Dr. Sean X. Zhang

Dr. Sean X. Zhang

Contact

416-369-7807
SZhang [at] dalelessmann.com

Education

  • J.D., University of Toronto
  • Ph.D. (Physics), California Institute of Technology
  • B.Sc. (Physics), Zhejiang University, China

Practice Description

Dr. Sean X. Zhang is an Ontario lawyer and a Partner in the Intellectual Property Group at Dale & Lessmann LLP. Dr. Zhang is also a patent agent registered to practice before the Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office. He is also a trademark agent registered with CIPO. Dr. Zhang advises clients on the development and enforcement of intellectual property (IP) protection of technology, including preparation and prosecution of patent applications, obtaining and enforcing patents, opinion work regarding patentability, trade-mark applications and trade-mark opposition proceedings, industrial design applications, infringement and validity of patent, trade-mark, and industrial design, and all aspects of the clearance, acquisition, enforcement and exploitation of patents, trade-marks, copyright, and industrial designs. He has drafted and prosecuted patent applications for clients in electrical, optical, mechanical and software fields, and in the automotive, healthcare and medical instrumentation, information and communications technologies (ICT), consumer products, data security and data acquisition, manufacturing process automation, and home automation industries. He also advises clients on licensing of IP, developing IP portfolios, as well as legal matters relating to information technology (IT), such as IT outsourcing, Internet law and electronic commerce. Dr. Zhang advises technology companies on corporate law matters and commercial transactions, and more generally on Canadian business law. Dr. Zhang supports these companies in their ongoing business operations and growth, with advice on shareholder and partnership agreements, financing and investment, business acquisition and employment and contractor relationships. Dr. Zhang also has an active China related practice. He advises Chinese clients on business interests in Canada, including commercial, corporate and immigration matters. He advises clients on cross-border transactions, M&A transactions and investments in Canada, and on establishing business presence in Canada. He works with a network of leading Chinese lawyers in China and assists clients developing businesses or solving legal problems in China. Dr. Zhang speaks frequently at international and domestic conferences on legal issues pertaining to protection and management of intellectual property and related cross-border issues and has been invited as guest lecturer or invited speaker at various IP training programs by U.S., Canadian and Chinese governments at all levels and by universities. Dr. Zhang is fluent in written and spoken Chinese. He graduated from university in China. Before practising law, he worked as a researcher in the U.S., Italy and Canada, and as a software engineer in both private and public companies in Canada.

Community Involvement

  • Canadian Fencing Federation (CFF), Board of Directors
  • Chinese Cultural Centre of Greater Toronto (CCC), Board of Directors

Professional Affiliations and Distinctions

  • Admitted to the Ontario Bar (Law Society of Upper Canada)
  • Registered Patent Agent, United States
  • Registered Patent Agent, Canada
  • Registered Trademark Agent, Canada
  • Fellow of the Intellectual Property Institute of Canada (IPIC)
  • Bank of Speakers, Canadian Intellectual Property Office
  • Member of the Licensing Executives Society
  • Member of the International Federation of Intellectual Property Counsel (FICPI)
  • Member IPIC Joint Liaison Committee - Patent, Joint Liaison Committee - Industrial Designs and Patent Legislation Committee
  • Former Mediator, China Council for the Promotion of International Trade (CCPIT)/China Chamber of International Commerce (CCOIC), Nanjing Sub-Center
  • Past Member of the Canadian Advisory Committee responsible for drafting and reviewing national and international standards in the information technology industry
  • Fluent in Chinese

Recent Presentations and Publications

  • “Patenting Strategies & Some U.S. Practice Points”, Hong Kong Science Park, Hong Kong, May 13, 2014
  • Trainer, “Contracts and Agreements in Tech Transfer”, Pre-Conference training program for tech transfer professionals, 2014 Beijing International Technology Transfer Conference, Beijing, China, April 12, 2014
  • Lecturer, “Some IP and other Legal Issues in Big Data and E-Commerce”, Rotman School of Management, University of Toronto, Toronto, Ontario, March 17, 2014
  • Invited Speaker, "Tech Transfer: Not just Tech and Money Transfers", Beijing International Technology Transfer Conference, Beijing, China, April 24, 2013
  • Panel Discussion: Intellectual Property Protection, Ontario-China Science & Technology Collaboration Forum, Toronto, Ontario, October 12, 2012
  • "IP Law Refresher & Practice Tips", LSUC accredited CLE program, Association of Chinese Canadian Lawyers of Ontario (ACCLO), Toronto, Ontario, September 17, 2011.
  • "R&D, Innovation and Leverage of Global IP Assets", Energy Connections Summit 2011, Canadian Manufacturers & Exporters (CME), Toronto, Ontario, May 4, 2011.
  • "China Proposes New Internet Regulations", Webinar at United States Department of Commerce, February 9, 2011.
  • "Cross-Border Deals - Some of The IP Issues", GCFF Toronto Conference 2010, Access Asian Capital Forum, Toronto, Ontario, October 15, 2010.
  • "Protecting and Licensing your Intellectual Property in China: Basic Steps and Recent Developments", Licensing Executives Society 2009 Annual Meeting, California, U.S.A., October 18 - 21, 2009.
  • Speaker - "Opportunities in China - and how not to put your IP at risk", Video Conference "Opportunities in the Auto Sector in China", Ontario Ministry of Economic Development and Trade, with video links with sites in Windsor and Toronto in Ontario, and Shanghai, Beijing and Chongqing in China, March 18, 2008.
  • "Management of Intellectual Property", Schulich School of Business, York University, Toronto, Ontario, November 13, 2007.
  • "Interface between Industrial Design and Copyright in Canada - Canada's "Copyrighted" Model", FICPI China Symposium, Beijing, China, September 20-21, 2007.

Recent Blog Posts

The Canadian Intellectual Property Office (CIPO) recently announced six new office practices in relation to industrial designs.
Can a “computer program” be patented? Each time this question came up, it would generate sufficient debates to keep it alive, while in fact, the issue of patenting a “computer program” has long been settled in most countries.
Canadian Intellectual Property Office (“CIPO”) announced that effective July 29, 2013, all of CIPO’s PPH agreements will adopt the Mottainai Model. A patent applicant now can accelerate the examination of its patent application in Canada using PPH subject to much less restriction.
Canadian Intellectual Property Office (“CIPO”) recently announced another new PPH program, which added one more route for applicants to accelerate patenting process in Canada. This new PPH program became effective on January 31, 2013 and will end on January 30, 2015.