Neil Kathol
Neil Kathol
Partner,
Executive Committee Member
Overview
Experience
Professional
Recognition
News + Views + Events
Client Stories

Neil Kathol is a senior intellectual property lawyer, registered in Canada and the US, who helps clients with complex patent, trademark and copyright issues. One practice focus of Neil's is patent work for the oil and gas industry, particularly in its services sector. Clients rely on Neil for litigation and advice in the areas of patent infringement, breach of confidence and misuse of trade-secrets, trademark infringement, design and copyright infringement and related claims and disputes.

In addition, his practice includes:

  • Resolving invention ownership issues, licensor or "ee" rights and rights of joint venturers
  • Reviewing patents and advising on freedom-to-operate questions and advice to sellers/buyers
  • Managing international, North American and Canadian patent (with our patent team) and trademark portfolios
  • Performing patent, trade-mark, copyright and industrial design searches and freedom to operate due diligence
  • Litigating claims involving patents, copyrights, trademarks, trade secrets and designs along with other contractual and fiduciary issues

Neil is a registered Trade-mark Agent in Canada and the United States. In addition to his work with energy-related IP, Neil has helped with the technology issues arising in many kinds of commercial transactions. He has led IP teams who analyze new technology being considered for purchase or license, acted on sales and acquisitions of technology assets, drafted technology transfer documentation and advised on technology-based joint ventures and design and development agreements.

Neil has represented clients in trials and judicial mediations before both the Court of Queen’s Bench of Alberta and in the Federal Court, often involving energy services, high-tech equipment and tools as well as many industrial, household, design and fashion products. He has argued before the Alberta Court of Appeal, at many registries across Canada and before the Federal Court of Appeal. Neil has also appeared before the Trademarks Opposition Board and participated in several intellectual property law mediations and arbitrations, both as counsel for a party and as a neutral mediator. He is a member of the Federal Court of Appeal and Federal Court Rules Committee.

Neil is a member of the Field Law Executive Committee.

Value to Clients

"I care deeply about my clients' problems and if in a dispute push hard, but also have a sense of when it is the right time to work on a resolution. I do the heavy lifting, which takes determination and collaboration with clients and their team. Strategically and technically, I do what it takes to get my clients superior outcomes.

"I get to bottom of the case. I dump it all out on the table, which helps ensure that all of the evidence and the entire playing field are considered before settling on a strategy. Taking the "right" first few steps often ensures a strong position and great outcome."

"This is one of the reasons that many of my long-standing clients call me for my feedback on non-IP business questions, too. With almost 30 years of experience, most of which is in the IPBT area, clients think of me as their trusted advisor."

Outside the Office

Neil sculpts and paints in his spare time. "My style is contemporary. Concepts and ideas meshing with visually engaging and well-matched visual clues is paramount, and a good analogy for the practice of law."

He also snowboards and runs, including participating in his extended family's annual 100-mile relay run in the Kananaskis Range. "I'm a car nut, too, with a weakness for both vintage style and the ever-quickening new."

