Donald H. MacOdrum

Partner

Toronto, 416.957.1180

Practice Group(s)

Oil & Gas
Litigation

Education

B.A. (Chemistry & Physics), Queen's University, 1963
LL.B., University of Toronto, 1966

Qualifications

Admitted to the Ontario Bar, 1968

 

Professional Memberships

American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Canadian Bar Association (CBA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
Toronto Lawyers Association

Donald H. MacOdrum

B.A., LL.B.

Don’s practice focuses on intellectual property litigation, which he has practiced for over 40 years. Don is certified by the Law Society of Upper Canada as a Specialist in Civil Litigation and as a Specialist in Intellectual Property Law (Patents, Trademarks, and Copyright).  

Don has represented clients ranging from individuals to major international corporations in a wide variety of disputes relating to intellectual property, including patent infringement and validity actions, proceedings under the Patented Medicines (Notice of Compliance) Regulations, and numerous copyright and trademark cases, in a wide variety of fields including biotechnology, pharmaceuticals, and healthcare products; electronics and electrical systems; oil and gas exploration; farm equipment; floor covering, steel making, plastic products, tires; footwear; ships and sub-marine activities; information technology and computer software; household products; personal care products; food products; cable systems; television series; musical works, music publishers and recording artists. 

Don has appeared as counsel in the Federal Court, the Federal Court of Appeal, the Supreme Court of Canada, and at all levels of courts in Ontario, including the Ontario Superior Court and the Ontario Court of Appeal. Don has also acted as a mediator in disputes in the Federal Court and Ontario Superior Court of Justice. 

Don is involved with several IP organizations. He was a member of the Programme Committee of the International Association for the Protection of Intellectual Property (AIPPI) for six years and was President of the Canadian Group of AIPPI from 2004 to 2006. In 2012, he received an Award of Merit from AIPPI.

Don is the author of the case book Patent Law in Canada, Cases and Materials, as well as numerous articles and presentations on patent and trademark law and other IP topics, and on various litigation topics, particularly IP litigation. He recently authored Fox on the Canadian Law of Patents, 5th Edition, which publisher Carswell describes as “the preeminent reference work for patent lawyers and agents in Canada".

For 15 years he taught Patent Law at the Faculty of Law, University of Windsor.

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Donald H. MacOdrum

Donald H. MacOdrum

B.A., LL.B.

Partner
Toronto      Ph: 416.957.1180

Practice Group(s)
Oil & Gas
Litigation

Education
B.A. (Chemistry & Physics), Queen's University, 1963
LL.B., University of Toronto, 1966

Qualifications

Admitted to the Ontario Bar, 1968

 

Don’s practice focuses on intellectual property litigation, which he has practiced for over 40 years. Don is certified by the Law Society of Upper Canada as a Specialist in Civil Litigation and as a Specialist in Intellectual Property Law (Patents, Trademarks, and Copyright).  

Don has represented clients ranging from individuals to major international corporations in a wide variety of disputes relating to intellectual property, including patent infringement and validity actions, proceedings under the Patented Medicines (Notice of Compliance) Regulations, and numerous copyright and trademark cases, in a wide variety of fields including biotechnology, pharmaceuticals, and healthcare products; electronics and electrical systems; oil and gas exploration; farm equipment; floor covering, steel making, plastic products, tires; footwear; ships and sub-marine activities; information technology and computer software; household products; personal care products; food products; cable systems; television series; musical works, music publishers and recording artists. 

Don has appeared as counsel in the Federal Court, the Federal Court of Appeal, the Supreme Court of Canada, and at all levels of courts in Ontario, including the Ontario Superior Court and the Ontario Court of Appeal. Don has also acted as a mediator in disputes in the Federal Court and Ontario Superior Court of Justice. 

Don is involved with several IP organizations. He was a member of the Programme Committee of the International Association for the Protection of Intellectual Property (AIPPI) for six years and was President of the Canadian Group of AIPPI from 2004 to 2006. In 2012, he received an Award of Merit from AIPPI.

Don is the author of the case book Patent Law in Canada, Cases and Materials, as well as numerous articles and presentations on patent and trademark law and other IP topics, and on various litigation topics, particularly IP litigation. He recently authored Fox on the Canadian Law of Patents, 5th Edition, which publisher Carswell describes as “the preeminent reference work for patent lawyers and agents in Canada".

For 15 years he taught Patent Law at the Faculty of Law, University of Windsor.

Articles

Speaking Engagements

LES Toronto Chapter

Toronto Chapter Meeting
Toronto, ON
April 23, 2014

Don MacOdrum will be speaking at the Licensing Executives Society (U.S.A. and Canada), Inc.’s (LES) Toronto Chapter Meeting, entitled, “The "Ron & Don Show": The Top 10 IP Cases from the Past Year”. 

To celebrate World IP Day, the LES Toronto Chapter will be holding a networking event. Guest speakers, Don and Ron Dimock, will be presenting the 2014 version of their renowned "Ron & Don Show", which will feature the Top 10 IP Cases from the past year.

LES has been the leading association for intellectual property, technology, and business development professionals to achieve professional and personal success.

Licensing Executives Society (U.S.A. and Canada), Inc.

Mid-Year Meeting
New York, NY
March 25 - 27, 2014

On Thursday, March 27th, Don MacOdrum will be speaking at the Licensing Executives Society (LES) (U.S.A. and Canada), Inc. Mid-Year Meeting entitled, “Consumer Products – Prior User Rights and Licensing in a Post-AIA World”.

With over 40 years of experience in intellectual property litigation, Don has written, and continues to share his knowledge on numerous articles and presentations on patent and trademark law and other intellectual topics, and on various litigation topics. Don has previously spoken at an LES “Around the World” event on top 10 IP cases from the past year.

