RESOLVING INTELLECTUAL PROPERTY DISPUTES THROUGH MEDIATION

BIO

Sheldon Burshtein

Current Affiliation

  • Partner, Blake, Cassels & Graydon LLP, Toronto, Ontario, Canada

Professional Experience

  • Practice since 1980

Primary Practice Areas

  • Intellectual property and technology dispute resolution
  • Intellectual property, information technology, life sciences, sports & entertainment, franchising
  • Clearance, prosecution, acquisition, enforcement, exploitation of, counselling on, patents, trade-marks, copyright, industrial designs, other forms of intellectual property
  • Commercial transactions involving intellectual property, information technology, including licensing, franchising, other transactions involving life sciences, electronic commerce, information technology, other technologies

Language Proficiency

  • English
  • French (on a non-professional basis)

Dispute Resolution Experience & Training

  • Mediation, as mediator and counsel, in intellectual property disputes
  • Arbitrator in intellectual property, licensing and franchise disputes
  • Canadian Panel of Neutrals, International Trademark Association/International Institute for Conflict Prevention and Resolution Program
  • Panel, Intellectual Property Division of National Arbitration and Mediation
  • Panel, Alternative Dispute Resolution Center
  • Mediation training:  The Advocates Society Mediation Workshop
  • Author, chapters in books and other publications on dispute resolution arbitration

Selected Honours, Awards, Publications and/or Professional and Civic Associations

Honours

  • The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada
  • The Canadian Legal Lexpert Directory for "Intellectual Property", "Computer and Information Technology","Technology"
  • The Best Lawyers in Canada
  • Canadian Who's Who
  • Chambers Global: The World's Leading Lawyers for Business for "Intellectual Property"
  • The International Who’s Who of Business Lawyers for “Patents”, “Trade-marks”
  • Mondaq "World's Leading Intellectual Property Lawyers"
  • PLC Cross-border Intellectual Property Handbook “Leading Intellectual Property Experts”, Global Counsel Lawyer Super Leagues,  World's Leading Intellectual Property Lawyers, Which Lawyer? Yearbook for Canada, "Leading Life Sciences Lawyers", Global Counsel Life Sciences Handbook, Cross-border Life Sciences Handbook, Which Lawyer? Yearbook for "Life Sciences-Intellectual Property", "Leading E-Commerce and Information Technology Lawyers", Cross-border Information and E-Commerce Handbook, Which Lawyer? Yearbook for "IT and E-commerce", Cross-border Communications Handbook, Communications Industry Report, Cross-border Information and E-Commerce Handbook 
  • Patent World, Trademark World and Copyright World, "Intellectual Property Luminary"
  • The International Who's Who of Patent Lawyers, "the most frequently named Canadian"
  • Managing Intellectual Property "World's Leading Patent Experts", "World's Leading Trademark Law Experts", "World's Top 50 Trade Mark Law Practitioners", "World's Leading Copyright Law Experts", "foremost copyright expert in Canada"
  • The International Who's Who of Trade Mark Lawyers, world’s 10 leading trade-mark lawyers
  • European Counsel Life Sciences Specialist 500 "Top-Ranking Life Sciences Lawyers Worldwide"
  • Personalities in Canadian Technology

Awards

  • Intellectual Property Institute of Canada “Special Recognition of Achievement Award”
  • Licensing Executives Society USA/Canada “Achievement Award”
  • Intellectual Property Institute of Canada “Marie F. Morency Memorial Prize for highest national standing in patent agents drafting examination”

Publications

  • Author, The Corporate Counsel Guide to Intellectual Property Law (Canada Law Book)
  • Author, Patent Your Own Invention (International Self Counsel Press)
  • Author, Domain Names and Internet Trade-mark Issues: Canadian Law and Practice (Carswell)
  • Co-author, The Use of Another’s Trademark (INTA)
  • Co-author, bench book on Canadian copyright law
  • Involved in drafting sections of Canadian Copyright Act
  • Author, monthly column on "Licensing Fundamentals" in World Licensing Law Report
  • Author, former column on “Patents” in Pharmaceuticals Canada
  • Author, numerous chapters in domestic and international books on patents, trade-marks, copyright, other intellectual property, licensing, merchandising, intellectual property in commercial transactions, intellectual property disputes, electronic commerce, life sciences
  • Author, hundreds of articles and papers on intellectual property and technology

Teaching

  • Lecturer, McGill University/Intellectual Property Institute of Canada Trade-mark course
  • Faculty member, Osgoode Hall Law School e-commerce LL.M. program, former lecturer intellectual property LL.M. program and program in business law
  • Speaker, hundreds of courses, presentations on patents, trade-marks, copyright, other intellectual property, licensing, merchandising, intellectual property in commercial transactions, intellectual property disputes, electronic commerce, life sciences

Associations

  • Chaired, sits on numerous committees in organizations, including American Bar Association, Canadian Bar Association, Intellectual Property Institute of Canada, International Association for the Protection of Industrial Property, International Trademark Association, Licensing Executives Society
  • Past chair, Toronto Patent and Trademark Group
  • Member, many professional organizations in legal, intellectual property and engineering fields

Education

  • B. (Civ.) Eng., McGill University - 1974
  • B.C.L., McGill University - 1977
  • LL.B., McGill University - 1978
  • Registered Professional Engineer (Ontario) - 1980
  • Admitted to Ontario Bar - 1980
  • Registered Trade-mark Agent, Canada - 1980
  • Registered to practise before the United States Patent and Trademark Office in Trademarks (Canadian Applicants) - 1982
  • Registered Patent Agent, Canada - 1987
  • Registered to practise before the United States Patent and Trademark Office in Patents (Canadian Applicants) - 1987
  • Certified Specialist, Intellectual Property (Patent, Trade-mark and Copyright) Law - 1994
  • Certified Licensing Professional - 2008

Contact Information

Blake, Cassels & Graydon LLP
199 Bay Street
Suite 2800, Commerce Court West
Toronto, ON M5L 1A9
Canada
Telephone: 416-863-2400 (general)
Telephone:  416-863-2934 (direct)
Facsimile: 416-863-2653
E-mail: sb@blakes.com
Website:  www.blakes.com