Education

University of Texas (Austin)

B.A., History, 1980
  • honors

University of Texas (Austin)

B.S., Aerospace Engineering, 1986
  • high honors

University of Washington (Seattle)

J.D., 1995

Admissions

  • Province of Ontario (2007)
  • State of New York (2006)
  • Registered to practice in patent cases before USPTO (1997)
  • United States Court of Appeals for the Federal Circuit (1996)
  • United States Court of Appeals  for the Ninth Circuit (1995)
  • United States District Court for the District of Western Washington State of Washington (1995)
  • State of Washington (1995)

Matthew J. Marquardt

Partner

Overview

Matthew Marquardt has more than twenty years’ experience advising clients concerning intellectual property rights.  As a dual citizen who has practiced in both the United States and Canada, he is particularly well positioned to assist innovators with cross-border IP issues. 

Matt has represented clients in all areas of technology, with special interests and experience in computer-related and sustainable technologies.

Other experience includes service as director of a publicly-traded company, as well as several not-for-profit and charitable institutions.

Prominent Assignments

Acquiring Intellectual Property

  • Early-stage idea development and advice for identifying and protecting all types of intellectual property
  • Obtaining patents in Canada, the U.S., and elsewhere covering a wide range technologies, including:     
    • Electronic payment and financial transaction systems         
    • Nanoparticle particle detection and identification
    • Fuel treatments
    • Telephone communications
    • Vehicle monitoring and control; zero-emissions vehicles
  • Trademarks
    • Selecting marks and building brands
    • Filing and prosecuting trademark applications
      • Defending and prosecuting trademark oppositions
  • Industrial Designs
    • Practical approaches to the protection of new consumer industrial products

Defending and Enforcing Intellectual Property

  • Federal Court actions in defense of patent, trademark, and copy rights
  • Patent re-examination and re-issue proceedings
  • Trademark oppositions
  • Domain name disputes

Managing Intellectual Property

  • Purchase and licensing of intellectual property rights
  • IP Portfolio management
  • IP valuation
  • Employee and contractor intellectual property ownership and assignment agreements
  • Identifying and approaching venture partners

Professional Involvement

  • Board of Advisors, Co-Power Inc.
  • Former Director, Chair of Executive Compensation and Corporate Governance Committee, Titan Logix Corp. (TSV:TLA)
  • American Intellectual Property Law Association
  • Institute of Corporate Directors

Community Involvement

  • Founder, Catholic Voice
  • Director, Saint John Neumann Foundation
  • Pax Christi International – Volunteer Advocate for Disarmament and Human Rights
  • Director, Toronto Standard Condominium Corporation 1598

Publications/Presentations

  • “Canadian Government Seeks Input for Innovation Agenda,” Dickinson Wright LLP, June 2016
  • Moderator, Journalist Panel “Current Trends in Parliament Relating to Technology and Innovation in Canada,” TechConnex & North of 41, Ottawa, May 2016
  • “Responsibilities of Corporations Toward a Shrinking World,” Direct Sellers Association Conference, Niagara, Ontario, June 2015
  • “Cutting the Cross-Border Barbed Wire:  Changes to Canadian Intellectual Property Law,” DRI Intellectual Property Litigation Seminar, Chicago, Illinois, May 2015
  • UN Forum on Business and Human Rights, Representative of Pax Christi International, Geneva, Switzerland, 2014
  • “More Changes to Canada’s Intellectual Property Laws on the Way”, Dickinson Wright LLP, October 2014
  • “Major Changes Enacted to Canadian Trademark Law,” Dickinson Wright LLP, August 2014
  • “Business Method Patents, A Guide to Understanding Risks and Opportunities,” Norton Rose LLP, November 2011 and April 2012
  • Bilski Bungled: Begging Bets on the Future of Business-Related Patents,” Norton Rose Canada LLP, October 2011
  • “Patent Reform’s Weakened Grace Period: It’s Effect on Startups, Small Companies, University Spin-Offs, and Medical Innovators,” with David Boundy, Lippincott Williams and Wilkins, March 2010
  • “Recent U.S. Patent decisions: The Phillips and RIM cases,” Intellectual Property Institute of Canada Symposium on Pharmaceutical issues in IP and Business IP, October 2005
  • “Implications of Business Method and Software Patents for Canadian Businesses,” Canadian Institute Conference on Intellectual Property License Agreements, June 21, 2005

Experience

Prior to practicing law, Matt served as a policeman in Dallas, Texas, and as a senior/specialist engineer for the Boeing Company in Seattle, Washington. He continues to be involved in the community, serving on the boards of both public and private enterprises, and in peace and justice initiatives at both the local and international levels.          

Matt serves proudly as an umpire for the Birchmount Baseball League.