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, 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.

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

Extension of Drug Patent Terms in Canada – Certificates of Supplementary Protection (CSPs)

Article August 29, 2018

Extension of Drug Patent Terms in Canada – Certificates of Supplementary Protection (CSPs)

HERCEPTIN Patents Survive Preliminary Non-Infringement Challenge in the First Motion Under Section 6.08 of the Patented Medicines (Notice of Compliance) Regulations

Article August 22, 2018

HERCEPTIN Patents Survive Preliminary Non-Infringement Challenge in the First Motion Under Section...

Does the ‘on-sale’ bar still cover ‘secret’ sales? United States Supreme Court to decide

Article July 17, 2018

Does the ‘on-sale’ bar still cover ‘secret’ sales? United States Supreme Court to decide

IP Protection for Cannabis in Canada

Article June 28, 2018

IP Protection for Cannabis in Canada

Market share used to establish sales a patentee “could and would” have made but for infringement: Grenke v DNOW Canada ULC

Article June 12, 2018

Market share used to establish sales a patentee “could and would” have made but for infringement:...

Species of Obviousness

Article June 7, 2018

Species of Obviousness

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Practice Group Leader

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

Practice Group Leader

Bhupinder Randhawa Bhupinder Randhawa
B.A.Sc. (Comp. Eng.), J.D.
Partner

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