- 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
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 is published in peer-reviewed scientific and legal literature, and his legal work has been referenced by the Parliament of Canada.
He is recognized by numerous ranking authorities including Best Lawyers, Lexpert, Lexology, IAM Patent 1000, and WTR 1000.
Introduction to Intellectual Property CCBC Women in E-Commerce Virtual China MissionMarch 9, 2023
Gateway to Global Leadership, AIAC SummitNovember 9, 2022
National Security Considerations in Cross-Border Research Collaboration, Research Partnerships WebinarApril 27, 2022
Asia-Facing Private Practice | University of Victoria, Faculty of LawFebruary 15, 2022
Acetech Patent Law OverviewDecember 14, 2021
Intro to IP and Employment Law WebinarAugust 5, 2021
Get Your Game On: Intellectual Property Rights and Video Games Intellectual Property Institute of CanadaMay 11, 2021
Top 10 (and 1) IP Cases in 2020 - BC and Beyond Canadian Bar Association BC IP SectionFebruary 3, 2021
IP/Tech 101: Protect, Commercialize, Monetize Vancouver Startup Week 2020September 28, 2020
IP/Tech 101: Protect, Commercialize, Monetize Emerging Companies WebinarSeptember 10, 2020
Practice Overview: Intellectual Property Lawyer University of Victoria Business Law ClinicJune 8, 2020
Authentication in Practice: Navigating the Digital Fake CBA Digital Literacy SeriesJune 8, 2020
Updates and Tips for your Business Trademark Law Seminar, VancouverFebruary 27, 2020
Intellectual Property Roundtable (Panelist) FACL BC Mentorship Roundtable and MixerFebruary 20, 2020
Intellectual Property Overview CanCham Pearl River Delta Seminar SeriesNovember 7, 2019
Recent Changes to the IP Landscape in Canada Hong Kong Institute of Patent Attorneys CPD SeminarNovember 6, 2019
New Trends and Opportunities in the Canadian Cannabis Industry Canadian Bar Association IP Section SeminarJuly 4, 2019
What Not to Do: Master Class in Slowing Growth, Helping Competitors, and Making Exits Harder ACETECH CEO SummitApril 3, 2019
Medical Cannabis: New Markets, New Opportunities Grow Your Assets – Intellectual Property for the Cannabis IndustryFebruary 21, 2019
IP Practitioner Roundtable (Panelist) FACL BC Mentorship Roundtable and MixerFebruary 20, 2019
IP Updates VGBA Summit North 2018October 16, 2018
Meeting 120 Standing Committee on Access to Information, Privacy and EthicsOctober 16, 2018
Out with the "Old", in with the "New" Hong Kong Institute of Patent Attorneys CPD SeminarJuly 5, 2018
Blockchain, ICOs, the Sharing Economy, and other Innovations ACETECH CEO SummitApril 11, 2018
Chemistry Careers Event (Panelist) University of British Columbia – Chemistry DepartmentJune 20, 2017
Intellectual Property Audits Innovation Boulevard Legal WorkshopApril 28, 2016
Federation of Asian Canadian Lawyers Leisure Talk, Fairchild TVJuly 10, 2015
Intellectual Property and Invention Protection SFU – School of Engineering ScienceOctober 3, 2013
- “The National | N.S. Floods, Greece fires, Deepfake ads”, CBC News, July 23, 2023
- “Pornographie par intelligence artificielle : « une bombe à retardement »“, Radio-Canada, July 14, 2023
- “弃串流平台买机顶盒预不载预载先查清楚”(Abandoning a Streaming Platform and Purchasing a Set-Top Box: to pre-install or to not pre-install)， 明报星期六情报 (Mingpao Saturday Magazine)，March 25, 2023
- “疫苗豁免与专利法” (Vaccine Waivers and Patent Law), A1出击，AM1540多伦多，May 21, 2021
- “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
- Winner of the Lexpert 2023 Rising Stars Awards: Leading Lawyer Under 40
- Recognized by Best Lawyers in Canada (2024) as a leading lawyer in the area of Information Technology Law and Intellectual Property Law
- Listed in Managing Intellectual Property’s 2023 IP STARS Guide as a Patent Star
- Recognized in the 2023 IAM Patent 1000 Guide as a “Recommended” lawyer in patent prosecution
