778.328.1631
- 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*
Expertise
Business Law
Food, Beverage & Agribusiness
Intellectual Property
Startups & Emerging Companies
Technology
Language(s) Spoken
- English
- Cantonese
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.
Expertise
Representative Matters
Speaking Engagements
Introduction to Intellectual Property CCBC Women in E-Commerce Virtual China Mission
March 9, 2023Gateway to Global Leadership, AIAC Summit
November 9, 2022National Security Considerations in Cross-Border Research Collaboration, Research Partnerships Webinar
April 27, 2022Asia-Facing Private Practice | University of Victoria, Faculty of Law
February 15, 2022Acetech Patent Law Overview
December 14, 2021Intro to IP and Employment Law Webinar
August 5, 2021Get Your Game On: Intellectual Property Rights and Video Games Intellectual Property Institute of Canada
May 11, 2021Top 10 (and 1) IP Cases in 2020 - BC and Beyond Canadian Bar Association BC IP Section
February 3, 2021IP/Tech 101: Protect, Commercialize, Monetize Vancouver Startup Week 2020
September 28, 2020IP/Tech 101: Protect, Commercialize, Monetize Emerging Companies Webinar
September 10, 2020Practice Overview: Intellectual Property Lawyer University of Victoria Business Law Clinic
June 8, 2020Authentication in Practice: Navigating the Digital Fake CBA Digital Literacy Series
June 8, 2020Updates and Tips for your Business Trademark Law Seminar, Vancouver
February 27, 2020Intellectual Property Roundtable (Panelist) FACL BC Mentorship Roundtable and Mixer
February 20, 2020Intellectual Property Overview CanCham Pearl River Delta Seminar Series
November 7, 2019Recent Changes to the IP Landscape in Canada Hong Kong Institute of Patent Attorneys CPD Seminar
November 6, 2019New Trends and Opportunities in the Canadian Cannabis Industry Canadian Bar Association IP Section Seminar
July 4, 2019What Not to Do: Master Class in Slowing Growth, Helping Competitors, and Making Exits Harder ACETECH CEO Summit
April 3, 2019Medical Cannabis: New Markets, New Opportunities Grow Your Assets – Intellectual Property for the Cannabis Industry
February 21, 2019IP Practitioner Roundtable (Panelist) FACL BC Mentorship Roundtable and Mixer
February 20, 2019IP Updates VGBA Summit North 2018
October 16, 2018Meeting 120 Standing Committee on Access to Information, Privacy and Ethics
October 16, 2018Out with the "Old", in with the "New" Hong Kong Institute of Patent Attorneys CPD Seminar
July 5, 2018Blockchain, ICOs, the Sharing Economy, and other Innovations ACETECH CEO Summit
April 11, 2018Chemistry Careers Event (Panelist) University of British Columbia – Chemistry Department
June 20, 2017Intellectual Property Audits Innovation Boulevard Legal Workshop
April 28, 2016Federation of Asian Canadian Lawyers Leisure Talk, Fairchild TV
July 10, 2015Intellectual Property and Invention Protection SFU – School of Engineering Science
October 3, 2013News
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 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
2022
Blockchain Strategy ProgrammeSaïd Business School, University of Oxford
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
- “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 (50 Posts)
Display of Trademark on Stickers Affixed to Goods Constitutes Trademark Use
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.
Read More
Jan 31, 2023
Public Consultation Related to Proposed Amendments to the Trademarks Regulations in Canada
Public consultations on proposed amendments to the Canadian Trademark Regulations are underway. Please see this bulletin for more information.
Read More
Dec 7, 2022
20 More Years of Copyright Protection Starting December 30, 2022
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.
Read More
Nov 30, 2022
Too Quick to (Summary) Judge: The Shortcomings of Summary Judgment in Patent Actions in Canada
The FCA addresses the shortcomings of summary judgment in patent cases, along with issues relating to "common general knowledge" and experimental testing.
