IPIC Announces Heather Mueller as Recipient of the Peter W. McBurney Memorial Award for Professional Excellence
The IPIC Peter W. McBurney Memorial Award for Professional Excellence recognizes an intellectual property (IP) professional in Canada, who demonstrated excellence in their practice during the past year in the successful prosecution of a landmark patent or trademark property, the prosecution or defense of a legal action where the result has a significant, positive impact on Canadian IP policy, or who has made an extraordinary contribution to the IP profession. IPIC’s Board of Directors is pleased to announce that Heather Mueller as the recipient of the inaugural Peter W. McBurney Memorial Award for Professional Excellence. Heather Mueller was presented with this prestigious award on October 13, 2023, in recognition of her extraordinary contributions to the IP profession.
If I could have told Peter McBurney that the first recipient of his award would be Heather Mueller, that would me have assured me of an extra scotch and the offer of another cigar on one of the quiet evenings on Peter’s patio that I remember so well. Not because he knew Heather, but because she is a non-lawyer patent agent, the head of IP at a successful Canadian company - NCS Multistage – and not only responsible for the company’s patent portfolio, but for spearheading the strategic development of its IP assets, overseeing and instructing counsel in litigation enforcing the company’s patent rights in both Canada and the US with uniformly successful outcomes in lawsuits on both sides of the border, and for drafting and negotiating no fewer than 9 licenses to the company’s innovative Airlock Casing Buoyancy System in the past two years alone. Heather is precisely the kind of IP professional Peter would want to see recognized by an award with his name on it. And, while it is not within the criteria for the Award, the fact of Heather’s years of dedication and contribution to the IP profession on multiple IPIC other industry committees would have delighted Peter as well – Tim Lowman, IPIC President 2022-2023
Heather Mueller is the Executive Vice President, Product Strategy at NCS Multistage. After receiving a Bachelor and a Master of Science degrees, Heather’s career began in Intellectual Property at the University of Manitoba technology transfer office, where she gained insight into the intersection of academia, IP, and industry, and the challenges facing early-stage innovators. She later joined a national law firm, passed the Canadian Patent Agent examinations, and became registered to practice in Canada and the United States.
Over the next decade in private practice as a patent agent, including a few years as a sole practitioner, Heather developed a strong interest in corporate innovation strategy. This led her to pivot her career, joining the legal team at Suncor Energy to help develop and execute IP strategies to support their technology development objectives. Heather later joined NCS Multistage (a former client) further to company’s IPO in 2017.
IPIC is known for having members who are friendly, quirky, and wholeheartedly committed to the profession. I am proud to be counted as one of them, but to be named as the inaugural recipient of the Peter W. McBurney award of Professional Excellence is truly an unexpected honor. Peter’s well-rounded career included in-house practice, founding a boutique and internationally renowned firm, training new agents, and serving on as IPIC President. He was committed to excellence in his own practice, to the development of profession, and to IPIC. I’m beyond grateful to be recognized by this award given in his name, and regret that I cannot be there to accept in person. – Heather Mueller, Peter W. McBurney Memorial Award Recipient 2022-2023
During her tenure as Director of Intellectual Property, the NCS patent portfolio grew from 16 issued patents to 110 issued patents and 99 pending applications, while the annual external legal spend declined by 20%. On the IP enforcement side, Heather has coordinated and supported the enforcement of NCS’s patent and trademark rights in Canada and the United States. Some highlights of her contributions, amongst many, include the enforcement of Trademark rights against three competitors, resulting in a coexistence agreement in one instance, and successful termination of use of the mark in the other two instances. Additionally, she asserted five Canadian patents against a key competitor in a seven-week Canadian patent trial in 2022 (awaiting decision). Her achievements also extend to re-establishing market participation in a key technology area for the company through securing several royalty-bearing licenses and obtaining two successful US patent verdicts in 2022. Furthermore, Heather played a key role in the acquisition of a competitor’s patent through US litigation and simultaneously secured an infringement verdict against the patentee in respect of the same patent.
In her current role as Executive Vice President of Product Strategy, Heather leads the Product Strategy team, including the Product Management, Emerging Technology, Marketing, and Intellectual Property functions. Outside of her professional life, Heather enjoys hiking, gardening, cycling, kayaking, and reading.
About Peter W. McBurney:
Peter W. McBurney was a member of the IPIC for 62 years and Past President of IPIC from 1985-1986. Following his graduation from university in 1957, Peter trained to become a patent agent in the patent department of Canadian General Electric in Toronto, Canada. He joined the IP department of McCarthy&McCarthy as a Registered Canadian and United States Patent Agent (1959) and a Registered Professional Engineer (Ontario). After 10 years, he and Donald F. Sim, Q.C., with Harold G. Fox, Q.C as counsel, founded the pre-eminent patent and trademark agency firm, Sim & McBurney, where he remained for more than 45 years in the capacity of Founding Partner, Senior Partner and finally, Senior Consultant. In 2015, he became one of the founders of Aird & McBurney, a leading Canadian intellectual property boutique and sister firm to Aird & Berlis LLP where he remained a valued and active colleague until his passing.
Peter specialized in patent and industrial design preparation and prosecution; patentability and freedomto-operate opinions; assistance in designing to avoid infringement; and licensing in a wide range of fields, but particularly electronics. He practised directly before both the Canadian and United States Patent Offices and had wide experience in patent prosecution in other countries, particularly in Europe and Asia. He authored a number of articles pertaining to various aspects of patent practice and a sought-after speaker at seminars for clients and conferences sponsored by technical groups and societies invested in intellectual property. In addition to his multi-year involvement in the Professional Engineers Ontario and AIPPI, Peter served on the IPIC Board of Directors for 8 years.