Canada

There were significant developments in Canadian patent law and infringement litigation in 2017. In June, the Supreme Court rejected the so-called ‘promise doctrine’ – a piece of jurisprudence unique to Canada, which guided the assessment of patent utility – labelling it “incongruent with both the words and scheme of the Patent Act”. AstraZeneca Canada v Apotex is significant as it lessens the burden on patentees when defending against a utility challenge; to prove utility, patent owners have to show the court that an invention as claimed in a patent is useful and has a practical purpose. Following this ruling, in July 2017 the Federal Court granted the largest patent infringement damages award in Canadian history, with over $645 million going to Dow Chemical Company, to be paid by NOVA Chemical. Previously in the litigation, the courts also awarded the largest ever costs, amounting to nearly $3 million for legal fees and over $3.5 million for disbursements. This result pays testament to the rising complexity of patent cases in Canada and the increasing quanta of damages being considered and awarded. There is further important news coming out of the market which particularly affects life sciences entities. The Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union introduced several changes to the Canadian Patent Act and Food and Drug Act relevant to the protection of pharmaceutical innovations. Most notably, it shut down the dual-litigation system in Canada which allowed for two legal proceedings between the same parties over the same drug and patent. CETA also ushered in patent-term extensions for pharmaceutical patents – an important course correction given that Canada was the only G7 country not to have previously legislated for patent-term extension.

Firms: transactions

Highly recommended
98
Bennett Jones LLP
Blake Cassels & Graydon LLP
McCarthy Tétrault LLP
Torys LLP
Recommended
H
Fasken Martineau DuMoulin LLP
Norton Rose Fulbright Canada LLP
ROBIC LLP

Firms: prosecution

2
Bennett Jones LLP
Blake Cassels & Graydon LLP
Clancy PC + Brion Raffoul
Fasken Martineau DuMoulin LLP
Marks & Clerk Canada
McCarthy Tétrault LLP
Norton Rose Fulbright Canada LLP
Perry + Currier Inc
Torys LLP
3
Carbon Patent Group
Deeth Williams Wall LLP
Goudreau Gage Dubuc LLP
Ridout & Maybee LLP
ROBIC LLP
Rowand LLP

Firms: litigation

1
Aitken Klee LLP
DLA Piper (Canada) LLP
Goodmans LLP
McCarthy Tétrault LLP
Norton Rose Fulbright Canada LLP
Torys LLP
2
Belmore Neidrauer LLP
Bennett Jones LLP
Fasken Martineau DuMoulin LLP
Lenczner Slaght Royce Smith Griffin LLP
3
Blake Cassels & Graydon LLP
Ridout & Maybee LLP
ROBIC LLP

The seamless cooperation between Aird & Berlis and Aird & McBurney puts patrons on a sure footing from the get-go; applications are drafted deftly, licensing contracts inked favourably and enforcement campaigns waged with appropriate muscle. Captaining the IP team, Timothy M Lowman brings 35 years of transactions experience to the table; when it comes to touch-and-go negotiations, he is a miracle worker. The “seriously effective and wonderful to work with” Lola Bartoszewicz and Kimberly McManus excel on the prosecution side. Bartoszewicz provides “superb assistance” with regard to national stage applications, while clients effuse of McManus: “She’s really helpful and diligent, dealing with everything in a timely, economical manner. For example, when reporting office actions, she provides an additional, detailed letter, informing clients of the best possible way to overcome a rejection.” Since joining the team in September 2017 Trent Horne has electrified the contentious practice. He is an “extremely competent litigator” who has led cases at the highest levels.

