Canada

Canadian practitioners are waiting to gauge the practical implications of legal changes arising from amendments to the national patent statute and the Comprehensive Economic Trade Agreement with the European Union. They are also hoping for greater clarity on certain questions of jurisprudence; with far fewer rulings issued than in the United States or the United Kingdom, the country is slower to develop the case law which crystallises the precepts expressed in legislation. The ‘promise of the patent’ doctrine is a particular source of agitation for many lawyers – not to mention pharmaceutical innovators – who are eagerly awaiting this year’s Supreme Court ruling on the matter. Patentability is another hot topic on which greater certainty is desired. Observers also report that the line between original and generic drug companies has been blurred somewhat, as reflected by the rise in biologics disputes.

Firms: litigation and transactions

1
Aitken Klee LLP
DLA Piper (Canada) LLP
Goodmans 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
Deeth Williams Wall LLP
Ridout & Maybee
ROBIC LLP

Firms: prosecution

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

Boosted by the recent arrival of several gilt-edged professionals from Sim & McBurney, Aird & Berlis/Aird & McBurney makes its debut in the IAM Patent 1000. The two-headed firm offers both contentious and non-contentious services, but is most highly esteemed for its “fantastic” prosecution; clients are blown away by the team’s scientific sophistication and “helpful, thoughtful and responsive approach”. Exemplifying these qualities is Lola Bartoszewicz, a doctor of clinical biochemistry and prime pick for biotechnology and medical device players. The forward-looking adviser thinks deeply about how to achieve clients’ business objectives. Another technical whizz, organic chemistry PhD Kimberly McManus “knows her stuff inside out, is extremely hardworking and handles clients with finesse”. “Kimberly is absolutely great and certainly my first choice for referrals,” enthuses one peer. The two colleagues are “a pleasure to work with. They are professional and responsive to questions, supervise their team well and communicate clearly on ongoing projects”. When disputes arise, Timothy Lowman can fight it out or broker an agreement with equal adroitness.

