Lawyer Profile Detail



Biography

Alfred A. Macchione is a partner in our Technology, Communications and Intellectual Property Group in Toronto. Mr. Macchione holds a master’s degree in engineering and graduated from the McGill Faculty of Law in 1986 as an Elizabeth Torrance Gold Medallist. He was called to the bars of Ontario and Québec and is a registered patent and trade-mark agent.

Mr. Macchione is involved in all aspects of the clearance, acquisition, enforcement and exploitation of patents, trade-marks, copyright, designs and other forms of intellectual property, with special emphasis on high technology. He has particular experience in the patenting of inventions in the fields of networked communications, business and financial services processes, software and other forms of computer technology.

Mr. Macchione’s specific experience in intellectual property matters includes advising in respect of the development, preparation, filing, prosecution and management of originating patent and trade-mark portfolios having worldwide scope, comprising ongoing enforcement activity and the defense of third-party assertions, related infringement and validity legal opinion work, licensing and standards activity, intellectual property transactional support and general intellectual property counselling for the following clients:

  • a multinational technology manufacturer with operations in more than 40 countries;
  • a large telecommunications equipment and services provider; and
  • a multinational computer software, hardware and services company.

His other areas of expertise include electronic commerce and information technology transactions, technology acquisition, development and exploitation ventures, electronics manufacturing and supply logistics agreements, and technology outsourcing arrangements. His specific experience in high technology transactions has included representing and advising the following clients:

  • a national financial services institution in the structuring and negotiation of a multi-year technology development initiative involving a comprehensive front-end platform for multiple retail service delivery channels with back-end integration to existing legacy systems and applications;
  • a major Canadian daily newspaper publisher in respect of the procurement of production level computer technology for multi-site editorial composition and pagination;
  • a dominant Canadian securities exchange in the purchase, installation and maintenance of large-scale computer systems for critical real-time market transaction processing;
  • a major financial institution in respect of the structuring of a multi-billion dollar outsourcing arrangement to provide a comprehensive information technology infrastructure across its national operations with related technology procurement, asset management and application support services;
  • a provincial securities regulator in the procurement of data consolidation services for the collection and dissemination of quotation and transaction data among varied marketplaces, data vendors, news services and subscribers; and
  • a large Canadian financial institution in respect of the restructuring of a novel internet-based electronic invoice presentment and payment service offered in conjunction with other major Canadian financial institutions and their commercial customers.

Prior to joining McCarthy Tétrault, Mr. Macchione practised for a number of years with another Bay Street firm in Toronto. Earlier in his career, he practised for several years at a large Ottawa-based intellectual property prosecution and litigation firm and thereafter, in-house with the Canadian arm of a multinational computer company.

Mr. Macchione is a past chair of the Information Technology Committee of the Intellectual Property Institute of Canada. He is also President of the Canadian National Group of the International Association for the Protection of Intellectual Property (AIPPI) and is international Co-Chair of the IT and Internet Standing Committee of that organization. He has served on various other professional committees in the areas of intellectual property and information technology law.

Mr. Macchione is consistently recognized as a leading lawyer in intellectual property and patents by numerous prominent legal directories and guides including most recently:

  • 2017 IAM Patent 1000: Leading Lawyer in Patent Transactions and Patent Prosecution;
  • 2017 Chambers Global: Leading Lawyer in Intellectual Property;
  • 2017 Chambers Canada: Leading Lawyer in Intellectual Property;
  • 2017 Canadian Legal Lexpert Directory: Repeatedly Recommended in the areas of Intellectual Property and Technology Transactions;
  • 2017 Legal 500: Canada: Leading Lawyer in Intellectual Property;
  • 2017 Who’s Who Legal: Patents: Leading Lawyer in Patents;
  • 2017 Patents Experts Guide: Leading Lawyer in Intellectual Property (Patents);
  • 2017 World IP Review Leaders: Leading Lawyer in Intellectual Property;
  • 2016 Managing Intellectual Property IP Stars: Patent Star and Trade mark Star.

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McCarthy Tétrault delivers integrated business law, tax, real property, labour and employment, and litigation services nationally and globally through offices in Vancouver, Calgary, Toronto, Montréal, Québec City and London, UK.
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