Jonathan Cutler
Vice President, Intellectual Property & Contracts at NGen Canada- Claim this Profile
Click to upgrade to our gold package
for the full feature experience.
-
English Native or bilingual proficiency
-
French Full professional proficiency
-
Spanish Limited working proficiency
Topline Score
Bio
Credentials
-
United States Court of Appeals for the Federal Circuit Bar
U.S. Courts of AppealsJan, 2006- Nov, 2024 -
Engineer
Ordre des ingénieurs du QuébecJan, 2001- Nov, 2024 -
Canadian Patent Agent
Canadian Intellectual Property Office / Office de la propriété intellectuelle du CanadaJan, 1998- Nov, 2024 -
Canadian Trade-Mark Agent
Canadian Intellectual Property Office / Office de la propriété intellectuelle du CanadaJan, 1997- Nov, 2024 -
New York Bar
New York State Supreme CourtJan, 1997- Nov, 2024 -
U.S. Patent Attorney
USPTOJan, 1997- Nov, 2024 -
Quebec Bar
Barreau du QuébecJan, 1996- Nov, 2024 -
Massachusetts Bar
Massachusetts Board of Bar OverseersJan, 1995- Nov, 2024
Experience
-
NGen Canada
-
Canada
-
Non-profit Organizations
-
1 - 100 Employee
-
Vice President, Intellectual Property & Contracts
-
Aug 2022 - Present
Details to follow... Details to follow...
-
-
-
Fasken
-
Canada
-
Law Practice
-
700 & Above Employee
-
U.S. & Canadian Patent Attorney, Of Counsel
-
Sep 2019 - Jan 2022
Hired to do an in-depth analysis of the firm's patent department and elaborate a business strategy to turn it around and make it a significant player in the Canadian patent services market. Provided clients with advice on a wide array of patent matters, including: global strategy, corporate operations, portfolio development, procurement, value generation, licensing, enforcement and contested matters. Providing opinions regarding United States patents, preparing and prosecuting United… Show more Hired to do an in-depth analysis of the firm's patent department and elaborate a business strategy to turn it around and make it a significant player in the Canadian patent services market. Provided clients with advice on a wide array of patent matters, including: global strategy, corporate operations, portfolio development, procurement, value generation, licensing, enforcement and contested matters. Providing opinions regarding United States patents, preparing and prosecuting United States, Canadian and international patent applications, as well as negotiating and drafting agreements in patent matters. Acting in contested matters before the United States Patent & Trademark Office, including interferences, re-examinations and reviews. Familiar with broad range of technologies, including software, energy and renewable resources, dental and medical devices and vehicles. Show less Hired to do an in-depth analysis of the firm's patent department and elaborate a business strategy to turn it around and make it a significant player in the Canadian patent services market. Provided clients with advice on a wide array of patent matters, including: global strategy, corporate operations, portfolio development, procurement, value generation, licensing, enforcement and contested matters. Providing opinions regarding United States patents, preparing and prosecuting United… Show more Hired to do an in-depth analysis of the firm's patent department and elaborate a business strategy to turn it around and make it a significant player in the Canadian patent services market. Provided clients with advice on a wide array of patent matters, including: global strategy, corporate operations, portfolio development, procurement, value generation, licensing, enforcement and contested matters. Providing opinions regarding United States patents, preparing and prosecuting United States, Canadian and international patent applications, as well as negotiating and drafting agreements in patent matters. Acting in contested matters before the United States Patent & Trademark Office, including interferences, re-examinations and reviews. Familiar with broad range of technologies, including software, energy and renewable resources, dental and medical devices and vehicles. Show less
-
-
-
BCF
-
Law Practice
-
400 - 500 Employee
-
Partner
-
Aug 2012 - Aug 2019
Chair of BCF's Patent Dept. Member of BCF's Board of Directors Registered U.S. and Canadian Patent Attorney Rebuilt BCF's patent services business basically from scratch, taking it in a few years from unprofitable to highly profitable with over $12,000,000 in revenue. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business… Show more Chair of BCF's Patent Dept. Member of BCF's Board of Directors Registered U.S. and Canadian Patent Attorney Rebuilt BCF's patent services business basically from scratch, taking it in a few years from unprofitable to highly profitable with over $12,000,000 in revenue. