Paul’s practice focuses on helping clients develop and commercialize their technologies. An engineering and technology lawyer, he has over 25 years of experience overseeing capital and technology investment in the energy industry and practising in the fields of intellectual property; engineering, procurement and construction; strategic sourcing and privacy. He is also well versed in engineering design, procurement, project management, planning and execution, innovation capture and protection. He is a collaborative dealmaker who approaches sophisticated development opportunities by formulating the strategy, and balancing the interdependencies of business, technology and law.
Paul has significant experience designing, building and leading legal teams in new, complex practice areas such as major projects and intellectual property.
- Association of Professional Engineers & Geoscientists of Alberta, 1987
- Judicial Law Clerk for the Oregon State Court of Appeals for Justice Edward H. Warren, 1995-1997
Recent representative engagements include:
- 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.
- Represented 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.
- 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.
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.
News & Publications
News & Publications
- "At Least 10 Things that should keep a Patent Attorney Up at Night", (October, 27, 2014), Oil and Gas iQ, Interview
- "Construction Owners Association of Alberta", (2004-2005), Contracts Committee, EPC Contract
- "Contract Law and Procurement Elective", (2002), Athabasca University, Course Reviewer
- Robert J. Araujo, S.J.,“The Harvest is Plentiful, But the Laborers Few”: Hiring Practices and Religiously Affiliated Universities", (1996), 30 U.Rich.L.Rev. 713-780, Legal Researcher
- Intellectual Property for Start-ups, University of British Columbia, March 15, 2018, Speaker
- "Intellectual Property," ENGR 413 Law and Ethics for Engineers , University of British Columbia Okanagan, March 1, 2018, Guest Lecturer
- "Risks of Doing Work without a Contract," ENGR 413 Law and Ethics for Engineers , University of British Columbia Okanagan, February 27, 2018, Guest Lecturer
- "Project Management II", (2017), Faculty of Engineering, University of Calgary, Guest Lecturer
- "Riding the Bull: Optimizing the License Relationship", (September 11, 2015), AUTM Western Region Meeting, Calgary
- ASME Technical Lunch: “The Risks of Doing Work Without a Contract”, (May, 15, 2014)
- Oil and Gas IP Summit North America, (November 18 -19, 2014), Calgary, Chair
- "Protecting Intellectual Property Rights in the Energy Sector", (October 30-31, 2007), Calgary, Co-Chair
- "Law for Project Managers", (2006, 2009, 2012) Graduate Studies, Faculty Of Engineering, Guest Lecturer
- "Operations, Management Project Procurement and Logistics", (2006-2014), Haskayne School of Business, University of Calgary, Guest Lecturer
- "The Role and Responsibilities of the Professional Engineer in Society", (2005, 2009, 2012-16), Faculty of Engineering, University of Calgary, Guest Lecturer
- "Law for Project Managers", (2002-2004), Graduate Studies, Faculty of Engineering, University of Calgary, Instructor
- "University of Calgary Negotiation Competition", (2002- 2004), Calgary, Judge
- Lauren Newitt
- Legal Assistant
- T: 778.738.2610
- British Columbia (2017)
- Alberta (2001)
- Oregon State (1995)
Gonzaga University School of Law, (J.D., 1995, Magna Cum Laude)
University of Calgary (B.Sc., 1985, Chem. Eng.)