Serge ShahinianPh.D. Partner, Patent Agent

Serge ShahinianPh.D. Partner, Patent Agent


Partner - Patent Agent - Co-leader of the Intellectual Property Group

Serge Shahinian is a partner and patent agent in Lavery’s intellectual property group. He is a registered patent agent in Canada and the United States and has been practicing in the intellectual property field since 2000, following prior doctoral and post-doctoral training in biochemistry, biology, and genetics.

Serge's practice includes the areas of biotechnology, pharmaceutical and chemical, covering a wide range of related technologies in the health, agricultural, food, environmental and industrial sciences. He works with a full range of clients including universities and public research institutions, small and medium sized companies, and large multinational corporations, helping them develop and execute intellectual property strategies oriented towards their business goals. His practice includes the procurement of patent rights in domestic and foreign jurisdictions, as well as opinions and counselling in patentability, validity and infringement matters. He also works closely with our litigation group providing support on patent matters. He further has experience in due diligence in the context of transactions and financing in the biotechnology and pharmaceutical sectors.

Serge is recognized as one of the World’s Leading Patent Professionals, IAM Patent 1000, 2019 - 2023.


  • Shahinian, S. and Carpentier, M., Jurisclasseur Québec – Propriété Intellectuelle – Fascicule 22 – “Formalités et processus administratif du dépôt”, 2013-present, Lexis Nexis
  • Shahinian, S. and Dumont, A., Jurisclasseur Québec – Propriété Intellectuelle – Fascicule 23 – “Brevetabilité et définition de l’invention”, 2013-present, Lexis Nexis
  • Shahinian, S., Leclerc, A. and Gauvreau, J. “Changes to the Canadian Patent Rules coming into force on October 30th 2019”, Lavery Newsletter, October 25, 2019
  • Shahinian, S. and Leclerc, A., “Ready, set go! Changes to Canadian patent practice coming into force later this year”, Lavery Newsletter, July 10, 2019
  • Duffy, J., Jomphe, I., and Shahinian, S. “The United States–Mexico–Canada Agreement (USMCA): What this means for Canadian IP law”, Lavery Newsletter, November 1, 2018
  • Shahinian, S. “Use it and (maybe) lose it: Prior use and patentability”, Lavery Newsletter, October 5, 2018
  • Dumont, A. and Shahinian, S. “Medical use claims not involving the professional skill of a physician are patent-eligible in Canada”, GGData Newsletter, August 1, 2017
  • Shahinian, S. and Lavin, G. “Getting on the fast track: Accelerating patent examination in Canada”, GGData Newsletter, May 10, 2017
  • Shahinian, S. and Duffy, J. “Exemptions to infringement for research under Canadian law”, GGData Newsletter, January 23, 2017
  • Shahinian, S. and Dumont, A., “Double Patenting Under Canadian Patent Law”, GGData Newsletter, December 7, 2016
  • Leclerc, A. and Shahinian, S. “Tax relief to stimulate commercialization of intellectual property made in Québec”, GGData Newsletter, March 23, 2016
  • Shahinian, S. “Canadian national phase still possible for last-minute pre-AIA cases!”, GGData Newsletter, September 30, 2015
  • Shahinian, S. and Dumont, A., “Recent developments on patent-eligibility of medical use claims in Canada”, GGData Newsletter, April 7, 2015
  • Mansfield, H., Shahinian, S., “ patent application: Still ‘clicking’ its way through the Canadian authorities”, GGData Newsletter, November 2011, Vol. 11, No. 3
  • Leclerc, A., Shahinian, S., “Canada fast-tracks ‘greentech’ patent applications”, GGData Newsletter, March 2011, Vol. 11, No. 1
  • Lavin, G., Shahinian, S., “Business method patents are just ‘one-click’ away in Canada”, GGData Newsletter, October 2010, Vol. 10, No. 1
  • Shahinian, S., Silvius, J.R., “High-yield coupling of antibody fab’ fragments to liposomes containing maleimide-functionalized lipids”, Methods in enzymology Journal, Vol. 387, p. 3-15, 2004
  • “L’importance de la demande provisoire”, Trans Script, Vol. 2, No. 4, Winter 2004
  • Levinson, J.N., Shahinian, S., Sdicu, A.-M., Tessier, D.C., and Bussey, H. (2002), “Functional, comparative and cell biological analysis of Saccharomyces cerevisiae Kre5p”, Yeast 19: 1243-59
  • Roopchand, D.E., Lee, J.M., Shahinian, S., Paquette, D., Bussey, H., Branton, P.E. (2001), “Toxicity of human adenovirus E4orf4 protein in Saccharomyces cerevisiae results from interactions with the Cdc55 regulatory B subunit of PP2A”, Oncogene 20: 5279-90
  • Shahinian, S., and Bussey, H. (2000), “ß-1,6-glucan synthesis in Saccharomyces cerevisiae”, Mol. Microbiol. 35: 477-89
  • Shahinian, S., Dijkgraaf, GJ.P., Sdicu, A.-M., Thomas, D.Y., Jakob, C., Aebi, M. and Bussey, H. (1998), “Involvement of protein N-glycosyl chain glucosylation and processing in the biosynthesis of cell wall beta-1,6-glucan of Saccharomyces cerevisiae”, Genetics 149: 843-856
  • Shahinian, S. and Silvius, J.R. (1995), “A novel strategy affords high-yield coupling of antibody Fab’ fragments to liposomes”, Biochim. Biophys. Acta 1239: 157-67
  • Shahinian, S. and Silvius, J.R. (1995), “Doubly lipid-modified protein sequence motifs exhibit long-lived anchorage to lipid bilayers”, Biochemistry 34: 3813-22