Read More
Sep 27, 2022
Kicking the Habit: The Federal Court of Canada Nixes the “Problem-Solution” Approach – Again
The Federal Court puts an end to the “Problem-Solution” Approach of analyzing patent applications - again. Read more about the Court's decision here.
Read More
Jul 18, 2022
Protecting International Brands: Bad Faith Filing Leads to Expungement of Trademark Registration
A trademark registration in Canada is invalid if the application for registration was filed in bad faith.
Read More
Jul 6, 2022
Forecast 2022: Expected Changes to the Canadian Patent Rules (Part 2)
Canadian patent practices related to "excess claim fees" and RCEs come into force on October 3, 2022. Is your business ready?
Read More
Jun 29, 2022
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.
Details
Wednesday, April 27, 2022
Latitude Check: Federal Court Finds that a Line of Latitude is a Place of Origin
The Federal Court confirms that a line of latitude or longitude can be considered a "place of origin" under the Trademarks Act.
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Apr 5, 2022
Practice Update: CIPO Provides Guidance on the Meaning of “Due Care”
CIPO recently issued determinations regarding the meaning of "due care". Are your internal practices in-line with CIPO's determinations?
Read More
Mar 30, 2022
Use of Laudatory Terms in Trademarks: An Overview for the Beverages Sector
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.
Read More
Jan 5, 2022
Forecast 2022: Expected Changes to the Canadian Patent Rules
The Canadian patent system is expected to adopt the practices of "excess claims fees" and "request for continued examination". Is your business ready?
Read More
Jan 4, 2022
Natural Health Products: Product Licensing Requirements in Canada
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.
Read More
Dec 6, 2021
A Tale of [NORSTEEL in] Two Cities
The recent decision in Norsteel Building Systems Ltd. v. Toti Holdings Inc. highlights the importance of trademark clearance searching for businesses.
Read More
Nov 10, 2021
Expedited Examination of Canadian Trademark Applications: 6 month recap
This bulletin is a summary of our experiences with the expedited examination process for Canadian trademark applications.
Read More
Nov 2, 2021
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
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
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.
Read More
Oct 6, 2020
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.
Read More
Sep 28, 2020
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
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.
Read More
Aug 27, 2020
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.
Read More
Aug 4, 2020
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.
Read More
Jul 23, 2020
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.
Read More
Jul 15, 2020
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
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.
Read More
Jun 10, 2020
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).
Read More
Jun 1, 2020
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.
Read More
Apr 12, 2020
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.
Read More
Mar 27, 2020
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
Read More
Mar 26, 2020
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
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.
Read More
Mar 12, 2020
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
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
Read More
Sep 23, 2019
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.
Read More
Jun 4, 2019
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
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.
Read More
Apr 13, 2019
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
Read More
Jan 18, 2019
PPH Program (Canada and Asia-Pacific Jurisdictions): Annual Update
PPH Program (Canada and Asia-Pacific Jurisdictions): Annual Update
Read More
Dec 19, 2018
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
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
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
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.
Read More
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
Read More
Jan 18, 2018
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
Read More
Jan 12, 2018
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
Read More
Dec 6, 2017
Cannabis-related Trade-marks: Take Care in Choosing Correctly
Cannabis-related Trade-marks: Take Care in Choosing Correctly
Read More
Nov 13, 2017
Protection of Inventions Related to the Marijuana Industry
Protection of Inventions Related to the Marijuana Industry
Read More
Nov 9, 2017
Canada/China Patent Prosecution Highway Program: Three Years in Brief
Canada/China Patent Prosecution Highway Program: Three Years in Brief
Read More
Nov 8, 2017
Deals & Cases (2 Posts)
McMillan LLP Acts for West Fraser in $4 billion Acquisition of Norbord
McMillan LLP Acts for West Fraser in $4 billion Acquisition of Norbord
Read More
Nov 26, 2020
Great Panther completes acquisition of Beadell
Great Panther completes acquisition of Beadell
Read More
Mar 5, 2019
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