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Pablo Tseng is an experienced intellectual property (IP) lawyer assisting companies at various stages of maturity in the acquisition, commercialization and enforcement of IP rights. With expertise in all aspects of patent and trademark prosecution and portfolio management, he assists clients in a range of industries, including the chemical, technology, energy, and food, beverage and agribusiness sectors.

Working with clients on commercial and licensing agreements relating to IP and technological assets, Pablo translates complex legal issues into plain language and delivers legal solutions that advance business goals.

As a trademark agent, Pablo provides counsel on issues related to trademark registrability, prepares and prosecutes trademark applications, and handles all aspects of trademark opposition proceedings and expungement proceedings.

As a patent agent, Pablo drafts and prosecutes patent applications, and advises clients on patentability, validity, infringement and freedom-to-operate issues. His background in chemistry gives him valuable insight into a variety of industries, including cleantech and natural health products.

Pablo serves as an Executive of the Canadian Bar Association’s Intellectual Property & Technology Law Section in British Columbia. He is published in peer-reviewed scientific and legal literature, and his legal work has been referenced by the Parliament of Canada.



Representative Matters

  • External patent counsel to a leading research university in Western Canada
  • Lead trademark counsel to a major forestry company in Canada
  • Canadian trademark counsel to an American Fortune 500 automotive manufacturer
  • Lead patent counsel to major athletic apparel retailer in North America
  • Lead trademark counsel to a major North American manufacturer of vegetarian and vegan pre-packaged meals

Speaking Engagements

Intro to IP and Employment Law Webinar

August 5, 2021

Get Your Game On: Intellectual Property Rights and Video Games Intellectual Property Institute of Canada

May 11, 2021

Top 10 (and 1) IP Cases in 2020 - BC and Beyond Canadian Bar Association BC IP Section

February 3, 2021

IP/Tech 101: Protect, Commercialize, Monetize Vancouver Startup Week 2020

September 28, 2020

IP/Tech 101: Protect, Commercialize, Monetize Emerging Companies Webinar

September 10, 2020

Practice Overview: Intellectual Property Lawyer University of Victoria Business Law Clinic

June 8, 2020

Authentication in Practice: Navigating the Digital Fake CBA Digital Literacy Series

June 8, 2020

Updates and Tips for your Business Trademark Law Seminar, Vancouver

February 27, 2020

Intellectual Property Roundtable (Panelist) FACL BC Mentorship Roundtable and Mixer

February 20, 2020

Intellectual Property Overview CanCham Pearl River Delta Seminar Series

November 7, 2019

Recent Changes to the IP Landscape in Canada Hong Kong Institute of Patent Attorneys CPD Seminar

November 6, 2019

New Trends and Opportunities in the Canadian Cannabis Industry Canadian Bar Association IP Section Seminar

July 4, 2019

What Not to Do: Master Class in Slowing Growth, Helping Competitors, and Making Exits Harder ACETECH CEO Summit

April 3, 2019

Medical Cannabis: New Markets, New Opportunities Grow Your Assets – Intellectual Property for the Cannabis Industry

February 21, 2019

IP Practitioner Roundtable (Panelist) FACL BC Mentorship Roundtable and Mixer

February 20, 2019

IP Updates VGBA Summit North 2018

October 16, 2018

Meeting 120 Standing Committee on Access to Information, Privacy and Ethics

October 16, 2018

Out with the "Old", in with the "New" Hong Kong Institute of Patent Attorneys CPD Seminar

July 5, 2018

Blockchain, ICOs, the Sharing Economy, and other Innovations ACETECH CEO Summit

April 11, 2018

Chemistry Careers Event (Panelist) University of British Columbia – Chemistry Department

June 20, 2017

Intellectual Property Audits Innovation Boulevard Legal Workshop

April 28, 2016

Federation of Asian Canadian Lawyers Leisure Talk, Fairchild TV

July 10, 2015

Intellectual Property and Invention Protection SFU – School of Engineering Science

October 3, 2013
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News


Media Mentions

  • “疫苗豁免与专利法” (Vaccine Waivers and Patent Law), A1出击,AM1540多伦多,5月21日2021年
  • “Deep Fakes: What Can Be Done About Synthetic Audio and Video?”, Parliament of Canada (Publication No. 2019-11-E), April 8, 2019
  • “Canada set to begin Patent Prosecution Highway pilot program with EU”, Financial Post, November 7, 2014
  • “A Whiff of Change: Scent Marks as Trademarks,” The Advocate, 2013, 71: 863-871, (cited as a part of the Reading List of Bill C-8, Combating Counterfeit Products Act, 41st Parliament, 2nd Session) (November 2013)