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business development. Led/Managed a team of 40 people including U.S., Canadian and European Patent Attorneys/Agents, paralegals, assistants, and other support staff. Worked on many different types of patent disputes, including: ・U.S Interference ・U.S. PRG/IPR ・U.S. Inter Partes Re-examination ・Canadian Patent Litigation ・Infringement claims by "Patent Assertion Entities" in the U.S., Germany and Russia (including strategy and negotiation) against large multinationals ・Infringement claims by individual inventors in Russia (including strategy), Infringement claims between large multinational competitors (including negotiations and agreement drafting). U.S. Patent Opinion work for large multinational including strategy and preparation for U.S. patent litigation. Acted as in-house counsel for Canadian companies with respect to U.S. patent litigation. Created a fully functional in-house patent department for Yandex (Moscow, Russia) from scratch while leading a team at the firm to render patent services to Yandex. Most Yandex technologies were software related although some were related to hardware. Advised on and acted for clients in a broad array of U.S., Canadian and international patent matters and corporate matters involving intellectual property. Show less Chair of BCF's Patent Dept. Member of BCF's Board of Directors Registered U.S. and Canadian Patent Attorney Rebuilt BCF's patent services business basically from scratch, taking it in a few years from unprofitable to highly profitable with over $12,000,000 in revenue. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business… Show more Chair of BCF's Patent Dept. Member of BCF's Board of Directors Registered U.S. and Canadian Patent Attorney Rebuilt BCF's patent services business basically from scratch, taking it in a few years from unprofitable to highly profitable with over $12,000,000 in revenue. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business development. Led/Managed a team of 40 people including U.S., Canadian and European Patent Attorneys/Agents, paralegals, assistants, and other support staff. Worked on many different types of patent disputes, including: ・U.S Interference ・U.S. PRG/IPR ・U.S. Inter Partes Re-examination ・Canadian Patent Litigation ・Infringement claims by "Patent Assertion Entities" in the U.S., Germany and Russia (including strategy and negotiation) against large multinationals ・Infringement claims by individual inventors in Russia (including strategy), Infringement claims between large multinational competitors (including negotiations and agreement drafting). U.S. Patent Opinion work for large multinational including strategy and preparation for U.S. patent litigation. Acted as in-house counsel for Canadian companies with respect to U.S. patent litigation. Created a fully functional in-house patent department for Yandex (Moscow, Russia) from scratch while leading a team at the firm to render patent services to Yandex. Most Yandex technologies were software related although some were related to hardware. Advised on and acted for clients in a broad array of U.S., Canadian and international patent matters and corporate matters involving intellectual property. Show less
-
-
-
Osler, Hoskin & Harcourt LLP
-
Canada
-
Law Practice
-
700 & Above Employee
-
Partner
-
Nov 2005 - Jul 2012
Co-chair of National Intellectual Property Department Registered U.S. and Canadian Patent Attorney Built a significant patent services business from scratch. Led/Managed a team of 20 people including U.S. and Canadian Attorneys/Agents, paralegals, and assistants. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business… Show more Co-chair of National Intellectual Property Department Registered U.S. and Canadian Patent Attorney Built a significant patent services business from scratch. Led/Managed a team of 20 people including U.S. and Canadian Attorneys/Agents, paralegals, and assistants. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business development. Reported to Firm Management and Executive Committee. Acted as in-house counsel for Canadian companies with respect to U.S. patent litigation. Part of teams for Canadian patent litigation (large multi-nationals). Handled adversarial patent matters in patent offices (e.g., U.S. inter partes re- examinations, Canadian protests, European oppositions). Advised large Canadian banks and insurance companies on patent strategy (including procurement, enforcement, and "Patent Assertion Entities"). Negotiated on behalf of large Canadian multinationals with competitors (e.g. BRP, CAE) and assisted with litigation preparation. Assisted CAE in creating and implementing patent strategy and procurement. Rendered patent services to CAE pursuant to that strategy. Advised Airbus on design patent matters worldwide (strategy, procurement, enforcement). Handled patent matters arising in corporate transactions, IPO's and corporate finance, including: In-depth due diligence, Negotiation with opposing counsel, Contract and other legal document drafting, revision and negotiation. Advised on intellectual property aspects of corporate transactions, corporate finance and corporate due diligence. Show less Co-chair of National Intellectual Property Department Registered U.S. and Canadian Patent Attorney Built a significant patent services business from scratch. Led/Managed a team of 20 people including U.S. and Canadian Attorneys/Agents, paralegals, and assistants. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business… Show more Co-chair of National Intellectual Property Department Registered U.S. and Canadian Patent Attorney Built a significant patent services business from scratch. Led/Managed a team of 20 people including U.S. and Canadian Attorneys/Agents, paralegals, and assistants. Responsible for day-to-day department management as well as strategy, strategic planning and implementation thereof, budgeting, employee evaluation and career progression, and business development. Reported to Firm Management and Executive Committee. Acted as in-house counsel for Canadian companies with respect to U.S. patent litigation. Part of teams for Canadian patent litigation (large multi-nationals). Handled adversarial patent matters in patent offices (e.g., U.S. inter partes re- examinations, Canadian protests, European oppositions). Advised large Canadian banks and insurance companies on patent strategy (including procurement, enforcement, and "Patent Assertion Entities"). Negotiated on behalf of large Canadian multinationals with competitors (e.g. BRP, CAE) and assisted with litigation preparation. Assisted CAE in creating and implementing patent strategy and procurement. Rendered patent services to CAE pursuant to that strategy. Advised Airbus on design patent matters worldwide (strategy, procurement, enforcement). Handled patent matters arising in corporate transactions, IPO's and corporate finance, including: In-depth due diligence, Negotiation with opposing counsel, Contract and other legal document drafting, revision and negotiation. Advised on intellectual property aspects of corporate transactions, corporate finance and corporate due diligence. Show less
-
-
-
BRP
-
Canada
-
Manufacturing
-
700 & Above Employee
-
Director, Intellectual Property
-
Sep 1999 - Oct 2005
Built an in-house IP department from scratch, including: ・Creation and implementation of IP deliverables (and procedures to deliver those deliverables) within a multinational gated new product development process ・Creation, implementation and operation of internal IP management committees and procedures ・Internal education to company personnel on IP Hiring, training, reviewing and career progression of IP department staff Led/Managed a team of 12 people including U.S.… Show more Built an in-house IP department from scratch, including: ・Creation and implementation of IP deliverables (and procedures to deliver those deliverables) within a multinational gated new product development process ・Creation, implementation and operation of internal IP management committees and procedures ・Internal education to company personnel on IP Hiring, training, reviewing and career progression of IP department staff Led/Managed a team of 12 people including U.S., Canadian and European Patent Attorneys/Agents and trademark agents Responsible for both first party and third party IP claims and disputes, litigation, and licensing, including, for example: ・U.S. District Court Litigation re: patents ・U.S. I.T.C. ・U.S. District Court Litigation re: trademarks ・Dealing with "Patent Assertion Entities", including analysis, strategy, negotiation and settlement agreement(s) ・Patent and trademark licensing, purchasing, sales ・Legal analysis, risk analysis, strategy, instructing and working with outside counsel (e.g., on enforcement and litigation strategy) Responsible for IP matters globally including: ・R&D and manufacturing centres in the U.S., Canada, Austria, and Finland ・IP personnel in the U.S., Canada, and Austria ・All IP-related matters and interactions with major competitors (Honda, Yamaha, Kawasaki, Mitsubishi, Mercury Marine, Polaris, Arctic Cat) and major suppliers (Bosch, Siemens, Denso) ・Patent and trademark procurement overall, including selection and management of outside counsel ・Third party IP risk analysis (detailed legal and technical) and mitigation strategy and implementation (with outside counsel as necessary) ・Budgeting and cost forecasting and control ・Usually acted as 30(b)(6) witness for IP related matters Responsible for all communications related to IP matters with upper management (C-Level) Responsible for BRP's global IP operations, management of its corporate IP department, and all BRP's patent, design and trademark matters worldwide Show less Built an in-house IP department from scratch, including: ・Creation and implementation of IP deliverables (and procedures to deliver those deliverables) within a multinational gated new product development process ・Creation, implementation and operation of internal IP management committees and procedures ・Internal education to company personnel on IP Hiring, training, reviewing and career progression of IP department staff Led/Managed a team of 12 people including U.S.