Aitken Klee LLP
Since its establishment in 2013, robust contentious boutique Aitken Klee has been a staunch advocate for generic drug companies in notice of compliance cases; its “clued-up and battle-ready” team regularly represents Teva in crucial patent trials and appeals, and recently acted for the Canadian Generic Pharmaceuticals Association in a Supreme Court hearing. “Clearly one of the best litigators in Canada”, David Aitken has been involved in several ground-breaking cases over the years: he won the 2012 Supreme Court decision to invalidate the Viagra patent, for example. More recently, he represented Two-Way Media in an infringement and validity dispute in the internet streaming space, which reflects his versatility. Fellow name partner Marcus Klee “marshals evidence brilliantly and develops creative, cogent arguments for trial. He does a great job of running down leads, interviewing witnesses and developing the case. Klee knows the intricacies of the Canadian courts and has a subtle understanding of various judges’ tendencies”. He is currently involved in a complex cross-border suit between Bard Peripheral Vascular and client WL Gore. Another of the firm’s exalted litigators, Jonathan Stainsby has the experience to handle the most delicate and vital matters with composure; one major client praised his “perfect management” of a recently resolved patent battle. Discerning counsellor Bill Mayo has a knack for helping patrons to avoid conflicts, while biomedical maven Bryan Norrie brings an impressive mix of scientific and legal know-how to contentious efforts. Having acted in a slew of patent suits, worldly professional Michael Crinson is another essential name for the address book.
Belmore Neidrauer LLP
Belmore Neidrauer is an indomitable campaigner for pharmaceutical innovators. Regularly in court, its “brilliant, laser-focused litigators” show great tactical instincts, pinpointing the battles that need to be won and fighting them tenaciously. The firm enjoyed something of an annus mirabilis in 2016: it overturned a $100 million damages award against Pfizer by persuading the judge that crucial pieces of evidence were inadmissible; obtained $18 million damages for Janssen from Teva, showcasing its presentational skills and ability to work with experts; and prevented generic versions of key Bayer products from coming to market. Having joined the firm in January 2016, the “extremely good” Jason Markwell has “brought extra quality to the already excellent set-up”. His many highlights since include a successful action against an Idenix patent in a hard-fought competitor-on-competitor case. Peter Wilcox is another of the firm’s rock-solid practitioners; a “first-rate trial lawyer who has fire in his belly”, he currently serves as president of the IP Institute of Canada (IPIC). Colleague Lindsay Neidrauer puts her biotechnology expertise to good use in technically complex cases.
Bennett Jones LLP
Rights holders hail Bennett Jones as “a trusted partner, which values long-term business relationships over short-term gains”. The splendid general practice is among the select few which can cater for all patent needs across the pharmaceuticals, energy, agriculture and mining sectors. Marshalling the squad is top-notch transactional lawyer Martin Kratz, who has “a tremendous depth of knowledge in IP valuation, licensing and royalty structuring matters. Kratz is a sharp analyst, identifying potential problems well in advance and proposing solutions.” He demonstrated these aptitudes while advising Triwest Capital Partners on a major recent acquisition in the energy sector. Colleagues Stephen Burns and Michael Whitt are also clued up on IP monetisation; they have specialist knowledge of IT and related laws. Obtaining unassailable patents in both Canada and the United States are microbiology buff Irene Bridger and Edward Yoo, who works with mechanical, chemical and computer-related inventions. Past president of the Canadian IP Council Roseann Caldwell is an expert in the oil and gas sector; she “approaches prosecution mandates from a business perspective, helping clients to understand the true economic benefit of each application, while proposing various techniques to reduce filing costs and preparation time. You never have to worry about things falling through the cracks with her either”. Caldwell currently handles applications in many jurisdictions for Prostar Manufacturing. For innovators embroiled in disputes, Dominique Hussey is one of Bennett Jones’s stellar litigators: “You cannot say too many good things about her. She is smart, practical and has very high emotional intelligence. Dominique has the ability to weigh commercial implications before proposing a course of action; she does not get bogged down in narrowly legal considerations and maintains a broad perspective even in the heat of litigation. This is a crucial – but by no means universal – quality in an external counsel.” Sharing many of the same qualities is Trent Horne, “a great up-and-comer with an encyclopaedic knowledge of jurisprudence in Canada. The nimble, creative and lateral thinker is also a clear communicator, able to explain the most complex of issues effortlessly. Horne takes the time to understand a business and goes beyond formal legal opinion; he is a thoughtful and penetrating adviser". Versatile professional Barbara Murchie has been resolving disputes for three decades and is another lynchpin of the team. Drawing on unmatched scientific expertise, Bereskin & Parr executes brilliantly on non-contentious briefs across the technology spectrum. “Superb at obtaining patents”, the pristine boutique also has a flair for optimising commercial output from those assets. Managing partner and life sciences group leader Micheline Gravelle brings cutting-edge industry knowledge to bear when preparing patent applications and analysing portfolios. Entrepreneurial flair, attentive client handling