- Recognized in the 2023 Lexpert Special Edition on Canada’s Leading Technology and Health Sciences Lawyers as a Technology Lawyer
- Recognized in the 2023 Canadian Legal Lexpert Directory as a Leading Lawyer to Watch in the area of Intellectual Property
- Listed in World Trademark Review’s WTR 1000 (2023) – Bronze – Individuals: prosecution in Canada
- Recognized by Best Lawyers in Canada (2023) as a leading lawyer in the area of Information Technology Law
- Recognized as a leading author in the Lexology Legal Influencers Q4 2022 (Intellectual Property – Canada)
- Recognized in the 2022 IAM Patent 1000 Guide as a “Recommended” lawyer in the area of patent prosecution
- Recognized in the 2022 Lexpert Special Edition on Canada’s Leading Technology & Health Sciences Lawyers
- Recognized as a leading author in the Lexology Legal Influencers Q1 2022 (Intellectual Property – Canada)
- Recognized in the 2022 Canadian Legal Lexpert Directory as a Leading Lawyer to Watch in the area of Intellectual Property
- Recognized by Best Lawyers in Canada (2022) as a leading lawyer in the area of Information Technology Law
Directorships & Affiliations
- Intellectual Property Institute of Canada (IPIC), Trademark Practices Committee
- Intellectual Property Institute of Canada (IPIC), Industrial Design Practices Committee
- Director General’s Advisory Committee (Canadian Intellectual Property Office, Trademarks and Industrial Designs Branch)
- Canadian Bar Association (CBA) Intellectual Property and Technology Section for British Columbia (2014-2022)
- British Columbia Law Society
- Intellectual Property Institute of Canada
Education & Admissions
- “CANADA: Authorities Seek Views on New Powers for Registrar of Trademarks,” International Trademark Association (February 1, 2023)
- “The Liability for AI in Healthcare,” CBA National Magazine (September 2, 2022)
- “CANADA: Line of Latitude is Geographically Descriptive,” INTA (June 1, 2022)
- “What Can and Should the Law do about ‘Deepfake’: An Update”, Internet and E-Commerce Law in Canada, 2019, 19(10): 80-84.
- “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.
- “A Whiff of Change: Scent Marks as Trademarks”, The Advocate, 2013, 71: 863-871.
Insights (55 Posts)View More
This is an overview of the Industrial Design Regime in Canada
CIPO's new standard fees come into effect on January 1, 2024. Plan ahead; save on government fees.
The Canadian Federal Court reaffirms that limitation periods do not apply to declarations made under Section 52 of the Patent Act.
Deep fake technology, legal recourse available to victims of deep fake technology, tort of false light, defamation.
Awareness of a senior rights holder’s trademark and its prior use of such trademark in Canada is relevant to the assessment of bad faith.
Displaying a retailer’s trademark on stickers affixed to goods already branded with a third party’s mark constitutes "use" of a trademark in Canada.
Public consultations on proposed amendments to the Canadian Trademark Regulations are underway. Please see this bulletin for more information.
The extension of general copyright protections from 50 years to 70 years after the life of the author shall come into force on December 30, 2022.
The FCA addresses the shortcomings of summary judgment in patent cases, along with issues relating to "common general knowledge" and experimental testing.
The Federal Court puts an end to the “Problem-Solution” Approach of analyzing patent applications - again. Read more about the Court's decision here.
A trademark registration in Canada is invalid if the application for registration was filed in bad faith.
Canadian patent practices related to "excess claim fees" and RCEs come into force on October 3, 2022. Is your business ready?
Research Partnerships Webinar: Canada and International Partnerships – How Do National Security and Geopolitical Considerations Affect the Ability and Desire to Engage in Cross-border Research Collaboration?
