Geographies

Education

  • Registered Patent Agent (United States), 2001
  • Registered Patent Agent (Canada), 2000
  • Registered Trade-mark Agent (Canada), 1998
  • LLB, 1995
    Queen's University
  • MSc, Immunology, 1994
    University of Toronto
  • BSc, Biochemistry, 1989
    Queen's University

Year of Call/Admission

  • Ontario, 1997

Languages Spoken

  • English

Mark D. Penner

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Partner | Patent Agent | Trade-mark Agent


+1 416 868 3501
+1 416 364 7813 (fax)
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Mark Penner is an intellectual property lawyer with the firm’s Technology and Intellectual Property practice groups. Mark’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

He acts for a range of clients, from individual inventors, start-ups and other early stage companies to large multinational companies, and is actively involved in counselling clients and providing strategic advice in a variety of technology areas, including biotechnology, chemistry, energy (mining, oil and gas), social media, insurance, communications and digital marketing. While focusing on biotechnology and other life sciences, “… his deep knowledge base enables him to handle matters across a range of disciplines with aplomb” (IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2012).

Mark speaks and writes extensively on all aspects of intellectual property rights, particularly the commercialization of IP rights for start-ups as well as commercial matters for companies with respect to IP rights in national, cross-border and multinational commercial transactions.  Mark has been sought after by national and international media as a commentator on IP matters.

Patents & Industrial Designs

As a registered patent agent with the Canadian Intellectual Property Office (CIPO), Mark’s practice focuses on the drafting and prosecuting of patent applications in Canada and throughout the world covering a range of subject matters, including biotechnology, chemistry and other life sciences. Mark advises clients on patent protection strategies and how to proceed when faced with allegations of patent infringement. Mark “…spearheads prosecution and monetisation initiatives for an impressive variety of companies” (IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2013).

Trademark Protection

As a registered trademark agent, Mark advises local, national and international clients on how to efficiently and effectively conduct branding strategies as well as protect, maintain and enforce trademark rights in Canada, the United States and other jurisdictions.

Commercial Intellectual Property & Commercialization of IP

Mark is frequently called upon to advise clients on commercializing intellectual property rights, including technology acquisition and licensing, freedom to operate and patentability opinions, as well as IP components of high value national, cross-border and multi-jurisdictional corporate transactions (e.g. financing, mergers and acquisitions and joint ventures).

Honours and Awards

  • IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2015
  • IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2014
  • IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2013
  • IAM Patent 1000 – The World’s Leading Patent Practitioners for Patent Prosecution, 2012
  • Leaders League 2012 for Patent Expertise

Membership/Affiliations

  • Member, Canadian Bar Association
  • Member, Ontario Bar Association
  • Member, Intellectual Property Institute of Canada
  • Foreign Affiliate Member, American Intellectual Property Law Association
  • Member, International Trademark Association