Mark Penner

PartnerFaskenIntellectual Property & Technology; Commercial; In-House Counsel

As a patent and trademark, lawyer Mark’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Acting for a range of clients, from individual inventors, start-ups and other early stage companies to large multinational companies, Mark provides strategic advice in a variety of technology areas, including biotechnology, chemistry, energy, social media, insurance, communications and digital marketing.

Mark regularly speaks and writes extensively on all aspects of intellectual property rights, particularly the commercialization of IP rights for start-ups as well as commercial matters for companies with respect to IP rights in national, cross-border and multinational commercial transactions.

As a patent and trademark lawyer Toronto-based, Mark D. Penner’s practice focuses on all aspects of the acquisition, protection, enforcement and strategic use of a wide range of intellectual property assets in Canada and around the world.

Acting for a range of clients, from individual inventors, start-ups and other early stage companies to large multinational companies, Mark provides strategic advice in a variety of technology areas, including biotechnology, chemistry, energy, social media, insurance, communications and digital marketing.

Mark regularly speaks and writes extensively on all aspects of intellectual property rights, particularly the commercialization of IP rights for start-ups as well as commercial matters for companies with respect to IP rights in national, cross-border and multinational commercial transactions. He is frequently sought after by national and international media as a commentator on IP matters.

Patents & Industrial Designs

As a registered patent agent with the Canadian Intellectual Property Office (CIPO), Mark advises clients on the drafting and prosecuting of patent applications in Canada and throughout the world, covering a range of subject matters, including biotechnology, chemistry and other life sciences.

Trademark Protection

As a registered trademark agent, Mark advises local, national and international clients on how to efficiently and effectively conduct branding strategies as well as protect, maintain and enforce trademark rights in Canada, the United States and other jurisdictions.

Commercial Intellectual Property & Commercialization of IP

Mark is frequently called upon to advise clients on commercializing intellectual property rights, including technology acquisition and licensing, freedom to operate and patentability opinions, as well as IP components of high value national, cross-border and multi-jurisdictional corporate transactions (e.g. financing, mergers and acquisitions and joint ventures).

Education

  • Queen's University, LL.B., 1995
  • University of Toronto, M.Sc., 1994
  • Queen's University, B.Sc., 1989

Bar Admission

  • Ontario, 1997

Accreditations

  • Registered Patent Agent, United States, 2001
  • Registered Patent Agent, Canada, 2000
  • Registered Trade-mark Agent, Canada, 1998

Experience

  • Advised Foresters Asset Management in its acquisition by Fiera Capital.
  • Advised Portway International in its acquisition by Avalara.
  • Advised Kraft Heinz on the C$1.62 billion sale of its Canadian natural cheese business to Parmalat Canada Inc.
  • Advised Sony Interactive Entertainment in connection with its acquisition of Audiokinetic.
  • Advised Kraft Heinz Canada in connection with its acquisition of substantially all of the assets of The Ethical Bean Coffee Company.
  • Represented Ivanhoe Cambridge on the sale of a 50% interest in one of the leading shopping centres in Western Canada.
  • Represented Ivanhoe Cambridge in the sale of 50% interest in Fairview Mall.
  • Advised Arlon Group in acquiring Idaho Pacific and AgraWest Foods.

Associations

  • Canadian Bar Association
  • Ontario Bar Association
  • Intellectual Property Institute of Canada
  • Foreign Affiliate Member, American Intellectual Property Law Association
  • International Trademark Association

Awards & Honours

  • IAM Strategy 300 – Recognized in IAM Strategy 300 Global Leaders Guide, 2021
  • The Best Lawyers in Canada – Recognized in Intellectual Property Law in Toronto, 2019-2021
  • World Trademark Review – Recognized nationwide in Canada as leading trademark professional, 2020
  • IAM Strategy 300, 2017-2019
  • IAM Patent 1000, 2012-2019