Pablo Tseng*

Vancouver

778.328.1631

pablo.tseng@mcmillan.ca

Expertise Business Law Food, Beverage & Agribusiness Intellectual Property Startups & Emerging Companies Technology

Language(s) Spoken

English
Cantonese

*Wayan Law Corporation

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

Industries

Practices

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

Introduction to Intellectual Property CCBC Women in E-Commerce Virtual China Mission

March 9, 2023

Gateway to Global Leadership, AIAC Summit

November 9, 2022

National Security Considerations in Cross-Border Research Collaboration, Research Partnerships Webinar

April 27, 2022

Asia-Facing Private Practice | University of Victoria, Faculty of Law

February 15, 2022

Acetech Patent Law Overview

December 14, 2021

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

Media Mentions

“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

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

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 (54 Posts)View More

Plan Ahead: CIPO’s new standard fees come into effect on January 1, 2024

CIPO's new standard fees come into effect on January 1, 2024. Plan ahead; save on government fees.

Sep 6, 2023

Canadian Patent Law Update: Declarations, Limitation Periods, and General Releases

The Canadian Federal Court reaffirms that limitation periods do not apply to declarations made under Section 52 of the Patent Act.

Aug 1, 2023

What Has the Law Done About “Deepfake”?

Deep fake technology, legal recourse available to victims of deep fake technology, tort of false light, defamation.

May 10, 2023

Trademark of Foreign Owner Invalidated on the Basis of Bad Faith

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.

Mar 22, 2023

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.

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.

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.

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.

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.

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.

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?

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.

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?

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.

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?

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.

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.

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.

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.

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.

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.

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.

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.

Aug 27, 2020