Aitken Klee LLP
“As far as IP litigation boutiques go, it’s hard to look past Aitken Klee. The practitioners there are always thoroughly prepared and make tremendously tough opponents.” It may only have been on the scene for five years, but the firm has already shown its mettle in all manner of venues – including the Supreme Court – and garnered a reputation for setting explosive precedents. Its metier is pharmaceutical patent litigation, with a particular focus on matters relating to small molecule drugs; a complete command of biosimilar regulations makes for watertight pleadings. Leading the charge are gold-ranked sharpshooters David Aitken and Jonathan Stainsby. Three decades at the coalface have endued the Ottawa-based Aitken with great judgement and an awareness of what the judiciary want to hear. In Toronto, Stainsby is a details man who nonetheless sees the big picture. His staggering CV includes providing trial support to Teva concerning its invaluable Olanzapine and Pregabalin drugs, as well as representing the Canadian Generic Pharmaceutical Association before the Supreme Court. Other fine choices are Marcus Klee, Bill Mayo, Bryan Norrie and Michael Crinson. A seasoned lawyer who savours big-ticket litigation, Klee recently represented WL Gore & Associates in an extremely complex patent infringement case involving artificial arteries. Mayo’s spell working in-house at Newbridge Networks continues to shape his customer service; unnecessary legalese is anathema to him. As a lawyer and a patent agent, Norrie has a knack for seeing round corners; his technical knowledge is second to none. The “extremely proficient” Crinson is a “brilliant oral advocate” and a “very nice guy” to work with – however: “He’s so sharp that opposing counsel have to watch his every step.”
Belmore Neidrauer LLP
IP enforcement boutique Belmore Neidrauer packs a punch that belies its small size. Most of its 11 litigators boast a scientific background – something that makes a huge difference when technical material needs to be made comprehensible for a courtroom audience – and a formidable track record in Section 8 (of Title 35 of the US Code) damages actions. Peter Wilcox and Jason Markwell top the list for a string of the world’s leading pharmaceutical innovators. Even rivals are quick to acknowledge their brilliance. “Wilcox’s top reputation is well deserved – he’s a great litigator who’s always a challenge to go up against.” Markwell is said to be a “smart, skilful enforcement expert”, who has “made a real name for himself in courtroom proceedings”. Working hand in hand, they recently obtained a successful judgment for Bayer; Apotex and Cobalt Pharmaceuticals were enjoined to stop selling generic products that infringed the patent for Bayer’s Yaz and Yasmin birth-control pills. Managing partner Lindsay Neidrauer is another charismatic courtroom star whose activity is turning heads. After a three-week trial she obtained damages in excess of $18 million for Teva’s infringement of a patent covering her client Janssen’s antimicrobial Levaquin product. Her passion and commitment to clients are unquestionable.
Bennett Jones LLP
With two celebrated offices in Alberta, Canada’s oil and gas province, Bennett Jones has won favour among a high percentage of the country’s largest energy producers. Far from a one-trick pony, however, the firm has loyal fans in an array of other areas – all of which receive stellar support from the team’s diverse stable of individuals. The innovative financial services and mobile payments company Square benefits from Roseann Caldwell’s “excellent” prosecution skillset and impeccable customer service. “She’s a pleasure to work with. Often prosecutors provide just basic cookie-cutter responses, but not her – she goes the extra mile, giving thorough, thoughtful recommendations every time. She’s always thinking about the bigger picture.” Double qualified to practise as a patent agent in Canada and the United States, Irene Bridger is particularly popular among North American entities with significant interests in both countries. Having “a wealth of experience and an engaging personality” Edward Yoo is another solid choice for filing. “He’s excellent at helping researchers describe their technology in detail and overcoming office actions.” When commercialisation support is required, rights holders make a beeline for Martin Kratz, Michael Whitt or Stephen Burns. Kratz and Whitt are two “recognised leaders in the field” who come recommended for their excellent service: “They’re really thorough, have an encyclopaedic knowledge of the law and stay up to date with the latest developments.” Burns recently showcased his transactional dexterity unravelling tricky IP issues in Cenovus Energy’s $17.7 billion purchase of ConocoPhillips. Spearheading the litigation practice, Dominique Hussey is an “extremely cooperative, client-focused, enthusiastic and always well-prepared” practitioner. “She produces detailed, specific analyses and clearly explains all available options for enforcing rights, including how much each is likely to cost.” A bencher of the Law Society of Upper Canada, the worldly wise Barbara Murchie is revered in the IP community. She marshals evidence meticulously and comes up with impeccable lines of reasoning. “Bereskin & Parr’s vastly experienced IP team is winning work left, right and centre – it’s thriving.” A true one-stop shop, it can rival and outgun any other firm when it comes to cradle-to-grave support; all aspects of a patent’s lifecycle are expertly catered for. Managing partner Micheline Gravelle is the first choice for a legion of pharmaceutical originators. She helms the life sciences group but also takes an interest in plant breeders’ rights and is presently keeping a close eye on the burgeoning cannabis industry. The Mississauga-based Patricia Folkins has made a name for herself in cancer therapeutics circles; her profound technical expertise, gained as a research scientist at a leading biopharmaceutical company, is greatly appreciated by the many universities and start-ups in her roster. The other side of the sector rainbow is represented by Philip Mendes da Costa, who heads up the mechanical and industrial processes practice. He is a reliable pair of hands with a can-do attitude that makes all the difference when a client wants to secure a game-changing patent. Not only a “splendid drafter with technical acuity”, but also a “fantastic guy” – that is how interviewees describe Ken Bousfield. Being someone who gets a kick out of working with inventions that can be hit with a hammer, he is extremely popular in the railroad industry. Computer-related patents are the province of former software engineer Bhupinder Randhawa. He is equally comfortable filing patents and finding ways to monetise them. For high-value transactions, Victor Krichker and Noel Courage are as good as it gets. Krichker has the strategic flair for turning tricky negotiations around; while Courage has a wealth of experience handling the IP threads of asset purchase agreements. If the heat rises and things turn contentious, Donald Cameron, Robert MacFarlane and Scott MacKendrick step into the ring. Cameron is an elite oral advocate; students in his classes at the University of Toronto and York University are really learning from the very best. In the last four decades MacFarlane has put in stellar performances before the Federal Court, the Federal Court of Appeal and the Supreme Court. MacKendrick, meanwhile, is a super-smart litigator with a remarkable ability to anticipate adversaries’ moves.
Blake Cassels & Graydon LLP
Business law firm Blake Cassels & Graydon has a smashing transactional IP practice, at the forefront of which stand Sheldon Burshtein and Christine Ing. Both invest time into getting to know what makes clients tick and how patent portfolios fit into wider commercial strategies. Burshtein has unique expertise in video and image processing; no less tech savvy, Ing shines in computer system and software acquisitions. Beyond contract negotiations, the firm also files smartly and extinguishes enforcement flames without breaking a sweat. Prosecution whizz Santosh Chari provides “sound guidance on international strategies”, always considering the costs and benefits of any action. “His knowledge of the biotechnology sector and its unique challenges is extremely valuable.” Drafting comes naturally to Brett Slaney too. He has a real feel for conveying thorny technical issues in simple, straightforward language. Litigation is handled by practice head Anthony Prenol. His trial craft has been honed to a tee; arguments are ably constructed and delivered in a way that resonates with judges and juries. Responsible for more than 36,000 patents, not to mention a multitude of transactions and cases, Borden Ladner Gervais is one of the most visible firms in Canadian intellectual property. It has offices in five major cities – Calgary, Montreal, Ottawa, Toronto and Vancouver – and provides truly end-to-end support. At the vanguard of the changing legal services environment, it offers competitive and notably flexible fee arrangements. “Its streamlined billing process saves a lot of time; prices are reasonable and well justified, and invoicing is simple. How big an advantage that is can’t be overstated.” This exquisite customer service is the icing on the cake of the team’s ample technical and legal knowledge. Professional engineers Curtis Behmann and Geoffrey de Kleine combine scientific scholarship with real prosecution proficiency. For the last nine years the “extremely knowledgeable” Behmann has been the primary patent contact for the Jarden Group with regard to its Newell Brands; de Kleine is the man to go to for issues concerning metallurgical, mechanical and electrical patents. The outward-looking Brandon Evenson has directed the administration of portfolios across over 40 jurisdictions, all the while ensuring that the process is “cost-effective, timely and flawlessly executed”. His guidance is “nothing short of spectacular”. Louis Allard comes strongly recommended as well, having a deep understanding of the science behind inventions and always making sure that every angle is covered; strategies are established effectively in a timely manner and with an eye on the future. “He gets broad protection that makes companies attractive for external private or public funding.” For oil and gas issues, there are few more experienced drafters than the “erudite and personable” Andrew Sojonky. A member of the firm’s defence and security group, Jason Mueller-Neuhaus is a great choice for public and private bodies with sensitive inventions: “His service is exemplary from the get-go. He is a fighter committed to the cause.” Research institutions looking for somebody attuned to their unique needs – as opposed to those of corporations – seek out Kathleen Marsman, Mark Vickers and Scott Pundsack for life sciences assistance. Working at a biotech start-up, David Nauman has experienced first-hand the day-to-day pressures of getting a business off the ground. He makes things as simple and effortless as possible for nascent right holders. The “very pragmatic” Jennifer Raoul is also adept at escorting enterprising, if inexperienced, clients through uncharted territory. With these 10 stars in the non-contentious limb of the practice, there really is a congenial option for everybody. When it comes to contentious support, Christine Pallotta is someone to fill a lead role. She recently showed what she can do defending both Atlantic Lottery Corporation and Nova Scotia Provincial Lotteries and Casinos Corporation in a 13-day Federal Court trial against Safe Gaming System. Famous for his out-of-the-box thinking and firm conviction that nothing is impossible, Kevin LaRoche assisted her on this. Super-tough advocates, Chantal Saunders and Jamie Mills have had their hands full spearheading a series of infringement suits against generic manufacturers on behalf of Eli Lilly, whose trust they have rightly earned with a series of dazzling performances over the years.
Carbon Patent Group
Although little more than a year old, Carbon Patent Group thoroughly deserves its debut in the IAM Patent 1000. A nimble three-person boutique, it treats each client as if they were its only one, placing a premium on face-to-face meetings and responding to enquiries in the blink of an eye. On the ground in Vancouver and Toronto, two bustling innovation hubs, it has attracted plenty of start-ups, universities and research institutes, which it supplies with made-to-match support. Andris Macins is a smart port of call for interested parties.
Clancy PC + Brion Raffoul
Clancy PC + Brion Raffoul has forged close relationships with government agencies and incubators, making it a great choice for start-ups that not only require protection for their intellectual assets, but also need financing to take them to the next level in their growth. The firm’s flat-fee offering is proving particularly popular – a striking number of new names came aboard in the last 12 months. Art Brion and Natalie Raffoul bow to no one in their knowledge of software issues. “They are astute in their drafting of patents applications and manage portfolios masterfully, providing reliable feasibility reviews and are always looking for new opportunities at home and abroad.”
Deeth Williams Wall LLP
Keeping clients’ wider business interests front and centre at all times, Deeth Williams Wall is a valuable ally for any rights holder. Its indefatigable, commercially focused lawyers dispense clear advice at speed and make smart decisions on when to settle a dispute in a backroom as opposed to pursuing it full-throttle in court. Founding partners Gervas Wall and Douglas Deeth are transactional and enforcement sages respectively. Negotiating mutually beneficial collaboration deals and advising on high-value acquisitions are all in a day’s work for Wall; while Deeth provides gilt-edged enforcement support to pharmaceutical entities.
DLA Piper (Canada) LLP
A year on from its merger with “Canada’s best contentious IP shop” Dimock Stratton, DLA Piper is thriving and garnering rave reviews from all corners. “Its patent team is professional and efficient. It rapidly masters the relevant technology and resolves cases effectively with cogent reasoning; great care is taken to provide clarity and directness in affidavits and arguments to the court, which judges really appreciate.” Ronald Dimock and Bruce Stratton are the engines of the practice. “DLA is incredibly lucky to have people as senior and respected as Ron and Bruce. Ron might actually be the most experienced patent trial lawyer in the country, and Bruce is a technically smart, tenacious guy – someone it’s impossible not to respect.” They are unquestionably the group’s most esteemed members, but far from its only stars. Angela Furlanetto is another “top-notch” litigator: “She’s personable, calm, smart and thorough and always knows where she’s going.” Also turning heads in the IP community, electronics whizz Alan Macek is a future thought leader: “He’s someone who stands out in the next generation of practitioners.”
Fasken Martineau DuMoulin LLP
