Biography

Paul is an engineering and technology lawyer with over 25 years’ experience overseeing technology and capital investment in the energy, digital and big data technology sectors. He is experienced practicing in the fields of technology commercialization, engineering, procurement and construction, strategic sourcing, and privacy and data security. He is also well versed in strategic innovation capture, protection and development and engineering design and procurement, and project management, planning and execution.

Paul has extensive experience working with entrepreneurs, start-ups, emerging and growth companies, and large publicly traded companies. He is a collaborative dealmaker who approaches sophisticated development opportunities by formulating the strategy, and balancing the interdependencies of business, technology and law. Paul also devotes significant time to organizations in the BC start-up community, including Accelerate Okanagan, and entrepreneurship@UBCO.

Paul has significant experience designing, building and leading legal teams in new, complex practice areas such as major projects and technology.

Due to his specific skill set and extensive experience, Paul was called upon as an expert witness to provide advice or opinions in court on intellectual property matters, including infringements. In the patent infringement action, Maoz Betser-Zilevitch v. PetroChina Canada Ltd., Paul acted as an expert and provided an opinion on appropriate licensing royalties for the Defendant, PetroChina. Justice Manson of the Federal Court of Canada dismissed the patent infringement action, and while the issue of what royalties did not need to be determined, cited “the evidence of the Defendant’s experts would have been preferred in considering a royalty basis for the damages calculations.”

Professional Activities

  • 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

Recognitions & Rankings

Recognitions & Rankings

  • Best Lawyers in Canada 2022: recognized for Information Technology Law
  • Canadian Legal Lexpert Directory 2022: recommended as a leading practitioner for Technology Transactions
  • Canadian Legal Lexpert Directory 2021: recommended as a leading practitioner for Technology Transactions

Experience

Experience

Recent representative engagements include:

  • 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, Cheetah Resources, 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.
  • 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. 
  • 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.

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.

 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

Speaking Engagements

Speaking Engagements

  • Paul Matthews presents "Tech Business Strategy and Intellectual Property - Going beyond Patents", New Horizons in Cardiovascular Health | The Innovation Centre, Kelowna, BC, September 12, 2019, Speaker
  • Singing from the same SaaS songsheet - when your legal advice and insurance coverage are in harmony, Canadian Bar Association, May 9, 2019, Co-speaker
  • 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

Assistant Contact

Bar Admissions

  • British Columbia (2017)
  • Alberta (2001)
  • Oregon State (1995)

Education

Gonzaga University School of Law, (J.D., 1995, Magna Cum Laude)

University of Calgary (B.Sc., 1985, Chem. Eng.)

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