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Mala Milanese

IP Lawyer

Overview

Mala is an associate intellectual property lawyer at Heer Law. After completing an Honours degree in Chemistry, Mala entered law school with a desire to work at the intersection of law and scientific innovation. She has a passion for learning about cutting-edge ideas and scientific developments. This natural curiosity, along with her strong technical background, enables her to quickly grasp her clients' inventions to best identify and serve their needs.

Mala specializes in intellectual property litigation and advises clients on matters involving patents, trademarks, and copyright. She draws upon problem-solving skills acquired as a chemistry student—along with her intellectual property experience gained at leading firms—to assist clients in achieving efficient resolutions to their intellectual property issues.

IP Litigation

Mala assists clients in enforcing their intellectual property rights and defending against allegations of infringement. She has experience assisting with patent disputes involving a range of technologies, and has also participated in various aspects of litigation involving trademark, trade dress, and copyright issues.

Mala prepares opinions for intellectual property rights holders on whether competitors have infringed their rights. If the client's rights have been infringed, she can prepare cease and desist letters, negotiate licensing agreements, or start court proceedings to obtain compensation for past infringement and to prevent infringement in the future.

Mala also works with clients that have been alleged to infringe the intellectual property rights of others, by assessing the strength of the allegations, canvassing potential defences, and providing opinions on the validity of the rights asserted against them. She can also respond to cease and desist letters, negotiate licences, and defend clients in court proceedings.

Patent and Trademark Prosecution

Mala has experience in various aspects of patent prosecution, including the preparation of applications and responses to objections. Although she has a special interest in chemical and pharmaceutical inventions, she has also worked with mechanical inventions.

Mala also has experience in preparing trademark applications, responding to office actions, and handling expungement proceedings.

Past Legal Employment

Prior to joining Heer Law, Mala articled in the IP department of an international full-service firm (DLA Piper (Canada) LLP). She also spent two summers working at intellectual property boutique firms (Dimock Stratton LLP and Smiths IP).

Mala was called to the Bar of Ontario in 2018.

Legal Education

Mala graduated from the Peter A. Allard School of Law at the University of British Columbia, where she was a member of the school's Intellectual Property Law Club, French Club, and Legal Education Outreach Group. Mala also served on the Board of Directors of the UBC Law Review Society, where she reviewed and edited academic submissions for the UBC Law Review Journal.

While in law school, Mala was awarded the Bruce H. McColl Memorial Prize for attaining the highest grade in an Intellectual Property seminar course.

Pre-Law Education

Mala holds an Honours Bachelor of Science degree in Chemistry from the University of British Columbia. In her final year of undergraduate studies, she pursued an independent research project in the area of synthetic organic chemistry; her work culminated in a thesis entitled "Synthesis of Cladoniamide G Analogues for Medicinal Chemistry Studies".

As an undergraduate student, Mala was the recipient of a Natural Sciences and Engineering Research Council Undergraduate Student Research Award, a UBC Faculty of Science Summer Research Award, and a Trek Excellence Scholarship, as well as various other institutional scholarships.

Mala is proficient in French.

Contact

Phone: 416-546-7303
Fax: 416-352-5709