Home to 50-plus IP practitioners, including nine experienced patent attorneys, Fasken Martineau has the wherewithal to cure all known patent ailments. Its creative, pragmatic prosecution lawyers do not go in for cookie-cutter solutions; they understand that realising clients’ ambitions sometimes means taking the road less travelled. All dual qualified in Canada and the United States, Serge Lapointe, Mark Penner, Alexandre Abecassis and Armand Benitah offer seamless North America-wide support. The “highly capable and professional” Lapointe is “always of great help” when life sciences entities have a tricky issue on their hands. Exclusive IP counsel to Purolator, the leading integrated freight, parcel and logistics solutions provider, Penner really owns matters, taking his clients’ interests to heart. Abecassis’ electrical engineering background makes him a great choice for electronics, software and imaging issues, while the “awesome” Benitah’s civil engineering expertise aligns him well with construction and heavy-duty companies. “Benitah provides exceptional legal advice, holding inventors’ hands through the often-scary process of getting a patent.” Commercialisation is the strong suit of Jean-Nicolas Delage, a strong negotiator with a particular affinity for implementing patent pools. The firm’s contentious cadre stands out from the crowd by bringing the thunder in Quebec courtrooms, something very few even attempt. Inspirational as leader of the litigation practice, Julie Desrosiers mesmerises judges with tightly woven narratives. She recently represented one of the intervenors, the International Federation of Intellectual Property Attorneys, in the historic AstraZeneca v Apotex case, which put an end to the notorious ‘promise doctrine’. Pharmaceutical patent litigation is a staple of Marie Lafleur’s workload as well; biologics are booming in Canada, and she is getting a big slice of the pie. Meanwhile, the “highly accomplished” Marek Nitoslawski has been busy representing Bombardier Recreational Products in its battle against Arctic Cat. His right-hand man in the fight is David Turgeon, whose engineering background makes all the difference: “Technical folk gravitate to him because he can speak their language.” Both Nitoslawski and Turgeon are said to be among the best litigators in the market. “They have in-depth knowledge of IP law and experience handling extremely complex technologies.” Gilbert’s has a reputation for coming up with “unique and extremely creative funding models to pursue infringers” – and that is winning it plenty of fans. Its lawyers are intimately familiar with a vast number of courts across the country and boast expertise in all the key industries. Name partner Tim Gilbert is a “rainmaker with loads of connections” and the driving force behind the firm’s resolutely client-focused approach. “A top-notch lawyer, he thinks outside the box when it comes to the changing litigation landscape.” His teammates Matthew D Powell and Mark Eisen do all they can to ensure that things do not end up in the courtroom by drafting airtight applications. The far-sighted Powell is adept at helping companies to realise their long-term business plans through resourceful portfolio management; Eisen relishes the challenge of finding the nook from which he can secure his client a much-needed patent in an extremely crowded marketplace. A new addition to the group, Omar A Nassif has long shared the firm’s guiding principles of quality, close communication and attention to detail; hence, he is fitting in perfectly.
Goodmans LLP
Representing generic giant Apotex since the late 1970s is a bright feather in Goodmans’ cap. “It’s one of the leading firms in the country for pharmaceutical litigation – no question about that.” The client roster and good name it has among competitors rests in no small part on the stellar courtroom showings that Harry Radomski has been putting in for two decades: “An extremely talented orator, he is respected by all his colleagues. His track record in high-stakes cases is incredible.” He regularly teams up with the hard-working, tactically astute Andrew Brodkin on matters that need more muscle. The quality that comes out of their collaboration is sensational: “No matter whom you ask, they’ll say that Harry and Andrew are formidable opponents who do an excellent job servicing clients.” Having two renowned lawyers so fruitfully on the same wavelength is the stuff of dreams for most firms – but Goodmans can also boast the dynamic trio of Dino Clarizio, Ben Hackett and Richard Naiberg. Clarizio is the co-author of Canada’s primary textbook in the area, Patent Legislation & Commentary, while Hackett and Naiberg both lecture widely. Each is a team player, with a complete command of the case law and experience handling drawn-out cases with lots of twists and turns.
Goudreau Gage Dubuc LLP
Rights holders looking for a firm that will provide straightforward, practical, no-nonsense counsel would be well advised to consider Goudreau Gage Dubuc. Its lawyers are down to earth and unafraid to speak up – including when they think that changes need to be made to an invention to secure a strong patent. Alain Leclerc tends to be the first name on the team sheet. “Greatly experienced in both patent prosecution and enforcement, he’s an excellent choice whom clients take an immediate liking to.” Chemical engineering issues see him at his very best. Counsel of record in more patent infringement cases and Patented Medicine Prices Review Board hearings than any other firm in the country, Gowling WLG easily justifies its position in the gold band for litigation in the IAM Patent 1000 2018. Filing round the clock, its supreme status for prosecution is also no less deserved. The understanding its lawyers have of how to create, monetise and protect intellectual assets really is second to none. To begin with the contentious wing of the practice, the joint defence by Patrick Stewart Smith and Christopher Van Barr of the Merck-owned Idenix Pharmaceuticals against Gilead Sciences in the Federal Court of Appeal is one example of many in which an innovator’s neck was saved by the firm. Another significant work highlight was provided by the legendary Anthony Creber, who used the courtroom wisdom he has accrued over decades to handle an appeal brought by Apotex against the court’s decision to award his client Eli Lilly $106 million in damages. Michael Crichton, meanwhile, has had his hands full assisting Haier on a significant matter against ICS. He gets a kick out of cases concerning cutting-edge electronics patents. Turning to the prosecution side, Grant Tisdall and James Longwell are two “first-rate” veterans of the game in Toronto. Tisdall has particular experience helping Russian technology companies to develop their patent portfolios internationally, while Longwell has his eyes trained on China. Having spent seven years at the executive levels of two leading biotech companies and co-invented six issued patent families, Dan Polonenko marries business nous with technical savvy as effectively as anyone. Hélène D’Iorio, Brian Kingwell and Susan Tandan are also old hands in the biotech and pharmaceutical sectors. D’Iorio has been fine-tuning Bristol-Myers Squibb’s Canadian and Russian applications; Kingwell’s claim to fame is getting a patent for Glybera, the first human gene therapeutic approved in Europe; Tandan has won the trust of a panoply of universities, hospitals and government bodies with impeccable customer service: “She’s courteous, personable and extremely responsive – someone who’s always willing to discuss the pros and cons of different courses of action.” In the Waterloo region, Neil Henderson is an all-rounder whose pragmatic style generates great business solutions. “His attention to detail and resolute focus on commercial results have helped countless clients turn duds into gold mines.” Speaking of natural resources, Brian Lee’s familiarity with the oil and gas industry allows him to “get to grips with clients’ ideas and inventions quickly and effectively, often with nothing more than a prototype or piecemeal disclosure statement”. On top of that, he provides “insightful reviews of office actions, ably summarising the strengths and weaknesses’ of examiners’ arguments, and clear, concise recommendations for the way forward”. Finally, helping bring corporate seedlings to full bloom is Konrad Sechley. “His razor-sharp comments and questions have put plenty of clients on the path to further innovation. To have a patent practitioner bring so much added value is incredible for a young company.”
Lenczner Slaght Royce Smith Griffin LLP
Lenczner Slaght is an “extremely successful” litigation shop that has made “quite a mark” in Canada’s IP scene: “The team prepares wholeheartedly for trials, lines up great expert witnesses and has strong advocacy skills.” Most notable are its successes in the biologics space, where – working for the likes of Janssen – it has conducted more drug patent trials than any other law firm in the country. In recent months it has undergone some changes, including losing the venerable Marguerite Ethier to retirement, but the firm remains a formidable force with Andrew Skodyn taking over the wheel. “He’s a superb patent litigator with a sharp eye for detail and impressive trial craft. His ability to connect with a court using humour and dry wit is very rare. Clients also appreciate the fact that he doesn’t swamp in-house counsel with superfluous information or requests.” He works alongside Sana Halwani, who brought extensive cross-border experience to the practice when she joined in March 2017. “Her knowledge of patent law is faultless, as are the arguments she comes up with.” Melanie Baird is also in high demand thanks to a diverse skill set that encompasses commercial, regulatory and IP law. “She’s thorough and responsive to clients’ requests and wishes.” These three partners gel extremely well, which suggests that the practice’s future will be as bright as its past.
Marks & Clerk Canada
Marks & Clerk’s recent combination with outward-looking agency Sim & McBurney and vigorous law firm Sim Ashton & McKay enlarged Marks & Clerk Canada and led to the establishment of Marks & Clerk Law. Non-contentious support is provided by Marks & Clerk Canada. Its stellar patent attorneys all have excellent scientific or engineering academic backgrounds and a wealth of experience before the Canadian IP Office (CIPO). They also work closely with colleagues in China, France, Hong Kong, Luxembourg, Malaysia, Singapore and the United Kingdom to map out global strategies across many major markets. Ian Clark and Hetal Kushwaha are two members who know the ingredients required to make a Michelin-star patent. “Clark is ever-reliable and timely with his work, and happy to speak about tricky issues on the phone whenever is convenient for clients.” The tactically astute Kushwaha is also enthusiastically recommended; peers abroad say they would have no qualms about sending work to her in the event of a conflict of interest, thanks to her astonishing dedication: “Whereas most foreign counsel don’t do much beyond basic paperwork, she considers everything sent her way and proactively advises clients on alternative options.” The inspiring David Ruston consistently meets and exceeds expectations too. He is one of only a handful of Canadian practitioners to have successfully concluded a patent abuse application before the CIPO and secured a compulsory licence of third-party patent rights for a local client. His domain of choice is electrical engineering.
McCarthy Tétrault LLP
The last 12 months have illustrated why competitors hold McCarthy Tétrault in such high regard. It secured a landmark win for Bell Canada in the country’s first patent trial in respect of IPTV and has advocated for world-leading healthcare company Bristol-Myers Squibb in ground-breaking cases involving the blockbuster drugs Sprycel and Reyatez. Representing both of these clients, Steven Mason is a distinguished chair of the firm’s national IP litigation group. He has proven himself uncommonly adept at safeguarding a wide array of technologies and continues to raise the bar on what constitutes copybook support. His comrade-in-arms David Tait is another trial lawyer with swagger. When pharmaceutical companies have him on their side, their chances of success balloon. Transactional work generates plenty of revenue for the firm as well, with Alfred Macchione, Lisa Melanson and Vincent Kam-Sun Yip all inking contracts on a regular basis. “Macchione is always up to date with the latest IT issues. He picks up the nuances that might be beneficial to a client and works through issues side by side with them.” Not one to get lost in legalese, Melanson writes every email and document in real-world terms, which makes for easy reading in the C-suite; as well as being a monetisation sage, she is an artful filer. As for Yip – the way he rolls up his sleeves and dedicates himself to complex due diligence projects is a marvel to behold.
Norton Rose Fulbright Canada LLP
“Norton Rose always does an excellent job, delivering work in a timely fashion with due regard to clients’ budgetary constraints. The attention it shows to customer service is incredible.” Strong from the ground up, the set has a reservoir of talent – from seasoned partners who have seen and done it all, to energetic associates ready to take on the world. One particular distinguishing feature of the firm is its number of strong female role models, of which Judith Robinson is certainly one. Leading the national IP practice with aplomb, she is a much-respected litigator who “defends her clients’ interests with a strong hand and always takes their wider commercial considerations into account before giving guidance”. Allyson Whyte Nowak and Jordana Sanft are also inspirational figures. Nowak recently demonstrated her prowess defending Pfizer against Apotex’s claim for damages concerning Lipitor – one of its best-selling drugs in the country – and Sanft has been representing Gilead Sciences on a critical case against Idenix Pharmaceuticals in the Federal Court of Appeal. Blinding contentious support also comes from the likes of Patrick Kierans and Brian Daley: “They provide great value for each and every dollar spent. You can rely on them to act professionally even when the opposing counsel doesn’t.” The pair have excellent procedural expertise and use it effectively on clients’ behalf; Kierans has “deep knowledge of legal and policy issues relating to pharmaceuticals” and Daley is “extremely quick at getting to grips with whatever technology is involved in a case”. Mark Edward Davis is another great choice, having handled his fair share of proceedings under the Patented Medicines (Notice of Compliance) Regulations. While pharmaceuticals and life sciences take centre stage in the practice, aerospace and engineering applications are also handled adeptly thanks to Sébastien Clark. Getting a signature on the bottom line of a potentially lucrative contract is the province of Jung-Kay Chiu. He has a reputation for solving start-ups’ teething problems and taking them to big places.