and a proactive approach have made her a hit with small and medium-sized enterprises (SMEs). Fellow prosecutor and head of the chemical team Patricia Folkins boasts outstanding credentials: the PhD worked as a research scientist in the pharmaceuticals industry and then as an IP manager for a major university. She procures patents for many cutting-edge cancer research institutions. For tried and trusted portfolio management, look no further than Philip Mendes da Costa, a meticulous and creative adviser with a keen eye for chinks in clients’ patent armour; he has been instrumental in the development of SharkNinja’s IP rights. Having chalked up 20 years at the coalface, Ken Bousfield knows how to solve problems and handles complexity with ease; peers see him as “responsive, thoughtful and accommodating”. Colleague Noel Courage possesses admirable biotechnology and medical devices know-how – he is an expert in stem cells – and can effortlessly navigate tricky regulatory issues. Go-to professionals for the strategic aspects of IP management are Victor Krichker and Bhupinder Randhawa, who extract the full value from portfolios through judicious sale and licensing schemes. Though best known for its non-contentious work, Bereskin & Parr is also a force to be reckoned with in infringement and non-validity battles, thanks in part to the “advanced skill set and sharp decision-making” of “top-notch litigator” Robert MacFarlane. Other contentious stalwarts include “brilliant lawyer” Donald Cameron and Scott MacKendrick, who know the case law back to front and have notched up significant experience in competitor-on-competitor pharmaceutical suits.
Blake, Cassels & Graydon LLP
Commercial law firm Blake, Cassels & Graydon sees intellectual property as a vital component of modern business and tailors its value-adding patent strategies to each client’s specific needs. The ISO 9001 certified firm can be relied upon for consistently excellent service; its portfolio management is as practical and efficient as it is creative and astute. Life sciences and chemistry maven Santosh Chari has a knack for getting applications granted and also brings a discerning eye to due diligence mandates. The “highly meticulous and thorough” Brett Slaney is an equally adept prosecutor, highly praised for his high-technology work; fintech, data and internet inventions are especially strong suits. Chari and Slaney also lend vital support to the firm’s celebrated transactions group, known for its deft handling of IP-rich deals. Key figures on this side of the practice are Sheldon Burshtein and Christine Ing, who are unsurpassed in their knowledge of the licensing, sale and purchase of patents. Lawyer and patent agent Anthony Prenol adds another string to the IP team’s bow with his elite contentious skill set; he has acted before a range of courts, including the Federal Court of Appeal. Though one of the largest IP firms in Canada – with a small army of professionals and offices in Toronto, Ottawa, Montreal, Vancouver and Calgary – Borden Ladner Gervais has a remarkably well-integrated team which shares insights across practice and technology lines to ensure holistic patent counsel. Patrons are delighted by its polished service: “The firm’s practitioners are diligent, down to earth and have great client skills. They are committed, work extremely hard and make the process easy from the service user’s point of view. Their work is thorough and you can place complete trust in their expertise.” The prosecution crew makes light work of the most varied and demanding instructions. Pre-eminent in the life sciences space, it has exhaustive scientific and regulatory expertise; it has also developed “excellent IP docketing systems for global portfolio management” and currently handles over 36,000 active patent applications. Biotechnology sages Kathleen Marsman and Mark Vickers can be found at the Ottawa branch and share a penchant for helping early-stage companies to use intellectual property as a tool for business growth; both are heavily involved in the firm’s unique initiatives aimed at universities and start-ups. One client praises Vickers’ “great rapport with researchers and keen understanding of the challenges of patenting in the academic realm; he has a particularly good appreciation of the difficulties involved in diagnostic patenting in the US and Canada”. From the same office, Jennifer Raoul provides long-term strategic counsel to international pharmaceuticals companies, while former patent examiner Curtis Behmann resolves thorny prosecution conundrums for software and telecommunications inventors. Ottawa regional manager Andrew Sojonky drafts faultless patents for oil sands technology – a major growth area for the Canadian economy; whereas physics is the metier of Jason Mueller-Neuhaus, who also boasts niche expertise in computer information processing systems. “He manages very large portfolios with ease and understands the differences between Canadian and US law,” enthuses one client. “He is strategically sound, very sharp and thorough. I cannot think how his work could be improved.” Managing the team in Vancouver is “renaissance man” Geoffrey de Kleine, a precision drafter who prepares flawless applications for originators in the mechanical, metallurgical and electronics spaces. Also in British Columbia, chemistry PhD David Nauman helps fledgling enterprises to protect their innovations and acquire funding. He is further commended for cross-border portfolio development and his “highly personalised and responsive approach”. The “excellent” Toronto-based Scott Pundsack excels in opposition, reissue and re-examination proceedings, as well as patent drafting. The former recipient of the Edward Maybee Award for the best score in the Canadian patent agents’ exam concentrates on clean technologies including green chemistry, wastewater treatment and membrane technology; he has lately acquired patents for Ecosynthetix and GE Water & Process Technologies. The firm also punches above its weight in hard-fought IP battles, especially in the pharmaceuticals sector. National IP litigation practice leader Christine Pallotta is a “razor-sharp” dispute resolution strategist and a “wonderfully effective courtroom lawyer”. Another Supreme Court veteran, “splendid lawyer” Jamie Mills is a biotechnology specialist and notice of compliance buff; together with litigation hotshot Chantal Saunders, he has represented Eli Lilly in a number of successful enforcement campaigns against Apotex and Mylan. Having masterminded a wide range of commercial and criminal suits, assured trial lawyer Kevin LaRoche brings a broad perspective to the litigation team.
