Jonathan N. Auerbach

Jonathan Auerbach

Jonathan N. Auerbach

Partner, Lawyer, Stikeman Elliott

Biography

Jonathan Auerbach is a partner, lawyer, patent agent and trade-mark agent in the Intellectual Property Group of Stikeman Elliott’s Montréal office. Mr. Auerbach has a broad range of experience in all aspects of intellectual property including litigation, prosecution, licensing and counseling, with a particular emphasis on patents, trade-marks and copyrights.

Mr. Auerbach conducts patentability searches, prepares and prosecutes patent applications, and provides infringement and validity opinions in the mechanical, chemical and biotechnological fields.  He also has extensive experience in the acquisition, clearance, prosecution, enforcement and licensing of trade-marks including representing clients in trade-mark opposition proceedings and Section 45 expungement proceedings. He has also advised clients on Internet-related aspects of trade-mark and copyright law including representing clients in domain name disputes.

Mr. Auerbach also practices intellectual property relating to business law including the management and commercialization of intellectual property and the identification of intellectual property issues in corporate transactions. In this regard, Mr. Auerbach is routinely called upon to manage IP due diligence investigations and to review and analyze commercial agreements that relate to IP and information technology. Mr. Auerbach also prepares licence agreements, distributions agreements and sales agreements as they pertain to intellectual property, information technology, software, e-commerce and related matters.

Representative Work

Mr. Auerbach has represented many clients in respect with anti-counterfeiting and intellectual property enforcement matters in Canada including acting for the Union of European Football Association (UEFA) during the EURO 2012 soccer championship and the Fédération Internationale de Football Association (FIFA) during the FIFA World Cup in 2010.

Mr. Auerbach manages the patent, trade-mark and industrial design portfolios of many international and domestic clients, including directly being involved with the preparation and filing of applications and prosecution of same through to registration.

Mr. Auerbach has also recently been involved in the following matters with an emphasis on the provision of intellectual property advice:

  • Acquisition by Bain Capital, LLC of Canada Goose, one of the world’s leading manufacturers of extreme weather outerwear.
  • Acquisition by Mitsubishi Tanabe Pharmaceutical of Medicago Inc., a biopharmaceutical company focused on developing vaccines based on proprietary manufacturing technologies and Virus-Like Particles, for $357 million.
  • Acquisition by Apax Partners of Garda World Security Corporation for $1.1 billion in cash, including assumed debt (acting as Canadian counsel).
  • Yellow Media Inc.’s $850 million recapitalization transaction.
  • Acquisition by Toshiba Tec Corp. of International Business Machines Corp.’s point-of-sale terminal business for US$850 million (acting as Canadian counsel).
  • Acquisition by Akamai Technologies, Inc. of Blaze Software Inc.
  • Acquisition by Sofina Foods Inc. of Janes family Foods Ltd.
  • Sale by Yellow Media Inc. of Trader Corporation to funds advised by Apax Partners.
  • Take-over bid by Valeant Pharmaceuticals International, Inc. for all of the shares of Afexa Life Sciences Inc.
  • Acquisition by Eurazeo, a French private equity firm, of 3S Photonics S.A., a manufacturer of chips, optical discrete modules and passive components for the laser, sensing and telecom markets.
  • Acquisition by Cogeco Inc. of all of the shares of Metromedia CMR Plus Inc.
  • Sale by Cogeco Diffusion Inc. of two radio stations in Québec city to Leclerc communication Inc.
  • Acquisition by Cogeco Inc. of all of the shares of Quiettouch Inc., a provider of outsourced managed IT and infrastructure services.
  • Acquisition by Cogeco Inc. of the Québec radio stations of Corus Entertainment Inc., including CKOI and CKAC.
  • Sale by George N. Gillett of the Montreal Canadiens NHL team to a consortium led by the Molson family.

Education

Université de Montréal (LLB, 1999), University of Ottawa (LLB, 2000).

Prior to attending law school, he earned a Bachelor of Science degree in Anatomy and Cell Biology from McGill University (BSc, 1996) .

Bar Admission

Québec, 2010

Ontario, 2002

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