Paul Horbal

Associate

Toronto, 416.957.1664

Practice Group(s)

Patents
Cleantech
Electrical & Computer Technology
Financial Technology
Industrial Designs

Education

B.A.Sc. (Elec. Eng.), University of Windsor, 2000
M.Sc. (Elec. Eng.), University of Calgary, 2005
J.D., University of Toronto, 2008

Qualifications

Admitted to the Ontario Bar, 2009
Registered Canadian Patent Agent, 2010
Registered United States Patent Agent, 2010

Professional Memberships

Institute of Electrical and Electronics Engineers (IEEE)
Intellectual Property Institute of Canada (IPIC), Associate
Intellectual Property Owners Association (IPO)
Toronto Computer Lawyers' Group (TCLG)
Toronto Intellectual Property Group (TIPG)

Paul Horbal

B.A.Sc., M.Sc. (Elec. Eng.), J.D.

Paul's practice focuses on patent, industrial design and technology law, with an emphasis on securing and leveraging intellectual property rights for high technology clients. He advises clients of various sizes, but particularly enjoys working with startups and high-tech entrepreneurs. In addition to his work preparing and prosecuting patents, Paul advises clients regarding their intellectual property licensing needs.

He has prepared and filed patent applications relating to telecommunications systems, electronic and integrated circuits, digital signal processing, biomedical and biomonitoring devices, power systems and power electronics, computer networks, computer software, business methods, along with many other technologies.

Prior to joining Bereskin & Parr LLP, Paul conducted research into energy recovering architectures for integrated circuits in the course of obtaining his master's degree in electrical engineering. He has previously worked for a supplier of analog and mixed-signal semiconductors, and for a major IT infrastructure services company.

Paul is Vice-Chair of the Toronto Intellectual Property Group, Vice-President of the Ukrainian Canadian Professional and Business Association of Toronto, and a member of the American Intellectual Property Law Association (AIPLA), where he is actively involved with the New Lawyer Committee.

He speaks and writes regularly regarding intellectual property and is an active tweeter (@horbal).

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Paul Horbal

Paul Horbal

B.A.Sc., M.Sc. (Elec. Eng.), J.D.

Associate
Toronto      Ph: 416.957.1664

Practice Group(s)
Patents
Cleantech
Electrical & Computer Technology
Financial Technology
Industrial Designs

Education
B.A.Sc. (Elec. Eng.), University of Windsor, 2000
M.Sc. (Elec. Eng.), University of Calgary, 2005
J.D., University of Toronto, 2008

Qualifications

Admitted to the Ontario Bar, 2009
Registered Canadian Patent Agent, 2010
Registered United States Patent Agent, 2010

Paul's practice focuses on patent, industrial design and technology law, with an emphasis on securing and leveraging intellectual property rights for high technology clients. He advises clients of various sizes, but particularly enjoys working with startups and high-tech entrepreneurs. In addition to his work preparing and prosecuting patents, Paul advises clients regarding their intellectual property licensing needs.

He has prepared and filed patent applications relating to telecommunications systems, electronic and integrated circuits, digital signal processing, biomedical and biomonitoring devices, power systems and power electronics, computer networks, computer software, business methods, along with many other technologies.

Prior to joining Bereskin & Parr LLP, Paul conducted research into energy recovering architectures for integrated circuits in the course of obtaining his master's degree in electrical engineering. He has previously worked for a supplier of analog and mixed-signal semiconductors, and for a major IT infrastructure services company.

Paul is Vice-Chair of the Toronto Intellectual Property Group, Vice-President of the Ukrainian Canadian Professional and Business Association of Toronto, and a member of the American Intellectual Property Law Association (AIPLA), where he is actively involved with the New Lawyer Committee.

He speaks and writes regularly regarding intellectual property and is an active tweeter (@horbal).