Business law firm Osler, Hoskin & Harcourt has an “excellent” stable of IP lawyers who make light work of even the most unwieldy mandates. Their practical, straight-shooting transactional and enforcement advice always hits the bullseye. Star litigators J Bradley White, Vincent M de Grandpré and Nathaniel Lipkus are “responsive, timely on deliverables and cost-conscious”. Most importantly, however, they “know how to win”. Entrusted by generics giant Mylan, White is a “phenomenal” strategist and litigator: “He quickly earns the respect of everyone he works with, guiding things with a calm and steady – but firm – hand. His analysis is razor sharp, well thought out and directly on point. He has an uncanny knack for seeing the big picture even in the midst of complicated multi-jurisdictional proceedings.” De Grandpré has been putting in robust performances in the construction and energy sectors for the likes of American Piledriving Equipment and Awesome Wireless: “De Grandpré’s scientific knowledge and attention to detail are highly appreciated. His trial advocacy is particularly impressive in cases involving complex technical issues – they cause him no problem at all.” The super hard-working Lipkus appreciates how to form a persuasive argument too: “He’s a really bright, civil and gentlemanly litigator who knows his stuff.” Lee Webster is sure-footed in technology-rich transactions. “He gets the complexities of IP-heavy commercial agreements and structures them appropriately so they work for both sides.” Devoted client care is a hallmark of his service; he becomes a part of clients’ businesses in a way that allows him to give sound strategic advice ad lib.

