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Marc Gagnon has close to 15 years of experience in obtaining and managing patents and industrial designs in the mechanical and industrial fields. Mr. Gagnon has in-depth experience with every stage of the portfolio development process, including meeting with clients to identify their commercial objectives and technical edges over the competition, gathering the necessary information to prepare patent and design applications suitable for filing in the jurisdictions of their choice and prosecuting these applications until they are granted. He has acted for clients operating within a wide range of industries, including sporting products, security equipment, forestry equipment, farm equipment, hydraulic equipment, household equipment, concrete products, and recreational products such as snowmobiles, watercraft and all-terrain vehicles. He works with local small and medium-sized enterprises as well as larger Canadian corporations.
Mr. Gagnon also has considerable experience in legal opinion work, including advising on the patentability of innovations, providing patent infringement, validity and market clearance opinions, advising on the availability and registrability of trade-marks, and providing design and trade-mark infringement opinions.
Mr. Gagnon prosecutes patent, industrial design and trade-mark applications for foreign associates located in the United States, Mexico, Argentina, France, Italy, Ireland, Germany, Sweden and other countries worldwide. He maintains a hands-on approach to all applications and provides our associates with detailed recommendations on how to handle Examiners’ objections and advice on different aspects of the prosecution.
Mr. Gagnon is occasionally involved in litigation cases pertaining to patents and designs.
Prior to entering law, Mr. Gagnon worked as a mechanical engineer at Alcan where he was responsible for the mechanical maintenance of three hydroelectric power plants.
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Memberships
- Fellow, Intellectual Property Institute of Canada
- Member, International Federation of Intellectual Property Attorneys (FICPI)
- Member, Canadian Bar Association
Speaking engagements
- "La protection d’une innovation par brevet et par dessin," Parc technologique du Québec métropolitain, Quebec City, 2006
Teaching activities
- Workshop leader for the workshop entitled "Patent Office Procedure & Responses to Patent Office Official Actions," IPIC-McGill course Understanding Patents, Montreal, July 2011
- "Patent Office procedures and responses to Office Actions" (workshop), IPIC-McGill course Understanding Patents, Montreal, July 2010
- "Patent Office procedures and responses to Office Actions" and "Claims drafting" (workshop), IPIC-McGill course Understanding Patents, Montreal, July 2009
- "Patent Prosecution" and "Patent Advanced Claims Drafting," IPIC-McGill course Understanding Patents, Montreal, July 2008
Publications
- "Federal Court grants stay of re-examination proceedings pending outcome of patent infringement and validity trial" (co-author: Tomek Nishijima), International Law Office Intellectual Property Newsletter, June 7, 2010; IP Perspectives, Spring 2010
- "La protection par dessin au Canada et aux Etats-Unis," Les Cahiers de la propriété intellectuelle, Éditions Yvon Blais Inc., May 2005, vol. 17, no. 2, pp. 235-261
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