Articles

Protecting Your Software Mojo in the Smartphone Screen Era
Paul Horbal and Denver Bandstra
August 28, 2017
Download PDF
Clearing Hurdles in the Race for Blockchain Patents
Paul Horbal and Ryan De Vries
May 23, 2017
Download PDF
U.S. Patent Office Seeks to Better Define Boundaries of “Abstract Ideas”
Paul Horbal
December 20, 2016
Download PDF
Pre-Empting Alice
Paul Horbal
September 21, 2016
Download PDF
How will the Canadian Competition Bureau deal with enforcement of Standard Essential Patents?
Paul Horbal and Victor Krichker
September 15, 2016
Download PDF
USPTO Refreshes Examination Guidelines Relating to Patentable Subject Matter
Paul Horbal
May 9, 2016
Download PDF
Copyright and Application Programming Interfaces in Canada
Victor Krichker and Catherine Lovrics and Paul Horbal and Andrew Ngo
September 30, 2015
Download PDF
USPTO Provides Guidelines on Patenting Software-Related Inventions
Paul Horbal and Cameron Gale
December 18, 2014
Download PDF
3D Printing Requires 4D Thinking on Intellectual Property
Paul Horbal
October 30, 2014
Download PDF
U.S. Supreme Court Again Limits Business Method Patents
Stephen Beney and Paul Horbal
June 19, 2014
Download PDF
U.S. Supreme Court Lowers the Bar for Awards of Legal Costs in Patent Lawsuits
Paul Horbal
April 30, 2014
Download PDF
Divided over patent infringement
Paul Horbal
April 8, 2014
Download PDF
The Difference Between Patents and Industrial Designs
Paul Horbal
January 21, 2014
Download PDF
Software and Business Method Patents Continue to Vex Patent Offices and Courts
Stephen Beney and Paul Horbal
September 17, 2013
Download PDF
Canadian Patent Office Issues Revised Examination Guidelines Concerning Computer-based Inventions
Stephen Beney and Paul Horbal
March 8, 2013
Download PDF
Resolving Internet domain name disputes
Paul Horbal
February 20, 2013
Download PDF
Browse Wrap Agreements Catch Notice of Courts
Paul Horbal and Don MacOdrum
July 20, 2012
Download PDF
Plus Ça Change: CIPO Persists In its Views on Patentable Subject Matter
Ken Bousfield and Jason Hynes and Paul Horbal
April 3, 2012
Download PDF
Canadian Patent Office Allows Amazon.com
Stephen Beney and Paul Horbal
January 11, 2012
Download PDF
Canadian Federal Court of Appeal Renders Decision in Amazon.com
Ken Bousfield and Paul Horbal and Victor Krichker
November 28, 2011
Download PDF
Writing the Next Chapter in Amazon.com’s 1-Click Story
Stephen Beney and Paul Horbal
April 1, 2011
Download PDF
Sometimes Secrets Are Worth Keeping
Paul Horbal
January 1, 2011
Download PDF
Canadian Patent Office Building International On-ramp to Patent Prosecution Highway
Paul Horbal
January 1, 2011
Download PDF

Speaking Engagements

AIPLA 2017 Electronic and Computer Patent Law Summit

American Intellectual Property Law Association
Toronto, ON
June 21, 2017

As a proud sponsor, Bereskin & Parr contributed to the AIPLA 2017 Electronic and Computer Patent Law Summit at DoubleTree by Hilton Toronto Downtown. Isi Caulder, Tony Orsi and Paul Horbal attended and were available to answer IP inquiries as time permitted.

Paul Horbal moderated the panel View from the Top: An Update on US and Canadian Law Governing Designs for GUIs and Animations from 4:15 p.m. to 5:00 p.m.

For more details about the event, please click here.

Bereskin & Parr Patent Seminar

Bereskin & Parr LLP
Toronto, ON
February 9, 2017

Join Bereskin & Parr on Thursday, February 9, 2017 at MaRS Discovery District as we discuss current IP issues in the life science, engineering and technology fields. Sessions will be offered in the morning and afternoon with a complimentary breakfast and lunch.

 

AGENDA:

8:30am  -  9:00am  -  Registration and continental breakfast

 

IP Issues for Life Sciences Inventions

Moderated by Micheline Gravelle


9:00am  -  9:05am 
Welcome and Opening Remarks with Micheline Gravelle

9:05am  -  9:45am 
Subject Matter Eligibility in the Life Sciences with Melanie Szweras

9:45am  -  10:30am 
Patent Protection for Immunotherapies with Laurence MacPhie

10:30am  -  10:45am  - Coffee break

10:45am  -  11:30am 
Requirements for Utility, Support and Promise (Canada) with Mike Fenwick

11:30am  -  12:00pm 
Ownership issues  with Ainslie Parsons

12:00pm  -  1:00pm  - Lunch and afternoon registration

 

IP Issues for Engineering and High Tech Inventions

Moderated by Isi Caulder


1:00pm  -  1:05pm 
Welcome Remarks with Isi Caulder

1:05pm  -  1:45pm 
IP Strategy for Technology Startups with Isi Caulder

1:45pm  -  2:30pm 
Patent Eligible Subject Matter in the IoT and Blockchain Era with Paul Horbal

2:30pm  -  2:45pm  - Coffee break

2:45pm  -  3:30pm
Cross-border differences in Canadian and US Patent Law with James Raakman

3:30pm  -  4:00pm 
IP Ownership in the Age of Collaboration and Open Source Software with Victor Krichker

 

To register for this event please click here.

