What made you choose a career in patents?
I was lucky to have a close family friend, a well-respected Canadian patent lawyer, suggest a career in patent law when I was near completion of my electrical engineering studies. At the time, I was exploring career opportunities out of engineering and when I learned about the patent field, I knew that it was the correct fit. I have always been curious and loved learning new science and tackling engineering challenges, but I also have strong communication skills and an entrepreneurial spirit. My career in patents began as a patent agent trainee, which led to law school and then to the co-founding of one of Canada’s top IP boutique firms. My career decisions have always been more about feeding my passions than about work.
What part of your work do you find the most rewarding and why?
Working with innovators to learn about an invention that solves a problem or disrupts a particular field has always fascinated me. Every day I learn about new ideas, whether they be improvements to known products or disruptive creations. I represent a number of Canadian start-ups and small and medium-sized enterprises which entrust me with managing their IP portfolios. While managing international patent portfolios remains a core focus of my practice, I also advise on managing clients’ unregistered rights, such as data, trade secrets and know-how. I really enjoy advising on contentious matters. This includes managing threats to clients’ intellectual property when they arise, but more importantly helping clients to take a proactive approach by advising on non-disclosure, research, joint venture and customer agreements to ensure that their intangible assets are fully protected.
How are client demands changing and what impact has that had on the way you manage your practice?
Clients may be local, but their markets are global. In an increasingly interconnected world, we are embracing flexible working hours as a firm to ensure that client demands are accommodated. That flexibility enables me to rely on my team – and to work as a team – to ensure that client demands are met on the client’s timeline.
Clients’ problems are also becoming increasingly complex. For example, I can have a client that runs a platform technology entering a highly regulated area such as health ask me questions about regulatory frameworks mixed in with IP questions. Increasingly, I find that IP professionals need to be aware of an array of environments. For example, in the same week that I may advise clients on a patent prosecution matter, I may also refer them to a valuation or regulatory expert. It is important to be able to recognise clients’ issues and assist them with finding solutions that are business oriented. This requires a network of IP and legal experts, as well as other experts to draw on to provide holistic advice.
You do a lot of international filing work for clients. What are the key elements of a successful multi-jurisdictional strategy?
Understanding your competitive landscape and being clear on your key markets are both important elements of any strategy. I recently wrote a paper about considering the benefits of filing for utility models and industrial design protection. Depending on the market, different forms of patent or IP protection may be beneficial. Filing for patents as a blanket approach is not always best. It is also important to understand the legal differences that exist between jurisdictions. For example, when it comes to software patents, Canada is a leading jurisdiction in terms of the breadth of protection available for computer-implemented inventions, particularly because business methods may be patented. In this climate of foreign file wrapper estoppel, seeking uniform patent claims across a patent family does not always make sense. Each jurisdiction should be considered independently in terms of understanding key legal and business environment differences between jurisdictions.
How would you describe Canada’s current patent environment?
The Canadian patent environment has historically been relatively conservative in its approach to patents. However, more recently we are seeing companies realising the increasing value of intangible assets and becoming more aware of IP-related risks and rewards. Canadians are becoming more educated and innovative when it comes to intellectual property, and with the government’s renewed focus on the intangible stock asset economy, we are likely to witness an increase in the procurement of IP assets over the next decade.
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