Doak Horne, LLB, P.Eng. (Mech. Eng.) Partner IP Lawyer, Patent Agent (Canada and US), Trademark Agent


Speaks:  English, French

Year of Call: 2000 - Alberta

Year of Call: 1986 - Ontario

Primary phone: +1 403-298-1994

Fax: +1 403-263-9193

Email: doak.horne@gowlingwlg.com

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Primary office:  Calgary




Doak Horne, LLB, P.Eng. (Mech. Eng.)

Doak Horne is an experienced IP litigation and patent lawyer. A partner in Gowling WLG's Calgary office with over 35 years' experience and over seven full trials and 40 reported decisions before the Federal and provincial (Alberta and Ontario) Courts, having further successfully settled numerous other actions on behalf of clients. Has prepared, filed, and successfully prosecuted hundreds of patents and trademarks before Canadian and US Intellectual Property Offices. Doak is a registered patent and trademark agent in both Canada and the United States and is also a registered professional engineer in both Alberta and Ontario.

Recognized in Best Lawyers in Canada over the years 2006-2023 under the classification "Leading Lawyer in Intellectual Property Law" and was awarded the designation "Lawyer of the Year in IP Law" (Western Canada) by The Best Lawyers in Canada (2014).

Doak has appeared as lead counsel in lawsuits involving patent infringement and impeachment, trademark infringement and expungement and oppositions, and copyright infringement. He is further actively involved in the preparation, filing, and prosecution of patents, trademarks, and industrial designs for clients before the Canadian Intellectual Property Office(CIPO) and United States Patent and Trademark Office (USPTO) as well as providing legal advice in clearance-to-use/freedom-to-operate matters, patent validity, licensing matters and related contractual disputes and agreements.

Doak has also appeared as lead counsel in trade secret litigation and passing off actions and disputes involving ownership of intellectual property rights. Doak has appeared at both the trial and appellate levels of each of the Federal Court, the Alberta Courts, and the Ontario Courts.

Doak recently served as lead counsel to Excalibre Downhole Tools Ltd. in two patent infringement actions before the Federal Court. The Court dismissed the action against the Excalibre parties in the first action, and allowed the Excalibre’s claim against the opposing parties, Advantage Products Inc. et al., in the second action. Significantly, the judge directed that a reference be held to determine the quantum of the Excalibre parties' damages that arose from false allegations of patent infringement that were made in writing to the Excalibre parties' customers.

A regular speaker at and contributor to Canadian Bar Association and various seminars on intellectual property, Doak has contributed various articles on similar subjects to trade and professional publications.

Doak practised for 12 years in the Gowling WLG Toronto IP group before transferring to the firm's Calgary IP department in 2000, where he has continued to practise since then.

Prior to beginning his career in law, Doak spent two years as a professional mechanical engineer in jet engine design with Pratt & Whitney Canada.

Doak is a member of the Canadian Bar Association (CBA), the Intellectual Property Institute of Canada (IPIC), the Law Society of Alberta, the Law Society of Ontario, the Association of Professional Engineers and Geoscientists of Alberta (APEGA), and the Professional Engineers of Ontario (PEO). He is an elected Council member with APEGA.

Career & Recognition

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Memberships

  • Alberta Bar Association
  • Alberta Civil Trial Lawyers Association
  • American Bar Association
  • Association of Professional Engineers of Ontario
  • Association of Professional Engineers, Geologists and Geophysicists of Alberta
  • Canadian Bar Association
  • Law Society of Ontario
  • Patent and Trademark Institute of Canada

Representative Work

Representative Litigation Experience