Inspiration Partner

Yuri Chumak

Yuri is a lawyer, patent agent and trademark agent based in Toronto and has practiced exclusively in the area of intellectual property law since 2006.

Yuri is recognized as one of the World's Leading Patent Professionals, IAM Patent 1000, 2017

Yuri has been awarded a “Distinguished" Peer Rating for High Professional Achievement, Martindale-Hubbell, 2016, 2017 and 2018. 

Before co-founding his own firm, Yuri gained experience at two leading boutique IP law firms in Toronto, as well as the IP groups of two major full-service law firms on Bay Street.

 

People > Yuri CHumak

Yuri Chumak

ychumak@dickinson-wright.com

 

 
 
"Yuri Chumak is an exceptional and pragmatic IP lawyer with the technical know-how and bench strength to assist on the most complex of issues." - Client Testimonial

"Yuri Chumak is an exceptional and pragmatic IP lawyer with the technical know-how and bench strength to assist on the most complex of issues." - Client Testimonial

Yuri is a lawyer, patent agent and trademark agent based in Toronto and has practiced exclusively in the area of intellectual property law since 2006.

Yuri is a Lexpert (R) leading lawyer and is recognized as one of the World's Leading Patent Professionals, IAM Patent 1000, 2017, 2018 (Recommended), and 2019, 2020, 2021 (Highly Recommended) as well as one of the World's Leading Trademark Professionals, WTR Trademark 1000, 2021.

Yuri has been awarded a “Distinguished" Peer Rating for High Professional Achievement, Martindale-Hubbell, 2016, 2017, 2018, 2019, 2020, and 2021. 

Before joining Dickinson Wright Canada, Yuri managed his own firm, and before that gained experience at two leading boutique IP law firms in Toronto, as well as the IP groups of two major full-service law firms on Bay Street.

Areas of Practice

Yuri is involved in all aspects of the clearance, prosecution, and enforcement of intellectual property rights including patent, design, trademark and copyrights.

He has extensive experience in complex trial and appellate advocacy, intellectual property applications and agreements, technology licensing, and privacy matters. 

Yuri is also engaged in domain name, advertising and marketing, and trade secret matters. 

He serves as an arbitrator deciding dot-ca domain name complaints filed with Resolution Canada

IP Prosecution & Strategy

Yuri prepares and prosecutes intellectual property applications relating to many technical fields.

He conducts IP due diligence in support of technology and financing transactions.

He has advised clients including a national retailer with respect to product launch matters.

He also prepares agreements and freedom-to operate, infringement, and validity opinions with respect to intellectual property matters.

IP Litigation

Yuri has acted as trial and appellate counsel during a significant patent infringement and validity trial and appeal involving an innovative medical device.

He has also served as counsel for several patentees asserting infringement of patents covering software, control systems, medicines, construction materials, and consumer products, among others.

He has been lead counsel asserting or defending trademark infringement, cybersquatting and software licensing claims.

Recently, Yuri has developed a copyright litigation practice, asserting and defending claims of infringement of artistic and musical works, as well as online piracy matters.

Recent Representative Matters

Advised Schedule 1 bank with respect to launch of financial technology consumer app, including clearing and filing for design patents, and dealing with supplier agreements and ownership issues.

Advised Canadian-based telecommunications company on patent strategy.

Advised and represented a major European consumer brand, its North American licensee, and Canadian distributor on enforcement of trademark and trade dress rights in Canada against several suppliers of counterfeit goods, as part of a multidisciplinary team of litigation and IP Counsel.

Advised European fashion brand on acquiring and enforcing trademark, design, and copyrights in Canada against imitators and producers of goods.

Practicing under Yuri Chumak Professional Corporation.

Professional Activities

  • Fellow, Intellectual Property Institute of Canada (IPIC)

  • Member, Canadian Bar Association (CBA)

  • Member, American Intellectual Property Law Association (AIPLA) 2009

  • Member, International Trademark Association (INTA) 2014

  • Member, Toronto Intellectual Property Group (TIPG)

  • Member, Toronto Computer Lawyers Group (TCLG)

 

Publications

Yuri has written widely in the areas of patent law, trademark law and domain names and is a co-author of the Computer Contracts Chapter of Butterworths Canadian Forms & Precedents.

  • Author, E-Discovery in IP Litigation, Chapter in "Intellectual Property Litigation- Forms and Precedents", LexisNexis, 2016.

  • Author, Social Media and the Courts, Chapter in "Social Media and Internet Law - Forms and Precedents", LexisNexis, 2014 (and 2nd edition, 2018).

  • Author of several articles published in the INTA Bulletin.

  • Editor, ipatents.ca blog, Sep 2009 - present.

  • Author, World Trademark Report, 13 articles published, 2007 - 2014.

  • Quoted in a Lawyers Weekly article re domain names, Sep 16, 2011.

  • Co-author, Apotex Inc. v. Sanofi-Synthelabo Canada Inc. et al.: A landmark patent case decided by the Supreme Court of Canada, Canadian Intellectual Property Review, Jun 2009.

  • Co-author, Patents for Computer-Implemented Inventions and Business Methods, a chapter in Electronic Commerce: A Practitioner's Guide, Carswell, first published Feb 2003, edited and updated Jun 2006.

  • Co-author, Computer Contracts chapter in Canadian Forms and Precedents (Commercial Transactions), Butterworths, 2006.


Speaking Engagements & teaching

  • Leadership Knowledge Cafe, Bar Association, Facilitator, Spring 2019.

  • Western University, Faculty of Law, Advanced IP Course, Invited Mentor, 2019, 2017, 2015.

  • High Tech Patents in a Healthcare Setting, St. Michael’s Hospital IT Seminar, Invited Speaker, 2019.

  • Social Media Law, Ontario Bar Association. Invited Speaker, 2018.

  • Fox Moot (IP) for law students, Invited Practitioner serving as Judge, 2018.

  • Intellectual Property Litigation, Ontario Bar Association. Invited Speaker, 2016.

  • IP Strategy for Social Entrepreneurs, Centre for Social Innovation. Invited Speaker, 2016.

  • IP Strategy for Mobile and Saas Startups, Brightlane. Invited Speaker, 2015.

  • E-Discovery in IP Litigation, IPIC. Invited Speaker, 2014.

  • Cloud Computing and Confidentiality, Licensing Executives Society. Invited Speaker, 2014.

  • High Tech Patents in a Healthcare Setting, Sick Kids IT Seminar, Invited Speaker, 2012.

  • University of Toronto, Faculty of Law, Patent & Trade Secrets Law Course (Guest Lecturer), 2010 and 2011.

  • Osgoode Hall Law School, York University, Toronto, LL.M. Program, Intellectual Property Law Course (Guest Lecturer), 2010.


Education & Qualifications

  • Registered Canadian Patent Agent, 2009 (with reciprocal recognition in the US).

  • Registered Canadian Agent, 2008 (with reciprocal recognition in the US).

  • Lawyer, called to the Bar of Ontario, 2006.

  • LL.B., Western University, 2005.

  • B.Sc.(Honors), Computer Science, Western University, 2005.