Canada’s Intellectual Property Firm

Charles Boulakia

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Charles Boulakia

Principal
  • Smart & Biggar LP
Language(s): English | French

Charles Boulakia is a Principal in the firm’s Toronto office. His practice is primarily directed towards the preparation and prosecution of patent applications in the biotechnology, pharmaceutical, chemistry, biofuel, and oil and gas areas.

Charles also provides his clients with IP due diligence, validity, and freedom to operate opinions. Charles also drafts and negotiates license agreements and advises on pharmaceutical regulatory law, including strategy regarding the Patented Medicines (Notice of Compliance) Regulations and Certificates of Supplementary Protection.  

Charles is Vice-Chair of the AIPPI Standing Committee on Pharma and the Chair of the Patent Committee for AIPPI Canada. He provides pro bono advice on IP law for the Law and Business Clinic at Toronto Metropolitan University, volunteers on the selection committee for the Norman Esch Engineering Innovation and Entrepreneurship Award and is a mentor at the University of Toronto Entrepreneurship Hatchery, the Innovation Boost Zone, TechStars (Toronto), and the Design and Fabrication Zone. He guest lectures at the University of Toronto Masters of Biotechnology, the Toronto Metropolitan University Law and Business Program, and the University of Western Ontario Graduate Student Innovations Scholars. He is on the Discipline Committee of the College of Patent and Trademark Agents (CPATA). Charles received the G. Raymond Chang Outstanding Volunteer Award from Ryerson University in 2017.

Representative Experience

  • Provided international intellectual property advice for a Toronto-based therapeutic start-up, including negotiating rights and license agreements with various Universities and research institutes, and drafting, prosecuting, and obtaining issuance of patents for the platform technology and specific targeted therapeutics, in the aptamer space.
  • Drafted and obtained numerous patents related to pipeline coatings, for corrosion resistance, impact resistance, and weight.
  • Drafted numerous patents for cannabis-related technologies, including delivery systems, formulations, combinations, cannabinoid purification and isolation technologies, and filter technologies for greenhouse use.
  • Performed freedom to operate due diligence on multi-million dollar government-backed investments in biofuel plant production.
  • Drafted patents related to improvements in DNA amplification technology.
  • Prosecuted and obtained numerous patents related to e-cigarette technology.
  • Drafted and obtained patents related to processes for converting biomass waste to biofuels.
  • Provided advice and guidance on numerous co-development agreements, including between competitors.
  • Negotiated settlement agreements to avoid patent litigation related to pipe-laying methods and equipment.

Qualifications

  • News
  • Industry Involvement
  • In the Media

Memberships

  • International Association for the Protection of Industrial Property — AIPPI (Vice-Chair, Pharma Standing Committee; Chair, Patent Committee (Canada Chapter))
  • Toronto Metropolitan University Law and Business Clinic (Advisor)
  • Norman Esch Engineering Innovation and Entrepreneurship Award (Selection Committee Member)
  • University of Toronto Entrepreneurship Hatchery (Mentor)