Perry + Currier Inc
A nimble IP boutique with a different way of doing business, Perry + Currier Inc gives clients exactly what they want – sharp, streamlined support on budget and on time. Its lawyers are constantly looking for better and more effective ways of doing things. Otto, the firm’s artificial intelligence robot, is one example of that. It takes care of bread-and-butter tasks such as delivering courtesy reminders for maintenance fees and requests for examination, so that costs are affordable and the human staff can focus their attention on dicey technical and legal issues. Co-author of Canadian Patent Law, the first text on the subject by a patent prosecutor in over three decades, Stephen Perry has the academic acuity to wrestle with the most complex theoretical problems. Fellow name partner Andrew Currier is a dazzling orator who keeps his cool in intense competitor-on-competitor battles. He can lay any type of infringement dispute to rest.
Ridout & Maybee LLP
Celebrating its 125th anniversary in 2018, Ridout & Maybee is “a major IP boutique with a significant patent practice” and plenty of “skilful, personable” practitioners, whose availability, attention to detail and dedication to finding the best solution is remarkable. Never losing sight of the bigger business picture, they serve up well-wrought advice that ticks all the right boxes and comes at a fair price. Steeped in the nuances of filing at the CIPO, its lawyers come into their own in prosecution and portfolio-management mandates – but also know how to find the back of the net in the courtroom. Charles Boulakia is one name for the address book.
ROBIC LLP
Deservedly lionised by French and English-speaking rights holders alike, ROBIC is the torch-bearer for intellectual property in Quebec, where it has two prospering offices. Not one to beat around the bush, it provides frank, honest advice that helps clients to plan accurately for the future – even when that means telling them things that might not be pleasant to hear. The firm boasts a lively life sciences group that is making waves at the moment, but has really carved out a niche for itself advising on photonics and optics issues. Capitalising on her physics background, Isabelle Girard is the go-to practitioner for this. “She is familiar with both Canadian and US IP law and great at helping US attorneys understand the differences between the two – really an excellent person to work with.” Nathalie Jodoin, Dominique Pomerleau and Louis-Pierre Gravelle are also adept at fortifying the inventions of prestigious companies with iron-cast prosecution. They all have a glowing reputation for mechanical matters. When someone is needed to extract maximum value from a portfolio, François Painchaud steps in. He drafts contracts that are good for today and tomorrow. If things are really serious and the courtroom is calling, Bob Sotiriadis and François Grenier pick up the bat. A past chair of the IP and entertainment law section of the International Bar Association, Sotiriadis is esteemed worldwide. Grenier is also highly respected in the community; a courtroom veteran, he knows just how to play it in front of a jury.
Rowand LLP
Rowand is individuated by an all-out focus on computer-related inventions. With patent offices around the world making it more difficult to obtain software patents, its unique expertise is becoming more valuable than ever; such activity currently accounts for over 80% of its workload. Notable patrons include Blackberry and Toronto Dominion Bank. Representing both of them side by side, Fraser Rowand and Jeff Tracey make up the beating heart of the practice. The “excellent” Rowand has a “very impressive understanding of Canadian IP law” and is also “cordial, professional and ethical in all his dealings”. Senior business executives take a liking to Tracey instantly; they report that the second a prototype is shown to him, he starts thinking – not only about how to frame a patent application but also how to generate commercial gains.

