Paul W. Matthews, P.Eng. (AB)

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Paul Matthews is a technology and projects lawyer and professional engineer (P.Eng., AB) who helps companies develop, protect, and commercialize technology and deliver capital projects. Drawing on more than 30 years in the energy and technology sectors in Canada and the United States, he advises on IP licensing and commercialization, AI and data arrangements, EPC and strategic sourcing, and complex commercial agreements across industries including energy, mining, advanced manufacturing, transportation, healthcare, and clean tech. He has provided expert testimony on intellectual property licensing issues and regularly supports clients in securing and leveraging innovation grants. Before private practice, Paul clerked for Justice Edward H. Warren at the Oregon Court of Appeals (1995–1997). He is called in British Columbia and Alberta, and is also admitted in Oregon.

Paul’s expertise encompasses electric and hydrogen vehicle infrastructure, advanced manufacturing, AI/ML data analytics, clinical protocols, digital supply chain management, construction, and the licensing of proprietary technology and creative works. He provides strategic guidance on innovation capture, protection, development, and commercial deployment, with deep experience in intellectual property transactions, including licensing, commercialization, and enforcement.

Recognized for his collaborative approach, Paul advises entrepreneurs, startups, and publicly traded companies alike, navigating complex intersections of business, technology, and law. He supports clients across Canada in securing and optimizing intellectual property grant programs, ensuring robust protection and strategic leverage of their innovations.

Paul has built and led legal teams in pioneering practice areas, including major projects and technology transactions. As a sought-after expert witness, Paul has provided testimony on intellectual property matters, including appropriate licensing royalties. Notably, in Maoz Betser-Zilevitch v. PetroChina Canada Ltd., Justice Manson of the Federal Court of Canada acknowledged Paul’s expert opinion as preferred evidence on royalty calculations.

Paul is an active leader in the BC startup community through initiatives such as Accelerate Okanagan and entrepreneurship@UBCO. His commitment to the technology ecosystem includes mentorship, advocacy, and providing insights on best practices for IP management and commercialization.

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Experience

Counsel for MyHEAT, an aerial thermal imaging and AI heat loss analytics company, on IP strategy and data rights, negotiating data licence and services agreements, ownership of raw thermal data and tools, and SaaS/platform terms.
Counsel to a gaming company; drafted corporate AI policies.
Counsel for AeroCorp, an avionics integration and certification company, on IP and data rights and technology transactions for integrated flight deck and autopilot retrofit kits, including Supplemental Type Certificate (STC) development, licensing, royalties and installer frameworks.
Led the intellectual property due diligence, on a confidential basis, for the financing of research, development, and demonstration activities by a private Canadian company in the fusion energy space.
Counsel for an owner for the development of a mixed-use commercial and residential project in British Columbia (CAD $200 million fixed-price budget), drafting and negotiating the project agreements, and developing a performance bonus program for the general contractor.
Acted for Prince Rupert Grain Ltd., operator of Canada’s largest West Coast grain terminal, on a terminal modernisation and automation upgrade, including project governance, IP and data rights, testing and acceptance, and bespoke improvements and licensing.
Acted for Yukon University for the design and architecture of a new building on its Ayamdigut Campus in Whitehorse, with a vision of inviting and cultivating an interplay between Yukon First Nation culture and ways of knowing, and western approaches to learning and to knowledge generation and modeled to aspire to a net-zero energy and carbon building.
Acted for Trillium Consulting Group digital transformation experts to the construction industry with niche expertise in advanced work packaging, data analytics and machine learning.
Acted for XCO Tech in the development of a joint venture and licensing of technologies agreement with Atlazo Inc., an integrated chip manufacturer, to leverage edge artificial intelligence computing System-on-Chip technology for Recon Health in the development and commercialization of the world’s first personal, wearable, multi-sensor, health care patch for remote patient monitoring and diagnostics.
Acted for Canada’s first rare earth minerals producer, Vital Metals, for the mining services and procurement of equipment for its Nechalaco Project in the Northwest Territories which utilizes a new process that does not use water or create tailings.
Acted for SaaS and PaaS suppliers and customers in drafting templates and negotiating licensing, access and use, distribution, white label, reseller, referral and channel partner agreements in the FINTECH, insurance, Environmental Health and Safety, IoT industrial equipment operation, Franchise, and Nutrition sectors.
Represented a comic book author in negotiating publishing contracts.
Represented a gaming company in settling demands for copyright royalties for music used in a game.
Acted as an expert witness and provided an opinion on appropriate licensing royalties in the patent infringement action, Maoz Betser-Zilevitch v. PetroChina Canada Ltd. 2021 FC 85.
Acted for Red Leaf Pulp in negotiations with Sustainable Fiber Technologies in licensing the The Phoenix Process™, a pulping process, to use waste straw for the production of pulp and value added products, including consumer products like molded cups and packaging, and tissue and paper towels. It will be the first operating entity to found, develop, construct, and operate a non-wood fibre plant in Saskatchewan, Canada.
Represented Western LNG, LLC in negotiating the facility Basis of Design and Front-End Engineering Design agreement.
Represented a technology company in structuring and negotiating the development, supply and licensing of physics based human movement simulations and anatomical models for the production of virtual characters.
Acted for a public utility entering the electric vehicle (EV) market in negotiating commercial agreements for the development and supply of novel EV charging systems, and for the charging network management.
Counsel for Risk Alive Analytics Inc., a super-niche data analytics and knowledge mobilization consultant in the process hazard analysis space in negotiating a master services agreement with a major Canadian energy producer and refiner for 400+ process units.
Drafted trademark licensing agreement templates for a precious stone branding program on a global basis throughout the entire supply chain from the mine to the retail storefront.
Drafted copyright licenses for a novel methodology and toolkit for learning a foreign language.
Drafted terms of use and privacy policies for Websites and App’s for various organizations in the gaming, animation, motorcycle owner and rider communities, touring, maps, health and fitness, nutrition, pharmaceutical, personal vigilance, industrial products, industrial services, software as a service, software development, personal development, technical course delivery, mental health care, patent technology landscaping and analytics, and other spaces.
Drafted releases, waivers of liability and disclaimers for new products for fall protection, health, fitness and e-bikes and for novel services for mental health care.
Created Licensing and equipment leasing scheme and contract forms for a recycling e-waste technology