 

Location:

MaRS Discovery District
Function Space CR3
101 College St, Toronto,
ON M5G 1L7

The Blockchain Event

TMC
Las Vegas, NV
July 18 - 21, 2016

Paul Horbal will be speaking at The Blockchain Event at 2 PM on Tuesday, July 19 on Intellectual Property 101: What Every Blockchain Startup Needs to Know about Patents, Trademarks, Copyrights and Trade Secrets.

The Blockchain event runs from July 18 - 21 at Caesars Palace in Las Vegas.

Please click here for more information on this event.

Bears Lair IP Workshop

Peterborough Economic Development
Peterborough, ON
February 25, 2016

Wynnie Chan and Paul Horbal will be speaking at the Peterborough Economic Development Bears Lair IP Workshop taking place in Peterborough on February 25, 2016 from 12:00 pm - 2:00 pm.

To learn more about Peterborough Economic Development and for further information about the event, please click here.

Osgoode Hall Law School of York University

Preparing for OCIs
York University
June 25, 2015

Paul Horbal will be on the panel for student's preparing for OCIs. Featuring a panel of seasoned experts, this sessions will cover many of the questions students have regarding OCIs, such as how to prepare a good application, interviews and more.

Location:

Keele Campus
Thursday June 25
3:30 - 5:30 pm
Room 1003

Event Attendance

Origin and History of Patent Law

Toronto Intellectual Property Group
Toronto, ON
October 24, 2017

Ken Bousfield will be presenting at the Rosewater Supper Club on the Origin and History of Patent Law.

Don MacOdrum, Michael Charles and Paul Horbal will be in attendance.

For more information and to register, please click here.

AIPLA 2017 Annual Meeting

American Intellectual Property Law Association
Washington, DC
October 19 - 21, 2017

Don Cameron, Ken Bousfield, Isi Caulder, Tony Orsi and Paul Horbal will be attending the AIPLA 2017 Annual Meeting at Marriott Wardman Park Hotel.

Isi Caulder will also be moderating and coordinating panel discussions on October 19.

For more information and to register, please click here.

3rd Annual National FinTech Canada Conference

FinTech Canada
Toronto, ON
August 18 - 18, 2017

Paul Horbal and Jim Hinton attended the 3rd Annual National FinTech Canada Conference at MaRS Discovery District.

For more information, please click here.

IPBC Global

IAM
Ottawa, ON
June 18 - 20, 2017

Stephen Beney and Paul Horbal attended the 10th Annual IPBC Global at the Shaw Centre.

For more information, please click here.

Discovery 2017 Conference

Ontario Centres of Excellence
Toronto, ON
May 15 - 16, 2017

Join Bereskin & Parr at the Ontario Centres of Excellence's Discovery 2017 Conference. Isi Caulder, Tony Orsi, Paul Horbal, Ainslie Parsons, Joanna Ma and Cameron Gale will attend the event.

Isi Caulder and Tony Orsi will also participate in the "Ask an Expert" event which helps attendees connect with experts in the areas of investing, entrepreneurship, innovation support, professional services, and corporate leadership.

For more information, please click here.

Tech Leadership Conference

Communitech
Waterloo, ON
May 10 - 11, 2017

Jason HynesKevin Shipley, Paul Horbal and Jim Hinton will be attending the Tech Leadership Conference on May 10-11, 2017. This event brings together the best entrepreneurs, innovators and thought leaders to connect, learn and help shift the power and control of technology.

For more information, please click here.

FintechTO Bi-Monthly Meeting

FintechTO
Toronto, ON
December 7, 2016

Paul Horbal will be attending FintechTO's bi-monthly meetup on December 7.

FintechTO is a community for innovators in the financial technology sector. Each bi-monthly meetup features candid conversations and laid-back networking.

