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Intellectual Property, Patent & Trademark Lawyer in Toronto, Mark Penner

Mark D. Penner

Partner | Patent Agent | Trademark Agent Fasken
When creation is your business model, you need to protect it. Securing effective IP protection is the best way to do that!
Jurisdiction Ontario, 1997
Language(s) English
Office(s) Toronto
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Overview

As a patent and trademark lawyer Toronto-based, Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Acting for a range of clients, from individual inventors, start-ups and other early stage companies to large multinational companies, Mark provides strategic advice in a variety of technology areas, including biotechnology, chemistry, energy, social media, insurance, communications and digital marketing.

Mark regularly speaks and writes extensively on all aspects of intellectual property rights, particularly the commercialization of IP rights for start-ups as well as commercial matters for companies with respect to IP rights in national, cross-border and multinational commercial transactions. He is frequently sought after by national and international media as a commentator on IP matters.

Patents & Industrial Designs

As a registered patent agent with the Canadian Intellectual Property Office (CIPO), Mark advises clients on the drafting and prosecuting of patent applications in Canada and throughout the world, covering a range of subject matters, including biotechnology, chemistry and other life sciences.

Trademark Protection

As a registered trademark agent, Mark advises local, national and international clients on how to efficiently and effectively conduct branding strategies as well as protect, maintain and enforce trademark rights in Canada, the United States and other jurisdictions.

Commercial Intellectual Property & Commercialization of IP

Mark is frequently called upon to advise clients on commercializing intellectual property rights, including technology acquisition and licensing, freedom to operate and patentability opinions, as well as IP components of high value national, cross-border and multi-jurisdictional corporate transactions (e.g. financing, mergers and acquisitions and joint ventures).

Achievements

  • Recognized in Intellectual Property Law in Toronto, The Best Lawyers in Canada 2019 to 2025
  • Recognized nationwide in Canada as a leading trademark professional, World Trademark Review 2024
  • Recognized in IAM Strategy 300 – The World’s Leading IP Strategists, IAM Strategy 300 2023

Client Work

  • Dignio AS indirectly acquires the assets of AceAge Inc., a Canadian health technology company, [Deal - Dignio AS], Norwegian health technology company acquires the assets of a Canadian manufacturer of medication dispensers
  • STERIS sells Renal Business to Evoqua Water Technologies, [Deal - STERIS and Cantel (Canada) Inc.], Industry leader in mission-critical water treatment solutions acquires business dedicated to delivering innovative infection prevention products and services.
  • Howden Group completes US$195 million acquisition of Compressor Products International business unit from EnPro Industries, Inc., [Deal - Howden Group], Leading global provider of mission critical air and gas handling products and services acquires manufacturer of reciprocating compressors
  • Arsenal and Seal for Life announce acquisition of Canusa, [Deal - Arsenal Capital Partners and Seal For Life Industries], Leading private equity firm specializing in investments in specialty industrials and healthcare companies acquires global leading manufacturer of pipeline coatings.
  • Foresters Asset Management acquired by Fiera Capital, [Deal - Foresters Asset Management Inc]
  • Avalara acquires the business and related assets of Portway International, [Deal - Portway International Inc.]
  • Kraft Heinz Co’s C$1.62 billion sale of its Canadian natural cheese business to Parmalat SpA, [Deal - Kraft Heinz Canada Inc.]
  • Sony Interactive Entertainment completes acquisition of Audiokinetic, [Deal - Sony Interactive Entertainment LLC]
  • Kraft Heinz Canada completes acquisition of substantially all of the assets of Ethical Bean Coffee, [Deal - Kraft Heinz Canada Inc.]

Career & Education

Education

  • Registered Patent Agent, United States
  • Registered Patent Agent, Canada
  • Registered Trademark Agent, Canada
  • LLB Queen's University
  • MSc, Immunology University of Toronto
  • BSc, Biochemistry Queen's University

Memberships & Affiliations

  • Member, Canadian Bar Association
  • Member, Ontario Bar Association
  • Member, Intellectual Property Institute of Canada
  • Foreign Affiliate Member, American Intellectual Property Law Association
  • Member, International Trademark Association

Knowledge

  • Frequently Asked Questions (FAQ) About Trademark Oppositions in Canada, 4/26/2024
  • Compliance Alert: Time to File Trademark Applications in Order to Comply with Charter of the French Language, 11/1/2023
  • Is Mariah Carey the QUEEN OF CHRISTMAS®?  Not according to the US Trademark Office!, 12/21/2022

Events

News

Publications

  • How Could Artificial Intelligence Change the Nature and Scope of Intellectual Property?, 1/25/2021
  • Dead or Alive - Your Image is Coming With Me, 12/15/2020
  • Could the Creations of AI be Entitled to IP Protection, 8/28/2018

Speaking Engagements

  • Can AI invent?, 9/30/2021
  • Intellectual Property in the time of COVID, 5/7/2020
  • Fasken and IPIC hold Seminar on Patenting Artificial Intelligence, 11/20/2019

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