Keith Bird 

Keith Bird

Toronto
Brookfield Place, Suite 4400
181 Bay Street
Toronto, Ontario M5J 2T3

t: 416.307.4205
e: keith.bird@mcmillan.ca

overview

Keith Bird is a partner in the firm's Toronto office and practices exclusively intellectual property law. Keith advises clients about all aspects of IP including licensing, patent freedom to operate, infringement and validity opinions, due diligence and patented medicines regulatory advice. He has successfully advised and represented clients in complex patent prosecution and litigation matters involving such diverse technologies as: engine oil additives, mass spectrometers, television audience measuring devices, postage meters, modular housing, fire simulators, fibre optic communication systems, pharmaceuticals, inventory control systems, farm machinery, oil patch and tar sand advancements, cell phones, animation engines, OLED screens, water coolers, mobile commerce applications and telecommunications security. Keith has been involved in the conduct of patent, industrial design, trade mark and copyright litigation before the Federal Court of Canada, the Federal Court of Appeal, the Ontario Superior Court and Court of Appeal, and the Supreme Court of Canada.

Keith has assisted a variety of clients in commercializing their intellectual property in sectors such as health care, consumer products, entertainment and sports, information technology and manufacturing and is known for building valuable patent and trade mark portfolios for many companies.

Keith is well respected by his clients and colleagues for his ability to analyze and interpret complex patents. Keith's background as a research physicist specializing in thin films and magneto-resistance has resulted in a deep understanding of a broad spectrum of technologies.

Keith was qualified as an expert in Canadian patent law by the Royal Courts of England and Wales in December 2009 when he testified as an expert witness in the important patent agent negligence case, Andrew Robert England Kerr v. Laurence Shaw & Associates Limited, [2010] Case No: HC08 C02343.

Representative Matters

Selected Patent Counsel Matters:

  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No.: T-1745-12
  • M & I Transfer Products Limited v. Mafna Air Technologies Inc., Court File No. T-1032-08
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-649-08
  • Tamglass Ltd. OY v. Horizon Glass & Mirror Ltd. et al., Court File No. T-1108-07
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-1176-06
  • Pitney Bowes Inc. et al. v. Neopost, S.A. et al., Court File No. T-1817-02
  • Nielson Media Research Inc. et al v. Taylor Nelson Sofres PLC and BBM Bureau of Measurement Court File No. T-2298-00
  • Accardis Systems, Inc. v. Transformix Engineering Inc., Court File No. T-1105-00
  • Colt Engineering Corporation et al v. UIL Inc. et al., Court File No. T-928-00
  • Dana Canada Inc. v. Lubrizol Corporation et al., Court File No. 00-CV-190003CM
  • Symtron Systems Inc. v. ICS International Code Fire Services Inc., Court File No. T-1244-99
  • Elkay Manufacturing Company v. Les Produits Thermo-Concepts Inc., Court File No. T-1939-98
  • Elkay Manufacturing Company v. Addico Products Inc., Court File No. T-1938-98
  • ONEAC Corporation v. Raychem, Court File No. T-484-97
  • Intellectual Property Developments Inc. et. al. v. Rogers Communications Inc. et. al., Court File No. T-2300-96
  • Halford et al. v. Seed Hawk Inc. et al., Court No. T-2406-93
  • Imperial Oil Ltd. et al. v. Lubrizol Corp. et al., Court File No. T-577-87

Presentations

Intellectual Property Ownership Issues
Practicing Intellectual Property Law

Publications

Last Chance for Late National Phase Entry into Canada
TOP TWELVE THINGS TO KNOW - New Canadian Trademarks Act June 17, 2019
The Hague System For Industrial Designs is in Force in Canada
Short Window of Opportunity to Take Advantage of Canada's Late National Phase Entry Regime
Significant Differences Between Canadian and American Patent Law (Part 2)
Significant Differences Between Canadian and American Patent Law
"Small Entity" Status – Improved but Perhaps not Perfected
Patents; Industrial Design
Intellectual Property (Patent) Litigation: Recent Developments of Importance
Statutory Damages for Copyright Infringement
"Small Entity" Relief About to Expire
"Small Entity" Status Continues to Wreak Havoc – But the End is in Sight
Supreme Court Dismisses Application for Leave to Consider Small Entity Status
Dutch Industries to be Statutorily Overruled
Choosing a Domain Name May Require More Homework
Tips on Conducting Your Own Patent Search
New Time Limit for Filing National Patents Under the Patent Cooperation Treaty
Domain Name Issues in Commercial Transactions
TRIPs Amendment May Extend Term of Protection
Bill Introduces Additional Retroactive Patent Protection
Anticipated Patent Act Amendment May Extend Term of Protection for Certain Patents
Giant Magnetoresistance in Electrodeposited Ni/Cu and Co/Cu Multilayers
Giant Magnetoresistance in Electrodeposited Nickel-Copper and Cobalt-Copper Multilayers

