Paul Roman Horbal

Paul is a Partner and Head of the Computer and Electrical practice (Canada) in Marks & Clerk’s Toronto office, a lawyer called to the Ontario Bar, and a registered patent agent in both Canada and the United States. With a master’s degree in electrical engineering behind his law degree, Paul understands the technologies he protects – so engagements begin with strategy rather than a technical tutorial. His practice focuses on patents, industrial designs and related licensing matters in the fields where strong protection is hardest to secure: computer software, machine learning and artificial intelligence, electronics, financial technology, cybersecurity, blockchain and biomedical devices.

Paul advises major technology companies, financial institutions and other enterprises on building, managing and safeguarding the IP assets that underpin their business. He is also a trusted Canadian counterpart for foreign associates, who rely on him for experienced, reliable prosecution counsel that keeps Canadian filings aligned with parallel strategy abroad, with clear and prompt reporting and a careful eye on budget. Working closely with inventors and in-house counsel, Paul develops and executes IP strategies that turn complex inventions into durable, commercially meaningful protection.

Paul is known for securing protection where it is most difficult to obtain, and few areas are harder, or more in flux, than the patent-eligibility of software and AI. The law on patentable subject matter in Canada continues to evolve, and a tension persists between the Canadian Intellectual Property Offices’ examination approach and the jurisprudence. Paul stays closely attuned to how examination practice is developing, and has repeatedly guided difficult software and AI applications to allowance where eligibility was the central obstacle. He also advises clients on software licensing, with particular depth in open-source software and third-party code licence compliance.