Industries

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

  • Ontario, 1997

Mark D. Penner


Partner | Patent Agent | Trade-mark Agent


+1 416 868 3501
+1 416 364 7813 (fax)

Mark is a partner in the Technology and Intellectual Property Practice Group with expertise in the acquisition, protection and enforcement of intellectual property rights in the chemical, pharmaceutical and biotechnology areas. Mark's practice focuses primarily on the drafting and prosecuting of patent applications in this area of technology. Examples of this include therapeutic compounds and their uses (e.g. small molecule therapeutics, biopharmaceuticals, stereoisomers); chemical and biotechnological processes (e.g. in food production, heavy oil extraction, protein, gene and life form engineering); and recombinant biomolecules (e.g. antibodies, peptides, cellular recognition/adhesion proteins, angiogenesis and immune response modulators).

In addition to patent prosecution, Mark also has extensive experience with preparing infringement, validity, freedom to operate and patentability opinions in the life sciences. On the enforcement side, Mark has been involved in Federal Court proceedings involving patent infringement and validity as well as Notice of Compliance proceedings under the Patented Medicines (Notice of Compliance) Regulations.

Mark's practice also involves the IP aspects of corporate transactions (e.g. financing, mergers & acquisitions and joint ventures) such as protection of confidential information, trade secrets and know how, conducting due diligence, as well as technology acquisition and licensing.

Mark is registered to practise as a patent and trade-mark agent before the Canadian Intellectual Property Office. He is also registered to represent Canadian applicants before the United States Patent & Trademark Office.

Honours and Awards

  • IAM Patent 1000 – The World’s Leading Patent Practitioners 2012 for Patent Prosecution
  • 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