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: Automotive, Chemical, CleantechElectrical & Computer Technology, Fintech, Life Sciences, Mechanical & Industrial Processes, Medical Devices, Nanotechnology, Oil & Gas and Plant Breeders' Rights. 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.

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

Once the Cat is Out of the Bag – Taking Advantage of Grace Periods for Patent Application Filings

Article December 12, 2017

Once the Cat is Out of the Bag – Taking Advantage of Grace Periods for Patent Application Filin...

Proposed New Canadian Patent Rules: Our Detailed Review – Part 2

Article November 9, 2017

Proposed New Canadian Patent Rules: Our Detailed Review – Part 2

Proposed New Canadian Patent Rules: Our Detailed Review – Part 1

Article November 9, 2017

Proposed New Canadian Patent Rules: Our Detailed Review – Part 1

Practice Group Leader

Philip Mendes da Costa Philip Mendes da Costa
B.Sc. (Chem. Eng.), LL.B.
Partner

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