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

A Practical Guide to the transition to Canada's new Patent Act and Rules Part VII

Article
October 17, 2019

A Practical Guide to the transition to Canada's new Patent Act and Rules Part VII

A Practical Guide to the transition to Canada's new Patent Act and Rules Part VI

Article
October 10, 2019

A Practical Guide to the transition to Canada's new Patent Act and Rules Part VI

Federal Court Unwraps Foreign File Wrapper in Canadian Patent Litigation

Article
October 7, 2019

Federal Court Unwraps Foreign File Wrapper in Canadian Patent Litigation

A Practical Guide to the transition to Canada’s new Patent Act and Rules Part V

Article
October 3, 2019

A Practical Guide to the transition to Canada’s new Patent Act and Rules Part V

Canadian Drug Price Review of Generic Companies Holding Patents

Article
September 30, 2019

Canadian Drug Price Review of Generic Companies Holding Patents

A Practical Guide to the transition to Canada’s new Patent Act and Rules Part IV

Article
September 26, 2019

A Practical Guide to the transition to Canada’s new Patent Act and Rules Part IV

view more

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

Advanced IP Strategies: The No Bull$hit Edition
Communitech
December 5, 2019, Kitchener, ON
Intellectual Property Lunch & Learn Session
Ryerson University
November 20, 2019, Toronto, ON
AWE Summit
Innovation Factory
November 14, 2019, Hamilton, ON