Eugene J.A Gierczak, P. Eng.
Partner
Toronto
416.596.2132
egierczak@millerthomson.com
Profile
Eugene Gierczak is the national chair of the firm’s Intellectual Property and Information Technology Group. He provides advice on all aspects on intellectual property law including litigation.
Eugene has a long established history of drafting original patent applications covering a variety of technologies with a focus on the chemical and mechanical fields, with a particular expertise on fluid processing methods. He prosecutes patents to issuance in Canada and worldwide.
He has extensive expertise in the preparation and prosecution of trade mark, copyright and design applications, as well as trademark opposition and expungement proceedings in Canada, the United States and Europe.
He represents clients’ interests in technology transfers, joint ventures, licenses, satellite, wireless communications, computer hardware and software transactions, and other intellectual properties issues relating to corporate transactions. His skills extend to developing intellectual property strategies including IP audits to define and protect clients’ intellectual assets.
Eugene is an experienced litigator, before the Canadian Courts dealing with infringement and validity actions concerning patents, trademarks, designs, copyright and confidential information, as well as injunction applications and search and seizure of intellectual property. He incorporates alternate dispute resolution strategies to bring litigation issues in line with clients’ business goals.
Eugene has written numerous papers and is a frequent speaker on intellectual property issues including "Licensing of Patents", "Technology Transfers" and “Intellectual Property Integration with Business Plans” before the legal profession in Canada, the Unites States and Europe. He is annually called upon to speak on “Joint Ventures and Strategic Alliances in the Context of IP Issues” before the Canadian Institute of Lawyers.
His legal strategy includes understanding a client’s business, adding value by defining and protecting intellectual assets, with a business minded approach, consistent with the client’s goals.
Directorships
- Past President, Mississauga Symphony
- Past President, Mississauga Art Gallery
- Past President, Mississauga Chapter of Professional Engineers of Ontario
- Past Councillor for the Association of Professional Engineers of Ontario
Memberships
- Member, Law Society of Upper Canada
- Member, The Canadian Bar Association
- Member, INTA (Intellectual Trade Mark Association)
- Member, MEDEC (Medical Devices Canada)
- Past Member, Association of Professional Engineers of Ontario, Disciplinary Hearing Committee
Education
- LLB., Osgoode Hall Law School, York University
- B.Sc., Chem. Eng., Queen's University
Publications
- Patent Protected, Lexpert 2010 Guide to the Leading US/Canada Cross-Border Litigation in Canada, December 2010, 2010
- Business Laws of Canada, West (a Thomson Reuters business), 2009
- E-cheques Bouncing All the Way to Court, Business Law in Canada: Recent Developments, Spring 2008
Industry Expertise
Key Practice Expertise
Areas of Focus
- Chemical & Mechanical Patents
- Patent Prosecution
- Trade-mark and brand protection
Year of Call
- Ontario Bar, 1979