Canadian Bar Association
Member
1987-Present
Law Society of Alberta
Member
1987-Present
Intellectual Property Institute of Canada (IPIC)
Member
2005-Present
International Trade-Mark Association (INTA)
Member
2005-Present
Canadian Bar Association, Intellectual Property Section
Member
2000-Present
Federal Court of Appeal and Federal Court Rules Committee
Member
2013 - Present
Canadian Bar Association, Intellectual Property Section
President
2007-2008
Canadian Bar Association, Intellectual Property Section
Chair
1997-1997
Listed Intellectual Property Law
The Best Lawyers™ in Canada
2013 - 2018
"Distinguished"
Martindale-Hubbell® Peer Review Ratings™
2013, 2016 - 2017
Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2017 FC 1111
Andrews v. McHale, 2016 FC 624, Federal Court
College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449, Federal Court
Resource Well Completion Technologies Inc. v Canuck Completions Ltd., 2014 ABQB 209, Alberta Court of Queen's Bench
Online Constructors Ltd. v. Speers Construction Inc., 2011 ABQB 43, Alberta Court of Queen's Bench
Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law, 2010 FC 73, Federal Court
Pat's Off-Road Transport vs. Campbell et al, 2010 ABQB 443, Alberta Court of Queen's Bench
Stonetile  (Canada) Ltd. v. Castcon Ltd., 2010 ABQB 392, Alberta Court of Queen's Bench
Community Credit Union Ltd. v. Canada (Registrar of Trade Marks), 2006 FC 1119, 300 F.T.R. 35 (Eng.), 53 C.P.R. (4th) 296, Federal Court
Credit Union Central of Canada v. Community Credit Union Ltd., (2005) 48 C.P.R. (4th) 226, Trade-mark Opposition Board
Excalibre Oil Tools Ltd. V. Garay, [1999] F.C.J. No. 1581, Federal Court of Canada - Trail Division
Ital-Press Ltd. v. Sicoli, (1999) 86 C.P.R. (3d) 129, 170 F.T.R. 66, Federal Court
Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.), [1998] F.C.J. No. 932, Federal Court of Appeal
Ital-Press Ltd. v. Sicoli, [1999] F.C.J. No. 837, Federal Court of Canada
Pieroway v. Pieroway, [1998] A.J. No. 203, Alberta Court of Appeal
Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.), [1996] F.C.J. No. 1598, Federal Court of Canada - Trial Division
Ital-Press Ltd. v. Sicoli, [1996] F.C.J. No. 1119, Federal Court of Canada - Trial Division
Norac Systems International Inc. v. Massload Technologies Inc., [1996] F.C.J. No. 1655, Federal Court of Canada - Trial Division
Norac Systems International Inc. v. Massload Technologies Inc., [1996] F.C.J. No. 934, Federal Court of Canada - Trail Division
Alwest Neon Signs Ltd. v. 464460 Alberta Ltd., (1994) 24 Alta. L.R. (3d) 420, 58 C.P.R. (3d) 176, 161 A.R. 273, Alberta Provincial Court
Gunther's Building Centre Ltd. V. Moli Industries Ltd., [1993] A.J. No. 1037, Alberta Court of Queen's Bench
Nutman Co. v. Magic Afterburners Inc., [1991] F.C.J. No. 1112, Federal Court of Canada - Trial Division
Strait Line Contractors Ltd. V. Rainbow Oilfield Maintenance Ltd. (Alta. C.A.), [1991] A.J. No. 229, Alberta Court of Appeal
August 2017
The Best Lawyers in Canada 2018
25 Field Law Lawyers Recognized
25 Lawyers from Field Law Recognized in The Best Lawyers™ in Canada 2018 Field Law is pleased to announce that 25 lawyers have been included in the 12th Edition of The Best Lawyers™ in Canada. Three of these lawyers are new additions a...
December 2015
Patent Law, Software Licensing and IT Transactions
April 2015
Texas Justice Provides an Evidence Solution
October 2014
Understanding Pervasive IP/IT Issues
May 2014
Illustrator Wins Copyright Infringement Case at the Supreme Court
November 2013
Patenting, Publishing and Trade Secrets: Strategies for Inventors
March 2013
Protection By Design: Industrial Design Law In Canada
March 2013
Intellectual Property Protection and Patents
February 2013
Patents: We Sweat The Small Stuff
October 2012
Copyright for Architects: Existence, Enforcement and Succession Issues
June 2012
Intellectual Property and Technology
Winter 2012
Canadian Patents: Not Invalid for Lack of "Good Faith"
December 8
Copyright Issues for Graphic Artists
Spring 2011
Invention Assignments: A Cautionary Tale
Winter 2011
Target Wars
December 2010
Google AdWords/Adsense policy
Fall 2010
Protecting the "Look & Feel" of your Website
November 2010
Venture Prize - The Legal Perspective
November 2010
Mentmore and More: When is the Abettor Also Liable?
June 2010
IP In Commercial Transactions - 43rd Annual Refresher
May 2010
IP In Commercial Transactions
2000-2009
Copyright Law
November 2008
Non-traditional Marks and INTA’s Non-Traditional Marks Committee
November 2008
Non-traditional Marks and INTA’s Non-Traditional Marks Committee
2008
CIPO Basics of Law Series (Contracts Module)
2008
Intellectual Property for Law 685: Business Clinical
2007
Intellectual Property for Law 685: Business Clinical
October 2006
Trade-marks Oppositions
October  2006
Trade-marks Oppositions
June 2006
Overview of Copyright and Some Software Issues
June 2006
Copyright Law
2006
Intellectual Property for Law 685: Business Clinical
February 2005
FCA Decides Whether Displayed Material Constituted a "Trade-mark"
January 2005
US Trade-mark Use and Registration
January 2005
US Trade-mark Use and Registration
February 2002
Long-Arm Acts Enable Courts To Take Jurisdiction
1999
Intellectual Property For Corporate Counsel
1997
Topics in Patent, Trademark and Copyright