Clancy PC + Brion Raffoul
A purveyor of high-quality, made-to-measure prosecution services, Clancy PC + Brion Raffoul erects fortress-like protections around clients’ innovations. Producing superb results for blue-chip corporations and local start-ups alike, the compact agency handles both domestic and cross-border campaigns with flair. “Excellent for drafting and counselling”, Natalie Raffoul is highly esteemed by fellow professionals; the software aficionado is intimately familiar with the ins and outs of Canadian, US and World Intellectual Property Organisation (WIPO) patent applications. Like her colleague Art Brion, she is an ardent champion of SMEs. Perceptive adviser Brion assists enterprises with ambitions of going public with portfolio development and commercialisation.
Deeth Williams Wall LLP
Professionalism, expertise and tenacity are the hallmarks of diminutive boutique Deeth Williams Wall. Though efficient in prosecution, the firm is best known for its prowess in contentious scenarios. Its swashbuckling professionals are especially effective at blazing trails to market for generic drug companies – Actavis is a longstanding client. Adjacent regulatory disputes in the pharmaceuticals and food sectors are another strong suit. Name partners Douglas Deeth and Gervas Wall provide a solid bedrock of experience to the practice, with more than half a century on the front lines between them. Deeth splits his time between patent litigation and steady-handed licensing work, while “fantastic professional” Wall concentrates his efforts on contentious matters. Kavita Ramamoorthy makes her debut in the IAM Patent 1000 this year thanks to glowing feedback from fellow professionals; the specialist notice of compliance litigator “is brilliantly intelligent, has an excellent legal mind and PhD-level scientific knowledge”, and is a masterful cross-examiner of expert witnesses.
DLA Piper (Canada) LLP
Having absorbed “top-tier litigation shop” Dimock Stratton, global IP titan DLA Piper has become a major player in the Canadian patent market. The local practice now boasts a rare combination of boutique expertise and world-class support structures. Its professionals have “exceptional know-how and a fine-tuned understanding of how to get the right results in IP disputes”. Elder statesman Ron Dimock plays a pivotal role; the 35-trial veteran is a “wonderful litigator to whom you can refer work with absolute confidence”. Teammate Bruce Stratton is “eloquent and persuasive, drawing on impressive courtroom experience and a strong command of technology”; while superb pharmaceuticals patent litigator Angela Furlanetto “deserves to be recognised as one of the country’s best”. Making his sophomore appearance in the guide is “excellent up-and-comer” Alan Macek, a safe pair of hands for thorny disputes and the writer of an influential patent blog.
Fasken Martineau DuMoulin LLP
The IP specialists at Fasken Martineau think outside the box when devising creative solutions for a broad range of patent predicaments. It performs adroitly across the spectrum, but is perhaps best known for its impressive representations in contentious circumstances. A preferred choice for cross-border mandates, the firm is also fully bilingual and an attractive choice for French-speaking patrons. Rooted in Montreal, the practice has branches which serve clients in Quebec City, Toronto and Vancouver. At the helm is Julie Desrosiers, an “amazing litigator” and tireless defender of innovators’ rights; she continues to prove herself lethally effective in the pharmaceuticals arena, recently refuting charges of invalidity against one of LEO Pharma’s core assets. Colleague Marie Lafleur is a savvy operator who deploys diverse tactics to advance clients’ interests, including seizures before judgment, injunctions and alternative dispute resolution mechanisms. Marek Nitoslawski is a solid all-round IP litigator whose recent highlights include acting as lead counsel for Bombardier in its ongoing infringement battle with Arctic Cat. Mainstays of the firm’s non-contentious practice include biochemistry PhD Serge Lapointe, an adept prosecutor with valuable in-house experience; and Alexandre Abecassis, a discerning adviser with an affinity for the most cutting-edge high-tech innovations – he spends much of his time managing patent rights for Cadens Medical Imaging and obtaining rights for Airbus Helicopter. Though a big hit with fledgling enterprises, optics and electronics whizz Isabelle Chabot also manages a number of complex global portfolios with poise. “She is a trusted adviser who understands new inventions quickly, offers well-considered opinions and expresses herself in a straightforward manner. Isabelle works very efficiently and also has a knack for selecting brilliant foreign associates.” Mark Penner is a drafter of watertight pharmaceutical patents and source of perceptive opinions; he was instrumental in the development of IP protection for innovative healthcare company Fio Corporation and recently assisted Purolater Inc with a series of joined research agreements. IT don Jean-Nicolas Delage extracts optimum value from patents by brokering lucrative licensing deals.

