Patent Applications and Registrations

We help make your experience with the patent system simpler and stress-free, with the goal of achieving a high quality patent, one that protects the essential elements of your new invention.

We offer significant expertise and experience obtaining patents for Fortune 500 companies, established small- and medium-sized enterprises, and startups. In all cases, we work hard to establish a competitive advantage and help protect your technology investments through patent law.

Working on behalf of our clients, we have obtained patents in practically all fields of technology including software and mobile devices, consumer goods, automotive, cleantech, mining and beverage alcohol, to name a few. We obtain patents in Canada, the U.S., and elsewhere, either directly or through our extensive international network of associates.

Our experience litigating patents, and performing transactional due diligence involving the transfer of patents, gives us special insight to help make your application stronger and better able to withstand scrutiny by decision makers such as investors, competitors, industry partners, not to mention patent examiners and courts.

We continuously monitor developments in Canada, the U.S., Europe and other significant markets to help you obtain useful and up-to-date protection in the markets that are important to you.

OUR PATENT REGISTRATION SERVICES INCLUDE:

Advising on the availability of a patent registration (patentability searches), and the ability to practice a particular technology without infringing the patents of others (freedom-to-operate searches), patent validity, patent infringement, and other patent strategy questions.

Preparing and filing applications to register a patent in Canada, the US, Europe or elsewhere, including internationally through the Patent Cooperation Treaty (PCT).

Navigating patent applications through the examination process, including responding to examiner's reports and attending to registration.

Supervising the preparation, filing, prosecution and registration of foreign patent applications via trusted foreign associates.

Advising on what steps your business needs to take to maintain its patent rights.

Patent portfolio services, leveraging our state-of-the-art deadline and reminder system.

Services / Patents

Patent advice for technology businesses and inventors

A patent strategy should start with the technology and the business. I help clients identify inventions to protect, prepare patent applications and manage prosecution with their commercial objectives in view.

I am a Toronto-based intellectual property lawyer and patent agent with a computer science background. My practice includes software and computer-implemented inventions, medical devices, electronics, consumer products and other technical fields.

From an invention to a filing strategy

The initial work may include understanding what is new, reviewing relevant earlier technology, identifying inventors and ownership issues, and considering the markets in which protection would have value.

For a software business, that discussion may also examine whether the proposed protection relates to a technical implementation, what competitors could change, and how an infringement might be detected. For a product business, patents may need to be considered alongside industrial designs, trademarks, confidential information and commercial agreements.

Drafting and prosecution

I assist with patent drafting, Canadian and U.S. filing strategies, Patent Cooperation Treaty (PCT) applications, and responses to patent office objections. International matters are handled directly where authorized or in coordination with appropriate foreign counsel.

During prosecution, the aim is to assess the examiner’s concerns and the commercial significance of possible amendments. Claim scope should be considered in relation to the client’s commercial objectives.

Patentability and freedom to operate

Patentability asks whether an invention meets the requirements for patent protection. Freedom to operate considers whether a proposed activity may infringe rights held by others in the relevant market. The appropriate review depends on the product, the stage of development and the business decision at hand.

Existing applications and patent portfolios

I also advise on examiner reports, portfolio priorities, ownership changes, licensing and IP due diligence. Where another firm is already involved, any transfer or coordination of responsibility should be agreed clearly, particularly for deadlines.

Preparing for an initial discussion

Please begin with a non-confidential description of the technology, your business objective, relevant countries, any existing application numbers and any known disclosure or filing dates. We will confirm arrangements before receiving unpublished invention disclosures.

Discuss a patent matter

Related services: Industrial designs | Technology agreements | IP disputes