Oil and gas trade secret misappropriation case

Our client: An oil and gas service industry based in Western Canada.
Where we began: An ex-employee took confidential information about how our client's equipment was built, found a financial backer and began to compete using a fleet of "copycatted" equipment.
Our approach: Neil emphasized to his client that the odds might not be in its favour, given the client hadn’t really done much to try and safeguard the internal workings of its equipment. But, knowing the law favours instances where that factor is less important, when Neil’s client directed him to "find a way to win," then an understanding formed that the case would be pushed hard to trial if needed.
The result: Victory for the client. Enough evidence was proven to satisfy the judge that the ex-employee had been caught stealing trade secrets and had to pay and to stop using the equipment. The client’s efforts to park its equipment in locked areas for the most part, along with other factors, assisted reaching the conclusion the information was sufficiently maintained. The effort also curtailed an attempt to sell the copied equipment and hood-wink another investor into making more.

Oilfield computer software protected

Our Client: An oilfield service provider with a very successful program for booking workers' travel and related needs.
Where we began: Our client built a very successful sales book. A prior employee involved in the software development issued suit against our client claiming he was a co-author of the software.
Our approach: Neil applied what he’d learned through the years on copyright cases - in Canada the author is the owner; that is, the person "holding the pen" (in this case, coding the software by tapping the keyboard). In addition, it was clear that the true author had reams of experience and success in developing software and that the prior employee had little or no training and didn’t know computer languages. In other words, the claim "didn’t add up." Neil oversaw his own client’s case and also advised two consecutive teams of outside lawyers handling the case for the client’s Director who was also sued. "Keep it simple, get the necessary facts in, don’t complicate it and get it to trial" was the mantra.
The result: Neil got the team to follow the mantra against all temptations otherwise. The case was dismissed by the Federal Court in a relatively quick manner, relatively cheaply, and without any live testimony or cross-examination required along the way or at trial. The case is now the only Canadian precedent on what activities give rise to software authorship.

Defending against a patent infringement claim in a fracking operation

Our Client: A major provider of well completion services and equipment to operators of fracking wells.
Where we began: Our client and three other completion companies were sued for patent infringement.
Our approach: The main defences were that the patent was invalid as obvious over prior art and that the invention was disclosed by the plaintiff to the public more than a year prior to filing. One focus was on the plaintiff’s claim that its otherwise invalidating public disclosure was in confidence. Neil applied his experience in trade secret law/law of confidential information to identify the holes in the plaintiff’s claim of confidentiality.
The Result: The four-week "validity trial" occured in early 2017. A decision is on reserve.

Textile trademark infringement claim defeated

Our Client: A manufacturer and retailer of textiles for the bedding industry based in Western Canada.
Where we began: Our client was facing a trademark infringement claim for millions of dollars in damages as well as demands that our client stop using the trademark.
Our approach: Neil argued his client had named its product using ordinary words common to the bedding industry. When the other side stubbornly dug in its heels, Neil created a 17-volume affidavit that documented over 500 references to the industry's use of the words in question. "We put the affidavit on the doorstep of the courthouse for entering into the public realm where, if the matter didn't resolve, all others in the industry also using those words could rely on that same evidence."
The result: The plaintiff agreed to mediation, which reversed the "who-pays-who" dynamic and led to a very favorable outcome for our client. As Neil put it, "A creative, strategic, team approach and hard work meant that our client obtained an outstanding settlement, so favourable that the other side required it be kept confidential lest other competitors find out."

Education
University of Alberta, 1986, Bachelor of Laws
University of Calgary, 1983, Bachelor of Commerce
United States, 2005, Trade Mark Agent
Canada, 1994, Trade Mark Agent
Admissions
Alberta,1988