Patents

Patents are often a client’s most valuable asset, but evaluating inventions, reviewing patentability issues, procuring patents, devising global patent protection strategies, negotiating licenses and agreements, and dealing with infringement issues can be complex. At Bereskin & Parr, patent law is a key part of our intellectual property practice. We apply a pragmatic business approach to each client’s patent matters to obtain results consistent with the client’s business needs.

Our patent practice is comprised of several specialized groups: Artificial Intelligence (AI)Automotive, CannabisChemical, CleantechElectrical & Computer Technology, Fintech, Life Sciences, Mechanical & Industrial Processes, Medical Devices, Nanotechnology and Oil & Gas. Each of our specialized patent groups assists clients in evaluating inventions and designs and preparing, filing, and prosecuting patent and design applications in Canada, the United States, and worldwide. Technical assistants and trained patent clerks working under the supervision of our lawyers and patent agents enable us to provide cost-effective management of the firm’s extensive active files.

Our lawyers and patent agents advise clients on all issues involving patents and designs including providing advice on patentability of inventions, validity of patents, and infringement of patents for technology owned by clients or claimed to be owned by others. Our teams have expertise in a variety of scientific and engineering disciplines and other technical areas, including chemical, civil, computer, electrical, mechanical, metallurgical and nuclear engineering, as well as electronics, physics, computer hardware and software, chemistry and biotechnology. This diverse expertise enables us to assemble an appropriate client-specific team to handle each client's individual patent needs.

Clients of the patent group include individuals, corporations, and educational institutions worldwide. Our clients come from a diverse range of industries and work with technologies involving mechanical, electrical, and computer systems (software and hardware); building materials; medical devices and consumer products; and chemical, biotechnology and pharmaceuticals.

More information on the patent system and applying for a patent is available here.

 

Our Services

The following is a list of services that members of our Patent group provide:

  • Negotiating and preparing licenses, assignments, security interests and other agreements for inventions, designs, and patents
  • Performing a patent audit
  • Identifying areas where patent or design protection can be obtained or extended
  • Devising strategies to assist in managing a patent portfolio
  • Evaluating patent portfolios of clients
  • Evaluating patent portfolios of others
  • Due diligence in commercial transactions of all kinds
  • Right to manufacture or use studies

 

Recent Articles

While Americans Laud “Low” Canadian Drug Prices, Canadian Innovative Pharma Waits to see if the Pricing Axe Will Fall on “Excessive” Canadian Drug Prices

Article
August 7, 2019

While Americans Laud “Low” Canadian Drug Prices, Canadian Innovative Pharma Waits to see if the...

Balancing Efficiency and Compressed Timelines: Two Years into the Amended Patented Medicines (Notice of Compliance) Regulations

Article
August 1, 2019

Balancing Efficiency and Compressed Timelines: Two Years into the Amended Patented Medicines (Notice...

Overview of Canadian Patented Medicine Price Review

Article
July 30, 2019

Overview of Canadian Patented Medicine Price Review

Ghosts and Goblins Beware - Major Changes in Patent Practice in Canada to Take Effect on October 30, 2019

Article
July 22, 2019

Ghosts and Goblins Beware - Major Changes in Patent Practice in Canada to Take Effect on October...

Protecting Technology and IP in the Age of AI and Collaborative Technology Development

Article
July 5, 2019

Protecting Technology and IP in the Age of AI and Collaborative Technology Development

History Repeats Itself: What Hot New Technology Has in Common With the Development of Basketball

Article
June 12, 2019

History Repeats Itself: What Hot New Technology Has in Common With the Development of Basketbal...

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Practice Group Co-Leader

Micheline Gravelle Micheline Gravelle
B.Sc., M.Sc. (Immunology)
Managing Partner
416.957.1682  

Practice Group Co-Leader

Bhupinder Randhawa Bhupinder Randhawa
B.A.Sc. (Comp. Eng.), J.D.
Partner
416.957.1630  
All Practice Group Members

  

Webinars

Patent & Trademark Case Law Review Series
Intellectual Property Institute of Canada (IPIC)
April 1, 2019, Webinar
Going Global with Patents
Bereskin & Parr
February 18, 2018, Webinar

Speaking Engagements

FICPI 18th Open Forum
FICPI
October 9 - 12, 2019, Vienna, Austria
Conversation on Artificial Intelligence and Privacy
OBA
September 17, 2019, Toronto, ON