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

Fast-Tracking Your Green Technology at the Canadian Patent Office Has Never Been Better

Article
October 13, 2020

Fast-Tracking Your Green Technology at the Canadian Patent Office Has Never Been Better

Patentability of Computer-Implemented Inventions in Canada - The Amazon Saga Continues

Article
October 1, 2020

Patentability of Computer-Implemented Inventions in Canada - The Amazon Saga Continues

Recording Assignments, Transfers and Changes of Name in Canada Are Now Less Onerous

Article
September 15, 2020

Recording Assignments, Transfers and Changes of Name in Canada Are Now Less Onerous

Federal Court Rejects Patent Office’s Approach to Claim Construction: Music to the Ears of Patentees in the Medical Diagnostic and Computer-Related Fields

Article
August 27, 2020

Federal Court Rejects Patent Office’s Approach to Claim Construction: Music to the Ears of Patentees...

Once the Cat is Out of the Bag – A Canadian Update

Article
July 29, 2020

Once the Cat is Out of the Bag – A Canadian Update

USPTO Revises Examination Manual To Incorporate Recent Patentable Subject Matter Guidance

Article
July 21, 2020

USPTO Revises Examination Manual To Incorporate Recent Patentable Subject Matter Guidance

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Practice Group Co-Leader

Micheline Gravelle Micheline Gravelle
B.Sc., M.Sc. (Immunology)
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

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
IP Overview Session
Synergy Labs
September 22, 2020, Online

Speaking Engagements

Career in Patent Law
SkIN Canada
November 14, 2020, Online
Fundamentals of Intellectual Property Law for Emerging Clients
Ontario Bar Association (OBA)
October 29, 2020, Online
IP & Legal Startup Bootcamp: Fundamentals for Growth
Innovation Factory (IF) & RIC Centre
October 21, 2020, Online