Rankings & Recognition

  • Recognized by Best Lawyers in Canada (2022) as a leading lawyer in the area of Information Technology Law

Directorships & Affiliations

  • Executive member of the Canadian Bar Association (CBA) Intellectual Property and Technology Section for British Columbia
  • British Columbia Law Society (Practising Member)
  • Canadian Bar Association (Member)
  • Intellectual Property Institute of Canada (Associate)

Education & Admissions

2013
Called to the British Columbia bar
2012
JD University of Ottawa
2009
M.Sc.University of Toronto
2007
B.Sc. (Honours)University of Toronto

Publications

  • “A Whiff of Change: Scent Marks as Trademarks”, The Advocate, 2013, 71: 863-871.
  • “Patent numbers warn of decline in Canadian chemical innovation”, Chemical Institute of Canada, CIC News, January 2018.
  • “Transliteration of Names and Surnames: Revisiting Paragraph 12(1)(a) of the Trade-marks Act”, Canadian Intellectual Property Review, 2018, 34: 47-52.
  • “What Can and Should the Law do about ‘Deepfake’: An Update”, Internet and E-Commerce Law in Canada, 2019, 19(10): 80-84.

Insights by Pablo Tseng (35 Posts)

Featured Insight

COVID-19: Expedited Examination of Canadian Trademark Applications

CIPO is now taking requests to expedite the examination of Canadian trademark applications related to COVID-19 goods and services.

Read More
Dec 16, 2020
Featured Insight

The Intersection between Drop-Shipping and Patent Infringement

The drop-shipping business model is picking up steam in the online world. But is it immune from the reaches of patent law? Find out in this bulletin.

Read More
Nov 4, 2020
Featured Insight

Domain Name Disputes in Canada: Considerations for Non-Canadian Entities

For non-Canadian companies looking to do business in Canada, securing a ".ca" domain name should be a natural part of their IP strategy.

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Oct 6, 2020
Featured Insight

Out with the New, In with the Old: The F.C.A. provides Clarity on its Ability to interpret Contracts

The FCA re-affirms the Kellogg and Clopay decisions regarding the Federal Court's ability to interpret contracts. For more details, please read the bulletin.

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Sep 28, 2020
Featured Insight

IP/Tech 101 for Emerging Companies

Join us for a discussion on how early stage companies can protect, commercialize, and monetize their intellectual property assets.

Sep 10, 2020
Featured Insight

No Solution? No Problem! The Federal Court of Canada Puts a Dagger in the “Problem-Solution” Approach to Patent Claims Construction

Patents: the Federal Court has confirmed that the "problem-solution" approach to claims construction is not correct. For more details, read this bulletin.

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Aug 27, 2020
Featured Insight

Trademark Law: Change in Practice Regarding Extensions of Time in Examination

CIPO has changed its practice regarding time extensions to file responses to examiner's reports. Such guidance will affect Canadian prosecution strategies.

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Aug 4, 2020
Featured Insight

Clorox v Chloretec: The Application of Vavilov in the Trademarks Context

The Federal Court of Appeal confirms the application of the appellate standard of review framework to trademark opposition board decisions.

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Jul 23, 2020
Featured Insight

Trademarks: ‘HERBS R US Design’ Found to Depreciate the Goodwill attaching to the ‘TOYS R US Design’

In this case, TOYS R US demonstrated that a third party's use of a similar mark likely had the effect of depreciating its goodwill. Find out more here.

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Jul 15, 2020
Featured Insight

COVID-19: Accelerated Examination of Patent Applications for Small Entities

CIPO has begun piloting an accelerated examination process for technologies related to medical products and processes. See this bulletin for more details.

Read More
Jul 14, 2020
Featured Insight

June 10, 2020 Update: Innovating During the COVID-19 Pandemic

This bulletin provides a summary of funding opportunities available in Canada over the month of June and updates
from CIPO and the USPTO.

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Jun 10, 2020
Featured Insight

The Admissibility of Patent Prosecution History as Evidence in Canada

This article summarizes the court's interpretation of the applicability and scope of S.53.1 of the Patent Act (re: admissibility of prosecution history).

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Jun 1, 2020
Featured Insight

Implied Trademark Licenses: A Case Study

When will a trademark license granted from one party to another be implied?  The Federal Court in the Core Consultants Realty[1] decision (“Core Consultants”) recently had an opportunity to revisit this question.

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Apr 12, 2020
Featured Insight

Bill C-13 Receives Royal Assent: Change to the Canadian Patent Landscape in Response to COVID-19

All levels of Canadian government are taking extraordinary steps in response to the public health emergency of COVID-19.

