Expertise

• Intellectual Property Arbitrator

• Intellectual Property Mediator

• Intellectual Property Expert Witness

• Intellectual Property Litigator

• Patents

• Trademarks

• Copyright

• Information Technology

Certifications

• Called to the Ontario Bar (LSO# 15925J) in 1976

• PEng - Professional Engineer (Ontario) since 1982

• Certified by the Law Society as a Specialist (CS) in Civil Litigation since 1993

• Certified by the Law Society as a Specialist (CS) in Intellectual Property (Patent, Trademark and Copyright) Law since 1993

• Certified Mediator - International Mediation Institute since 2015

• Certified Arbitrator - Chartered Institute of Arbitrators since 2013

• ICD.D - Institute of Corporate Directors since 2018

Education

• Queen's University, Kingston, Ontario

  • Bachelor of Science (Engineering Mathematics with Honours) 1971

  • Bachelor of Laws 1974

• Harvard Law School, Mediation Workshop, June 1999

• Chartered Institute of Arbitrators, Advanced Workshop, December 2012

• Rotman School of Business, University of Toronto Directors Education Program, 2017-2018

Accolades and Awards

• “The guru of IP law in Canada” - Chambers Global

• “One of the finest litigators in Canada” - Who’s Who Legal

• “Chairman of the Board for Canadian Patent Lawyers” - IAM Patent 1000

• “The King of IP Litigation in Canada” - WTR 1000

• “The Dean of the Patent Bar” - Who’s Who (Patents)

• Inducted into LMG Hall of Fame for Life Sciences Lawyers, 2018

• “Lawyer of the Year” - Best Lawyers in Canada (Intellectual Property Law: Toronto), 2010, 2013 and 2021

• “Patent Litigator of the Year” - Benchmark Canada, 2013 and 2015

• AV® Preeminent™, by Martindale-Hubbell, continuously since 1989

• “Star” - LMG Life Sciences

• Luminary - World Trademark Review 1000

• “Global Leader” - World Trademark Review 1000, 2016-2019

• Acritas Star™ Lawyer, 2016-2019

• “Star Individual” - Chambers Canada (IP Litigation)

• “Litigation Star” - Benchmark Canada (IP Litigation)

• “Leading Lawyer” - The Legal 500 Canada

• “Patent and Trademark Star” - Managing Intellectual Property

• “Thought Leader (Patents)” - Who's Who Legal

Career

• Partner, Gowling WLG (Canada) LLP - 2020 to present

• Partner, DLA Piper (Canada) LLP - 2016 to 2019

• JAMS Panel member - 2013 to 2016

• Partner, Dimock Stratton LLP, Barristers and Solicitors and Patent and TradeMark Agents - 1994 - 2016

• Partner, Sim, Hughes, Dimock, Barristers and Solicitors, and Sim & McBurney, Patent and Trademark Agents,
  practising primarily in intellectual property and civil litigation - 1982 - 1994

• Associate Lawyer, Donald F. Sim, Q.C., practising primarily in intellectual property and civil litigation - 1976 - 1982

• Articled Student-at-Law, Donald F. Sim, Q.C. - 1974-1975

Appearances in Supreme Court of Canada

Whirlpool v Camco (General Electric) [2000] 2 S.C.R. 1067

This is one of the two seminal cases on patent claim construction.

Kirkbi AG (Lego) v Ritvik Holdings Inc (Mega Bloks) [2005] 3 S.C.R. 302

This is the leading case on the constitutionality of section 7(b) the Trademarks Act and the law of functionality of trademarks.

Robertson v Thomson Publishing (Globe & Mail) [2006] 2 S.C.R. 363

This is the leading case on copyright in published text stored in databases.

Society of Composers, Authors & Music Publishers of Canada v Bell Canada [2012] S.C.R. 36

Intervention on behalf of the Canadian Federation of Law Societies in a case on fair dealing for purposes of research.

Memberships

• Law Society of Upper Canada, Member since 1976

• Law Society of Upper Canada (Ontario)

  • Founding Chair, Intellectual Property Law Specialty Committee (1990-1998)

  • Founding Chair of IP Year in Review Lectures (1995)

• Canadian Bar Association, member since 1974

• Canadian Bar Association, Chair, Court Practice Committee, Intellectual Property Law Section (1988-1993)

• Founding Chair of Federal Court Judges’ Dinner (1991)

• Advocates’ Society

  • Member since 1982, Director (1998-2000)

  • Education Committee (2001-2002)

  • Sub-committee drafting Principles of Civility for Advocates (2000)

• Association of Professional Engineers of Ontario, Member since 1982

• Intellectual Property Institute of Canada (I.P.I.C.), Fellow since 1976

• I.P.I.C. Trademarks Office Liaison Committee (1982-1984)

• American Bar Association, Member since 1986

• American Bar Association, Chair, International Law Subcommittee of Patents and Trademarks (Canada) (1990-1992)

• American Bar Foundation, Fellow since 2013

• American Intellectual Property Law Association, Member since 1986

• International Bar Association, Member since 1990

• American Counsel Association (Intellectual Property), Member since 1991

• International Trademark Association, Canadian Panel of Neutrals for Mediation and Arbitration, Member since 2012

• American College of Trial Lawyers, Complex Litigation Committee, Fellow since 2007

• Litigation Counsel of America, Fellow since 2013

• Chartered Institute of Arbitrators, Fellow since 2013

• International Mediation Institute, Certified Mediator and Panel Member since 2016

• IP Neutrals of Canada, Member since 2011

Editorial Appointments

• Editor-in-Chief - Intellectual Property (five volumes) Disputes, Resolutions and Remedies, Thomson-Reuters - 2002-Present

• Contributing Editor and Member of Advisory Board - Practical Law Canada, Thomson Reuters - 2015-2019

• Editor-in-Chief - Intellectual Property Journal, Federated Press - 2004-2012

• Contributing Editor - Intellectual Property Journal, Federated Press - 1996-2003

• Contributing Editor - Editorial Board of Canadian Commercial Law Guide, CCH Canadian - 1995-2000

Teaching Appointments

• Lecturer in LL.M. program for Osgoode Hall Law School of York University (Intellectual Property Remedies),
  tri-annually (1998-2016)

• Lecturer in Guest Speaker Series in Patents at Osgoode Hall Law School on “Patent Specifications, Claim Construction and Patent Infringement”, annually (2003-Present)

• Lecturer at “Understanding the Business of Copyright – Exclusive Rights in Copyright and Some Neighbouring Rights, Too”
  IPIC Course in Copyright, McGill, annually (2002-2008)

• Lecturer in LL.B. program for Queen’s University Law School (Advanced Patents), autumn semester 2000

Community Service

• United Way GTA - Member of Major Individual Gifts Cabinet (2009-2020)

• Big Brothers of Toronto

  • Big Brother (1976 -1982)

  • Big Brother of the Year, Toronto (1979)

  • Director (1979 -1982)

  • Chair of Publicity and Recruitment Committee (1980 -1982)

  • Fundraising Cabinet Member (2021-Present)

• Advocates Society - Director (1998-2000)

• PARTEQ Innovations - Queen's University, Director (2012-2017)

Selected Professional Activities

• Organized the first Federal Court Judges’ Dinner as chair of the CBA Court Practice Committee

• Initiated the Certification of IP Specialists for the Law Society as chair of the Committee for the Certification of IP Lawyers

• Organized the first IP Year in Review for the Law Society as chair of the Committee for the Certification of IP Lawyers

• Founded the Harold G Fox IP Moot

• Organized the first Harold G Fox IP Lecture

• Participated in writing the Principles of Civility for the Advocates Society of Ontario