Karen Durell has practised intellectual property (IP) law for many years as an IP lawyer, Canadian patent agent, and U.S. and Canadian trademark agent. She assists organizations ranging from emerging businesses through to established corporations with respect to their IP rights and related transactions. Karen tailors legal strategies for public and private innovators, drawing on her background in technology and law.
Karen provides advice and counsel in a number of areas:
IP procurement: As a registered patent agent, Karen is involved in drafting and prosecuting original patents with particular focus in the areas of software, information technology, and mechanical innovation. As a registered trademark agent, Karen assists with drafting and prosecuting trademark applications, brand development and protection, and protection of trademarks. She also works in the areas of industrial design and copyright, and on the unique issues relating to IP procurement.
Technology transactions: Karen assists companies with a wide range of technology-related transactions and agreements, along with general corporate matters. She has been involved in corporate transactions ranging from public offerings to corporate maintenance, as well as IP transactions.
IP audits & due diligence: Karen undertakes IP portfolio work, including IP audits and IP due diligence, to support various types of corporate transactions and other client initiatives. She is involved in both reviewing existing IP portfolios and providing advice and strategies relating to an organization’s future use and development of its IP portfolio.
Technology transfer deals & licenses: Karen helps organizations to negotiate deals and draft agreements to transfer, license, and develop IP rights and portfolios. She undertakes this type of work for a variety of organizations, and she is active in initiatives to maximize the impact of university-based and emerging-business research and innovation.
Karen speaks on various IP issues. She has delivered presentations and seminars on IP, ethics, and intellectual-asset management to a variety of audiences including academics, students, policy makers, government bodies, scientists, and public forums. Karen is widely published on IP, IP transactions, intellectual-asset management and patent law. She has also taught and tutored courses in IP and ethics at the Faculties of Law and Medicine at McGill University and the Faculté de droit, Université de Sherbrooke.
Karen was awarded a doctoral degree (D.C.L.) by the Faculty of Law, McGill University. Her thesis examined the intersection of contract legal principles and IP assets in IP transactions.
Prior to entering law school Karen had several years of experience as an information technology developer. In particular, she worked as a database designer and software developer in industries ranging for home décor to insurance.
Karen is engaged with her community through involvement with national IP societies, in board positions with an IP institute, in hospital research ethics reviews, and as a participant in pro bono legal clinics, as well as other local groups.
Professional achievements & leadership
- Registered Patent Agent, Canada, 2004
- Registered Trademark Agent, Canada, 2009
- Registered Trademark Agent, U.S., 2010
- Sessional Lecturer, Patent Agency & Legal Practice Course, McGill University, Faculty of Law
- Tutorial Leader, Medical Ethics and Health Law Course, McGill University, Faculty of Medicine
- Presenter, “IP Issues in Canada and Canada’s Anti-Spam Laws,” hosted by Clear Law, June 2016
- Chapter author, “Vaccines and IP Rights: A Multifaceted Relationship,” in Sunil Thomas, ed., Vaccine Designs–Methods and Protocols (New York: Springer, 2016)
- Presenter, “IP Issues in Canada and Canada’s Anti-Spam Laws,” hosted by Lawline, June 2015
- Co-presenter with Andrew Sprague
- Presenter, “Operating as a Canadian Business Under the New ‘User-Focused’ Copyright Act—MaRS Best Practices” MaRS Best Practices, May, 2013
- Co-presenter with Stacey Ivanchuk, “Improving Access to Medicines with a Pharmaceutical Patent Pool: Legal/Business & Antitrust Considerations,” Drug Patents in Canada Conference, hosted by Insight at St. Andrews Club & Conference Centre, 7 May 2010
- Editor, “Intellectual Property and Business in Canada,” Business Laws of Canada (Eagan: West (a Thomson Reuters business), 2009-2016).
- “Who can Tell the Value of IP?” Recent Developments—Business Law in Canada, Spring/Summer 2009
- Co-author with Richard Gold, “Looking Beyond the Firm: Intellectual Asset Management and Biotechnology,” in David Castle, ed., The Role of Intellectual Property Rights in Biotechnology Innovation, (Northampton: Edward Elgar Publishing, 2009).
- “IAM & Stakeholder Rights: Can we Tame the ‘Wild West’?” and co-author with Louise Bernier, “Are Gene Patents Really a Threat? Vulnerable Populations and Access to Genetics,” in E. Richard Gold & Bartha Maria Knoppers, eds., Biotechnology IP & Ethics, (Markham: LexisNexis, 2009).
