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Marc Gagnon, Patent Agent | Trademark Agent | Senior Counsel

Marc Gagnon

Patent Agent | Trademark Agent | Senior Counsel Fasken
Jurisdiction Québec, 1996
Language(s) French, English
Office(s) Montréal
Contact

Overview

Marc Gagnon is a Senior Counsel, Patent Agent and Trademark Agent in the Intellectual Property Group at our Montréal office. Marc has an important expertise that allows him to advise clients effectively on protecting and managing their intellectual property assets such as patents and industrial design.

He has an in-depth experience in each of the stages involved in developing a portfolio of IP assets, including meeting with clients to identify their business objectives and their technological advantages over the competition, collecting the data needed to prepare patent and design applications for filing in jurisdictions relevant to their interests and following up on these applications until they are granted.

Over the course of his career, Marc has represented small and medium-sized businesses as well as large Canadian companies in various industries such as businesses that  produce and commercialize sporting goods, safety equipment, forestry equipment, agricultural equipment, hydraulic equipment, medical devices, household products, concrete products and recreational products.

Marc also has extensive experience in preparing legal opinions, including opinions relating to patentability of innovations, infringement or validity of patents or designs, freedom to operate, registrability or availability of trademarks and infringement of trademarks. In addition, he has been involved in patent and design litigations, due diligences and transactions such as mergers, acquisitions, assignments and licences.

He also was for three years on the committee of the Intellectual Property Institute of Canada (IPIC) responsible for preparing and marking the patent agent exams.

Marc's expertise is recognized nationally by the Best Lawyers Legal Directory that named him in 2020 and 2021 for his IP experience. In addition, he is a member of the Ordre des ingénieurs du Québec and a Fellow of the Intellectual Property Institute of Canada (IPIC).

Prior to joining Fasken, Marc was a partner with two firms specialized in intellectual property.

Achievements

  • Recognized in Intellectual Property Law, The Best Lawyers in Canada 2020 to 2022
Best Lawyers Publication name with laurels The Best Lawyers in Canada Recognized in Intellectual Property Law Best Lawyers is an attorney ranking service. For more than 30 years, it has identified lawyers best qualified to represent clients in various jurisdictions and specialties.

Career & Education

Education

  • Attestation, Agent at the United States Patent and Trademark Office
  • Attestation, Patent Agent
  • Attestation, Trademark Agent
  • LLB Université de Montréal
  • BASc, Mechanical Engineering Université Laval

Memberships & Affiliations

  • Member, Québec Bar
  • Member, Ordre des ingénieurs du Québec
  • Fellow, Intellectual Property Institute of Canada (IPIC)

Publications

Article, Author La protection d'un produit par l'enregistrement d'un dessin (Available in French only) Winter 2019, Revue de l’Ordre des chimistes du Québec, vol. 33, no 2, pp. 21-25
Article, Author Modernization of the Industrial Design Regime
Article, Author Nouvelle politique de la recherche et de l'innovation du Québec, incluant une aide financière pour un premier brevet (Available in French only)

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