Canada’s Intellectual Property Firm

Mark Sajewycz

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Mark Sajewycz

Principal
  • Smart & Biggar LP
Language(s): English

Mark Sajewycz is a Principal in the firm’s Toronto office. His practice consists of the acquisition, protection, commercialization and exploitation of patents, trademarks and industrial designs. Before practising law, he worked as an engineer in the nuclear industry.

Mark provides strategic advice on all aspects of patent law and protecting innovation. He is experienced in managing worldwide patent portfolios and is often retained to provide freedom to operate and validity opinions on complex technologies. He also assists in drafting and negotiating patent licensing, joint research and other technology-related agreements. Mark is also experienced in assisting Canadian companies in the patenting of various chemical and mechanical technologies. This includes organic and inorganic chemical compounds and compositions and various chemical processes and reaction systems, with a specific emphasis on energy-related (oil and gas, nuclear, biofuels) and clean technologies (water purification, fuel cells, batteries, solar).

Mark also teaches the advanced patent law course at Western University Law School.

Representative Experience

  • Advising on IP protection and commercialization strategies, conducting freedom-to-operate projects; patent drafting and prosecution and managing worldwide patent portfolios relating to various chemical technologies, such as biomass production, petrochemical separations, hydrometallurgical separations, electronically-driven separation processes, membrane processes, chemical adsorption, catalytic processes, and plasma-based reaction processes.
  • Patenting of steam-assisted gravity drainage (“SAGD”) processes for recovering bitumen from oil sands, including SAGD start-up, solvent-assisted SAGD processes, SAGD processes using non-condensable gases, and use of infill wells in late-stage SAGD processes
  • Advising on IP protection and commercialization strategies, conducting freedom-to-operate projects, patent drafting and prosecution and managing worldwide patent portfolio for oil sands producer
  • Patenting of downhole tools and well completion technologies, including shifting tools, sliding sleeves, locator tools, ball drop systems, frac plugs, jetting tools, and wiper plugs
  • Patenting/commercialization of artificial lift technologies
  • Patenting of, and advising on freedom to operate for, novel EOR technologies
  • Advising on acquisition of patent portfolio relating to novel well completion technology
  • Supporting various patent litigation involving oil sands production technologies and oilfield services technologies
  • Retained by Alberta-based private equity firm for IP due diligence and IP transactional advice for acquisitions of oil & gas technologies.

Qualifications

  • News
  • Industry Involvement
  • In the Media

Memberships

  • Canadian Hydrogen and Fuel Cell Association (Past Director)
  • American Intellectual Property Law Association — AIPLA
  • International Association for the Protection of Intellectual Property — AIPPI
  • Intellectual Property Institute of Canada — IPIC
  • Professional Engineers Ontario — PEO
  • Chemical Institute of Canada — CIC
  • Intellectual Property Owners Association — IPO

Publications

  • Intellectual Property Considerations in the NAFTA Countries, North American Business Accelerator Expert Seminar on Clean Technology, in December 2016 in Calgary, Alberta.
  • A Look at the Oil Industry, Canadian Mining Journal, April 2016
  • Patent Wars in the Oil Patch, Canadian Lawyer Magazine, March 2016
  • Preserving and Exploiting Your Intellectual Property, Seminar for energy clients in January 2016 in Calgary, Alberta.
  • Avoiding Intellectual Property Pitfalls in the Oil and Gas Industry, EUCI Webinar, in March 2015.
  • Keeping a Lid on Trade Secrets, Petroleum Economist, February 7, 2015, Co-authored with Jonathan Ball, Barclay Nicholson and Jayme Partridge
  • Oil and Gas Sectors Playing it Close to the Vest, The Lawyers Weekly, January 23, 2015
  • Intellectual Property Protection Essential for New Technologies, Globe & Mail, May 28, 2014
  • Intellectual Property Ownership and Collaboration Structures, November 2013 in Calgary, Alberta.
  • Intellectual Property Capture and Protection Strategies for Exploiting GTL Technologies, Gas to Liquids Conference, in October 2013 in London, England (UK)
  • Importance of IP Heats Up in the Oil Patch, Canadian Lawyer, July 2013
  • Intellectual Property Capture and Protection Strategies for Oil & Gas Technology Businesses, Petroleum Technology Alliance of Canada (PTAC) Workshop, in June 2013 in Calgary, Alberta.
  • Innovation is Key, but so is Protecting It, The Lawyers Weekly, June 28, 2013
  • Intellectual Property Protection of Oil & Gas Technologies, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 2, April 2013
  • Avoiding Intellectual Property Pitfalls in the Oil and Gas Industry, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 1, August 2012
  • Protecting Innovation in the Oil and Gas Industry, Canadian Energy Technology & Innovation Journal, Vol. 1, No. 1, August 2012
  • Intellectual Property Protection of Oil & Gas Technologies, Technology and IP Issues for Energy companies client seminar, in November 2012 in Calgary, Alberta.
  • Intellectual Property Protection of Canadian Oil Sands Technologies, Oil Sands and Heavy Oil Technologies Conference, in July 2012 in Calgary, Alberta.
  • Intellectual Property Protection of Mining/Metallurgical Process Technologies, NRC-IRAP Breakfast Seminar, in June 2012 in Sudbury, Ontario.
  • Putting a Value on IP, Lexpert, May 2012
  • Relevance of the Intellectual Property Environment to Green Technologies, Sustainable Chemistry Summit, in September 2011 in Kingston, Ontario.
  • Acquiring Patent Portfolios of Failed or Failing Technology Companies, September 2011
  • Protecting Innovation in the Chemical and Metallurgical Process Industries, July 2011
  • Canada Picks Up Pace in Patents, Globe & Mail, January 18, 2011
  • Countries Offer New Ways to Speed Up Patents, The Law Times, September 20, 2010
  • Patenting of Green Technologies: Trends, Issues and Strategies, January 2010
  • Race for Patents Heats Up, National Post, November 18, 2009
  • Patenting of Green Technologies: Trends, Issues and Strategies, 8th World Congress of Chemical Engineering, in August 2009 in Montréal, Québec
  • Patent Claim Construction As it Should Be: Promoting the Objects of the Patent Act, Cited by the Supreme Court of Canada in Free World v. Electro Santé Inc.