Matthew D. Powell

Senior Patent Agent

Matthew D. Powell is Senior Patent Agent at the Dickinson Wright Toronto office.  

Matthew is a patent prosecutor and professional engineer.  He is sought after to rapidly understand clients’ business aims, to grasp new and difficult technical ideas, and to appreciate the economic impacts of new inventions.  He directly advises chief executives, engineers, technology managers and legal counsel.  Matthew works with various technologies arising in the fields of: telecommunications, streaming video, computing, digital currency, financial services, image processing, authentication, semiconductors, AI, magnetic resonance imaging, location-based services, virtual reality, energy storage, drilling, advanced materials, construction, vending and others.

After graduating in 1997 with a B.Sc. in Applied Science (Electrical and Computer Engineering), Matthew began his career as a software engineer developing network systems and user-facing software applications.  During that time, he was named co-inventor on several patents covering web-based groupware.  After working as an engineer for a number of years, he shifted into patent prosecution work, and has been practicing exclusively in intellectual property since 2002.  Matthew was awarded the Marie F. Morency Memorial Prize by the Intellectual Property Institute of Canada for achieving Canada’s highest score in patent drafting during his patent agent qualifying examinations.

Matthew has been named every year since 2016 by Intellectual Asset Management (IAM) Magazine as one of the World’s 300 Leading IP Strategists.  He has been named since 2014 by IAM Magazine as one of the World’s 1000 Leading Patent Professionals.  Matthew is regularly invited to write and speak on new and edge issues in patents, and has presented and written for the Intellectual Property Institute of Canada, the Ontario Bar Association, the Canadian Bar Association, the Canadian Technology Law Association, IAM Magazine, Lexis Nexis, The Lawyer’s Daily, Sheridan College, and OCAD University, and others.

In addition to his patent prosecution practice, Matthew assists clients with procuring design patents and trademarks, advises clients on various commercial agreements, and provides support to patent litigators in contentious matters.

Education

Queen’s University

BSc, Electrical, Computing, 1997

Acknowledgements

  • Intellectual Asset Management (IAM) Magazine
    • IAM Strategy 300, 2016-2021
    • IAM Patent 1000, Recommended Individual, Prosecution, 2014-2021
  • Lexology
    • "Client Choice Award," Patents, 2017
  • Marie F. Morency Memorial, IPIC,
    • Canada’s highest score in the patent drafting examination (2003)

Prominent Assignments

  • Led proactive discovery and ranking of over 130 Canadian patenting opportunities that were thought foregone by U.S. publicly-traded consumer-electronics company with Canadian growth mandate;
  • Planned and executed on a successful third-party protest against the granting of a gaming-based Canadian patent application, resulting in insurmountable rejections and eventual abandonment by competitor;
  • For a Canadian publicly-traded business software company, developed design-around modifications with software team to eliminate key U.S. infringement risks;
  • For a Canadian publicly-traded business software company, fended-off two infringement allegations from non-practicing entities (NPEs) using both legal and technical analysis to counter with credible threats against validity and claim breadth;
  • Prepared infringement claim charts for multi-patent Canadian litigation by U.S. publicly traded consumer electronics company, as part of a cross-border assertion strategy;
  • Prepared and submitted third-party pre-issuance submission in U.S. energy storage patent application, resulting in narrowing of scope of eventual patent and elimination of threat for Canadian client;
  • Appearances in multiple instances before the Canadian Patent Appeal Board for oral hearings.

Professional Involvement

  • Fellow, Intellectual Property Institute of Canada (IPIC);
  • Member, Licensing Executives Society (LES);
  • Member, Institute of Electrical and Electronics Engineers (IEEE)

Community Involvement

  • Works with the Optimist Club of Halton Hills for various events from time to time.

Admissions

  • Registered Patent Agent, United States Patent And Trademark Office;
  • Registered Patent Agent, Canadian Intellectual Property Office.

Publications/Presentations

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