Matthew D. Powell

Senior Patent Agent

Matthew D. Powell is an insightful patent prosecutor and professional engineer.  He is known to be as comfortable at clients’ workbenches as he is in their boardrooms.

Matt works well with inventors because he is an inventor himself.  Before working full-time in patents, he was employed as a software developer and was named as a co-inventor on six U.S. patents that were key to his employer’s valuation during its acquisition by a large, publicly-traded Canadian software company.  Years later, in the lead-up to a U.S. patent enforcement trial involving the same patents, Matt was recalled by opposing counsel to undergo deposition proceedings as an inventor.

Matt joined Dickinson Wright after serving for several years as the founder and head of the patent prosecution division of a Toronto-based IP boutique.

Today, Matt is retained to carefully write and prosecute patents for products and services involving telecoms, computing, digital currency, image processing, facial recognition, semiconductors, AI, magnetic resonance imaging, location-based services, virtual reality, energy storage, advanced materials, construction, vending and numerous others. He also works alongside patent litigators to consult on the strength and scope of patents from a prosecutor’s perspective.

As a musician, Matt will seize any opportunity to sit down and jam on piano with his family and friends.

Education

Queen’s University

BSc, Electrical, Computing, 1997

Acknowledgements

  • IAM STRATEGY 300, Listed, Intellectual Asset Management (IAM) Magazine, 2016-Present;
  • IAM PATENT 1000, Recommended Individual, Prosecution, IAM Magazine, 2014-Present;
  • CLIENT CHOICE AWARD, PATENTS, ONTARIO, Lexology, 2017;
  • MARIE F. MORENCY MEMORIAL PRIZE, IPIC, for 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

  • PANELIST: “Patents - Decoding Software Patents Post-Alice,” Canadian Technology Law Association (CANTech) Spring Training Conference, Toronto, June 2019;
  • SPEAKER: “IP Tech: Blending Tools With Advisory," LexisNexis, Toronto, October 2018;
  • PANELIST: “Patent-Eligible Subject-Matter In Canada” panel, IPIC Annual General Meeting, Quebec City, 2016;
  • CO-AUTHOR: “Canada: Modernization and Flux,” Intellectual Asset Management Magazine (IAM) IP Value, 2013;
  • CO-AUTHOR: “Protecting Computer Programs In Canada Using Copyright, Patent, And Industrial Design Laws,” Canadian Intellectual Property Review, 2013
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