Lawyer, Trademark Agent
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Neil Kathol is a senior intellectual property lawyer, registered in Canada and the US, representing clients in respect to their patent, trademark and copyright and related rights and property. 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 services licensing and other technology commercialization agreement work, and for freedom to operate advice in the areas of patents and patent infringement, breach of confidence and misuse of trade secrets, trademark use, registration, and infringement, design and copyright registration and infringement, and, in related claims, commercial projects and disputes.
In addition, his practice includes:
- Resolving invention ownership issues, licensor or licensee 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 production and services, oilfield equipment, financial services, hospitality services, and products of all kinds including food and beverage, recreation, and apparel products where often, the focus is the technology or their brands. 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.
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 IPT area, clients think of me as their trusted advisor."
Outside the Office
Neil sculpts and paints in his spare time. "My approach reflects post-modern ideas but my output also seems rooted in the modern. 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
Law Society of Alberta
Intellectual Property Institute of Canada (IPIC)
International Trade-Mark Association (INTA)
Canadian Bar Association, Intellectual Property Section
Federal Court of Appeal and Federal Court Rules Committee
2013 - Present
Society of Petroleum Engineers, Calgary Chapter
2017 - Present
Canadian Bar Association, Intellectual Property Section
Canadian Bar Association, Intellectual Property Section
Listed Intellectual Property Law
The Best Lawyers™ in Canada
2013 - 2020
"Repeatedly Recommended" Intellectual Property
Canadian Legal Lexpert® Directory
2018 - 2019
Martindale-Hubbell® Peer Review Ratings™
2013, 2016 - 2019
Packers Plus Energy Services Inc. v. Essential Energy Services Ltd., 2017 FC 1111
Andrews v. McHale and 1625531 (Gemstone Logistics) , 2016 FC 624
College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449
Resource Well Completion Technologies Inc. v. Canuck Completions Ltd., 2014 ABQB 209
Online Constructors Ltd. v. Speers Construction Inc., 2011 ABQB 43
Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law, 2010 FC 73
Community Credit Union Ltd. v. Canada (Registrar of Trade Marks), 2006 FC 1119
Cookie Florist Canada Ltd. v. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.), 1998 CanLII 8079 (FCA)
Ital-Press Ltd. v. Sicoli, 1999 F.C.J. No. 837
Norac Systems International Inc. v. Massload Technologies Inc., 1997 CanLII 4900
Cookie Florist Canada Ltd. V. 132831 Canada Inc. (c.o.b. Monsieur Felix & Mr. Norton Cookies Inc.),  F.C.J. No. 1598, Federal Court of Canada - Trial Division
Ital-Press Ltd. v. Sicoli,  F.C.J. No. 1119, Federal Court of Canada - Trial Division
Gunther's Building Centre Ltd. V. Moli Industries Ltd.,  A.J. No. 1037, Alberta Court of Queen's Bench
Strait Line Contractors Ltd. v. Rainbow Oilfield Maintenance Ltd. , 1991 ABCA 78
Nutman Co. v. Magic Afterburners Inc.,  F.C.J. No. 1112, Federal Court of Canada - Trial Division
October 25, 2019
IP Basics for Lawyers
Law Society of the Northwest Territories
July 11, 2019
Understanding Your Intellectual Property Toolbox
Do you work in an industry with technology or inventions that you are trying to protect? Or are you looking to commercialize your existing technology and capitalize on it? Join Field Law's Neil Kathol, a lawyer and trademark agent, for a Lunch...
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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...
Texas Justice Provides an Evidence Solution
Have you ever been in a situation where you have reliable information that an organization has infringed your intellectual property rights, but you do not have actual “evidence” in-hand? This article discusses a pro...
Illustrator Wins Copyright Infringement Case at the Supreme Court
The Cinar v. Robinson decision of the Supreme Court of Canada in late 2013 is of interest to Canada’s creative community, and copyright owners generally including owners of industrial copyright. The case makes it clear that ...
Patenting, Publishing and Trade Secrets: Strategies for Inventors
A company independently develops an innovation and they discover later that it has been patented by a competitor. The competitor did not steal or reverse engineer that innovation – they simply arrived at it independently, and got to the...
Protection By Design: Industrial Design Law In Canada
Bodum – a maker of popular coffee-press and glass products – wanted to protect their design for a double-walled drinking glass in a competitive marketplace. Apple wanted to protect the design of their popular handsets like th...
Canadian Patents: Not Invalid for Lack of "Good Faith"
This is a review of a recent decision of the Canadian Federal Court of Appeal, which has implications for patent law practitioners and Canadian patent owners. The case is Weatherford Canada Ltd. v. Corlac Inc.  ...
Invention Assignments: A Cautionary Tale
This is a review of a recent decision of the United States Court of Appeal for the Federal Circuit which has implications for business law practitioners, particularly those with a technology practice. The case is Board o...
An interesting trade-mark dispute continues to brew in Canada between the owner of the brands that are used by Target stores, and the well-known Canadian retailer Fairweather. Target Brands, Inc. owns the “Target” brand used ...
Google AdWords/Adsense policy
Protecting the "Look & Feel" of your Website
You have developed a website that promotes your business’s goods and services. Perhaps your website also contains an online “store.” If your website is distinctive, its look and feel may be protectable. Here’s how...
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" occurred 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."
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