  • “From Canola to Cannabis: A Growing Interest in Plant Protection”, Licensing Executives Society, November 15, 2018
  • “(Show Me the Money!) Monetizing Intellectual Capital and Intangible Assets”, 93rd IPIC Annual Conference, September 2019
  • “Opposing Patents on Opposite Sides of the World”, 92nd IPIC Annual Conference, October 2018
  • “CA Update: Life Sciences”, FICPI ABC 2017 Conference, Miami, March 2017
  • “Patentability: Dealing with Challenges in IT and Life Sciences”, 90th IPIC Annual Meeting, September 2016
  • “What is Considered Patent Prior Art in the ABC Countries: A Comparative Review”, FICPI ABC 2016 Conference, Wales, June 2016
  • “Patent Agent Exam Prep: Paper B & Paper D”, IPIC, March 22, 2017, and March 11, 2016 (webinar)
  • “Strategies for Securing Patent Protection in Europe”, IPIC, October 16, 2013 (webinar)
  • “Too much? Too little? Just right? Increased Scrutiny of the description and the goldilocks syndrome”, 87th IPIC Annual Meeting, September 2013
  • “US Supreme Court Decision– Association for Molecular Pathology c. Myriad Genetics, Inc.” IPIC, July 9, 2013 (webinar)
  • “The promise in Canadian patents, a recipe for disaster?”, joint presentation by Shahinian, S. and Gravelle, L.-P., at the FICPI ABC 2013 Conference, New Orleans, May 2013
  • “Myriad Genetics and Patenting Human Genes”, Shahinian S. and Gold, R., Conference on McGill Podcasts, McGill University, Montreal, June 2013
  • “The evolution of patenting in the life sciences: Where have we come from and where are we going?”, Centre for Intellectual Property Policy, Faculty of Law, McGill University, Montreal, January 2013
  • “Ownership and Transfer of IP Rights in Technology Transfer”, IPIC, October 6, 2011 (webinar)
  • “Managing Your Client Relationships”, IPIC, June 9, 2011 (webinar)
  • “Patenting diagnostic inventions: An international perspective”, with Julie Gauvreau, AUTM 2011 Annual Meeting, February 27-March 2, 2011, Las Vegas, NV (poster presentation)
  • “Workshop on career development”, ENU-CTG, McGill University, December 10, 2010 (panel presentation)
  • “The art of protecting life science inventions”, AUTM 2010 Annual Meeting, March 18-20, 2010, New Orleans, LA (panel presentation)
  • “Digging deeper into patent grace periods”, with Julie Gauvreau, AUTM 2009 Annual Meeting, February 12-14, 2009, Orlando, FL (panel presentation)
  • “Le monde des brevets”, BioConnexion, Université Laval, 2004 and 2005
  • “Les brevets dans le domaine de la biotechnologie”, Parc Technologique du Québec Métropolitain, 2003

Professional and community activities

  • IRCM, Dragon Boat Race, September 2016


Recognition in the IAM Patent 1000: The World’s Leading Patent Professionals, 2019-2023