- Co-author with Richard Gold, “An All-Asset Approach to Canadian Technology Transfer,” Commissioned Report to Industry Canada, March 2008
- Presenter, “BRCA Testing in Canada: The Myth and the Business Model,” Visions National Health Law Conference, hosted by the Health Law Institute, Banff Centre, Banff, Alberta, 9 November 2007
- Co-author with Tania Bubela, “Intellectual Property and Biotechnology” in Gad, S.C. ed., Handbook of Pharmaceutical Biotechnology (Cary NC: John Wiley & Sons, 2007)
- Presenter, “Open Source Intellectual Property Models: A Forecast,” National Focal Point, Access and Benefit Sharing, Environment Canada at the National Meeting on ABS and Certificates, Gatineau, Quebec, 16 November 2006
- “Intellectual property protection for plant derived vaccine technology: here they come are we ready or not?” 10(3) Lex Electronica, 2005
- Co-author with E. Richard Gold, “Innovating the Skilled Reader: Tailoring Patents to New Technologies,” 19(1) Intellectual Property Journal 189, 2005
- Co-presenter with Richard Gold, “Patent Scope in Genes: A Comparative Analysis of Scope,” Queen Mary Patenting Lives Conference, London, England, 2 December 2005
- Co-presenter with Martin Phillipson, “Intellectual Property Rights in agriculture: overview and identification of opportunities for innovation,”Canadian Biotechnology Secretariat, Environment Canada, Genetic Resources in Agriculture: Their role, their governance—implications for Access & Benefit Sharing Conference, Saskatoon, Saskatchewan, 9 November 2005
- Co-author with Louise Bernier and E. Richard Gold, “WHO Literature Review on the Impact of Gene Patents on Access to Genetic Technologies and Services: View from Developing Countries,”Background Paper for “Genetics, Genomics and the Patenting of DNA” (2005) LC/NLM QU 33.1, World Health Organization, Geneva, 2004
- “Intellectual Property Protection for Computer Software: How Much and What Form is Effective?” 8 International Journal of Law and Information Technology, Oxford University, Press 231, 2000
- Member, Intellectual Property Institute of Canada
Bar admissions & education
- Ontario Bar, 2008
- Alberta Bar, 2001
- D.C.L. (Ph.D.), McGill University
- LL.M., McGill University
- LL.B., University of Saskatchewan
- B.A. (Honours), Queen’s University
Miller Thomson IT lawyers participate at Agri Investment Forum
Practitioners from the firm’s CleanTech, MTech and Information Technology groups will be on hand to support the annual Agri Investment Forum, taking place on June 26, 2013, at the Delta Chelsea Hotel. The Forum promotes constructive deal flow between Canadian...
IP lawyer Karen Durell highlights copyright tips for Canadian startups.
Changes to the Canadian Copyright Act took effect in November 2012. Karen Durell, Associate Lawyer, Miller Thomson LLP, highlights what Canadian businesses need to know. Karen also explains some misconceptions about copyright in a second video here.
Andrew Valentine, Karen Durell and Natasha Smith present on CASL
Andrew Valentine, Karen Durell and Natasha Smith speak on “Navigating CASL – A Fundraiser’s Guide” at the AFP Congress 2015.
Karen Durell and J. Andrew Sprague, as part of the MaRS Discovery District’s Best Practices Series, will be presenting again on Canada’s anti-spam legislation (CASL). In addition to covering CASL’s anti-spam provisions, Karen and Andrew will be discussing CASL’s installation of computer program provisions, which come into force on January 15, 2015.
Karen Durell and J. Andrew Sprague, as part of the MaRS Discovery District’s Best Practices Series, will be presenting on Canada’s anti-spam legislation (CASL).
Robert Stewart, Karen Durell and J. Andrew Sprague, as part of the MaRS Discovery District’s Master Class to Advisors, will be presenting on Canada’s Anti-Spam Legislation (CASL).
Karen Durell speaks at the Insight Drug Patents in Canada conference at St. Andrew’s Club & Conference Center in Toronto on May 7.
Karen will be speaking on the topic of “Improving Access to Medicines with a Pharmaceutical Patent Pool: Legal/Business & Antitrust Considerations” starting at 9:10 am. For more information, click here.
Karen Durell has been accepted as a US Trademark Agent.
Karen Durell speaks at the “AFMNet 2010 Annual Professional School” in Toronto on January 29th about the importance of IP for Researchers.
Karen Durell has been invited by the Advanced Foods and Material Network (AFMNet) to speak to the attendees of their Professional Development School in Toronto on January 29. Karen’s presentation is titled “IP & Research: What Researchers Should Know...
Karen Durell will be speaking at the Arts, Business, Creativity Seminar.
Arts, Business, Creativity: The ABC’s of Success Saturday April 19, 2008 8:30 – 5:00Kitchener City Hall Rotunda200 King St. W. Kitchener Contact #: 519-741-2984 (Bernadette Lowry) Workshop Sessions are: Arrival (8:30 – 9:15) Networking and opening remarks Session 1 (9:15...
What You Need to Know About Owning Your Intellectual Property
Miller Thomson and Canada’s Association of IT Professionals host a seminar. Highlights include: Learn from real life examples of problems companies have encountered when they think they own their copyrights, trademarks and patents Understand proper written IP assignments, waivers and...
David Reive and Karen Durell quoted in The Globe & Mail
The Globe and Mail, "How Canadian companies can protect themselves from fakes, here and abroad"
Sporting a fake down parka that you bought at a flea market may seem like innocent fun, but it’s nothing of the sort to manufacturers and exporters, safety regulators and those whose business depends on protecting intellectual property. It has recently...
Greenhouse Partners Enters into Joint Venture Partnership with Cronos Group
Counsel to a group of investors
Nuera Transport and TexTrail combine to create fastest growing trailer parts distributor in North America
Counsel to Nuera Transport Inc.
UniPrint.net acquires ePRINTit USA Inc.
Counsel to ePRINTit USA Inc.
Interaxon Inc. announces US$11.6 million in Series B-1 funding
Counsel to Interaxon Inc.
ANGLE PLC acquires assets of Axela Inc.
Counsel to ANGLE PLC
Harbour Group portfolio company Marshall Excelsior Co. completes cross-border acquisition of BASE Engineering
Counsel to Marshall Excelsior Co.
Starseed Holdings acquires Bennett Road North from Canopy Growth Corporation
Counsel to Starseed Holdings Inc.
France-based private equity firm Ardian acquires Dynamic Technologies
Counsel to Ardian
Creative Planogram Company acquired by SRP Companies
Counsel to Creative Planogram Company
Extended Stay Hotels sells its Canadian hotels in $76 million transaction
Counsel to Extended Stay America, Inc.