For more information on this event, please click here.

AIPLA 2016 Annual Meeting

American Intellectual Property Law Association (AIPLA)
Washington, DC
October 27 - 29, 2016

Join Don Cameron, Ken Bousfield, Ian McMillan, Stephen Beney, Isi Caulder, Melanie Szweras, Tony Orsi, and Paul Horbal at the AIPLA 2016 Annual Meeting in Washington, DC.

On Thursday October 27th Isi Caulder has organized the 2pm session IP Budgets and Managing Expectations: A Conversation Between In-House and Outside Counsel About Money and Expectations in 2017.

The meeting takes place at the Marriott Wardman Park Hotel and provides an opportunity to network with IP colleagues, and learn about the latest breakthroughs in IP standards, laws and policies.

For more information, please click here.

Leading the Charge Conference

Centre for Urban Energy at Ryerson University
Toronto, ON
June 24, 2016

Adrienne Bieber McNeil and Paul Horbal are attending the Leading the Charge Conference on June 24.

The conference brings together prominent utility experts and researchers from across Canada to explore all aspects of energy storage.

For more information on this conference click here.

Halton FUTURES Innovation Summit

HALTECH
Oakville, ON
June 2, 2016

Matthew Graff and Paul Horbal will be attending the Halton FUTURES Innovation Summit. This summit will take place on June 2 at the Oakville Conference Centre.

The summit brings together startups, innovators, investors, regional innovation champions and academic research leaders.

For more information on this event, please click here.

2016 Tech Leadership Conference

Communitech
Waterloo, ON
May 12, 2016

Jason Hynes, Paul Horbal, Jim Hinton and Kuyler Neable will be attending the 2016 Tech Leadership Conference in Waterloo.

This event connects with the Waterloo Region tech community, and explores shifts in the marketplace and where the world is headed.

For more information on this event, please click here.

OCE Discovery 2016

Ontario Centres of Excellence (OCE)
Toronto, ON
May 9 - 10, 2016

Bereskin & Parr proudly exhibited at OCE Discovery 2016 adjacent to the "Ask an Expert" area. Attendees met Isi Caulder, Tony Orsi, Adrienne Bieber McNeil, Paul Horbal, Ainslie Parsons, and Joanna Ma at the conference in Toronto, ON.

Isi Caulder and Tony Orsi also participated in the Ask an Expert sessions on Tuesday, May 10. Isi Caulder participated in this session from 3 - 4 PM, followed by Tony Orsi from 4 - 5 PM.

OCE Discovery is Canada's leading innovation-to-commercialization conference and brings together key players from industry, academia, government, the investment community as well as entrepreneurs and students to pursue collaboration opportunities.

To learn more about the Ask an Expert sessions click here.

To learn more about OCE Discovery 2016 click here.

Canadian Wireless Trade Show

Canadian Wireless Trade Show
Toronto, ON
October 28 - 29, 2015

Paul Horbal is attending the Canadian Wireless Trade Show at the Toronto Congress Centre.

This is Canada's #1 Wireless Trade Show and takes place from October 28-29.

For more information on this event, please click here.

 

American Intellectual Property Law Association

Annual Meeting 2015
Washington, DC
October 22 - 24, 2015

Don Cameron, Ken Bousfield, Melanie Szweras, Tony Orsi and Paul Horbal will be attending the 2015 American Intellectual Property Law Association Annual Meeting, October 22-24 at the Marriott Wardman Park Hotel in Washington, DC.

Bereskin & Parr is also sponsoring the LGBT Diversity Reception.

Ontario Centres of Excellence

Discovery 2015
Toronto, ON
April 27 - 28, 2015

Bereskin & Parr is proud to have been an exhibitor and Discovery Partner at Discovery 2015. Isi Caulder, Tony Orsi, Adrienne Bieber McNeil, Paul Horbal and Reshika Dhir attended the event.

Isi Caulder and Tony Orsi also participated in the "Ask an Expert" event which helps attendees connect with experts in the areas of investing, entrepreneurship, innovation support, professional services, and corporate leadership.

Discovery is Canada's leading innovation-to-commercialization conference, bringing together key players from industry, academia, government, the investment community as well as entrepreneurs and students to pursue collaboration opportunities.

To learn more about Discovery 2015 and for further information about the event, please click here.

