Canada’s Intellectual Property Law Firm

James Jun Pan

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James Jun Pan

Partner
  • Smart & Biggar LLP
Barrister and Solicitor
  • Patent and Trademark Agent
English | Chinese

Uniquely combining IP with scientific and engineering expertise from an international perspective

With broad IP expertise and an extensive background in multiple scientific and engineering disciplines, James is sought after for his ability to understand highly technical, complex inventions and help his clients capitalize on their commercial potential. He applies his exceptional knowledge to advise clients across Canada, the U.S., Europe and Asia on patent procurement and strategic IP management.

Strategic approach to patent protection

James’ clients benefit from his in-depth experience in IP management and strategic counseling, preparing and prosecuting patent and industrial design applications in Canada, and managing the filing and prosecution of patent applications in the U.S., Europe, China, Japan, Korea and other jurisdictions worldwide. He also provides freedom-to-operate, validity and infringement opinions related to patent, industrial design and trademark, and prepares agreements related to transfer or license of IP rights and non-disclosure of confidential information.

James offers an invaluable international perspective to his clients including multinational companies based in Canada, the U.S., Europe, and Asia and Canadian companies of all sizes. He also has experience working with universities, IP firms and government agencies based in Canada and around the world.

Unparalleled scientific and engineering experience

With an engineering degree and a doctorate in Chemistry, James previously held roles as an engineer in a military research and development institute and as a research scientist in a national subatomic research institute. He uses this work experience and his diverse knowledge in the areas of physics, chemistry and computers to protect his clients’ inventions.

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • "Evidence and discovery in Chinese IP courts; the role of the technical inquisitors," moderator of panel presentation at AIPLA Annual Meeting, Washington DC, October 2018
  • “Practical Aspects of Canadian Patent Law – a comparison with US practice,” International Symposium on Patent Procurement, Enforcement and Protection in North America, Europe and India by Chinese Companies, Beijing, September 2018
  • "Sufficiency of Description — under Article 26.3 of the Patent Law of the People's Republic of China," presented at the AIPLA Annual Meeting, October 2013

Memberships

  • Fellow, Intellectual Property Institute of Canada; member of the International Patent Practice Committee
  • Member, American Intellectual Property Law Association; Past co-chair of IP Practice in China Committee
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
  • Member, American Chemical Society
  • Member, Society of Petroleum Engineers

Teaching Activities

  • “Patent Law Institute 2018: Critical Issues & Best Practices,” Practicing Law Institute, San Francisco, April 2018
  • “Patent Law Institute 2018: Critical Issues & Best Practices,” Practicing Law Institute, New York, April 2018