  • Post-Doctoral Fellowship, Biology, McGill University, 1999
  • Ph.D., Biochemistry, McGill University, 1996
  • B.Sc., Biochemistry, University of Toronto, 1988

Boards and Professional Affiliations

  • Member of the Executive Committee of the firm (Lavery Lawyers)
  • Intellectual Property Institute of Canada (IPIC)
    • ­Member, Forums and Seminars Committee, 2011-2013, 2015-2019
    • ­Member, Biotechnology Patents Committee, 2011-2013
    • ­Chair, Technology Transfer Committee, 2011-2013
    • ­Vice-chair, Technology Transfer Committee, 2009-2011
    • ­Member, Technology Transfer Committee, 2005-2009
    • ­Member, Biotechnology Legislation Committee, 2001-2002
  • Fédération Internationale des Conseils en Propriété Intellectuelle(FICPI)
    • Secretary, FICPI Canada, 2018-2021
  • American Intellectual Property Law Association (AIPLA)
  • Licensing Executives Society
  • The Association of University Technology Managers (AUTM)
  • College of Patent Agents and Trademark Agents (CPATA)
  1. Celebrating youth innovation!

    This year’s World IP Day is upon us, with the theme “IP and Youth: Innovating for a Better Future”. In honor of this theme (and at the risk of making our adult readers feel a bit less accomplished), we thought it would be appropriate to highlight some of these wonderful inventions of young, innovative minds. US 8,371,246: Device for drying pets  In 2011, 9-year-old Marissa Streng invented a device to more effectively dry her pet dog Mojo after his baths. The product is now apparently sold under the brand Puff-N-Fluff. US 7,726,080: Under-floor storage   At the age of 14, Rebecca Hyndman patented an under-floor storage system intended for use in locations where tile floors are normally used, such as in kitchens and in bathrooms. As a result of this achievement, she was given the honor of introducing President Obama at the Thomas Jefferson High School for Science and Technology, immediately prior to his signing the America Invents Act into law. US 6,029,874: Article carrying device for attachment to a bicycle for carrying baseball bats, gloves and other sports equipment or objects   Biking to baseball practice can be quite the challenge when one has to carry both a bat and a glove simultaneously. From this problem sprang the “Glove and Battie Caddie”, invented by Austin Meggitt at the age of eleven. The Glove and Battie Caddie holds a baseball, bat, and glove on the front of a bike. US 7,374,228: Toy vehicle adapted for medical use   At the age of 8, young Spencer Whale invented a toy vehicle adapted for transporting a child and their required medical equipment. According to the patent, the toy allows children who are hooked up to medical equipment to move more freely around a hospital, with the intention of making their stay more enjoyable. US 5,231,733: Aid for grasping round knobs   One of the youngest people to obtain a patent was Sydney Dittman of Houston, Texas. In 1992, when Sydney was only 2 years old, she invented a tool out of parts of her toys in order to open kitchen drawers that her parents had told her to stay out of. Upon noticing that the device would be great for handicapped people to use, her father started the patenting process, and the resulting patent issued when Sydney was only 4 years old. Please join us to celebrate youth innovation on this World IP Day!

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  2. Canadian Patent Practice Update: Act Now to Avoid Excess Claim Fees

    Excess claim fees on the horizon As reported earlier, the Canadian government published proposed amendments to the Patent Rules on July 3, 2021. A significant component of the proposal is the introduction of excess claim fees on the order of $100 CAD for each claim beyond 20 claims, which will be payable when requesting examination, and will be re-assessed upon allowance to determine if further claim fees are due when paying the final fee based on changes in the number of claims during examination. Consider acting now In anticipation of the likely introduction of such a regime in early 2022 (which may be announced with only 30 days’ notice), Applicants may wish to begin assessment of their Canadian patent matters and consider requesting examination by the end of 2021 to avoid the payment of such excess claim fees and retain the right to present a larger number of claims for examination. Based on the transitional provisions in the proposed Rules, taking such action now shall avoid payment of such excess claim fees when requesting examination and when paying the final fee upon allowance. We thus recommend that Applicants consider taking such action this year to retain the benefits of the current regime, particularly for cases with a large number of claims as well as those which were already being considered for requesting examination in the short term. Stay Tuned! While the exact details and timing of the upcoming changes remain unknown, the earlier proposal suggests that they will likely be soon and with little advance notice. Please stay tuned for upcoming news in due course, and do not hesitate to contact a member of our patent team for guidance through the ultimate transition.

