Eugene Gierczak a national leader in intellectual property law at Miller Thomson with an additional focus on information technology. He provides advice on all aspects of intellectual property law including litigation, corporate transactions, and patent, copyright, and trademark applications.
In addition to being a lawyer, Eugene is a registered professional engineer for the province of Ontario, as well as a registered patent and trademark agent. He has a long history of drafting original patent applications covering a variety of technologies with a focus on the chemical and mechanical fields, including a particular expertise in fluid processing methods. He assists his clients with patent issuance in Canada and worldwide.
Eugene has extensive expertise in the preparation and prosecution of trademark, copyright, and design applications, as well as trademark opposition and expungement proceedings, in Canada, Brazil, the United States, and Europe.
He represents his clients’ interests in technology transfers, joint ventures, licenses, satellite, wireless communications, computer hardware and software transactions, and other intellectual property issues relating to corporate transactions. His skills extend to developing intellectual property strategies including IP audits to define and protect his clients’ intellectual assets.
Eugene is an experienced litigator before the Canadian courts in cases dealing with infringement and validity actions concerning patents, trademarks, designs, copyright, and confidential information. He also has experience with 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 United States, Brazil, and Europe. He is called upon annually to speak on “Joint Ventures and Strategic Alliances in the Context of IP Issues” before the Canadian Institute of Lawyers.
His legal strategy involves understanding a client’s business and adding value by defining and protecting intellectual assets using a business-minded approach consistent with the client’s goals.
Professional achievements & leadership
- Award for Excellence, Patents and Trademarks lawyer, Canadian-Polish Chamber of Commerce, 2015
- Presenter, Designing Competitive IP Strategies for North American and Asian Markets, 2015 Chief IP Counsel Exchange, Texas, September 2015
- Moderator, Understanding & Communicating the Value of IP in M&A Transactions, Global IP Exchange, Austin Texas, February 21-23, 2015
- Moderator, The Importance of IP in Transactional Matters: An Initial Consideration or Afterthought, La Jolla, December 6-8, 2009
- Big Data-Secrets You Must Know From an IP Lawyer, University Ontario Institute of Technology, 2015
- Comparison of Canadian and Brazilian Intellectual Property Law, GTMA, Sao Paulo, Brazil, 2014
- Intellectual Property – Is it Worth Protecting, Markham Convergence Centre, 2013
- Intellectual Property Protection in Canada, Ubifrance, 2013
- Sales From Social Media, Legal Issues, CED Workshop, Toronto, 2011
- An Overview of Bilateral Israel/Canada Intellectual Property, Strategic Alliances and Licensing Strategies, Tel-Aviv, Israel, 2011
- GIS and the Law, Collaborative Issues in GIS, URISA OC, 2011
- Patent Protected, Lexpert 2010 Guide to the Leading US/Canada Cross-Border Litigation in Canada, December, 2010
- Comparison of Canadian and Czech Intellectual Property, Canadian Bar Association, topics in Prague (Czech Republic), 1991
- Technology Transfers, Canadian Bar Association, topics in Warsaw Poland, 1990
- 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
- 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
- Member of Canada Poland Chamber of Commerce
- Director of Greater Toronto Marketing Alliance (GTMA)
Bar admissions & education
- Ontario Bar, 1979
- LL.B., Osgoode Hall Law School, York University
- B.Sc., Chem. Eng., Queen’s University
The firm acted for Rakuten in respect of a highly public and complex $315 million acquisition of all of the shares of Kobo Inc.
The Miller Thomson team that acted for Rakuten Inc. (JASDAQ:4755) included the following: Beryl Green, Steve Wesfield, Jason Rosen, Steven Oh, Joe Marin, Mara Banack and David Carter (corporate), Andrew Roman (regulatory), Bob Stewart (securities), Lyne Gaulin (tax), Lisa Goodfellow...
Eugene Gierczak and Francisco Marquez-Stricker speak at APEGA Summit
Eugene Gierczak and Francisco Marquez-Stricker present on “How to Effectively Commercialize Your Invention” at the Association of Professional Engineers and Geoscientists of Alberta Summit.
Miller Thomson lawyers present at 2015 Chief IP Counsel Exchange
Eugene Gierczak presents on the topic of “Designing Competitive IP Strategies for North American and Asian Markets” on September 27. David Reive presents as part of a panel discussion on “The Evolving Landscape in IP Monetization: Innovation will not be Postponed”...
Andy Chan and Eugene Gierczak present to the Vice-Governor of Jiangsu Province, the Deputy Consul General and their respective contingents on Canadian corporate and intellectual property law hosted by the Premier’s Office and the Ontario Office of International Relations and Protocol.
Eugene Gierczak participates on a speakers panel at the Annual enVision Conference 2012, (Rottman Commerce).
One King West Hotel & Residence in the Grand Banking Hall. Eugene will share his time and expertise to engage with the students.
Eugene Gierczak is a panelist during the Tremblant Venture Summit which takes place from May 3 to 5, 2011.
The topic of the panel is “CleanTech 20/20 – What Lessons Can New CleanTech Sector Entrants Take from Recent CleanTech Stars?”
Moderator, Understanding & Communicating the Value of IP in M&A Transactions, Global IP Exchange
Eugene Gierczak will be speaking on the topic of “Intellectual Property Issues in the context of Commercialization” at a conference hosted by Queen’s University in Kingston on Dec 1.
Legal Considerations Related to Establishing a Business
The Greater Toronto Marketing Alliance (GTMA) and the Ontario Ministry of Economic Development, Trade & Employment (MEDTE) host Brazilian companies who are members of Softex (Association for Promotion of Brazilian Software Excellence) on January 16, 2014. Barbara Doherty and Eugene...
Big Data-Secrets You Must Know From an IP Lawyer
University Ontario Institute of Technology
Comparison of Canadian and Brazilian Intellectual Property Law
GTMA, Sao Paulo, Brazil
Intellectual Property – Is it Worth Protecting?
Markham Convergence Centre
Intellectual Property Protection in Canada
Sales From Social Media
Legal Issues, CED Workshop, Toronto
An Overview of Bilateral Israel/Canada Intellectual Property
Strategic Alliances and Licensing Strategies, Tel-Aviv, Israel
GIS and the Law: Collaborative Issues in GIS
Lexpert 2010 Guide to the Leading US/Canada Cross-Border Litigation in Canada, December
We have in our lifetime experienced the transitioning of the world economy from a manufacturing-based economy to a knowledge-based economy, where intellectual property, particularly patent rights, form the foundation of defining, commercializing and enforcing developments in the knowledge-based industries. Many...