Canada’s largest IP boutique, Smart & Biggar/Fetherstonhaugh not only files scores of patent applications, it also excels in high-stakes litigation; remarkably, it has appeared before the Supreme Court more than 50 times. Given its track record and the breadth of talent in its ranks, it comes as no surprise that the crème de la crème of international rights holders are loyal fans. On the prosecution side, managing partners Ronald Faggetter and John Knox are electronics sages. Having ushered plenty of local clients onto the world stage, Faggeter knows how to prosecute in the United States to minimise the chances of file history estoppel. Knox’s background as a hardware design engineer enables him to chat with inventors in their own language. Matthew Zischka also loves getting into the nitty gritty of complex patents, especially those in the microprocessor and computer graphics spaces. For life sciences issues, Daphne Lainson and J Christopher Robinson are indispensable. “Lainson has deep knowledge of the area, provides practical, well-grounded advice and is highly responsive. The overlap between patent and regulatory law is one of her specialities.” Also lauded by interviewees, Robinson does a “great job getting the hang of complex pharmaceutical technologies” and appreciates “how to explain the nuances of Canadian patent law to business people”. Getting a patent is one thing; effectively exploiting it is another. For this, Sanjay D Goorachurn, Alistair Simpson and Theodore W Sum are the practitioners to seek out. “Goorachurn understands the commercial side of intellectual property. He knows his trade. He’s also a great person to work with – a real gentleman.” The Calgary-based Simpson keeps his ear to the ground in terms of new business opportunities. No less commercially savvy, Sum is “extremely thoughtful” when it comes to the best way of resolving an issue: “He’s professional, responsive, thorough, diligent and detail-oriented, a pleasure to work with. He keeps going until everything is exactly where it needs to be.” Making headlines with precedent-setting victories is becoming a matter of routine for stellar litigators Gunars Gaikis and Steven Garland. Gaikis’s win on behalf of AstraZeneca represented a significant victory for innovators seeking protection in Canada; the Supreme Court wholly rejected the promise doctrine and clarified the requirement for patent utility. Garland, meanwhile, won damages of over $645 million, the largest reported award in a Canadian patent infringement case, for the Dow Chemical Company in its battle against Nova Chemicals. These highlights perfectly exemplify the level at which the firm is operating. As one impressed peer remarks: “Smart & Biggar has always had a strong reputation in patent litigation and it’s really reinforced that with the Dow case – the result it got was ground breaking. It’s a firm that truly stands out in the market.” In Montreal, François Guay is another contentious hotshot whose tactical acumen has saved the day for the likes of Microsoft, Nike and Air Canada. His ability to give reliable early cost-benefit assessments allows senior business executives to plan ahead confidently and get an edge over their competitors.

