement.
- Jiwani et. al. v. Grimm et. al. (BCSC). Successfully represented the plaintiffs and obtained settlement in a matter involving trespass to land and wrongfully cutting the plaintiffs’ trees.
- The Friendly Stranger Corporation v. Avalon Sunsplash Ltd. (F.C.). Represented the defendant in three appeals from successful decisions of the Trademark Opposition Board rejecting the plaintiff’s trademark applications.
- Retrotec Energy Innovations Ltd. v. Wayne Doucette, Glen Birks et. al. (BCSC). Represented the plaintiff and obtained an interim injunction restraining the defendants from disclosing confidential information.
Representative trademark and copyright litigation expertise
- Atlantis Scientific Inc. v. Keyhole, Inc. (Ont. Gen. Div.) Represented the plaintiff in trademark litigation and successfully obtained an injunction in favour of the plaintiff. Matter settled subsequently by the Defendant ceasing use of the plaintiff’s mark.
- Canadian Olympic Committee et al. v. Teepee Handicrafts Ltd. et al., (F.C.) Trademark Infringement. Successfully negotiated a discontinuance.
- Canadian Private Copying Collective v. First Choice Recording Media Inc. (F.C.) Represented the defendant in a dispute over copyright levies and interest owed.
- CPCC v. Enviro Data Products Inc. (Copyright Bd.) (F.C. Application for Judicial Review–Board Decision Overturned). Successfully represented the defendant in action before the Copyright Board for payment of alleged levies owed.
- Disney Enterprises, Inc. et al. v. Cana Wholesaler Inc. (F.C.) Successfully represented the defendant in an action for trademark infringement.
- E3 Works International v. Verbatim Corporation (F.C.) Represented plaintiff in action involving trademark, industrial design, and copyright infringement. Settled in favour of plaintiff.
- E3 Works International Inc. v. The Business Depot Ltd. dba Staples, E3 Works International Inc. v. Intertan Canada Ltd. dba RadioShack, E3 Works International Inc. v. Best Buy Canada Ltd. et al., E3 Works International Inc. v. Grand & Toy Limited. Represented the plaintiff E3 Works International Inc. in copyright and industrial design claims against individual corporations. Action discontinued in plaintiff’s favour as result of a settlement with Verbatim Corporation involving a license of the intellectual property rights.
- Fleming Management Ltd. et al. v. Yowza Digital Inc. dba Switch VFX (F.C.) Currently representing the defendant in a trademark passing off action.
- OK Tekstil San.Ve Tic. Ltd. v. 2688646 Canada Inc. Doing Business As Comme Les Copains (F.C.) Represented the plaintiff in a trademark action. Settled in favour of plaintiff with assignment by the defendant of all trademarks in suit to the plaintiff.
- Versaly Games Inc. v. Jeux Hexacto Inc. (F.C.) Represented the plaintiff in copyright infringement of software. Settled in favour of the plaintiff.
Judicial review and administrative law
- CPCC v. Enviro Data Products Inc. (Copyright Bd.) (F.C.) Application for Judicial Review–Board Decision Overturned). Successfully represented the defendant in action before the Copyright Board for payment of alleged levies owed.
- Government of the Unites States of America et al. v. Commissioner of Patents (June 23, 2005), Federal Court File No. T-1995-04 (F.C.). Successfully represented the applicants in having the patent restored in good standing following a decision by the Commissioner of Patents to refuse national phase entry into Canada.
- Harry O. Wicks v. The Commissioner of Patents (F.C.) (FCA) Represented the applicant for the reinstatement of a patent application relating to rail cars.
- Antiballistic Security and Protection Inc. v. The Commissioner of Patents (F.C.) (FCA) Represented the applicant, Antiballistic Security and Protection Inc. in an application to overturn a decision by the Commissioner of Patents.
Representative trademark opposition expertise
- Opposition against CA TM No. 1,229,899 EVOLVE NURTURING VITALITY & Design by Evolve Family Wellness Centre (TMOB). Successfully represented the trademark applicant Dr. Shamira Rahim Chiropractic Corporation dba Evolve Wellness Centre. Action was resolved by settlement and the trademark was registered.
- Opposition against CA TM No. 1,236,897 EVOLVE NURTURING VITALITY by Evolve Family Wellness Centre (TMOB). Represented trademark applicant Dr. Shamira Rahim Chiropractic Corporation dba Evolve Wellness Centre. Action was resolved by settlement and the trademark was registered.
- Opposition against CA TM No. 1,159,574 for DIGITAL VINYL by E3 Works International Inc. (TMOB) Our representation of the opponent E3 Works International Inc. led to the withdrawal of the trademark by the applicant, Pioneer Corporation.