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Mar 27, 2020
Featured Insight

COVID-19: Seeking Court Relief Regarding the Disease of Trademark Infringement

This article addresses challenges in using Canada's courts to deal with trademark infringement matters during the COVID-19 pandemic

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Mar 26, 2020
Featured Insight

Bill C-4 Receives Royal Assent: Incoming Changes to the Intellectual Property Landscape

New intellectual property provisions passed into law following Canada's ratification of the "new NAFTA", the
Canada-United States-Mexico Agreement (CUSMA)

Read More
Mar 24, 2020
Featured Insight

The Tort of Conversion in the Electronic Age: A Case Study

The British Columbia Supreme Court has found that the tort of conversion must include wrongful interference with intangible goods. Read more here.

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Mar 12, 2020
Featured Insight

Trademark (not) Assigned

An executed assignment agreement is not necessarily determinative of whether a trademark has truly been transferred from one party to another.

Read More
Feb 4, 2020
Featured Insight

What Every Owner of a Registered Canadian Trademark Needs to Know

The bulletin describes steps that will ensure that trademark owners are able to maintain their trademark registrations

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Sep 23, 2019
Featured Insight

TOP TWELVE THINGS TO KNOW – New Canadian Trademarks Act June 17, 2019

On June 17, 2019 major changes to Canada’s Trademarks Act will come into force.

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Jun 4, 2019
Featured Insight

Trademark “Use” in the Normal Course of Trade: Revisited

The recent Federal Court of Appeal decision in Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP [1] ("Cosmetic Warriors") revisits what constitutes “use” of a trademark in the normal course of trade.

Read More
May 14, 2019
Featured Insight

Protecting Your Trademarks in the World of Online Retail Platforms

In the digital age, many vendors have expanded beyond brick and mortar shops and now sell their goods and services online.

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Apr 13, 2019
Featured Insight

Trademarks: Material Misstatements in Declarations of Use Revisited

The impact of misstatements in a declaration of use was recently revisited in the decision of Roots Corporation v. YM Inc. (Sales), 2019 FC 16

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Jan 18, 2019
Featured Insight

PPH Program (Canada and Asia-Pacific Jurisdictions): Annual Update 

PPH Program (Canada and Asia-Pacific Jurisdictions): Annual Update

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Dec 19, 2018
Featured Insight

What Can and Should the Law Do About ‘Deepfake’: An Update

This update looks at several additional causes of action and discusses how we can limit the deleterious social consequences of deepfake videos.

Read More
Dec 5, 2018
Featured Insight

The Hague System For Industrial Designs is in Force in Canada

Canadian companies and designers can now seek to protect their industrial designs in multiple foreign jurisdictions through a single international application.

Read More
Nov 21, 2018
Featured Insight

What Can The Law Do About ‘Deepfake’?

Face-swapping videos possible by software technology using machine-learning algorithms to analyze photographs of subject learning the map of the subject face and superimposing subject face to video

Read More
Mar 30, 2018
Featured Insight

What’s the use? Federal Court revisits the requirements for use of a trademark in association with goods

Recent Federal Court decision in Cosmetic Warriors Limited v Riches revisits statutory requirements for use of trademark in association with goods.

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Feb 6, 2018

Patent Numbers Warn of Decline in Canadian Chemical Innovation

2008 economic crisis had negative effect on business innovation research and development. Canada was no exception and tell tale sign of impact was decrease in patent application filings

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Jan 18, 2018
Featured Insight

2017 Round-up: Patent Applications related to Data Processing at CIPO

The patentability of computer-implemented inventions is a topic of interest in Canada. Patentable subject matter is set out in Practice Guidance Following the Amazon FCA Decision

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Jan 12, 2018
Featured Insight

Back to Patent Basics: The FCA re-affirms the Obviousness Test in Canada

Back to Patent Basics: The FCA re-affirms the Obviousness Test in Canada

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Dec 6, 2017
Featured Insight

Cannabis-related Trade-marks: Take Care in Choosing Correctly

Cannabis-related Trade-marks: Take Care in Choosing Correctly

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Nov 13, 2017
Featured Insight

Protection of Inventions Related to the Marijuana Industry

Protection of Inventions Related to the Marijuana Industry

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Nov 9, 2017
Featured Insight

Canada/China Patent Prosecution Highway Program: Three Years in Brief

Canada/China Patent Prosecution Highway Program: Three Years in Brief

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Nov 8, 2017
Featured Insight

Domain Name Squatters Lose – Again

Domain Name Squatters Lose - Again

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Nov 2, 2017