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Theodore Sum’s practice covers all aspects of intellectual property, with particular emphasis on licensing and commercialization, patent and trade-mark prosecution, intellectual property due diligence, online issues including privacy and security and counselling Canadian, U.S. and foreign clients on the strategic management and exploitation of their intellectual property assets.
Mr. Sum works with domestic and international clients in numerous industries and with varied technologies and intellectual property, including clients in the high tech, software, energy, clean tech, aerospace, defence, robotics, telecommunications, transportation, mining and forestry industries. He has extensive experience advising on a broad range of intellectual property matters involving the research, development, acquisition, clearance, manufacturing, marketing, distribution, supply and exploitation of products, processes, devices, systems and related intellectual property. Mr. Sum has also built a strong practice in the development and execution of revenue generating licensing programs, including structuring, drafting, negotiating and rendering opinions on license agreements for various types of intellectual property-related assets and rights.
Mr. Sum is regularly involved in advising on intellectual property matters relating to research and commercial collaborations and joint ventures, strategic alliances, technology transfers, IP-related commercial contracts (including manufacturing, distribution, supply or technical assistance agreements), marketing, advertising and merchandising agreements, and e-commerce and other online-related agreements.
Mr. Sum's technical training involved a combined focus on mathematics and computer science. His knowledge of software systems and architectures, computational science, modeling, programming languages, data structures and design, and computer graphics are an additional asset to clients operating in these areas.
Mr. Sum is frequently involved in public speaking engagements covering a broad range of intellectual property and information technology issues. Mr. Sum is also the author of several papers on a variety of intellectual property and information technology law issues. Mr. Sum has been an instructor at the University of British Columbia Law School for many years, teaching intellectual property law. He has also been a lecturer on licensing at the University of Victoria Law School.
Rankings and recognition
- Recognized as being among the world's 250 leading patent and technology licensing lawyers in IAM Licensing 250 – The World's Leading Patent and Technology Licensing Lawyers 2011/2012
- Selected to appear in The Best Lawyers in Canada under Intellectual Property Law
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Memberships
- Member, Licensing Executives Society (United States and Canada)
- Member, Canadian Corporate Counsel Association
- Member, Vancouver Board of Trade
- Member, Canadian Bar Association
Speaking engagements
- "Profiting from your Organization's IP Licenses," Canadian Institute conference Protecting Intellectual Property in the Energy Sector, Calgary, AB, October 2007
- "Select IT Issues for Customers," Canadian Airport Procurement Association, Banff, AB, June 2007
- "Protecting Key IP Assets: Patents and Confidential Information," Law for Project Managers Course, University of Calgary, Calgary, AB, October 2006
- "Best Practices for Drafting IP Licensing Agreements," Canadian Institute conference Negotiating and Drafting Intellectual Property License Agreements, Calgary, AB, June 2006
- "Advanced IT and IP Legal Issues – When Deals Go Bad," Canadian Airport Counsel Committee Association, Vancouver, April 2006
- "License Agreements: Common Pitfalls," Insight Information conference Negotiating and Drafting Major Business Agreements Conference, Vancouver, March 2006
- "Key Aspects of IP License Agreements," Canadian Institute conference Key Business Agreements, Vancouver, March 2006
- "Legal Considerations with Open Source Licensing," Ninth Annual Canadian IT Law Association Conference, Montreal, October 2005
- "Legal Considerations with Open Source Licensing," Licensing Executives Society (United States and Canada) Annual Meeting, Pheonix, AZ, October 2005
- "Competition Law Issues When Licensing Intellectual Property: Tips and Traps," Canadian Institute Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2005
- "Negotiating and Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute for Professional Development, Vancouver, April 2005
- "Traditional and Internet Software Licensing Issues," Licensing Executives Society Vancouver Chapter IP Seminar, Vancouver, January 2005
- "Copyright Issues for Educators," Simon Fraser University, Burnaby, BC, October 2004
- "Protecting IP in Cyberspace: Patenting and Commercializing Software and Business Methods in a Virtual World," Canadian Corporate Counsel Association Annual Meeting, Winnipeg, MB, August 2004
- "Protecting IP in Cyberspace: Contracting Challenges for Licensors, Service Providers, Customers and Users," International Intellectual Property Law Conference, University of Victoria, St. Peter's College of Oxford University and University of Illinois, Vancouver, July 2004
- "Hot Topics in Licensing," Vancouver Chapter of the Licensing Executives Society (United States and Canada), Vancouver, January 2004
- "Issues and Problems in Software and IT Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
- "Workshop on Software Development Agreements," Federated Press conference Negotiating and Drafting IP Licensing Agreements, Toronto, June 2004
- "Key Issues in Software Development Agreements and Software Licenses," Canadian Corporate Counsel Association, Winnipeg, MB, May 2004
- "Open Issues on Open Source," Intellectual Property Institute of Canada Spring Conference, Ottawa, April 2004
- "Drafting License Agreements to Maximize Your IP Value," Negotiating and Drafting Major Commercial Agreements and Transactions, Institute of Professional Development Conference, Vancouver, March 2004
- "Commercializing Research Tools," AUTM Annual Meeting, San Antonio, TX, March 2004
- "The Art and Science of Drafting License Agreements," Licensing Executives Society (United States and Canada) Annual General Meeting, San Diego, CA, September 2003
- "Troublesome Licensing Issues: Reach-Through Royalties and Open Source," Intellectual Property Institute of Canada Annual General Meeting, Halifax, September 2003
- "Pitfalls to Mishandling Technology Improvements," Licensing Executives Society and the Canadian Bar Association, Edmonton, AB, November 2002
- "Recent Developments on Copyright, Privacy and Data Protection in Canada," International IP Conference, Chicago, October 2002
- "The Responsibility to Obtain and Maintain Intellectual Property," Canadian Institute conference Advanced Course on Negotiating and Drafting Intellectual Property License Agreements, Vancouver, June 2002
- "Key Terms in Software Licensing and Software Development," IT Law Spring Training Program, IT.Can, Vancouver, May 2002
- "Strategies for Protecting an Employer's Confidential Information and Other Intellectual Property," Canadian Institute conference Advanced Forum on Employment Law, Vancouver, November 2001
Teaching activities
- Instructor, University of British Columbia Law School, Vancouver, 2001 to 2006
- Lecturer on the topic of licensing, University of Victoria Law School, Victoria, BC, 2002
Publications
- "Licensing Issues with Research Tools and Reach-Through Royalties," (2005) 2 Canadian Intellectual Property Review 21.1
- "Open Issues on Open Source," (2005) 1 Canadian Intellectual Property Review 21.1
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