- Opposition against CA TM Numbers 1,157,428; 1,171,481 and 1,171,482 by Avalon Sunsplash Ltd. (TMOB). Successfully represented the opponent before the Trade-marks Opposition Board in preventing the registration of the three trademarks by a third party.
- “Employer Liability for Social Media in the Workplace,” Federated Press 7th HR Legal Risks Conference, 2013
- “Ethical Contracts,” Ismaili Entrepreneurship Conference, 2013
- “Copyright and Intellectual Property,” Ready or Not: Managing Risks in the Education Sector Conference, 2012
- “Managing Intellectual Property Rights in the Workplace,” 5th HR Legal Risks Conference, 2012
- “Strategic Management of Intellectual Property Assets,” 11th General Counsel Role in Maximizing Board Effectiveness, 2012
- “Protecting Intellectual Property Capital and Brand Reputation,” 9th General Counsel’s Role in Maximizing Corporate Performance Conference, 2011
- “Dealing with Employee Law Issues,” 9th General Counsel’s Role in Maximizing Corporate Performance Conference, 2011
- “Managing Intellectual Property in the Workplace,” BC Employment Branch of the Canadian Bar Association, 2011
- “Patent Protection in a Global Context,” Phama Patents, Legal & Strategic Guide Conference, 2008
- Co-author, Act, Don’t React: Dealing with Sexual Harassment in your Organization, Canada Law Book, updated annually
- “Social Media Privacy Risks,” Federated Press conference: Managing Privacy Compliance, 2015
- “Social Media in the Workplace—Employer Liability Issues,” Federated Press course: HR Legal Risks, 2013
- Member, Law Societies of British Columbia, Ontario and Alberta
- Member, Canadian Bar Association
- Member, Association of Professional Engineers and Geoscientists of BC
- Member, Association of University Technology Managers
- Member, Licensing Executive Society
- Fellow Member, Intellectual Property Institute of Canada
- Member, Institute of Electrical and Electronics Engineers
- Member, Canadian Association of University Solicitors
Bar admissions & education
- Alberta Bar, 2009
- Ontario Bar, 2007
- British Columbia Bar, 1991
- LL.B., Dalhousie University, 1990
- B.A.Sc. (mechanical engineering), University of British Columbia, 1981
Aiyaz Alibhai is quoted in the Vancouver Sun on a case involving employees using altered company email signatures to support their union during a continuing labour dispute.
In the case, a judge ruled that employees do not have the right to change ICBC’s trademark signature in company emails. “The idea is that if it’s my stuff and I’m the owner of my stuff and you’re dealing with...
Aiyaz Alibhai joins the Vancouver office as a Partner. He practices in the areas of patent litigation and intellectual property law.
Aiyaz Alibhai speaks on moral rights and new technologies
Aiyaz Alibhai presents “Moral Rights and New Technologies: Authorship, Attribution, and Integrity in a Digital World” at the University of Glasgow.
Aiyaz Alibhai speaks on conflict management
Aiyaz Alibhai is a presenter at MediateBC’s Managing Conflict: Root Causes, Psychology of Contract, and Empowerment event, speaking on the topic of “Learnings from Commercial Disputes: The Importance of Psychology of Contract”. The event is presented in collaboration with the Ismaili Conciliation...
Aiyaz Alibhai speaks on “Social Media Privacy Risks”
Aiyaz Alibhai presents “Social Media Privacy Risks” at Federated Press’ Managing Privacy Compliance conference. Course materials were prepared by Aiyaz and Alizeé Bilbey.
Aiyaz Alibhai moderates IP licensing webinar
Aiyaz Alibhai moderates IPIC’s webinar on “IP Licensing: Key Differences between Canada and the United States”.
Aiyaz Alibhai chairs and speaks at workplace social media course
Aiyaz Alibhai chairs and speaks on “Employer Liability for Social Media in the Workplace” at Federated Press’ HR Legal Risks course. Course Highlights: What leading HR experts from top Canadian organizations are doing to avoid liability for non-compliance in HR...
Aiyaz Alibhai speaks on ethical contracts
Aiyaz Alibhai presents “Ethical Contracts” at the Ismaili Entrepreneurship Conference.
Aiyaz Alibhai presents “Copyright and Intellectual Property”
Aiyaz Alibhai speaks on “Copyright and Intellectual Property” at Kwantlen Polytechnic University’s Ready or Not: Managing Risks in the Education Sector Conference.
Aiyaz Alibhai speaks on intellectual property rights
Aiyaz Alibhai speaks on “Managing Intellectual Property Rights in the Workplace” at Federated Press’ 5th HR Legal Risks course.
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Social Media Privacy Risks
Federated Press Conference: Managing Privacy Compliance
Social Media in the Workplace – Employer Liability Issues
Federated Press course: HR Legal Risks
Simba Technologies acquired by Magnitude Software in cross-border transaction
IP counsel to Simba Technologies Inc.