Background

Neil Henderson is a partner practising in our Toronto and Waterloo Region offices. Neil earned a B.A.Sc. in Engineering Science from the University of Toronto in 1986 and obtained a law degree from the University of Western Ontario in 1990. Neil is a registered Canadian and United States patent and trade-mark agent.

Neil has a depth of experience in Canadian, U.S. and international intellectual property law. Prior to joining BLG, he practiced intellectual property law at both a national IP boutique and at a large national law firm. He also spent four years in Japan where he worked as a technical consultant at a patent firm and as a patent and legal advisor to a private company.

Areas of Practice

• Advising on intellectual property management, procurement and enforcement
• Providing patentability searches and opinions, and advising on patent protection strategies
• Preparing, filing and prosecuting patent applications (registered for practice before the Canadian and United States Patent Offices)
• Preparing, filing and prosecuting trade-mark registration applications
• Licensing, distribution, manufacturing and other commercial agreements relating to intellectual property
• Advising on copyright, social media and internet issues
• Due diligence relating to IP in commercial transactions (mergers, acquisitions, financings)
• IP audits

Professional Experience

• Strategic IP portfolio creation and management including advising on patent and trade-mark prosecution, providing opinions on patentability, validity and infringement
• Handling the IP aspects of all types of business transactions.
• Experienced in IT/copyright law, including software licensing, distribution and outsourcing.
• Strategic advice on internet/social media policies and issues
• Particular technologies of interest include the mechanical, optical, electromechanical, medical, communications, software and Internet areas.

Professional and Community Activities

• Member, American Intellectual Property Law Association (AIPLA)
• Member, Canadian Bar Association (CBA)
• Fellow, Intellectual Property Institute of Canada (IPIC)
• Member, Licensing Executives Society (LES)
• Member, Kitchener-Waterloo Intellectual Property Group
• Member, Waterloo Law Association (WLA); Founder, C-POWR Committee
• Member, Communitech
• Former Director, Toronto Intellectual Property Group (TIPG)
• Director, Toronto Japanese Language School (TJLS)

Speaking Engagements

• Protection for well-known trademarks in the US after Victoria 's Secret; Presentation at AIPLA IP Practice in Japan Committee (October 2010, Washington DC)
• Ajinomoto: Mazukatta? Recent Cautions in US Case Law; Presentation to Japan Patent Attorneys Association (April 2010, Tokyo, Japan)
• IP Issues in Employment Law; Presentation to Shokokai (Japanese Association of Commerce and Industry) members (March 26, 2010, Mississauga, ON)
• Hot IP Issues; Presentation at Legal Update 2010 (February 25, 2010, Waterloo, ON)
• Forget the Buyer: Licensee Merger Beware! Presentation at AIPLA, IP Practice in Japan Committee, Mid-Winter Pre-Meeting (January, 2010)
• US Personal Jurisdiction on Foreign Defendants; Presentation at Annual Meeting of the American Intellectual Property Law Association (AIPLA), IP Practice in Japan Committee (October 2009, Washington, DC).
• IP Litigation: US and Canada ; Moderated Panel Presentation (Sept. 29, 2009, Waterloo, ON)
• "Legacy of NTP v. RIM: Cross Border Infringement", Annual Meeting of the American Intellectual Property Law Association (AIPLA), IP Practice in Japan Committee; Moderated the panel discussion (October 2008, Washington, D.C.).
• "New Directions for Monitoring and Monetizing Patents", Annual General Meeting of the Intellectual Property Institute of Canada; Moderated panel discussion (October, 2008).
• "Legislative Developments in the US : IDS Rules', AIPLA, IP Practice in Japan Committee, Mid-Winter Pre-Meeting (January, 2008)
• 'Monetization of IP: From Patent Trolls to Patent Brokers and Auctions', AIPLA, IP Practice in Japan Committee, Mid-Winter Pre-Meeting (January, 2008)