Biography Photo of Matthew Powell

Matthew D. Powell

Senior Patent Agent
Toronto

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

Areas Of Practice

Intellectual Property Patents Technology Transactions Emerging Businesses

Acknowledgements

  • Intellectual Asset Management (IAM) Magazine
    • IAM Strategy 300 Global Leaders, 2016-2023
    • 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

  • Representing a computer imaging company through an IRAP/IPIC grant to advise the company on patents and other intellectual property as the company adds functionality to their web-based building product sales and marketing system.
  • Representing a technology-enabled security services company and advising on securing patents and other intellectual property on a multi-modal, multi-factor network authentication technology.
  • Assisting a behavioral health and digital therapeutics company to prepare and file patent applications directed towards machine-learning training and training tracing technologies for use in clinician-supervised patient chat apps.
  • Advising a leading publicly-traded Canadian point-of-sale and data intelligence technology company on development of new inventions, patenting tactics and strategy, as well as directing prosecution of Worldwide patent portfolio.
  • Advising entrepreneurial U.S.-based equity and fixed income firm on the patenting in Canada of trading and gaming technologies developed by their R&D group.
  • Developing patent strategy and individual patents in U.S. and Canada for constantly inventive Canadian engineering company developing and licensing advanced segmental retaining wall block technologies and manufacturing techniques.
  • Securing patents and other IP throughout the World directed to electromechanical and user interface technologies for Canadian vending machine manufacturer focused on high-quality and secure dispensing of candy, consumer products, and cannabis.
  • Securing patents and other IP Worldwide for leading live video e-commerce technology and services provider, covering their technologies for Web-based audio/video mixing, content distribution, and interactive media playback.
  • Advising structural geology services company on the Worldwide patenting of imaging systems for capturing, tracking, and reporting on structural features in core samples.
  • Advising developer of nuclear medicine shielding solutions on the patenting Worldwide of several lines of syringe and vial shields and transportation systems.
  • Advising popular online media/news corporation on IP risk and cost reduction relating to third-party Web technology patents.
  • Advising packaging and point of sale display company on IP risk, design-around, third-party prior art submissions against others’ IP, and development of new utility and design patents.
  • Advising U.S.-based voice biometric company on Worldwide patenting, invention framing, and IP-centric technology development.
  • 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

  • IPIC’s Mentorship Program, Mentor
  • Fellow, Patent Committee and Patent Agent Training Committee, 2023
  • Patent Agent Training Committee of the Intellectual Property Institute of Canada (IPIC) – Developed training and exam preparation materials accessible to trainee members.
  • Patent Agent Legacy Mapping Group: Assisted with developing a competency framework for the newly formed College of Patent and Trademark Agents (CPATA) regulator to itemize and articulate the required competencies of a Canadian patent agent.

Community Involvement

  • Piano and keyboard player for local retirement home and local library/gallery receptions and drop-ins, Volunteer
  • Halton Hills Optimists and Lions Clubs, Volunteer
  • Santa Calling program, Volunteer
  • Santa Clause Parades route safety, Volunteer
  • Saturday Centre seasonal musical events, Volunteer

Admissions

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

Publications/Presentations

Insights

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