The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.
Recommended - Individuals: prosecution
Montréal-based full-service outfit BCF Business Law “distinguished itself through the depth of its expertise and ability to provide clients with the best and most commercial-aligned IP strategy.” Although the troop is able to seamlessly navigate the IP spectrum, it shines brightest in patent prosecution and complex portfolio management. Its five department co-heads, Dominic Goudreault, Tuba Yamaç, Andréanne Auger, Julien Lacheré and Ilya Kalnish, have a collaborative leadership style and can credit their multifaceted legal and technical know-how to their many years in-house. Mechanical engineer Goudreault leverages his technical skill set to connect with inventors and genuinely understand their creations. Recently, he has been overseeing Bombardier Inc’s patent portfolio, as well as drafting and prosecuting all of their applications. “Beyond Tuba’s scientific training, it is her intelligence and mastery of patenting processes that make her the ideal partner. She understands complex concepts and makes sure that everything is super straightforward.” Auger also receives warm plaudits from her patrons: “Andréanne’s professionalism and experience make her a superb patent agent. She is generous, resourceful, and has a strong drive to solve complicated issues.” “An excellent attorney”, Lacheré has been handling all aspects of Vyoo’s patent portfolio in Canada, the United States, Europe and elsewhere, assisting them with everything from patent drafting and freedom-to-operate investigations to IP strategy implementation. Of Kalnish, one interviewee comments: “Ilya is the go-to for complex technical questions, even outside of patent law, and he can turn very difficult matters into ones that are easily digestible. The quality of his work is tremendous and the value for his services is exceptional!”
Ilya Kalnish supports both large international corporations and smaller start-ups/scale-ups in developing complex IP strategies. A patent agent in Canada and a trademark agent in both Canada and the United States, he specialises in artificial intelligence, information technology and mechanics. Mr Kalnish’s practice focuses on patent procurement process, from identification of patentable invention to drafting patent applications and prosecuting them in front of various patent offices. He has mastered expertise in reconciling legal regime differences between Europe and North America, especially when it comes to protecting software inventions in the wake of case law changes in North America and technicality requirements of the European Patent Convention. Mr Kalnish also advises his clients on global IP management, both in terms of new product introduction process and due diligence in the context of M&A transactions.
Mr Kalnish is particularly effective in obtaining watertight legal protection for inventions in several countries around the world, while optimising the cost-benefits ratio associated with such procedures. He represents the multinational corporation Yandex, which owns Russia’s most popular search engine, as well as a number of additional electronic services. Before joining BCF, he held key IP management positions in large corporations in Toronto, such as Bell Canada and Husky Injection Molding Systems Ltd, the world’s largest supplier of industrial solutions in the injection moulding industry. Mr Kalnish’s time in-house provided valuable insights into how legal departments operate, as well as pressures inside counsel face day to day. Since migrating to private practice, Mr Kalnish has always made sure that he remembers his lessons learnt by delivering to his clients business-focused advice, while keeping an eye on budget and expense management.
In 2017, 2018 and 2019 Mr Kalnish received the Client Choice Awards, a prestigious award that honours the best professionals in the legal sector, selected by clients. A native of Russia, Mr Kalnish speaks English, Russian and Bulgarian fluently. He also chairs the Committee for the Patent Agents Training Course for the Intellectual Property Institute of Canada.
It is with unfaltering passion for innovation and entrepreneurship that BCF’s founders were determined to change the way business law was practised. Our story reflects our ambition: as a collaborative and daring firm, BCF now has over 500 members, including 300 professionals, providing outstanding innovative service. It is this entrepreneurial spirit that makes us stand out from the crowd; we walk the walk and we talk the talk.
BCF is recognised by business leaders, entrepreneurs, growing companies and well-established global companies as a stepping stone to growth and success in Canada and abroad. We understand our clients’ businesses and are well positioned to partner with organisations, whatever the size or nature. Our team helps turn clients’ ambitions into viable and innovative businesses by putting the right resources on the table. We help our clients reach business objectives by providing pragmatic and forward-thinking solutions. Our clients’ success is our success.
IP and patent team
BCF’s patent team comprises experienced patent agents and attorneys distinguished by their multi-jurisdictional IP expertise, their hands-on corporate experience and their emphasis on providing personalised service to their clients. Notably, the BCF team boasts patent agents qualified and admitted to represent clients in the United States, Canada and Europe, maximising their patent potential in multiple jurisdictions and providing a ‘one-stop shop’ for patent and design protection. Our team members have extensive experience working in-house in the telecommunications, IT, medical device, biotechnology, machinery, transportation and aerospace industries, enabling them to deliver business-relevant IP advice.
The BCF patent team consistently delivers high-quality, business-relevant IP advice and services including:
- IP management and strategic counselling;
- patentability, infringement, freedom-to-operate and validity opinions;
- patent drafting, filing and prosecution service throughout the world, including direct representation in the United States, Canada and Europe;
- licensing and due diligence of IP rights;
- contentious patent proceedings; and
- negotiating and drafting of IP-related agreements.
BCF also advises clients on a wide variety of other IP matters, including:
- industrial designs, trademarks and copyright;
- trade secret strategies and management;
- free and open-source software policies; and
- data privacy and protection matters.
Focusing exclusively on IP law, BCF Global’s offer features Canadian and US patent agents and attorneys, as well as French and European patent attorneys, all working as a team. Thanks to the multidisciplinary expertise of its team and its strategic geographic position on two continents, BCF Global is seeking to provide its European clientele with privileged access to the North American market, and to assist visionary and innovative businesses in the fields of information technology, medical devices and life sciences grow and thrive.
BCF Imagine offers an exclusive legal and strategic programme to help innovative start-ups accelerate their growth. Since BCF Imagine’s creation in 2017, we have implemented a rigorous selection process to identify the best technology start-ups and assist them legally – for instance, in terms of cooperatives, corporate financing, venture capital and IP strategies and execution.
BCF Ventures, a spin-off of BCF Business Law, is a pioneer in the Canadian investment scene by being one of the very first Super Angel funds. BCF Business Law’s partners pooled their resources to establish BCF Ventures, which launched on 1 June 2018. The fund benefits from the expertise, resources and insights of the BCF law firm and invests jointly with other successful funds across North America and Europe. BCF Ventures invests at the seed and series A stage of technology-based start-ups, mostly in Canada, the United States and occasionally in Israel, China and Western Europe. BCF Ventures is also a designated organisation authorised by the government of Canada to invest and support potential start-ups under the Start-Up Visa Programme.