Working fluently across the patent lifecycle, Gilbert’s is particularly sought after for its adept handling of domestic and cross-border disputes. Its lawyers take a big-picture view of cases and can see the best route to victory. Dyed-in-the-wool advocate Tim Gilbert crafts compelling narratives at trial and explains obscure matters in clear terms for lay judges. On the prosecution side, Matthew Powell knows how to avoid obstacles to patent protection; his business acuity is appreciated by innovators big and small. Lawyer and patent agent Mark Eisen brings 30 years of practice to the table; the former president of IPIC is a top pick for international briefs.

Goodmans LLP
Goodmans is an attractive selection for companies embroiled in testing patent disputes; regarded by some as “the best of the bunch for generic pharmaceutical cases”, it has pushed the boundaries with its creative approach to Section 8 damages suits. Spearheading the dynamic ensemble are rock-star litigators Harry Radomski and Andrew Brodkin, whose recent high points include representing Apotex against AstraZeneca in a major Supreme Court case. The “fantastically successful” Radomski is “a leading figure and has been for decades”; Brodkin is “outstanding, one of a kind in court; he constructs cogent arguments, can cross-examine with the best of them and is extremely eloquent”. They are flanked by drug industry maven Richard Naiberg and “amazing young lawyer” Ben Hackett, who is featured for the first time this year following effusive peer feedback – respondents hailed him as “smart, capable, active and a great addition to the side”. Straddling the contentious/non-contentious divide, Dino Clarizio excels obtaining, enforcing and challenging chemical patents.
Goudreau Gage Dubuc LLP
Nimble practice Goudreau Gage Dubuc has been acquiring cast-iron intellectual assets for decades; it has intimate knowledge of the barriers that innovators encounter and how best to overcome them. Marshalling the talented team is Alain Leclerc, who “operates brilliantly across the patent spectrum”. The head of the chemical practice group knows how to get patents granted in that sector, but also performs confidently on litigation, arbitration and licensing instructions. Commercial giant Gowling WLG stands especially tall in the Canadian IP market. Widely agreed to sit at the “top of the table” for both prosecution and enforcement, it acts as lead counsel in more patent infringement actions than any other firm in the country and is among the most prolific filers too. Praised for its “breadth and depth of expertise, well-oiled systems and critical mass of resources”, it is a safe pair of hands for challenging cross-border mandates. Integrated into eight firm-wide industry practice groups, Gowling’s IP specialists are steeped in commercial and regulatory knowledge, giving their counsel a real strategic edge. The “fantastic” Anthony Creber is an internationally reputed trial lawyer and “leading advocate for pioneering drug companies”; he has a “brilliant business sense and adapts his strategy to achieve clients’ goals”. Recent highlights for the in-demand lawyer include representation of Eli Lilly in several damages hearings and a successful defence of Novartis’s Exjade patent against invalidity allegations by Teva. Another hardened grappler is Patrick Stewart Smith, whose name has appeared as counsel in more than 100 IP decisions; he has also been active of late, leading TearLab to victory in its infringement dispute with I-MED Pharma. “Supreme pharmaceuticals litigator” and shrewd adviser Christopher Van Barr is working closely with Smith for Idenix in its ongoing infringement and impeachment conflict with Gilead; he also prevailed for Horizon Pharma in a judicial review application contesting the Ministry of Health’s refusal of data protection for its RAVICTI product. Michael Crichton provides even more firepower to the impressive disputes team; he works with a broad spectrum of inventions – including mechanical, electrical engineering and computer software – and manages multi-jurisdictional cases with finesse. The firm’s transactions aficionado, Robert Fashler has spent decades helping innovators to maximise the tangible benefits of their intangible assets; he is also steady-handed in mediation and arbitration proceedings. Heading the prosecution practice is Grant Tisdall, a favourite of electronics and computing inventors. Also adding clout on the non-contentious side are the technically astute Dan Polonenko, a biotechnology PhD who has co-authored over 20 peer-reviewed academic articles; and “first-rate prosecutor” Brian Kingwell, whose meticulous drafting is matched by percipient tactical advice. Qualified patent examiner Konrad Sechley also knows exactly how to get applications granted. Pharmaceuticals experts Hélène D’Iorio and Omar Nassif manage portfolios skilfully and provide crucial technical support during big-ticket trials. D’Iorio is helping Bristol-Myers Squib to avoid patent protection pitfalls in Canada and Russia. Neil Henderson has won many fans among high-tech start-ups in the Waterloo area, where he is a director of the chamber of commerce. James Longwell “has a very personal approach and is accessible when you need him. He has fine-grained expertise in fintech and always knows exactly what he is doing”.
Lenczner Slaght Royce Smith Griffin LLP