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  3. Further Streamlining of Canadian Patent Examination on the Horizon

    Canadian Patent Practice has undergone several changes in recent years, in many cases to fulfill the requirements of various international treaties/agreements, including those of the Patent Law Treaty (PLT) and the Comprehensive Economic and Trade Agreement (CETA). On July 3, 2021, the Canadian government published proposed amendments to the Patent Rules, primarily to further streamline Canadian patent examination to pave the way for a future patent term adjustment (PTA) system in Canada as per the Canada-United States-Mexico Agreement (CUSMA), as well as to bring Canadian practice in line with upcoming Patent Cooperation Treaty (PCT) sequence listing requirements. The proposed amendments have been published for a 30-day consultation period and may be subsequently modified. Therefore, it is unknown which of the proposed changes will be retained and in what form, and when the final version of the amended Rules will come into force. However, the proposals provide a preview of the types of changes being considered by the Canadian Intellectual Property Office, which notably include the following: Excess claim fees Like many jurisdictions, Canada is considering the introduction of government fees for excess claims. The proposal is a fee on the order of $100 CAD for each claim beyond 20 claims, which will be payable when requesting examination, and will be re-assessed upon allowance to determine if further claim fees are due when paying the final fee based on changes in the number of claims during examination. It will thus be prudent to voluntarily amend the claims prior to or when requesting examination to control such fees. Request for Continued Examination (RCE) The objective of the new system is to reduce the pendency of patent applications, with a goal of putting an application in condition for allowance with no more than three Examiner’s reports. Continuing examination beyond three reports would require the filing of an RCE, which would entitle the Applicant to up to two further Examiner’s reports. The filing of an RCE is also proposed for returning an allowed case to examination, which would replace the current (and relatively recent) mechanism to withdraw an application from allowance. The proposed RCE fee is on the order of $816 CAD. Conditional Notice of Allowance (CNOA) Rather than issuing further Examiner’s reports relating to any outstanding formalities, the Canadian Intellectual Property Office will have a new tool to issue a CNOA, indicating that the application is in condition for allowance as long as certain outstanding minor defects are corrected. This provides a more efficient path for Applicants in such situations to both correct the defects and pay the final fee, following which the case would proceed to grant. New PCT Sequence Listing Standard In view of the upcoming introduction (on January 1, 2022) of the new PCT “ST.26” sequence listing standard, Canada plans to bring its sequence listing requirements in line with those of the PCT, which will similarly be adopted by patent offices around the world. Housekeeping matters Otherwise, the proposed amendments aim to provide greater flexibility for Applicants in certain areas such as the correction of various types of errors and fee payments, notably in view of the practical application of recent changes to Canadian patent practice gleaned since they came into force in late 2019. Stay Tuned! As noted above, the final form and timing of the upcoming changes are unknown. Please stay tuned for upcoming news in due course, and do not hesitate to contact a member of our patent team for guidance through the ultimate transition.

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  4. Ho-Ho Holiday Themed Patents

     At Lavery, we spend a lot of time searching patent databases on behalf of our clients. Occasionally, we come across certain patents/applications whose cleverness and creativity make a lasting impression. At this time of year, our attention is naturally drawn to those that are holiday themed. And so, in the spirit of the holidays, we thought it would be nice to share some of them with you. We hope that the following examples can help lift your spirits (or at least make you smile). CA 2500690 (application): Christmas tree watering system This setup is likely easier to use by those in the health-care sector. CA 2114854 (application): Santa claws No family member is left behind these holidays—here is a stocking to hang by the fireplace for Santa to leave some treats for your special pet.    US 20200329896 (application): Christmas tree with blades rotated by wind power This application is for a Christmas tree that has a “blade unit” that is mounted to a pole and is detachable. The blades are rotated around the pole by means of natural wind power, “thereby improving the fun of the Christmas tree.” US 6497071: Christmas tree self-watering system This patent is for an “improved watering system for a Christmas tree,” where the Christmas tree's watering basin can be refilled by filling up a nearby water-resistant container. The clever twist? The water-resistant container is disguised as a Christmas present.   US 7258592: Santa Claus visit kit This patent is for a kit for creating an illusion that suggests Santa Claus visited a home. The claimed kit includes items such as “a letter professing to be from Santa Claus” and the “means for making boot prints.” The patent even discloses a rather complicated set of instructions, with steps such as “removing a portion of the drink and/or snack” and, if your home has no chimney, “leaving a toy key outside.”    US 5523741: Santa Claus Detector This patent was for a “children's Christmas Stocking device useful for visually signalling the arrival of Santa Claus by illuminating an externally visible light source having power source located within said device.” Santa Claus is described as “a plump, white-bearded and red-suited gentleman who delivers presents to ‘good’ children at Christmas time.” US 3494235: Devices for dispensing tinsel and the like adaptable for decorating Christmas trees Faster decorating for sure—a gun-shaped device for dispensing tinsel.   All the best wishes for a patently wonderful holiday season!

