Philip’s chief area of expertise is chemical and mechanical innovations and he is currently specialising in the development and implementation of strategic IP portfolio creation and management.
He says the most satisfying aspect of being an independent IP attorney is helping clients grow their business:
“I take great satisfaction from the opportunity to assist clients in acquiring IP rights and enabling them to grow their business.
“The opportunity to work with SMEs enables me to be part of the process and enjoy the success of my clients.”
Education & Training
- B.Sc. (Chemical Engineering), 1981 – Queen’s University
- LL.B., 1984 – Osgoode Hall, York University
- Called to the Bar, 1986 - Ontario
- Registered Trademark Agent, 1987
- Professional Engineer, 1988
- US and Canadian Registered Patent Agent, 1988
Professional Background
- Joined Bereskin & Parr LLP in 1986 and to the present day
- In September 2024, Bereskin & Parr merged with Smart & Biggar LP – and now operates under that name.
Adding Value to Clients
When it comes to adding value to clients, Philip underlines the importance of the foresight that independent IP attorneys bring to the process:
“Our value is providing foresight in the protection of the IP developed by the client to protect the initial embodiment of a product that is to be launched and potential product expansion.
“Forward thinking enables the IP portfolio to be of sufficient scope so that the client is free to introduce the next versions of products without concern that a competitor may have IP that prevents the next versions of products to be introduced.”
Philip has worked, and continues to work, with an R & D company (Omachron Intellectual Property Inc.) and its licensee (SharkNinja) to develop a patent portfolio to protect the Shark line of vacuum cleaners.
Best Practice to Share with FICPI Members
A best practice from Smith & Biggar that Philip shares with fellow members of the FICPI global community focuses on IP management and enforcement:
“We have a great IP team to develop IP portfolios and an enforcement team should that be necessary.”
As for the future, Philip observes that acquiring IP rights for the client is a key focus for the independent IP attorney:
“It is necessary to ensure a client is aware of the IP rights that may be available and to assist the client to select the strategy that should be adopted.”
Value of FICPI Membership
Philip joined FICPI nearly 20 years ago in 2006.
He is active on both the CET and PMC committees and is currently President of the Financial Advisory Board (FAB), which supports the FICPI Bureau and Treasurer and advises the ExCo on financial policies.
Philip particularly enjoys the global comradery of FICPI meetings:
“When I am at a FICPI meeting, I feel that everyone there is a colleague and not a competitor, even if they are from my country, Canada.
“We are all part of the FICPI community which I feel is unique in the IP space.”
Final Word – Outside of Work
Philip enjoys a wide array of activities outside of work, including ballroom dancing, tennis, badminton, pickleball and landscape photography whilst he is travelling.
However, spending time with family and friends is what he most values, particularly celebrating their achievements and successes.
Indeed, as Philip participated in this profile, there was a notable achievement – his wife’s dog Erka Tiffany Sasha reached the grand old age of 11.
