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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

Federal Court invalidates Janssen ZYTIGA® Patent

Article
January 20, 2021

Federal Court invalidates Janssen ZYTIGA® Patent

2020 Engineering & Technology Year in Review

Article
January 20, 2021

2020 Engineering & Technology Year in Review

Recent Amendments to the Patented Medicines Regulations Declared Unconstitutional by Québec Superior Court

Article
January 13, 2021

Recent Amendments to the Patented Medicines Regulations Declared Unconstitutional by Québec Superior...

Court Rejects Attempt to “Stretch” Patent Claim Language

Article
January 12, 2021

Court Rejects Attempt to “Stretch” Patent Claim Language

Is Canada on the Brink of AI and Diagnostics Patent Rush?

Article
December 4, 2020

Is Canada on the Brink of AI and Diagnostics Patent Rush?

The Canadian Patent Office Releases New Guidelines: The Diagnostics Industry Should Be Cautiously Optimistic

Article
November 4, 2020

The Canadian Patent Office Releases New Guidelines: The Diagnostics Industry Should Be Cautiously...

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Practice Group Co-Leader

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

Practice Group Co-Leader

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

  

Webinars

Is Canada on the Brink of an AI & Diagnostics Patent Rush?
Bereskin & Parr LLP
December 2, 2020, Online
The "W5" for patents - who can get one, what are they, where and when can you get one and why should you?
The Canadian Association of Research Administrators (CARA)
October 22, 2020, Online
IP Best Practices for Regional Innovation Centres
Spark Centre
October 16, 2020, Online

Speaking Engagements

Workshop on Intellectual Property for Start-Ups
Group 3737
February 11, 2021, Online
Hatchery Pitch-A-Thon
Y Combinator & Hatchery
January 29, 2021, Online