Yuri Chumak is a lawyer, patent agent and trademark agent and has practiced exclusively in the area of intellectual property law since 2006. Yuri has a wealth of experience, gained with two leading boutique IP law firms in Toronto and the IP groups of two major full-service law firms on Bay Street as well as his own IP law firm. Additionally, his technical background and undergraduate degree includes the fields of software and computer science.
Yuri is involved in all aspects of the clearance, prosecution, and enforcement of intellectual property rights including patent, design, trademark and copyrights. He has extensive experience in complex trial and appellate advocacy, intellectual property applications and agreements, technology licensing, and privacy matters. Yuri is also engaged in domain name, advertising and marketing, and trade secret matters. He serves as an arbitrator deciding dot-ca domain name complaints filed with Resolution Canada.
Yuri prepares and prosecutes intellectual property applications relating to many technical fields. He conducts IP due diligence in support of technology and financing transactions.
He has advised clients, including a national retailer, with respect to product launch matters. He also prepares agreements and freedom-to operate, infringement, and validity opinions with respect to intellectual property matters.
Yuri has acted as trial and appellate counsel during a significant patent infringement and validity trial and appeal involving an innovative medical device. He has also served as counsel for several patentees asserting infringement of patents covering software, control systems, medicines, construction materials, and consumer products, among others. He has been lead counsel asserting or defending trademark infringement, patent infringement, copyright infringement, cybersquatting and software licensing claims.
Recently, Yuri has developed a copyright litigation practice, asserting and defending claims of infringement of artistic and musical works, as well as online piracy matters.
Education & Credentials
Education
Western University
LL.B., 2005Western University
B.Sc. (Hons), Computer Science, 2005Bar Admission
Spoken Languages
- English
- Ukrainian
Acknowledgements
- Canadian Legal Lexpert® Directory
- "Consistently Recommended," for Intellectual Property, 2022-2023
- "Repeatedly Recommended," for Intellectual Property, 2019, 2021
- IAM Patent 1000: World's Leading Patent Professionals
- "Highly Recommended," for Patent Prosecution, 2019-2024
- "Recommended," for Patent Prosecution, 2017-2018
- WTR Trademark 1000: World's Leading Trademark Professionals
- Silver Band for Trademark Prosecution and Strategy, 2022 - 2023
- Bronze Band for Trademark Prosecution and Strategy, 2021
- Silver, 2024
- IAM Global Leaders: World's Elite Patent Practitioners, 2020-2022
- IAM Global Leaders, 2024
- Martindale-Hubbell® “Distinguished" Peer Rating for High Professional Achievement, 2016-2022
- Managing Intellectual Property
- IP Stars, Notable Practitioner, 2024
Prominent Assignments
- Advised Schedule 1 bank with respect to launch of financial technology consumer app, including clearing and filing for design patents, and dealing with supplier agreements and ownership issues.
- Advised Canadian-based tele-communications company on patent strategy.
- Advised and represented a major European consumer brand, its North American licensee, and Canadian distributor on enforcement of trademark and trade dress rights in Canada against several suppliers of counterfeit goods, as part of a multidisciplinary team of litigation and IP Counsel.
- Advised European fashion brand on acquiring and enforcing trademark, design, and copyrights in Canada against imitators and producers of goods.
Professional Involvement
- Registered Canadian and US Patent Agent, 2009.
- Registered Canadian and US Trademark Agent, 2008.
- Fellow, Intellectual Property Institute of Canada (IPIC)
- Member, Canadian Bar Association (CBA)
- Member, American Intellectual Property Law Association (AIPLA) since 2009
- Member, International Trademark Association (INTA) since 2014
- Member, Toronto Intellectual Property Group (TIPG)
- Member, Toronto Computer Lawyers Group (TCLG)
Community Involvement
- Director and Corporate Secretary, Ivan Franko Homes Long-Term Care Home and Retirement Home
- Volunteer, Oakville Ridna Shkola School
Court Admissions
- Ontario Superior Court
- Federal Court of Canada
- Patent Appeal Board
- Trademark Opposition Board
Publications/Presentations
Publications
- Co-Author, “Canadian Patent Infringement: The Role of Non-Infringing Options in Profit Calculations and the Availability of Springboard Profits," Dickinson Wright Client Alert, Feb 2023
- Co-Author, "Expediting Examination: Pre-Assessment Letters," Dickinson Wright Client Alert, May 2022
- Co-Author, "Resetting the Clock: Changes to Canadian Trademark Regime You Need to Know About," World Trademark Review, April 2022
- Author, Lexis Practice Advisor, Chapter on “Experimental Use Exception in Patent Law” (forthcoming).
- Author, Social Media and the Courts, Chapter in "Social Media and Internet Law - Forms and Precedents", LexisNexis, 2014 (and 2nd edition, 2018).
- Author, E-Discovery in IP Litigation, Chapter in "Intellectual Property Litigation- Forms and Precedents ()", LexisNexis, 2016.
- Author of several articles published in the INTA Bulletin.
- Editor, ipatents.ca blog, Sep 2009 - present.
- Author, World Trademark Report, 13 articles published, 2007 - 2014.
- Co-author, Apotex Inc. v. Sanofi-Synthelabo Canada Inc. et al.: A landmark patent case decided by the Supreme Court of Canada, Canadian Intellectual Property Review, Jun 2009.
- Co-author, Patents for Computer-Implemented Inventions and Business Methods, a chapter in Electronic Commerce: A Practitioner's Guide, Carswell, first published Feb 2003, edited and updated Jun 2006.
- Co-author, Computer Contracts chapter in Canadian Forms and Precedents (Commercial Transactions), Butterworths, 2006.
Presentations
- Leadership Knowledge Cafe, Bar Association, Facilitator, Spring 2019.
- Western University, Faculty of Law, Advanced IP Course, Invited Mentor, 2019, 2017, 2015.
- High Tech Patents in a Healthcare Setting, St. Michael’s Hospital IT Seminar, Invited Speaker, 2019.
- Social Media Law, Ontario Bar Association. Invited Speaker, 2018.
- Fox Moot (IP) for law students, Invited Practitioner serving as Judge, 2018.
- Intellectual Property Litigation, Ontario Bar Association. Invited Speaker, 2016.
- IP Strategy for Social Entrepreneurs, Centre for Social Innovation. Invited Speaker, 2016.
- IP Strategy for Mobile and Saas Startups, Brightlane. Invited Speaker, 2015.
- E-Discovery in IP Litigation, IPIC. Invited Speaker, 2014.
- Cloud Computing and Confidentiality, Licensing Executives Society. Invited Speaker, 2014.
- High Tech Patents in a Healthcare Setting, Sick Kids IT Seminar, Invited Speaker, 2012.
- University of Toronto, Faculty of Law, Patent & Trade Secrets Law Course (Guest Lecturer), 2010 and 2011.
- Osgoode Hall Law School, York University, Toronto, LL.M. Program, Intellectual Property Law Course (Guest Lecturer), 2010.