Jennifer A.
Marles*

Partner
M.Sc. (Biochemistry)

Refer Jennifer

* Practicing through a Law Corporation

CONTACT
t: 604.669.3432 Ext. 8967604.669.3432 Ext. 8967
jmarles@patentable.com
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  • Biographical Details

  • Representative Matters

  • Case Studies

  • News & Recognition

  • Associations

  • Publications

  • Speaking Engagements

  • Community Involvement

  • PDF

Jennifer is a partner of Oyen Wiggs.  Jennifer helps clients in the biotechnology, chemical and medical device industries build the value of their companies by securing patent protection in Canada, the United States, and beyond. Jennifer also assists clients with technology licensing, handling investor due diligence and evaluating their freedom to practise their technology.  At all times, Jennifer tries to be aware of her clients’ commercial goals and budgetary constraints, and she enjoys the rigors of learning about their new technologies.

Jennifer’s clients include a broad range of early stage and established companies and universities. She has helped her clients to patent inventions such as safety syringes, natural pesticides, new formulation technologies, and electrical safety equipment on a global basis. Jennifer has filed many provisional and PCT applications, and has assisted clients with optimizing their intellectual property protection strategy globally, including handling IP-related issues in China in conjunction with Chinese counsel.

Jennifer’s accolades include being awarded the Law Society Gold Medal for graduating at the top of her law school class in 2006, being awarded the J. Edward Maybee Memorial prize for achieving the highest overall mark on the patent agent examinations in 2009, being named as a Lawyer to Watch by Lexpert in 2019, and being acknowledged by Best Lawyers in 2020 for intellectual property law in Canada.

Jennifer is an advocate for education and continuous improvement in the legal and patent agent professions, serving on the Patent Practice Committee(a joint committee between the CIPO and the patent agent community focussed on practice improvement), on the Patent Agent Examination Board, and as an adjunct professor at the Peter A. Allard School of Law at the University of British Columbia.

Representative Matters

  • IP counsel to a local medical device company throughout both the development of its IP portfolio and the due diligence involved in the offering for sale of that IP portfolio.
  • IP counsel to a local chemical company engaged in the development of environmentally friendly pesticides and agrochemicals.
  • Work with the technology transfer offices of universities and research institutions to protect their inventions.
  • Assisted with evaluation of freedom-to-operate issues for a client in the field of carbon capture.
  • Assisted clients with the filing of protest submissions of prior art and re-examination of patents to help ensure their freedom-to-operate.

Associations

  • Law Society of British Columbia
  • Canadian Bar Association
  • Intellectual Property Institute of Canada (IPIC)

Publications

  • Buonassissi, A.D. and Marles, J.A. “Potential Copyright Liability for the Use of ‘Free’ TV Streaming Devices in Canada”, 2017, 33 CIPR 123.
  • Law, G.S., Marles, J.A. “Monsanto v. Schmeiser: patent protection for genetically modified genes and cells in Canada.” Health Law Rev. 2004, 13(1):44-7.
  • Marles, J.A., Dahesh, S., Haynes, J., Andrews, B.J., Davidson, A.R. “Protein-protein interaction affinity plays a crucial role in controlling the Sho1p-mediated signal transduction pathway in yeast.” Mol. Cell. 2004, 14(6):813-23.
  • Jahn, M., Chen, H., Mullegger, J., Marles, J., Warren, A.J., Withers, S.G. “Thioglycosynthases: double mutant glycosidases that serve as scaffolds for thioglycoside synthesis.” Chem. Commun., 2004, (3):274-5.
  • Jahn, M., Marles, J., Warren, R.A., Withers, S.G.. “Thioglycoligases: mutant glycosidases for thioglycoside synthesis.” Angew Chem Int Ed Engl. 2003, 42(3):352-4

Speaking Engagements

  • “Purposively Construing the Boundaries of Patentable Subject Matter in Canada: Diagnostic Methods as an Example”, Canadian Bar Association, BC Branch Intellectual Property & Technology Law Section Meeting – (15 June 2016, Vancouver)
  • “IP Law for The Non-IP-Lawyer”, Canadian Bar Association, BC Branch and Victoria Bar Association Meeting – (24 September 2014, Victoria)
  • “Balancing Disclosure and Monopoly in Canada–The Promise Doctrine”, Inter-Pacific Bar Association Annual Meeting and Conference – (14 April 2014, Vancouver)
  • “Primer on Canada’s New Anti-SPAM Law (CASL)”, Canadian Bar Association, BC Branch – (18 February 2014, Webinar)
  • “IP Law for The Non-IP-Lawyer”, Canadian Bar Association, BC Branch – (20 November 2013, Webinar)

Community Involvement

  • Tutor, Patent Agent Tutorials – Intellectual Property Institute of Canada, 2018
  • Member, Intellectual Property Institute of Canada – Patent Practice Committee, 2013-present
  • Member, Patent Agent Examination Board, 2014-2016
  • Member, Intellectual Property Institute of Canada – Canadian Intellectual Property Office Joint Liaison Committee (Trademarks), 2009-2013