Partner, Patent Agent, Trademark Agent
Ilya Kalnish
Contact
Montreal
25th Floor1100 René-Lévesque Blvd. West
Montreal, Quebec H3B 5C9
CANADA 514 397-8500 514 397-8515 info@bcf.ca
Profile
Ilya Kalnish is a partner in our Intellectual Property (IP) group and a member of the BCF’s Board of Directors.
He is a patent agent in Canada and a trademark agent in both Canada and the United States. He is also a seasoned professional specializing in artificial intelligence (AI), information technology (IT), and mechanics. He has a proven record of providing effective patent support to major international corporations and smaller start-ups and scale-ups, enabling them to develop appropriate intellectual property strategies.
Ilya has been successful in obtaining watertight legal protection for inventions in multiple countries, while optimizing related cost-benefit ratios. He has developed specific expertise in computer-implemented inventions and, particularly, AI-implemented inventions, such as search algorithms, recommendation engines, self-driving cars, natural language processing, and dental planning, to name a few.
In addition to end-to-end patent portfolio management, Ilya has developed in-depth skills and expertise in IP risk management. He regularly advises international businesses and local entrepreneurs on assessing IP risks in support of pragmatic and effective business decision-making. He also regularly assists clients with freedom-to-operate opinions, patent-invalidity opinions, patent-landscape analyses, and competitive portfolio insights.
Before joining BCF, he held key intellectual property management posts at leading corporations in Toronto, including Bell Canada (a major Canadian Telco) and Husky Injection Molding Systems Ltd. (the world’s largest supplier of technology solutions, including injection-moulding solutions). During his time at Husky, Ilya was instrumental in developing internal IP management strategies. His innovative approach led to the Husky Legal/IP team winning the 2010 Inside Counsel Award for its “holistic patent strategy.”
In his in-house practice, Ilya has grown to appreciate the importance of pragmatic and business-centric IP advice. He has built expertise in bridging the business needs of C-suite leaders, inventors, and in-house legal departments.
Above all, Ilya’s experience has taught him how important the timely and well-rounded IP advice is in the business leaders’ decision-making toolbox. Accordingly, he manages each mandate with a strong drive and dedication so as to achieve his clients’ business goals.
A native of Russia and fluent speaker of English, Russian, and Bulgarian, Ilya is able to connect with diverse audiences and ply his communication skills to their benefit.
In 2017, 2018 and 2019, Ilya received the Client Choice Awards, a prestigious annual international award that honours the best professionals in the legal sector, as selected by clients.
Expertise
Industries
Education
- Registered Trademark Agent, Canada, 2010
- Registered Trademark Agent, United States, 2010
- Registered Patent Agent, Canada, 2006
- B.A., 1st Class Honours, Business Administration and Management, Oxford Brookes University, United Kingdom, 1996
Recognition(s)
- IAM Patent 1000 (2020-2024) - Recommended Individual
- IAM Strategy 300 (2023-2024) - Global Leaders
- IAM Strategy 300 (2021-2024) - The World’s Leading IP Strategists
- IP Star (2023-2024) - Notable Practitioner
- Globe Business Media Group (2017-2019) - Client Choice Awards
- Inside Counsel Award (2012) - 2012 IC10 Award
Representative Work
- Acted on behalf of a leading international capital equipment manufacturer in its patent risk management (global)
- Acted on behalf of an international software company in its patent procurement work (artificial intelligence, machine-learning algorithms, deep learning, computer vision)
- Acted on behalf of an international digital translation company in its patent drafting work
- Acted on behalf of a start-up in artificial intelligence and dentistry in its patent drafting and portfolio management
- Acted on behalf of a start-up in the field of remote monitoring and asset management in its patent drafting and portfolio management
- Acted on behalf of a regional Internet-based TV company in its patent drafting and portfolio management
- Acted on behalf of a furniture retailer in IP risk management
- Acted on behalf of an international financial institution in its patent drafting and portfolio management
Professional Affiliation(s)
- College of Patent Agents and Trademark Agents, CPATA (Patent Agent & Trademark Agent)
- United States Patent & Trademark Office (Trademark Agent) Intellectual Property Institute of Canada (IPIC), Fellow member
Involvement
- IPIC/McGill University Summer Courses in Patents, Lecturer, Tutor, 2015-present
- IPIC/McGill University Summer Courses in Patents, Program Director, 2014-2015
- IPIC Patent Agent Exam Preparation Course (Drafting/Prosecution), Lecturer/Tutor, 2011-present
- IPIC Patent Agent Exam Preparation Course (Validity/Infringement), Lecturer/Tutor, 2013-present
- IPIC/McGill University Summer Courses in Patents, Assistant Program Director, 2012-2013
- Federated Press, Lecturer, 2010, 2011-2012
- IPIC Patent Agent Training Course Committee, Member, Past Chair
- IPIC Self-Governance Committee, Member
- IPIC Forums and Seminars Subcommittee, Member
- IPIC Joint Liaison Committee, Member
- IPIC Education/Professional Development Committee, Past member
- IPIC Young Practitioners Committee, Past member
- IPIC In-house Practitioners Committee, Past member