Intellectual Property

Built, developed and led a team through the design and execution of a corporate IP strategy, which included oversight and commercial guidance for all technology development deals.
Negotiated a commercial settlement respecting a dispute with a drilling services supplier over the ownership of intellectual property rights for a new drilling technology.
Designed and implemented a uniform patent scoring model to improve the quality of patent applications and consistency in dialogue and understanding amongst inventors, patent agents, technical subject matter experts and corporate leadership.
Developed an eLearning module on safeguarding intellectual property to prevent loss of value from key technological developments and to mitigate risks preventatively.
Responsible for the portfolio of start- ups in which the University of Calgary and Innovate Calgary had equitable or financial interests; and the capture and knowledge mobilization of university research discoveries and technologies in the physical sciences fields.
Initiated, directed and ultimately negotiated the settlement of litigation in multiple jurisdictions against multiple parties to preserve and protect an energy company’s confidential information respecting a mining technology innovation.
Created and led a Commercial Team for a corporate Technology Development program, including the creation of workflows and a toolkit for prioritizing commercial services, defining and capturing ‘best value’, assessing the value proposition for intellectual property in each transaction, and eliminated past practices of performing work without a contract or leaving ownership of project deliverables and intellectual property with the suppliers performing the work.
Uncovered and led an investigation into the misappropriation of company innovations for an energy company.
Paul supports companies across Canada in navigating intellectual property grant programs, helping them protect and maximize the value of their IP.

Engineering, Procurement and Construction

Initiated and delivered a Corporate Risk Profile for use in negotiating and contracting for the procurement of all goods and services for an energy company.
Negotiated and closed a Lump Sum Turn Key project agreement valued over $100 million for the commercial application of a proprietary technology, complete with a claims avoidance program employed during project execution.
Effectively managed post-construction disputes for an energy company having designed, implemented and directed a dispute resolution management program comprising case assessment, planning and budgeting standards and reporting for outside counsel.
Successfully managed the creation of an annual in-house Scientific Research & Experimental Development tax credit program resulting in savings of $100,000’s in service provider fees and the capture of additional and overlooked eligible claims in a corporate Technology Development portfolio in the order of $300 million.

Rankings & Recognition

Involvement

Professional Activities

Association of Professional Engineers and Geoscientists of Alberta (APEGA), Member - Professional Engineer (P.Eng.)
Oregon Court of Appeals, Judicial Law Clerk to Justice Edward H. Warren, 1995–1997

Community Activities

e@UBCO Program - Startup accelerator at the University of British Columbia Okanagan, offering support, mentorship, and resources to help early-stage companies grow and succeed
BC Tech C-Council - network that connects technology companies with experienced mentors, helping them scale and navigate business challenges in British Columbia’s tech ecosystem

Credentials

Education

Gonzaga University School of Law, J.D., magna cum laude
University of Calgary, B.Sc., Chemical Engineering
Council of Canadian Innovators, Innovation Governance Program, 2023
Concentrated Course in Construction Contracts, Federal Publications Seminars LLC, 2004
Practical Loss Control Leadership Course, Det Norske Veritas, 2004
Litigation Management College, Federation of Defence & Corporate Counsel, 2003

Bar admissions

Called to the British Columbia Bar, 2017
Called to the Alberta Bar, 2001
Called to the Oregon State Bar, 1995