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Mark D. Penner

Partner | Patent Agent | Trade-mark Agent

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.

Selected Experience

Publications

Presentations

Membership/Affiliations

  • Professional Associations
  • Member, Canadian Bar Association
  • Member, Intellectual Property Institute of Canada
  • Foreign Affiliate Member, American Intellectual Property Law Association
Contact Information
Toronto
416 868 3501
416 364 7813 fax


Services
Education
  • Registered Patent Agent (United States), 2001
  • Registered Patent Agent (Canada), 2000
  • Registered Trade-mark Agent (Canada), 1998
  • LL.B., 1995
    Queen's University
  • M.Sc., 1994
    University of Toronto
  • B.Sc., 1989
    Queen's University
Called to the Bar
  • Ontario, 1997
 
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