Torys LLP
A regular fixture in Canadian courtrooms, Torys has the experience to intuit where a case will end up – and consequently when it is right to keep pushing and when it would be better to negotiate. Kept on speed dial by pharmaceutical rights holders, Andrew Bernstein and Andrew Shaughnessy make a formidable team. They recently carried Pfizer to victory against Teva in Federal Court proceedings relating to patents protecting the anti-depressant product Pristiq; they also continue to assist Edwards Lifesciences on the national strand of its multi-jurisdictional battle against Boston Scientific. On the non-contentious side, Eileen McMahon is doing big things as well. Her unique knowledge of the agricultural sector allows her to provide watertight strategic advice to DuPont on patent protection for new fermentations and genetically modified crops, and to lend a hand to international seed company Pioneer Hi-Bred. With large-scale cannabis production growing in the country by the day, her singular expertise is likely to be in extremely high demand over the coming years.

Individuals: transactions

Highly recommended
Sheldon Burshtein - Blake Cassels & Graydon LLP
Jean-Nicolas Delage - Fasken Martineau DuMoulin LLP
Martin PJ Kratz QC - Bennett Jones LLP
Alfred A Macchione - McCarthy Tétrault LLP
Lee Webster - Osler, Hoskin & Harcourt LLP
Recommended
Stephen D Burns - Bennett Jones LLP
Jung-Kay Chiu - Norton Rose Fulbright Canada LLP
Noel A Courage - Bereskin & Parr LLP
Douglas N Deeth - Deeth Williams Wall LLP
Sanjay D Goorachurn - Smart & Biggar/Fetherstonhaugh
James P Hatton QC - Farris, Vaughan, Wills & Murphy LLP
Christine Ing - Blake Cassels & Graydon LLP
Victor Krichker - Bereskin & Parr LLP
Timothy M Lowman - Aird & Berlis LLP
Eileen M McMahon - Torys LLP
Lisa Melanson - McCarthy Tétrault LLP
François Painchaud - ROBIC LLP
Bhupinder Randhawa - Bereskin & Parr LLP
Alistair Simpson - Smart & Biggar/Fetherstonhaugh
Theodore W Sum - Smart & Biggar/Fetherstonhaugh
Gervas W Wall - Deeth Williams Wall LLP
Michael R Whitt - Bennett Jones LLP
Vincent Kam-Sun Yip - McCarthy Tétrault LLP