In this webinar, we will explore how international research partnerships intersect with domestic and international security concerns, as well as how geopolitics plays a role in the ability and thus desire of individuals and institutions to engage in international research partnerships. We will ask both Canadian and American academics to share their insights and thoughts on what happens when academic interests and security concerns collide.
The Federal Court confirms that a line of latitude or longitude can be considered a "place of origin" under the Trademarks Act.
CIPO recently issued determinations regarding the meaning of "due care". Are your internal practices in-line with CIPO's determinations?
A business may be tempted to choose a trademark that at least in part simply lauds the quality of its goods and services. Think twice before proceeding.
The Canadian patent system is expected to adopt the practices of "excess claims fees" and "request for continued examination". Is your business ready?
The Federal Court of Appeal decision of C-RNA provides further guidance on the level of information required of applicants seeking NHP licenses in Canada.
The recent decision in Norsteel Building Systems Ltd. v. Toti Holdings Inc. highlights the importance of trademark clearance searching for businesses.
This bulletin is a summary of our experiences with the expedited examination process for Canadian trademark applications.
CIPO is now taking requests to expedite the examination of Canadian trademark applications related to COVID-19 goods and services.
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.
For non-Canadian companies looking to do business in Canada, securing a ".ca" domain name should be a natural part of their IP strategy.
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.
Join us for a discussion on how early stage companies can protect, commercialize, and monetize their intellectual property assets.
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.
CIPO has changed its practice regarding time extensions to file responses to examiner's reports. Such guidance will affect Canadian prosecution strategies.
The Federal Court of Appeal confirms the application of the appellate standard of review framework to trademark opposition board decisions.
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.
CIPO has begun piloting an accelerated examination process for technologies related to medical products and processes. See this bulletin for more details.
This bulletin provides a summary of funding opportunities available in Canada over the month of June and updates
from CIPO and the USPTO.
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).
When will a trademark license granted from one party to another be implied? The Federal Court in the Core Consultants Realty decision (“Core Consultants”) recently had an opportunity to revisit this question.
All levels of Canadian government are taking extraordinary steps in response to the public health emergency of COVID-19.
This article addresses challenges in using Canada's courts to deal with trademark infringement matters during the COVID-19 pandemic
New intellectual property provisions passed into law following Canada's ratification of the "new NAFTA", the
Canada-United States-Mexico Agreement (CUSMA)
The British Columbia Supreme Court has found that the tort of conversion must include wrongful interference with intangible goods. Read more here.
An executed assignment agreement is not necessarily determinative of whether a trademark has truly been transferred from one party to another.
The bulletin describes steps that will ensure that trademark owners are able to maintain their trademark registrations
On June 17, 2019 major changes to Canada’s Trademarks Act will come into force.
The recent Federal Court of Appeal decision in Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP  ("Cosmetic Warriors") revisits what constitutes “use” of a trademark in the normal course of trade.
In the digital age, many vendors have expanded beyond brick and mortar shops and now sell their goods and services online.
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
PPH Program (Canada and Asia-Pacific Jurisdictions): Annual Update
This update looks at several additional causes of action and discusses how we can limit the deleterious social consequences of deepfake videos.
Canadian companies and designers can now seek to protect their industrial designs in multiple foreign jurisdictions through a single international application.
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
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.
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
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
Back to Patent Basics: The FCA re-affirms the Obviousness Test in Canada
Cannabis-related Trade-marks: Take Care in Choosing Correctly
Protection of Inventions Related to the Marijuana Industry
Canada/China Patent Prosecution Highway Program: Three Years in Brief
Deals & Cases (3 Posts)
On behalf of Hanahreum Mart Inc., McMillan LLP successfully defended a non-use cancellation proceeding against Hanahreum Mart’s Canadian trademark registration for HANAHREUM.
McMillan LLP Acts for West Fraser in $4 billion Acquisition of Norbord
Get updates delivered right to your inbox. You can unsubscribe at any time.