Edward Fan’s practice focuses on the acquisition, enforcement and exploitation of intellectual property, and issues relating to technology transfers. In addition to advising on issues relating to portfolio management, Edward is also involved in negotiating and crafting intellectual property and other technology-related licenses and agreements. He regularly advises clients on the acquisition and exploitation of intellectual property portfolios in different industries.
Edward is a registered patent agent in Canada and the United States, and a trademark agent in Canada.
Recognitions:
Best Lawyers in Canada, 2014—Leading lawyer in intellectual property Professional Involvement
Before joining Torys, Edward practiced technology, communications and intellectual property law at another major Toronto firm. Prior to his legal career, Edward was a certified DB2 database administrator and application developer.
Selected Publications and Presentations
IT Maintenance and Support Agreements
Speaker, Federated Press: Mastering IP & IT Transactions, Toronto | October 17, 2013
Patent Prosecution – Procedures and Rules at the CIPO Lecturer, York University, Osgoode Hall Law School | September 4, 2013 & August 30, 2011
Patents as a Competitive Strategy
Co-lecturer, Federated Press: Toronto | June 19, 2012
Taking a Business Online: IP Issues in Online Businesses and Transactions Westlaw Journal: Intellectual Property, vol. 19, issue 4 | June 13, 2012
United States Converts to First-to-File Patent System Westlaw Journal: Intellectual Property, vol. 18, issue 21 | February 8, 2012
Roundtable Discussion on the United States Patent Office Moderator, Intellectual Property Institute of Canada: Annual General Meeting, Chicago | September 16, 2011
Introduction to Intellectual Property and Regulatory Issues for Drug Products in Canada Lecturer, University of Waterloo, School of Pharmacy (Health Sciences) | March 28, 2011
Topics in Intellectual Property For The Computer Scientist Lecturer, University of Toronto, Department of Computer Science | December 7, 2010
Canada Now Permits Business Method Patents Co-author, PatentCafe’s ipFrontline.com | October 19, 2010
Bilski, Amazon and Patentable Subject Matter Speaker, Intellectual Property Institute of Canada: Annual General Meeting, Quebec City | October 15, 2010
Drafting Complex Licensing Agreements
Speaker, Federated Press: Mastering IP & IT Transactions, Toronto | October 12, 2010
Bilski: U.S. Supreme Court Provides Little Guidance to Patent Applicants Intellectual Property Bulletin | July 30, 2010
Patents and Patent Litigation
Lecturer, University of Waterloo, School of Pharmacy | June 14, 2010
Avoiding Complications When Utilizing Trademarks and Copyright Protected Materials in Advertising Advertising & Marketing Law & Compliance for Financial Institutions, The Canadian Institute, Toronto | April 30, 2010
Intellectual Property Issues in Computer Science Lecturer, University of Toronto, Department of Computer Science | March 31, 2010
Introduction to Intellectual Property and Regulatory Issues for Drug Products in Canada Lecturer, University of Waterloo, School of Pharmacy (Health Sciences) | March 22, 2010
Patentees May Request Recalculation of U.S. Patent Terms Intellectual Property Bulletin | February 3, 2010
Amendments to Canada’s Patent Rules Will Simplify Declarations of Entitlement for Applicants Intellectual Property Bulletin | January 28, 2010
CIPO’s New Draft Guidelines Could Result in Higher Disclosure Standards for Canadian Patents Intellectual Property Bulletin | November 25, 2009
Canadian Patent Appeal Board Rejects Amazon’s “One-Click” Business Method Patent Torys Intellectual Property Bulletin | May 11, 2009 Also republished in Internet and E-Commerce Law in Canada, vol. 10, no. 2, June 2009
Understanding Patents
Lecturer, University of Waterloo, School of Pharmacy (Health Sciences) | March 9, 2009
Patentability of Business Methods: U.S. Court Decides Bilski Intellectual Property Bulletin | October 31, 2008
Protection of Trade Secrets and Confidential Information Author, PatentCafe’s ipFrontline.com | June 21, 2008
Protection of Trade Secrets and Confidential Information 8th Annual IT Law Spring Training Program of IT.Can and the Law Society of
Upper Canada, Toronto | May 1, 2008
Is Canada’s Climate Improving for Patentability of Business Methods?
American Lawyer Media’s Law.com | April 11, 2007 Selected Media Highlights
November 21, 2011: Torys participates in the launch of the OCE/IP Osgoode Innovation Clinic
January 31, 2011: Doors are now wide open [for business method patents], says Edward Fan in Law Times.
January 12, 2010: Patent Appeal Board ruling can mean that inventions must have a physical form to be patented, says Edward Fan in Lexpert
September 21, 2009: Patent Appeal Board rules that inventions must have a physical form, says Edward Fan in Law Times
November 3, 2008: Business [processes]…are being turned into patent applications, says Edward Fan in Lexpert Memberships
Intellectual Property Institute of Canada Institute of Electrical and Electronics Engineers