News

71 McMillan Lawyers Named in the 2020 Edition of Best Lawyers in Canada
McMillan LLP Once Again Recognized as a Top Patent, Trademark and Copyright Firm in Managing Intellectual Property's IP STARS
65 McMillan Lawyers Named in the 2019 Edition of Best Lawyers in Canada
Managing Intellectual Property has once again recognized McMillan LLP among the leading Canadian firms in the 2018 edition of IP Stars
Margaret McNee recognized as Mutual Funds Lawyer of the Year, along with 58 McMillan Lawyers in the 2018 Best Lawyers in Canada Report
Canadian Counsel to Refresco Group N.V. in its US$1.25 Billion Acquisition of Cott Corporation
61 McMillan lawyers recognized in The Best Lawyers in Canada 2017
60 McMillan lawyers recognized in the 10th Edition of The Best Lawyers in Canada
McMillan LLP ranks among top Canadian patent and trademark firms in Managing Intellectual Property's IP Stars Handbook

Education

  • Registered Canadian and US Patent Agent
  • Registered Canadian Trade-mark Agent
  • University of Windsor, LLB - 1997
  • University of Windsor, M.Sc. Physics - 1994
  • University of Windsor, B.Sc. (Hons.) Physics - 1990

Year Of Call

  • Called to the Ontario bar - 1999

Practices

patents
trademarks
copyright
industrial designs
confidential information
intellectual property
intellectual property litigation
licensing

Industries

applied technology
automotive
energy
media, communications and entertainment
life sciences

Teaching Engagements

  • Adjunct Professor - Patent Law, Faculty of Law, University of Windsor, 2004 - 2010 
  • Lecturer, Intellectual Property Institute of Canada's Patent Agent Training Course – 2013 to present
  • Instructor, distance-learning component of the Intellectual Property Institute of Canada's Patent Agent Training Course, 2010 to present

Community Involvement

  • Captain and coach of Toronto Forest men's competitive recreational soccer team – 1997 to present
  • Captain of O'Connor Hills inter-county B tennis team – 2008 – 2010; member of team 2005 - present

Awards & Rankings

  • Recognized by Best Lawyers in Canada (2020) as a leading lawyer in the area of Intellectual Property Law
  • Listed in 2019 Managing Intellectual Property's IP Stars - The Guide to the World's Leading IP Firms and Practitioners
  • Recognized by Best Lawyers in Canada (2019) as a leading lawyer in the area of Intellectual Property Law
  • Martindale-Hubble Peer Review rated AV – Preeminent – 2013 to present
  • Listed in Best Lawyers in Canada as a leading practitioner in Intellectual Property Law 2016 to present
  • Selected as one of the world's leading patent practitioners and included in the Guide to the World's Leading Patent Law Practitioners by Legal Media Group/Managing Intellectual Property from 2007 - 2017
  • Finalist, Lexpert's Rising Stars Top 40 Under 40 - 2007
vcard

Keith Bird is a partner in the firm's Toronto office and practices exclusively intellectual property law. Keith advises clients about all aspects of IP including licensing, patent freedom to operate, infringement and validity opinions, due diligence and patented medicines regulatory advice. He has successfully advised and represented clients in complex patent prosecution and litigation matters involving such diverse technologies as: engine oil additives, mass spectrometers, television audience measuring devices, postage meters, modular housing, fire simulators, fibre optic communication systems, pharmaceuticals, inventory control systems, farm machinery, oil patch and tar sand advancements, cell phones, animation engines, OLED screens, water coolers, mobile commerce applications and telecommunications security. Keith has been involved in the conduct of patent, industrial design, trade mark and copyright litigation before the Federal Court of Canada, the Federal Court of Appeal, the Ontario Superior Court and Court of Appeal, and the Supreme Court of Canada.

Keith has assisted a variety of clients in commercializing their intellectual property in sectors such as health care, consumer products, entertainment and sports, information technology and manufacturing and is known for building valuable patent and trade mark portfolios for many companies.

Keith is well respected by his clients and colleagues for his ability to analyze and interpret complex patents. Keith's background as a research physicist specializing in thin films and magneto-resistance has resulted in a deep understanding of a broad spectrum of technologies.