Individuals: prosecution

Alexandre Abecassis - Fasken Martineau DuMoulin LLP
Louis Allard - Borden Ladner Gervais LLP
Lola Bartoszewicz - Aird & McBurney LP
Curtis Behmann - Borden Ladner Gervais LLP
Armand Benitah - Fasken Martineau DuMoulin LLP
Ken Bousfield - Bereskin & Parr LLP
Irene T Bridger - Bennett Jones LLP
Art Brion - Clancy PC + Brion Raffoul
Roseann Caldwell - Bennett Jones LLP
Santosh Chari - Blake Cassels & Graydon LLP
Jung-Kay Chiu - Norton Rose Fulbright Canada LLP
Yuri Chumak - Chumak & Co LLP
Ian Clark - Marks & Clerk Canada
Sébastien Clark - Norton Rose Fulbright Canada LLP
Andrew Currier - Perry + Currier Inc
Geoffrey de Kleine - Borden Ladner Gervais LLP
Hélène D’Iorio - Gowling WLG
Mark Eisen - Gilbert’s LLP
Brandon Evenson - Borden Ladner Gervais LLP
Ronald Faggetter - Smart & Biggar/Fetherstonhaugh
Patricia Folkins - Bereskin & Parr LLP
Isabelle Girard - ROBIC LLP
Louis-Pierre Gravelle - ROBIC LLP
Micheline Gravelle - Bereskin & Parr LLP
Neil Henderson - Gowling WLG
Nathalie Jodoin - ROBIC LLP
Brian Kingwell - Gowling WLG
John Knox - Smart & Biggar/Fetherstonhaugh
Hetal Kushwaha - Marks & Clerk Canada
Daphne Lainson - Smart & Biggar/Fetherstonhaugh
Serge Lapointe - Fasken Martineau DuMoulin LLP
Alain M Leclerc - Goudreau Gage Dubuc LLP
Brian Lee - Gowling WLG
James E Longwell - Gowling WLG
Alfred A Macchione - McCarthy Tétrault LLP
Kathleen E Marsman - Borden Ladner Gervais LLP
Eileen M McMahon - Torys LLP
Kimberly McManus - Aird & McBurney LP
Lisa Melanson - McCarthy Tétrault LLP
Philip C Mendes da Costa - Bereskin & Parr LLP
Jason Mueller-Neuhaus - Borden Ladner Gervais LLP
Omar A Nassif - Gilbert’s LLP
David Nauman - Borden Ladner Gervais LLP
Mark D Penner - Fasken Martineau DuMoulin LLP
Stephen Perry - Perry + Currier Inc
Daniel R Polonenko - Gowling WLG
Dominique Pomerleau - ROBIC LLP
Matthew D Powell - Gilbert’s LLP
Scott Pundsack - Borden Ladner Gervais LLP
Natalie Raffoul - Clancy PC + Brion Raffoul
Bhupinder Randhawa - Bereskin & Parr LLP
Jennifer Raoul - Borden Ladner Gervais LLP
J Christopher Robinson - Smart & Biggar/Fetherstonhaugh
Fraser Rowand - Rowand LLP
David A Ruston - SIM IP Practice – Sim & McBurney – Sim Ashton & McKay LLP
Konrad A Sechley - Gowling WLG
Brett Slaney - Blake Cassels & Graydon LLP
Andrew Sojonky - Borden Ladner Gervais LLP
Susan Tandan - Gowling WLG
Grant Tisdall - Gowling WLG
Jeff Tracey - Rowand LLP
Mark Vickers - Borden Ladner Gervais LLP
J Bradley White - Osler, Hoskin & Harcourt LLP
Edward Yoo - Bennett Jones LLP
Matthew Zischka - Smart & Biggar/Fetherstonhaugh

Individuals: litigation

David W Aitken - Aitken Klee LLP
Andrew Brodkin - Goodmans LLP
Anthony G Creber - Gowling WLG
Ronald E Dimock - DLA Piper (Canada) LLP
Gunars Gaikis - Smart & Biggar/Fetherstonhaugh
François Guay - Smart & Biggar/Fetherstonhaugh
Patrick E Kierans - Norton Rose Fulbright Canada LLP
Harry B Radomski - Goodmans LLP
Judith M Robinson - Norton Rose Fulbright Canada LLP
Andrew M Shaughnessy - Torys LLP
Jonathan Stainsby - Aitken Klee LLP
Peter R Wilcox - Belmore Neidrauer LLP
Andrew Bernstein - Torys LLP
Donald M Cameron - Bereskin & Parr LLP
Dino Clarizio - Goodmans LLP
Mark Edward Davis - Norton Rose Fulbright Canada LLP
Vincent M de Grandpré - Osler, Hoskin & Harcourt LLP
Douglas N Deeth - Deeth Williams Wall LLP
Julie Desrosiers - Fasken Martineau DuMoulin LLP
Angela M Furlanetto - DLA Piper (Canada) LLP
Steven Garland - Smart & Biggar/Fetherstonhaugh
Trent Horne - Aird & Berlis LLP
Marcus Klee - Aitken Klee LLP
Robert HC MacFarlane - Bereskin & Parr LLP
R Scott MacKendrick - Bereskin & Parr LLP
Jason Markwell - Belmore Neidrauer LLP
Steven Mason - McCarthy Tétrault LLP
Bill Mayo - Aitken Klee LLP
Jamie Mills - Borden Ladner Gervais LLP
Marek Nitoslawski - Fasken Martineau DuMoulin LLP
Anthony M Prenol - Blake Cassels & Graydon LLP
Andrew Skodyn - Lenczner Slaght Royce Smith Griffin LLP
Bruce Stratton - DLA Piper (Canada) LLP
David Tait - McCarthy Tétrault LLP
Christopher C Van Barr - Gowling WLG
J Bradley White - Osler, Hoskin & Harcourt LLP
Melanie Baird - Lenczner Slaght Royce Smith Griffin LLP
Michael Crichton - Gowling WLG
Michael D Crinson - Aitken Klee LLP
Brian R Daley - Norton Rose Fulbright Canada LLP
Tim Gilbert - Gilbert’s LLP
Brian W Gray - Brian Gray Law
François M Grenier - ROBIC LLP
Ben Hackett - Goodmans LLP
Sana Halwani - Lenczner Slaght Royce Smith Griffin LLP
Dominique T Hussey - Bennett Jones LLP
Marie Lafleur - Fasken Martineau DuMoulin LLP
Kevin L LaRoche - Borden Ladner Gervais LLP
Nathaniel Lipkus - Osler, Hoskin & Harcourt LLP
Alan Macek - DLA Piper (Canada) LLP
Barbara J Murchie - Bennett Jones LLP
Richard Naiberg - Goodmans LLP
Lindsay Neidrauer - Belmore Neidrauer LLP
Bryan Norrie - Aitken Klee LLP
Christine Pallotta - Borden Ladner Gervais LLP
Kavita Ramamoorthy - Fineberg Ramamoorthy LLP
Jordana Sanft - Norton Rose Fulbright Canada LLP
Chantal Saunders - Borden Ladner Gervais LLP
Patrick Stewart Smith - Gowling WLG
Bob Sotiriadis - ROBIC LLP
David Turgeon - Fasken Martineau DuMoulin LLP
Allyson Whyte Nowak - Norton Rose Fulbright Canada LLP
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Issue 91