Practical IP counsel for protecting complex technologies
Mark has over two decades of experience in IP Law. Prior to practicing law, he worked as a nuclear engineer. His practice focuses on the acquisition, protection, commercialization, and exploitation of patents and industrial designs.
He provides strategic advice to his clients on all aspects of patent law and protecting their innovations. He is experienced in managing worldwide patent portfolios and is often retained to provide freedom to operate and validity opinions on complex technologies. He also assists in drafting and negotiating patent licensing, joint research, and other technology-related agreements.
Extensive experience in patenting chemical and mechanical technologies, alongside building and managing global portfolios
Mark’s practice focuses on supporting Canadian companies in protecting various chemical and mechanical technologies - including organic and inorganic chemical compounds and compositions, chemical separation processes (e.g. membrane, gas adsorption, fractional distillation, leaching, electrochemical-based processes) and reactor systems (e.g. combustion, plasma, microwave), with a specific emphasis on energy technologies (e.g. oil & gas, nuclear) and mineral processing technologies (hydrometallurgy, carbonylation, vapor deposition), including various clean technologies (e.g. decarbonization, electrification, fuel cells, batteries, solar, alternative fuels, hydrogen storage and management, and water purification). His work in supporting IP protection of oil and gas technologies spans unconventional extraction technologies, such as oil sands extraction technologies (SAGD and mining) and hydraulic fracturing, upgrading processes, and tailings treatment solutions. He also has deep experience in well completion technologies, such as artificial lift systems (including associated gas and solids separation technologies), sliding sleeves, darts, frac plugs, bottom hole assemblies, tubing anchors, and cementing tools and methods.
Mark has driven strategic patent portfolio growth for successful monetization:
- Alberta-based oilfield services company, with novel well completion technologies, sold to multinational integrated oil and gas company ($100M+);
- Alberta-based oilfield services company, with novel artificial lift technologies, sold to multinational oilfield services company ($50M+); and
- Ontario-based industrial water purification technology company sold to multinational conglomerate ($100M+).
Qualifications
- News
- Industry Involvement
- In the Media
Memberships
- Canadian Hydrogen and Fuel Cell Association (Past Director)
- American Intellectual Property Law Association — AIPLA
- International Association for the Protection of Intellectual Property — AIPPI
- Intellectual Property Institute of Canada — IPIC
- Professional Engineers Ontario — PEO
- Chemical Institute of Canada — CIC
- Intellectual Property Owners Association — IPO
Publications
- Intellectual Property Considerations in the NAFTA Countries, North American Business Accelerator Expert Seminar on Clean Technology, in December 2016 in Calgary, Alberta.
- A Look at the Oil Industry, Canadian Mining Journal, April 2016
- Patent Wars in the Oil Patch, Canadian Lawyer Magazine, March 2016
- Preserving and Exploiting Your Intellectual Property, Seminar for energy clients in January 2016 in Calgary, Alberta.
- Avoiding Intellectual Property Pitfalls in the Oil and Gas Industry, EUCI Webinar, in March 2015.
- Keeping a Lid on Trade Secrets, Petroleum Economist, February 7, 2015, Co-authored with Jonathan Ball, Barclay Nicholson and Jayme Partridge
- Oil and Gas Sectors Playing it Close to the Vest, The Lawyers Weekly, January 23, 2015
- Intellectual Property Protection Essential for New Technologies, Globe & Mail, May 28, 2014
- Intellectual Property Ownership and Collaboration Structures, November 2013 in Calgary, Alberta.
- Intellectual Property Capture and Protection Strategies for Exploiting GTL Technologies, Gas to Liquids Conference, in October 2013 in London, England (UK)
- Importance of IP Heats Up in the Oil Patch, Canadian Lawyer, July 2013
- Intellectual Property Capture and Protection Strategies for Oil & Gas Technology Businesses, Petroleum Technology Alliance of Canada (PTAC) Workshop, in June 2013 in Calgary, Alberta.
- Innovation is Key, but so is Protecting It, The Lawyers Weekly, June 28, 2013
- Intellectual Property Protection of Oil & Gas Technologies, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 2, April 2013
- Avoiding Intellectual Property Pitfalls in the Oil and Gas Industry, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 1, August 2012
- Protecting Innovation in the Oil and Gas Industry, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 1, August 2012
- Intellectual Property Protection of Oil & Gas Technologies, Technology and IP Issues for Energy companies client seminar, in November 2012 in Calgary, Alberta.
- Intellectual Property Protection of Canadian Oil Sands Technologies, Oil Sands and Heavy Oil Technologies Conference, in July 2012 in Calgary, Alberta.
- Intellectual Property Protection of Mining/Metallurgical Process Technologies, NRC-IRAP Breakfast Seminar, in June 2012 in Sudbury, Ontario.
- Putting a Value on IP, Lexpert, May 2012
- Relevance of the Intellectual Property Environment to Green Technologies, Sustainable Chemistry Summit, in September 2011 in Kingston, Ontario.
- Acquiring Patent Portfolios of Failed or Failing Technology Companies, September 2011
- Protecting Innovation in the Chemical and Metallurgical Process Industries, July 2011
- Canada Picks Up Pace in Patents, Globe & Mail, January 18, 2011
- Countries Offer New Ways to Speed Up Patents, The Law Times, September 20, 2010
- Patenting of Green Technologies: Trends, Issues and Strategies, January 2010
- Race for Patents Heats Up, National Post, November 18, 2009
- Patenting of Green Technologies: Trends, Issues and Strategies, 8th World Congress of Chemical Engineering, in August 2009 in Montréal, Québec
- Patent Claim Construction As it Should Be: Promoting the Objects of the Patent Act, Cited by the Supreme Court of Canada in Free World v. Electro Santé Inc.