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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)
June 2017
Is Software Patentable? Recent US Case Law Offers a Glimmer of Hope
The Medium
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
By Richard Stobbe 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 – al...
September 2016
Post-Grant Patent Amendment - Canadian and US Options
November 2014
Computer and Software Related Innovation - Is There A Rationale For Filing Software Patent Applications in Canada?
The Medium
May 2014
Whose Invention Is It Anyway? Some Thoughts on Patent Inventorship and Ownership
November 2013
Patenting, Publishing and Trade Secrets: Strategies for Inventors
November 2013
Getting Your Application Through the USPTO - Expedited Examination Options
March 2013
The Heart of The Patent Bargain: Viagra Patent Invalidated In Canada
The Medium
March 2013
Utility Models, Petty Patents & Innovation Patents: Efficient IP Protection for SMEs
April 2012
Canadian Patents: Importance of Registering Assignment
The Medium
April 2012
Is Nature "Patentable"?
The Medium
Winter 2012
Canadian Patents: Not Invalid for Lack of "Good Faith"
Spring 2011
Invention Assignments: A Cautionary Tale

Defending against a patent infringement claim in a fracking operation

Our Client: A major provider of well completion services and equipment to operators of fracking wells.
Where we began: Our client and three other completion companies were sued for patent infringement.
Our approach: The main defences were that the patent was invalid as obvious over prior art and that the invention was disclosed by the plaintiff to the public more than a year prior to filing. One focus was on the plaintiff’s claim that its otherwise invalidating public disclosure was in confidence. Neil Kathol applied his experience in trade secret law/law of confidential information to identify the holes in the plaintiff’s claim of confidentiality.
The Result: The four-week "validity trial" occured in early 2017. A decision is on reserve.

IP solutions to meet business goals

Working with Shohini Bagchee, 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.