Pierre T. Nguyen
Partner, Patent Agent
Norton Rose Fulbright Canada LLP
Pierre T. NguyenvCard
Related services and key industries
With over 20 years in the profession, Pierre Nguyen has been a driving force in generating valuable intellectual property in the North American intellectual property scene. Patents drafted and prosecuted by Mr. Nguyen have remained valid through Inter Partes Reviews before the United States Patent and Trademark Office, have been declared infringed at the appellate level in the United States, and have been successfully enforced in the Federal Court of Canada.
Pierre Nguyen has been at the heart of patenting strategies of local corporations, building high-value patent portfolios from mere ideas from inventors in fields including aeronautics, robotics, refrigeration, motion simulation, business methods and general mechanics. Mr. Nguyen has overseen all steps of the patenting process for hundreds of patents in the United States, Canada, Europe, China and Japan, and has been instrumental in lucrative sales of intellectual property assets.
He has developed particular experience in adding software claims to mechanically based inventions, and complementing the protection of mechanical devices with industrial designs. Mr. Nguyen has also drafted and prosecuted numerous cases in the medical device industry, on subject matter including computer‑assisted surgery, catheters, surgical tools, and surgical methods, for Fortune 1000 companies. He has been involved in all steps of prosecution, from inventor interviews to post‑patent reviews, and has played an active role in the strategic management of patent portfolios in this industry. Mr. Nguyen has particular experience in drafting specifications taking into consideration the heterogeneous jurisdictional requirements for medical device claims.
Mr. Nguyen is currently course instructor in the Department of Biomedical Engineering of the Faculty of Medicine of McGill University. He created and teaches a graduate-level course entitled “Patents in Biomedical Engineering.” After a successful mandate as director of the patent course, Mr. Nguyen was appointed chairman of the IPIC/McGill University Course Committee. In his capacity as chairman, Mr. Nguyen was actively involved in managing the intellectual property courses hosted by McGill University’s Faculty of Continuing Education. He is an engaging lecturer on patent prosecution, and a contributor to the looseleaf volume JurisClasseur Québec - Propriété Intellectuelle published by LexisNexis Canada.
B.Eng., Mechanical Engineering, McGill University, 1997
- Canada (patents) 2003
- United States (patents) 2004
- Royal Bank Academic All-Canadian
- "The Patent Behind Breaking2," McGill University, Faculty of Law, April 8, 2021
- "La PI pour jeunes entrepreneurs," Université de Sherbrooke, CONCOURS CREATEK, November 11, 2020
- "From Invention to Patent," McGill University, IPIC Summer Series, July 16, 2019
- "Apple, Microsoft, Netflix: Stories of Global Success Through Intellectual Property," McGill University, Center for Intellectual Property Policy, Faculty of Law, October 31, 2018.
- "The essentiality of intellectual property and patents in the life science industry," McGill University, Faculty of Medicine, Department of Biomedical Engineering, October 21, 2016
- "The Value of Patents," McGill University, IPIC Summer Series July 28, 2010
- Associate, Intellectual Property Institute of Canada
- Ordre des ingénieurs du Québec (Quebec order of engineers)
- Vice-president, executive committee, Collège de Montréal
- Co-president, Fondation de l'école Étoile filante
- Chair, IPIC Informals, Montreal chapter
- Chair, IPIC-McGill intellectual property courses committee (October 2010 to October 2014)
- Director, Understanding Patents course, McGill University (November 2007 to August 2010)