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As you look to protect your patentable innovations, our team of lawyers and agents will work closely with you to place patent rights in the context of a broader IP strategy, coupled with practical business advice.

Working with clients across a range of industries on projects as diverse as drone and unmanned aerial vehicle systems (UAVs), ballistic body armour inventions, field of pay-per-view video signals, and bottling systems for the craft brewing industry, our team is committed to helping you with:

  • conducting "prior art" searches
  • dealing with patent-related disputes
  • patent infringement analysis
  • freedom-to-operate analysis
  • patent and trade secret litigation
  • patent ownership disputes, and
  • novelty/anticipation and other validity issues

Our team has extensive experience in many industries such as the oil and gas services sector including completions, drilling, extraction using SAGD and other oil sands technology, artificial lift, miscellaneous downhole tools, midstream processes and equipment, and other hydrocarbon industry equipment and processes.

Contact any one of our patent group including Tony Edwards, Lawyer and Patent Agent, at aedwards@fieldlaw.com or 403-260-8590, to discuss your patent needs and obtain an initial assessment of your IP strategy.
November 16, 2023
Bow Valley Business Series: Intellectual Property 101
Lunch + Learn
As a business in the Bow Valley region, you’re no stranger to the challenges and opportunities our unique business landscape presents. Join us for a series of complimentary lunch and learns designed to help you navigate these challenges effect...
July 2023
IP Explained: Is My Invention Patentable?
What is intellectual property (IP), and how do you protect it? In this video series, we will explain what IP is, the types of IP your organization may have, and tips and practical considerations to help you protect, enforce, and commercialize your IP. ...
September 2022 - 2 min read
Excess Patent Claim Fees are Coming to Canada - Keep Calm and Carry On
Amendments to Canada’s Patent Rules, coming into force on October 3, 2022, will introduce excess claim fees into Canada’s patent regime (amongst other changes). If examination of a Canadian patent application is requested on or after Octobe...
March 2020
Patent Issues under Canada’s COVID-19 Emergency Response Act
The Federal Government’s COVID-19 Emergency Response Act contains certain amendments to the Patent Act that permit the Federal Government to authorize anyone to “make, construct, use and sell a patented invention to the extent necessar...
April 2017
Patent Infringement for Listing on eBay?
A patent owner notices that knock-off products are listed for sale on eBay. The knock-offs appear to infringe his patent. When eBay refuses to remove the allegedly infringing articles. The patent owner sues eBay for patent infringement, claiming that e...
March 2017
Experimental Use of an Invention
Inventors must take care that their invention is “new” for it to be patentable. That means the invention hasn’t been disclosed to the public. Trade show announcements, press releases, publications, offering the invention for sale &nda...

IP solutions to meet business goals

Shohini Bagchee’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 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.