… Show more Built an in-house IP department from scratch, including: ・Creation and implementation of IP deliverables (and procedures to deliver those deliverables) within a multinational gated new product development process ・Creation, implementation and operation of internal IP management committees and procedures ・Internal education to company personnel on IP Hiring, training, reviewing and career progression of IP department staff Led/Managed a team of 12 people including U.S., Canadian and European Patent Attorneys/Agents and trademark agents Responsible for both first party and third party IP claims and disputes, litigation, and licensing, including, for example: ・U.S. District Court Litigation re: patents ・U.S. I.T.C. ・U.S. District Court Litigation re: trademarks ・Dealing with "Patent Assertion Entities", including analysis, strategy, negotiation and settlement agreement(s) ・Patent and trademark licensing, purchasing, sales ・Legal analysis, risk analysis, strategy, instructing and working with outside counsel (e.g., on enforcement and litigation strategy) Responsible for IP matters globally including: ・R&D and manufacturing centres in the U.S., Canada, Austria, and Finland ・IP personnel in the U.S., Canada, and Austria ・All IP-related matters and interactions with major competitors (Honda, Yamaha, Kawasaki, Mitsubishi, Mercury Marine, Polaris, Arctic Cat) and major suppliers (Bosch, Siemens, Denso) ・Patent and trademark procurement overall, including selection and management of outside counsel ・Third party IP risk analysis (detailed legal and technical) and mitigation strategy and implementation (with outside counsel as necessary) ・Budgeting and cost forecasting and control ・Usually acted as 30(b)(6) witness for IP related matters Responsible for all communications related to IP matters with upper management (C-Level) Responsible for BRP's global IP operations, management of its corporate IP department, and all BRP's patent, design and trademark matters worldwide Show less
-
-
-
Smart & Biggar
-
Canada
-
Law Practice
-
200 - 300 Employee
-
Associate (& Student)
-
May 1993 - Sep 1999
Associate, Articling Student & Summer Student. Received training in Canadian patent law, practice, litigation, and strategy Received training in U.S. patent law, practice, litigation, strategy and IP management by in-house counsel at Johnson & Johnson Inc. (from Skillman, N.J.), including: ・Drafting & prosecution in the U.S., Canada, Europe, Latin America, Asia and Australia ・Freedom-to-operate analysis in the U.S. and Canada ・Strategy versus large multinational… Show more Associate, Articling Student & Summer Student. Received training in Canadian patent law, practice, litigation, and strategy Received training in U.S. patent law, practice, litigation, strategy and IP management by in-house counsel at Johnson & Johnson Inc. (from Skillman, N.J.), including: ・Drafting & prosecution in the U.S., Canada, Europe, Latin America, Asia and Australia ・Freedom-to-operate analysis in the U.S. and Canada ・Strategy versus large multinational competitors (including Proctor & Gamble and Kimberly-Clark), Assigned to Johnson & Johnson Inc.'s Montreal R&D Facility (Sanitary Napkins, Tampons, Diapers, and Adult Incontinence Products) Show less Associate, Articling Student & Summer Student. Received training in Canadian patent law, practice, litigation, and strategy Received training in U.S. patent law, practice, litigation, strategy and IP management by in-house counsel at Johnson & Johnson Inc. (from Skillman, N.J.), including: ・Drafting & prosecution in the U.S., Canada, Europe, Latin America, Asia and Australia ・Freedom-to-operate analysis in the U.S. and Canada ・Strategy versus large multinational… Show more Associate, Articling Student & Summer Student. Received training in Canadian patent law, practice, litigation, and strategy Received training in U.S. patent law, practice, litigation, strategy and IP management by in-house counsel at Johnson & Johnson Inc. (from Skillman, N.J.), including: ・Drafting & prosecution in the U.S., Canada, Europe, Latin America, Asia and Australia ・Freedom-to-operate analysis in the U.S. and Canada ・Strategy versus large multinational competitors (including Proctor & Gamble and Kimberly-Clark), Assigned to Johnson & Johnson Inc.'s Montreal R&D Facility (Sanitary Napkins, Tampons, Diapers, and Adult Incontinence Products) Show less
-
-
Education
-
1991 - 1995
McGill University
Bachelor’s Degree, Law -
1991 - 1991
McGill University
Certificate of Proficiency in French -
1986 - 1991
McGill University
Bachelor’s Degree, Chemical Engineering & Biotechnology
Community
