Shohini Bagchee
Shohini Bagchee
Patent Agent
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Client Stories

Shohini Bagchee, P.Eng., M.Eng. (Chemical), is a patent agent based in Field Law’s Edmonton office. Shohini’s primary focus is providing clients with counsel in the area of patent procurement.

Shohini’s previous career as a engineer allows her to deliver counsel to her clients that is supported by solid academic and industry credentials, and takes into account the legal and business aspects of their patent protection. Many of Shohini’s clients are based in the oil and gas industry, and range from downhole equipment and service companies, and clients in the areas of petrochemicals, bio-fuels, food science, fine chemicals, nanotechnology, agriculture, mining, environmental, biotech, materials and metallurgy. 
Shohini’s role as a patent agent provides her with the opportunity to support her clients’ business goals in a number of ways, including:
  • Filing for and prosecuting patents before the Canadian, US and PCT patent offices
  • Conducting searches for patentability, infringement and freedom to operate
  • Providing clients with industrial design patent services
  • Supporting clients throughout the IP due diligence process, including the assessment of patents for purchase or sale
  • Conducting IP portfolio management for clients and developing IP prosecution strategies to further international IP protection and enforcement, and
  • Consulting with clients on the development of company IP policies.
Shohini’s sophisticated, broad technical knowledge is complimented by solid writing and oral advocacy skills, which enables her to help clients across a broad spectrum of technology sectors. Clients with intellectual property interests that span the Canada-US border receive seamless patent support from Shohini, who is registered to practice before the Canadian Patent Office and the United States Patent Office. 

Value to Clients

“I place a great importance on openness with my clients and build my relationships with them by providing two-way counsel that actively considers their patent needs and understands their  business goals. By being approachable and eager to understand exactly what brought my clients to me, I can provide counsel that is customized and goal oriented.”

Outside the Office 

Shohini’s time outside of the office is spent engaging with her community. Whether she’s catching live, local music or volunteering her time, Shohini enjoys connecting with others. When she isn’t out and about, she’s indulges in her love of reading. 
Intellectual Property Institute of Canada (IPIC)
2001 - Present
Member/P. Eng
1996 - Present
Jasper Place Wellness Center
Board of Directors
2018 - Present
Women in IP Networking Group Organizer
2016 - Present
Events Edmonton
Board of Directors
2012 - 2016
Sole and Small Practice Committee - Member
2009 - 2016
April 24, 2019
Trailblazers: An Evening to Celebrate Women in Intellectual Property, Technology, Engineering + Math
Client Events
The Women's Intellectual Property Networking Group of the Intellectual Property Institute of Canada presents:Trailblazers: An Evening to Celebrate Women in Intellectual Property, Technology, Engineering + Math    Date: Wednesday, Apr...
January 2019
IP Landscaping
Government of Alberta - GreenSTEM Kick-Off Event
November 2018
A Taste of the IPIC AGM
Business, Law and Technology Forum
November 2017
IP: What’s In It For You
Canadian Intellectual Property Institute of Canada
September 2016
Post-Grant Patent Amendment - Canadian and US Options
On the long and sometimes bumpy road of patent prosecution, a Notice of Allowance can be a welcome sign that you are nearly at your destination: a granted patent. But the journey is not over yet. At the time of grant, what if you re...
May 2014
Whose Invention Is It Anyway? Some Thoughts on Patent Inventorship and Ownership
Patents provide a number of commercial benefits to patent owners including exclusivity in the market, bargaining power and the potential for licensing income. Needless to say, ensuring that you are the rightful owner of the patent is essential. An...
November 2013
Getting Your Application Through the USPTO - Expedited Examination Options
The Medium
You’ve developed your new technology, taken care to keep it confidential and are planning to file for patent protection at the US Patent and Trademark Office (USPTO). Everything looks good. Until your patent agent tells you it may be 3 or mo...
March 2013
The Heart of The Patent Bargain: Viagra Patent Invalidated In Canada
The Medium
In a recent unanimous decision by the Supreme Court of Canada (Teva Canada Limited v Pfizer Canada Inc.), Pfizer Canada’s patent to its multi­million dollar selling Viagra was invalidated for insufficient disclosure. The decision allows ...
March 2013
Utility Models, Petty Patents & Innovation Patents: Efficient IP Protection for SMEs
The Medium
For small to medium sized enterprises (SMEs), patent protection can be complex and costly. And yet, for many of them, patent protection is a must to maintain their competitive edge. A fast and cheap option for protecting mechanical inventions, pro...
April 2012
Is Nature "Patentable"?
The Medium
A recent unanimous decision (Mayo Collaborative Services. v. Prometheus Labs. Inc.) by the United States Supreme Court has invalidated two patents held by Prometheus Labs Inc. on the basis that the claims contained patent ineli...

IP solutions to meet business goals

Shohini’s client, an oil and gas equipment and service provider based in Western Canada, successfully resolved a patent infringement suit. During the process, they took stock of their own IP portfolio and quickly realized that the patent protection of their own technology was sorely lacking. They approached Field Law, looking for ways to have patentability and freedom to operate and play a more prominent role in their product development process.

Shohini reviewed their technology, prioritized devices and methods for patent review, prepared and filed patent applications and provided an overview of the current patent landscape. This overview identified opportunities for her client. As the relationship evolved, Shohini started to provide patent strategy, proactively advising when and where to file for protection to best meet their business goals.

As a result, the client now has a robust portfolio of patent protection with patents granted or pending in all key markets. They have also been able to work on developing tools and systems with patentability in mind, giving them the edge in a very competitive market.

The importance of an IP strategy

Having worked with an international medical equipment manufacturer to obtain a couple of patents, Shohini was the first to receive a call when they received a cease and desist letter from a competitor. Her client needed confirmation of freedom to operate and they needed to reconsider the role IP played in their industry.

Shohini reviewed the competitor’s patents and determined that the patents were most likely invalid for obviousness reasons. She responded as much to the competitor and the client was not bothered again.

This shifted their focus. With the client now understanding the value of a robust patent strategy, Shohini helped them decide what they could patent and prepared and filed for patent protection in key technology areas. The client now has a patent portfolio that covers their target products and product areas and meets regularly with Shohini to review their overall IP portfolio.

To patent or not to patent?

We worked with an Alberta oil and gas tools and services provider who was very aware of the value of patent protection and had many patents and applications in their portfolio.  However, in mid-2010s, as oil prices fell, contracts became scarce and their customers were asking for steep discounts. As a result, our client needed to take a good look at their IP portfolio and decide which patents to keep and which to delay. They also needed to develop a more stringent test for deciding to patent or not.

We sat down with our client to review their tools and determine if they were still selling those tool and if so where? Could prosecution on any applications be delayed and if so what were the risks? Were there alternative ways to keep their competitors at bay without filing for patent protection immediately?

Working with the client, we tailored their patent portfolio to accommodate their budget, while still protecting their key technology areas. We’ve developed patent strategies to delay prosecution and allow the client to hold off filing for patents until the energy sector picks up. We also helped our client develop better criteria for making the decision to patent or not.

University of Ottawa, 2001, Master of Engineering
University of Alberta, 1996, Bachelor of Science, Engineering