Keith was qualified as an expert in Canadian patent law by the Royal Courts of England and Wales in December 2009 when he testified as an expert witness in the important patent agent negligence case, Andrew Robert England Kerr v. Laurence Shaw & Associates Limited, [2010] Case No: HC08 C02343.

Selected Patent Counsel Matters:

  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No.: T-1745-12
  • M & I Transfer Products Limited v. Mafna Air Technologies Inc., Court File No. T-1032-08
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-649-08
  • Tamglass Ltd. OY v. Horizon Glass & Mirror Ltd. et al., Court File No. T-1108-07
  • Scott Blair v. Attorney General of Canada and the Commissioner of Patents, Court File No. T-1176-06
  • Pitney Bowes Inc. et al. v. Neopost, S.A. et al., Court File No. T-1817-02
  • Nielson Media Research Inc. et al v. Taylor Nelson Sofres PLC and BBM Bureau of Measurement Court File No. T-2298-00
  • Accardis Systems, Inc. v. Transformix Engineering Inc., Court File No. T-1105-00
  • Colt Engineering Corporation et al v. UIL Inc. et al., Court File No. T-928-00
  • Dana Canada Inc. v. Lubrizol Corporation et al., Court File No. 00-CV-190003CM
  • Symtron Systems Inc. v. ICS International Code Fire Services Inc., Court File No. T-1244-99
  • Elkay Manufacturing Company v. Les Produits Thermo-Concepts Inc., Court File No. T-1939-98
  • Elkay Manufacturing Company v. Addico Products Inc., Court File No. T-1938-98
  • ONEAC Corporation v. Raychem, Court File No. T-484-97
  • Intellectual Property Developments Inc. et. al. v. Rogers Communications Inc. et. al., Court File No. T-2300-96
  • Halford et al. v. Seed Hawk Inc. et al., Court No. T-2406-93
  • Imperial Oil Ltd. et al. v. Lubrizol Corp. et al., Court File No. T-577-87
August 2019
Last Chance for Late National Phase Entry into Canada

Intellectual Property Bulletin

November 2018
The Hague System For Industrial Designs is in Force in Canada

Intellectual Property Bulletin

Spring 2008
"Small Entity" Status – Improved but Perhaps not Perfected
Intellectual Property Brief Spring 2008
January 2008
Patents; Industrial Design
Contributer, 2006-2008
Ultimate Corporate Counsel Guide, CCH
2008
Intellectual Property (Patent) Litigation: Recent Developments of Importance
Co-authored: Donald MacOdrum, Keith Bird and O. Del Vecchio
The 2008 Guide to the Leading 500 Lawyers in Canada, ALM/Lexpert
Fall 2007
Statutory Damages for Copyright Infringement
InBrief Fall 2007
Winter 2006
"Small Entity" Relief About to Expire
Intellectual Property Brief Winter 2006
Summer 2005
"Small Entity" Status Continues to Wreak Havoc – But the End is in Sight
Intellectual Property Brief Summer 2005
Spring 2004
Supreme Court Dismisses Application for Leave to Consider Small Entity Status
Lang Michener Intellectual Property Brief
October 2003
Dutch Industries to be Statutorily Overruled
Lang Michener Intellectual Property Brief
November 2002
Choosing a Domain Name May Require More Homework
Lang Michener Intellectual Property Brief
May 2002
Tips on Conducting Your Own Patent Search
BIOTECH
April 2002
New Time Limit for Filing National Patents Under the Patent Cooperation Treaty
Lang Michener Intellectual Property Brief
July 2001
Domain Name Issues in Commercial Transactions
Lang Michener Intellectual Property Brief
April 2001
TRIPs Amendment May Extend Term of Protection
The Lawyers Weekly, Vol. 20, No. 46
April 2001
Bill Introduces Additional Retroactive Patent Protection
www.internationallawoffice.com
March 2001
Anticipated Patent Act Amendment May Extend Term of Protection for Certain Patents
Lang Michener Intellectual Property Brief
April 1995
Giant Magnetoresistance in Electrodeposited Ni/Cu and Co/Cu Multilayers
Journal of the Electrochemical Society, Vol. 142, No. 4
January 1994
Giant Magnetoresistance in Electrodeposited Nickel-Copper and Cobalt-Copper Multilayers
University of Windsor Press
March 2003
Intellectual Property Ownership Issues
Lang Michener 5 O'clock Lecture Series
March 2003
Practicing Intellectual Property Law
University of Toronto and Osgoode Hall Career Day