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As you look to protect your patentable innovations, our team of patent lawyers and technical personnel 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 deep 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.
Excalibre Oil Tools Ltd. v. Garay, 1999 CanLII 8705 (FC)
July 11, 2019
Understanding Your Intellectual Property Toolbox
Seminars
Do you work in an industry with technology or inventions that you are trying to protect? Or are you looking to commercialize your existing technology and capitalize on it? Join Field Law's Neil Kathol, a lawyer and trademark agent, for a Lunch...
June 2017
Is Software Patentable? Recent US Case Law Offers a Glimmer of Hope
The Medium
Many inventions involve software, and many inventors are interested in protecting such inventions with a patent. The question is: are software inventions patentable?  Based on recent cases in the United States, the answer is: yes, software inventi...
April 2017
Patent Infringement for Listing on eBay?
By Richard Stobbe 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 infringemen...
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...
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...
November 2014
Computer and Software Related Innovation - Is There A Rationale For Filing Software Patent Applications in Canada?
The Medium
Intellectual property law provides a number of avenues to protect investments that innovators make in developing and marketing software. Securing one or more intellectual property rights is critical in acquiring and maintaining an edge i...
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
Patenting, Publishing and Trade Secrets: Strategies for Inventors
A company independently develops an innovation and they discover later that it has been patented by a competitor. The competitor did not steal or reverse ­engineer that innovation – they simply arrived at it independently, and got to the...
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
Canadian Patents: Importance of Registering Assignment
The Medium
This is a review of a recent decision of the Ontario Superior Court of Justice, which has implications for Canadian patent owners and assignees.   The case is Verdellen v. Monaghan Mushrooms Ltd.The facts are that the Applicant...
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...
Winter 2012
Canadian Patents: Not Invalid for Lack of "Good Faith"
This is a review of a recent decision of the Canadian Federal Court of Appeal, which has implications for patent law practitioners and Canadian patent owners. The case is Weatherford Canada Ltd. v. Corlac Inc.    ...
Spring 2011
Invention Assignments: A Cautionary Tale
This is a review of a recent decision of the United States Court of Appeal for the Federal Circuit which has implications for business law practitioners, particularly those with a technology practice.   The case is Board o...

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.