Bill Herman M.Sc., BCL, LLB
bherman@hermanip.com
With over 35 years of experience practicing Intellectual Property Law with a principal focus on patent due diligence, patent prosecution, trademark due diligence and prosecution, assessing infringements of patents, trademarks and copyright, and representing clients in the Federal Court of Canada and before the Trademarks Opposition Board, Bill is an expert in the practical intellectual property concerns of established and emerging technology and product development companies and their financiers.
Education and Qualifications
M.Sc. Genetics, McGill University
Bachelors of Common Law/Civil Law, McGill University
Member of the Ontario Bar
Registered Trademark Agent
Certificate in Intellectual Property Licensing
Memberships
American Intellectual Property Law Association (AIPLA)
Intellectual Property Institute of Canada (IPIC)
Toronto Intellectual Property Group (TIPG)
Practice Areas
Patent due diligence and “freedom-to-operate” opinions
Trademark due diligence and prosecution
Patent prosecution
Practice before the Canadian Trademarks Opposition Board including Trademark oppositions and Trademark expungement proceedings
Federal Court of Canada – Trademark and Copyright litigation
Patent and Trademark Licensing and License Option Agreements
R & D collaborations and related transactions
Professional Expertise
Patent due diligence in life sciences on behalf of companies and financiers
Patent prosecution – Canada, PCT, USA, Europe
Trademark due diligence and Trademark Opposition work – Canada
Trademark prosecution Canada, USA, Madrid Protocol, Europe
Litigation – Copyright (Plaintiff and Defendant)
Counseling with respect to patent avoidance
Preparation of patent, trademark, software and know-how licenses, and research and collaboration agreements
Collaborations between industry, hospitals and academic and government
Life Science Focus
Bill has a wealth of experience conducting patent due diligence in the life science field for emerging life science companies and investors in these companies in a broad range of scientific disciplines.
Bill also has 10 years of pharmaceutical industry experience as patent counsel in Fortune 500 and emerging life sciences companies, and 14 years of work experience focused on patent prosecution and due diligence in the medical devices field.
Bill has considerable experience in several scientific disciplines including anti-cancer therapeutics, monoclonal antibodies, biologics including generic biologics, drug delivery systems, intravascular devices, probiotics and respiratory support devices. Bill has drafted and reviewed related License, R&D Collaboration and License Option Agreements.
Work History
After completing his post-secondary science education at McGill University, in conjunction with the Montreal Children’s Hospital, with a Masters of Science in Genetics and completing McGill University’s National Law Program, Bill was articled at Oslers in Ottawa and spent several years at Oslers practicing Intellectual Property Law with an emphasis on patent prosecution and patent due diligence, specializing in Life Sciences.
He then moved to Toronto to join Bereskin & Parr as an Intellectual Property lawyer specializing in patent prosecution in the Life Science field.
Bill was subsequently recruited as a patent specialist by the pharmaceutical industry and spent 10 years conducting patent due diligence and managing litigation in this industry.
Bill then spent several years conducting patent due diligence and reviewing R&D agreements for a Canadian pharmaceutical company and coordinating the development and protection of Intellectual Property assets for investors in an emerging immunotherapeutics company.
Beginning in 2006, Bill co-founded several full-service Intellectual Property firms with patent agents, including their successor firm, Herman IP.