The LES (U.S.A. and Canada), Inc.  Mid-Year Meeting will feature an innovative multi-track program delivered by top industry leaders who will address up-to-the-minute issues, trends and developments in each of six industry sectors – Consumer Products, Chemicals/Energy/Environment/Materials, High Tech, Industry/University/Government, Life Sciences and Legal.

For more information please click here.

 

Event Attendance

Toronto Intellectual Property Group (TIPG)

The Ron & Don Show – Top Ten IP Cases from the Past Year
Toronto, ON
February 19, 2015

On Thursday, February 19th, TIPG will be presenting Don MacOdrum and fellow Toronto IP professional Ron Dimock at 2015 edition of their annual “Ron & Don Show”. At this year’s event, Ron & Don will be discussing the Top 10 IP Cases from the past year, offering their entertaining review and insightful analysis of ten IP significant cases from 2014.

TIPG is a non-profit organization comprised of lawyers, patent agents, trade-mark agents, students and trainees in the Greater Toronto Area with an interest in intellectual property law and related litigation.

The event will be held at the Rosewater Supper Club at 5:30PM – 9:00PM. For further information and to get tickets, click here.

AIPPI Canada

AGM Lunch & Learn
Ottawa, ON
November 20, 2014

Cynthia Rowden and Scott MacKendrick will be covering the new trademark regulations at AIPPI Canada’s AGM Lunch and Learn on November 20th from 11:30 a.m. to 2:00 p.m. Philip Mendes da Costa, Don MacOdrum and Kevin Shipley will be attending.

AIPPI is a non-profit international organization which unites practitioners, academics and the owners of intellectual property.

AIPPI

World Intellectual Property Congress 2014
Toronto, ON
September 14 - 17, 2014

Bereskin & Parr is proud to be the 2014 lanyard sponsor of the AIPPI World Intellectual Property Congress and welcomes all congress attendees to Toronto.

Philip Mendes da Costa is the Chairperson for the AIPPI Organizing Committee and has been very involved in the overall congress organization.

Don MacOdrum, Jill Tonus, Ian McMillan, Noel Courage, David St-Martin and Kevin Shipley will be attending, and our 2014-2015 articling students, Maria Wei, Stephen Lam, Pasan Hapuarachchi, Teresa MacLean and Evan Reinblatt will be volunteers at the congress.

On Monday, September 15th from 2:00 p.m. to 5:30 p.m. Daniel Bereskin will be speaking on "Mock trial – International IP Arbitration".

The International Association for the Protection of Intellectual Property (AIPPI) is an international organization dedicated to the development and improvement of intellectual property. Further information about the event can be found here.

Accolades

  • 2017 Canadian Legal Lexpert Directory
  • World IP Review: Leaders 2017
  • Who’s Who Legal Patents 2017
  • Best Lawyers in Canada 2017
  • 2016 Canadian Legal Lexpert Directory
  • Who’s Who Legal: Patents 2016
  • Benchmark Litigation Canada 2016
  • The 2016 Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada
  • Who's Who Legal Canada 2015
  • Best Lawyers in Canada 2016
  • Managing Intellectual Property IP Stars Handbook 2015: Patents
  • 2015 Canadian Legal Lexpert Directory
  • Who’s Who Legal: Patents 2015: Most Highly Regarded Individuals
  • Who’s Who Legal 100 2015
  • Benchmark Litigation Canada 2015
  • The 2015 Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada
  • The Legal 500 Canada 2015
  • Best Lawyers in Canada 2015
  • Managing Intellectual Property’s 2014 IP Stars Handbook: Patent
  • The 2014 Canadian Legal Lexpert Directory
  • The International Who’s Who of Patent Lawyers 2014
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2014
  • Who's Who Legal: Canada 2013
  • Best Lawyers in Canada 2014
  • The Canadian Legal Lexpert Directory 2013
  • The International Who’s Who of Patent Lawyers 2013
  • The International Who’s Who of Life Sciences Lawyers 2013
  • The BTI Client Service All-Star Team for Law Firms
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2013
  • Lexpert Guide to the Leading US/Canada Cross-border Litigation Lawyers in Canada 2012
  • The Canadian Legal Lexpert Directory 2012
  • The International Who’s Who of Patent Lawyers 2012
  • The International Who's Who of Life Sciences Lawyers 2012
  • Chambers Global: The World’s Leading Lawyers for Business 2012
  • PLC Cross-border IP in Business Transactions Handbook 2011/2012

Professional Memberships

American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Canadian Bar Association (CBA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
Toronto Lawyers Association

News

  • Carswell Publishes its Newest Edition of Canadian Patent Law Benchbook, Edited by Don Cameron
  • Bereskin & Parr's Don MacOdrum presents at the International Association for the Protection of Intellectual Property (AIPPI)'s Annual General Meeting
  • Fox on The Canadian Law of Patents, 5th Edition

Media Coverage

  • Don MacOdrum, Philip Mendes da Costa, Don Cameron, and Scott MacKendrick were quoted in the article “IP heavyweights join Bereskin & Parr” which appeared in the January 16, 2012, edition of the Law Times.

Litigation Cases

eLot Inc. v. Atlantic Lottery Corporation
Represented eLot Inc. in an action for patent infringement in respect of a system and method for operating on-line state lottery games.
Counsel: Donald H. MacOdrum
(2010), (T-441-10)
Pfizer Canada Inc. et al. ats Bayer Aktiengesellschaft et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Bayer.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don MacOdrum represented Bayer in the action. He joined Bereskin & Parr LLP in 2012.
(2002), (T-865-02)
 

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