Asian Canadian Law Students Conference 2015

Bay Street Career Panel
Toronto, ON
February 21, 2015

On Saturday, February 21st Paul Horbal will be speaking at the Asian Canadian Law Students Conference 2015 as part of the Bay Street Career Panel.

Asian Canadian Law Students Conference 2015, a national law student conference organized by the Asian Law Students of Osgoode, the University of Toronto Asia Law Society, and the Korean Law Students Associations of Osgoode and of the University of Toronto.

The Bay Street Career Panel will be held from 3:30 pm to 4:30 pm.

AIPLA

Annual Meeting
Washington, DC
October 23 - 25, 2014

Don Cameron, Robert Storey, Ken Bousfield, Ian McMillan, Noel Courage, Isi Caulder, Tony Orsi, Melanie Szweras and Paul Horbal will be attending the AIPLA Annual Meeting. 

The Annual Meeting offers attendees the opportunity to connect with others in the IP industry from around the world, and to learn about such topics as: post-grant proceedings after the AIA; 101 invalidation in view of CLS Bank, Bilski, and Prometheus; IP and Regulatory Protection in the Pharmaceutical Field in Latin America; the Unified Patent Court in the European patent litigation landscape; best practices in Trade Secret Protection; the latest in Cyber Security Law and Standards; and the Year in Review: Trademark, Copyright, Trade Secret and Patents.

University of Toronto

On Campus Interviews
October 16 - 17, 2014

Bhupinder Randhawa, Paul Horbal and Margaret Seko will be attending.

Windsor University

On Campus Interviews
October 15, 2014

Paul Horbal and Margaret Seko will be attending.

Western University

On Campus Interviews
October 14, 2014

Paul Horbal and Margaret Seko will be attending.

Ontario Centres of Excellence

Discovery OCE
Toronto, ON
May 12 - 13, 2014

Isi Caulder, Tony Orsi, Adrienne Bieber McNeil, Paul Horbal and Joanna Ma will be attending Ontario Centres of Excellence’s (OCE) Discovery event at the Metro Convention Centre. Bereskin & Parr will be a Discovery Partner for the event.

In addition, Tony Orsi will be involved in the "Ask an Expert" event on May 12th from 5 p.m. to 6 p.m., allowing attendees to connect with experts in the areas of investing, entrepreneurship, support for innovation, professional services, and corporate leadership.

Discovery is Canada's leading innovation-to-commercialization conference, bringing together key players from industry, academia, government, the investment community as well as entrepreneurs and students to pursue collaboration opportunities. 

For more information about the event, click here

 

OSEA

Bereskin & Parr's Clean Tech group members, Victor Krichker and Paul Horbal, to attend OSEA Event
SPiN TORONTO
December 10, 2013

Victor Krichker and Paul Horbal will be attending a holiday ping pong party, hosted by Ontario Sustainable Energy Association (OSEA), on December 10th at SPiN TORONTO. Sponsored by Schneider Electric, the event will include attendees from all areas within the sustainable energy sector, including those in the solar, wind and hydro industries. The event will include attendees from all areas within the sustainable energy sector, including those in the solar, wind and hydro industries with expertise in finance and investment, manufacturing and installation, planning and development and education.

Click here for more information about this event.

University of Toronto, Faculty of Law

On-Campus Interviews
October 17, 2013

Paul Horbal and Margaret Seko will be attending.

University of Ottawa, Faculty of Law

On-Campus Interviews
October 2, 2013

Paul Horbal and Margaret Seko will be attending.

Queen’s University, Faculty of Law

On-Campus Interviews
October 1, 2013

Paul Horbal and Margaret Seko will be attending.

Ontario Centres of Excellence

Discovery
Toronto, ON
May 27 - 28, 2013

Ian McMillan, Isi Caulder, Bhupinder Randhawa, Paul Horbal, Joanna Ma and Reshika Dhir attended.

For more information please go to www.ocediscovery.com/

Professional Memberships

Institute of Electrical and Electronics Engineers (IEEE)
Intellectual Property Institute of Canada (IPIC), Associate
Intellectual Property Owners Association (IPO)
Toronto Computer Lawyers' Group (TCLG)
Toronto Intellectual Property Group (TIPG)

Media Coverage

  • Paul Horbal Quoted in Bitcoin Magazine Regarding Blockchain-Powered Copyright Protection
  • Paul Horbal was quoted in the article “But is it art?” which was published online on November 23, 2011, in Listed magazine.
 

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