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  1. Lavery celebrates the fifth anniversary of its Intellectual Property group

    We are pleased to mark the fifth anniversary of Lavery’s Intellectual Property group. Providing a broad array of services, the team has contributed to the firm’s leading position in this field of expertise. Made up of lawyers as well as patent/trademark agents, the Intellectual Property team has boosted the firm’s success and growth by leveraging its cutting-edge expertise and working closely with clients from various sectors, including the auto, aerospace, artificial intelligence, energy, entertainment, video games, life sciences, manufacturing, retail, mechanical engineering, technology and transportation industries. Major shift in Lavery’s relationship with companies in the knowledge, innovation and technology sectors Lavery has gained distinction for being one of the firms filing the largest number of applications with the Canadian Intellectual Property Office. Based on recent statistics, Lavery ranks second among Quebec firms in terms of the number of trademark and patent applications submitted over the past year. “Above all, we are celebrating five years of excellence and commitment via an enriching legal partnership that has evolved alongside the knowledge industries with a view to protecting our clients and promoting their bold approach.” – Isabelle Jomphe, Partner, Trademark Agent and Co-Leader of Lavery’s Intellectual Property group. Over the past five years, the Intellectual Property team members have played a key role in many major cases, providing strategic advice and safeguarding the assets of national and international clients alike. Their proactive approach and technical expertise have set the firm apart as a legal partner of choice for companies seeking to successfully navigate the complicated intellectual property landscape. “Over the past five years, our Intellectual Property team has become an essential part of Lavery, laying out an international vision and forming a local anchor point for our expertise.” – Serge Shahinian, Partner, Patent Agent and Co-Leader of Lavery’s Intellectual Property Group.

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  2. Lavery represents ImmunoPrecise Antibodies as it acquires BioStrand

    On March 29, 2022, ImmunoPrecise Antibodies Ltd (IPA) announced that it acquired BioStrand BV, BioKey BV, and BioClue BV (together, “BioStrand”), a group of Belgian entities pioneers in the field of bioinformatics and biotechnology. With this €20 million acquisition, IPA will be able to leverage BioStrand’s revolutionary AI-powered methodology to accelerate the development of therapeutic antibody solutions. In addition to creating synergies with its subsidiaries, IPA expects to develop new markets with this revolutionary technology and strengthen its position as a world leader in biotherapeutics. Lavery was privileged to support IPA in this cross-border transaction by providing specialized expertise in cybersecurity, intellectual property, securities and mergers and acquisitions. The Lavery team was led by Selena Lu (transactional) and included Eric Lavallée (technology and intellectual property), Serge Shahinian (intellectual property), Sébastien Vézina (securities), Catherine Méthot (transactional), Jean-Paul Timothée (securities and transactional), Siddhartha Borissov-Beausoleil (transactional), Mylène Vallières (securities) and Marie-Claude Côté (securities). ImmunoPrecise Antibodies Ltd. is a biotherapeutic, innovation-powered company that supports its business partners in their quest to discover and develop novel antibodies against a broad range of target classes and diseases.

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  3. Serge Shahinian is recognized as a leading patent practitioner in the 2021 IAM Patent 1000: The World’s Leading Patent Professionals

    Serge Shahinian, partner and patent agent in the firm’s Intellectual Property Group, has been recognized as a leading patent practitioner in the 2021 edition of the directory IAM Patent 1000: The World’s Leading Patent Professionals. This distinction was determined, among other things, through exhaustive peer-reviewed surveys. The professionals are ranked in the directory based on a recognition of market share, exceptional skills, and in-depth knowledge of patent matters.

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