Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

Jenna Wilson

Jenna has more than 20 years of experience in intellectual property law with a focus on patent drafting and prosecution. Her patent prosecution work emphasizes emerging technologies and subject areas that challenge the boundaries of current patent law, such as biotechnology and information technology. As a registered patent agent, she has drafted patent applications and procured patent rights for clients across a wide range of fields ranging from medicine to oil & gas to financial technology.

Representative work

  • Managing large patent portfolios and providing drafting services to influential multinational companies in subject matter ranging from cryptography to consumer products
  • Drafting and advising on software development agreements and licenses in copyright and contractual disputes, and in support of start-up companies developing new technology
  • Developing patent portfolios and advising on patent strategy for small companies in the smart home industry
  • Acting as repair counsel in restoring patent applications to good standing

Activities

Jenna is active in the intellectual property community as a writer, speaker, and educator. In addition to authoring articles on intellectual property matters, she is co-author of the patents chapter in Intellectual Property Disputes: Resolutions and Remedies published by Thomson Carswell and she has taught the Patent Law course at the University of Windsor.

Jenna is also currently Lead of the Practice section of the Intellectual Property Institute of Canada’s Patent Committee, leading a joint liaison committee of the Canadian Intellectual Property Office and the Intellectual Property Institute of Canada (IPIC) concerning Patent Office practice matters. She has also participated in consultative roles with CIPO on patent practice issues and the Canadian intellectual property regime, and has led the patent profession’s response to draft statutory and regulatory amendments to Canadian patent law over the past several years. Jenna also served on the Board of Examiners for the Patent Agent Qualifying Examination, administered by the College of Patent Agents and Trademark Agents. She also served for several years on the previous Patent Agent Examining Board administered by the Canadian Intellectual Property Office. For her work and volunteer efforts, Jenna has been recognized by Best Lawyers, IAM Patent 1000 and Lexpert, and received IPIC’s Outstanding Contribution Award.

Professional qualifications & education

  • Barrister and Solicitor, Ontario
  • Registered Patent Agent, Canada and USA
  • Registered Trademark Agent, Canada
  • J.D., University of Toronto
  • B.Sc. Physics, University of Waterloo

Selected publications

  • Patents Chapter, Intellectual Property Disputes: Resolutions and Remedies, Carswell (co­-author)
  • “It Could Happen To You: Demonstrating due care to the Patent Office”, Toronto Intellectual Property Group, March 2023 (presenter)
  • “Getting Your Practice and Clients Ready for the New Patent Examination Rules”, Intellectual Property Institute of Canada (IPIC) webinar, July 2022 (co-presenter)
  • “Claim Construction in the Patent Office”, University of Toronto Patent Colloquium, January 2022 (panelist)
  • “Two Years of the New Patent Rules: Lessons learned and best practices”, Toronto Intellectual Property Group webinar, November 2021 (presenter)
  • “College of Patent Agents and Trademark Agents – Regulations”, Intellectual Property Institute of Canada (IPIC) webinar, July 2021 (co-presenter/moderator)
  • “Foresight vs Hindsight: Section 53.1 for Patent Agents and Litigators”, Intellectual Property Institute of Canada (IPIC) webinar, April 2021 (co-presenter)
  • “Taking Due Care: Managing Clients and Maintenance Fees Under the New Patent Act”, IPIC webinar, April 2020 (moderator)
  • “COVID-19 & IP Practice: Designated Days and Extensions of Time in Patent Prosecution”, joint IPIC-CIPO webinar, April 2020
  • IPIC webinar series on the amended Patent Rules (organizer, moderator, and co-presenter), August 2019
  • “DIY Patents”, presentation at EPICentre, Windsor, February 2018
  • “The new Patent Rules: What to expect and how to prepare”, LSO 22nd Annual Intellectual Property Law: The Year in Review, Ottawa, January 2018 (co-presenter)
  • “IP Update for Technology Practice - Patents”, 2017 IT.CAN 21st Annual Conference
  • “Proposed Patent Rules—What, why & when?”, IPIC webinar, August 2017 (co-presenter)
  • “High cost of a lost fight”, Lawyer’s Daily, March 2017 (co-author)
  • “Patent ‘file wrapper’ ban showing its age”, The Lawyer’s Weekly, January 2017 (co-author)
  • “Copyright or Patent? How to Protect my Software”, presentation at EPICentre, Windsor, October 2016
  • Intellectual Property Chapter, Bullen & Leake & Jacob’s Canadian Precedents of Pleadings, 1st and 2nd ed. Carswell (co­-author)