The lawyers at “superb firm” Lenczner Slaght Royce Smith Griffin apply their well-rounded contentious skill sets to the most testing patent enforcement mandates in Canada and beyond; they have a particular flair for defending the rights of innovative pharmaceuticals companies and have also been involved in ground-breaking decisions in biologic drug disputes. The firm’s star patent attractions are the “fantastic” Andrew Skodyn and “excellent” Marguerite Ethier, who are currently working together for Janssen in the first patent infringement suit relating to a subsequent entry biologic; they have also been instructed to guard Pfizer against a series of Section 8 actions launched by Teva and Pharmascience. Recently arrived from Gilbert’s, “wonderful attorney and great adversary” Sana Halwani gets “right to the nub of the matter” in life sciences, IT and oil and gas patent disputes. Halwani recently represented the Children’s Hospital of Eastern Ontario in one of the first cases relating to the patentability of human genes; she achieved a breakthrough settlement which secured her client a licence for diagnostic testing.

Marks & Clerk’s Canadian branch provides a splendid boutique non-contentious patent service, producing “top-quality work, always in a timely fashion and with great service”; it also offers access to the firm’s seamless transatlantic network of offices. The outstanding local performers are Ian Clark and newly featured Hetal Kushwaha. Clark heads the illustrious life sciences team – which obtained a pioneering gene silencing patent – and handles cross-border filing efforts with poise. Captaining the domestic clients department, Kushwaha is a precision drafter of mechanical, electronic and computer systems applications; the former design engineer and in-house agent sees prosecution from the client’s vantage point and is commended for her “great interpersonal skills – Kushwaha is like a magnet and knows everyone”.

Working in close synergy with colleagues across the firm’s commercial law departments, McCarthy Tétrault’s “wonderful” IP specialists have a panoramic understanding of patent matters. Its “top-notch litigation practice” continues to receive a torrent of high-profile instructions from the healthcare industry – where it is an established force and a leader in biologics disputes – and from high-technology companies, a fast-growing client base for the firm. It recently acted to protect three of Allergan’s major products against generics produced by Apotex and Sandoz, and has represented Sanofi-Aventis in an influential Section 8 damages dispute before the Supreme Court. In the high-technology sector, the firm is defending Bell Canada in must-win damages disputes with Mediatube and Two-Way Media, and is also seeking to refute infringement claims against Hewlett-Packard by Online Connectivity. Steven Mason, Andrew Reddon and David Alan Tait front the litigation practice; they form a “cohesive and client-friendly team which gives superb advice, knows the law inside out and keeps you in the loop at all times. They know how to break down a case to its core issues”. Department head Mason is a “formidable opponent with an impressive track record”, while the “very solid” Reddon is a “superb courtroom lawyer with a silver tongue”. The “level-headed and highly professional” Tait “shepherds a case well, understands the technical and tactical aspects of litigation, and is outstanding in cross-examinations”; he has deep experience of oil and gas patent suits, as well as pharmaceutical matters. Lisa Melanson “has a heavyweight prosecution practice, dealing with the most complex issues; she is also a crucial buttress to the litigation team, providing penetrating scientific and regulatory advice on billion-dollar questions”. McCarthy also “does stellar transactional work”, thanks in no small part to Alfred Macchione, an acclaimed IP commercialisation expert; he provides wise counsel on major licensing deals, technology acquisitions and share purchase agreements. Macchione is also a gilt-edged portfolio manager, obtaining iron-clad protection for software and telecommunications innovators. An authority on internet and e-commerce matters, his colleague Barry Sookman is also quick to spot monetisation opportunities.
Norton Rose Fulbright Canada LLP
Tapping into the varied talents of its IP team, Norton Rose Fulbright can quickly unpick even the trickiest patent puzzles. Providing a comprehensive service to patrons with national and global needs, its Canadian IP experts are most renowned for dazzling work in high-impact disputes. National practice group head Judith Robinson comes recommended “without reservation or qualification”; she is a “passionate advocate with a fine legal mind and an estimable scientific background. Judith has an unmatched knowledge of Canadian and US patent law, develops ingenious strategies and argues her case well in English or French. She is determined and forceful, but courteous and gracious at the same time; she is great to work with”. The “wonderful” Jordana Sanft is a pharmaceutical patent trial lawyer par excellence; she recently prevailed for Gilead in a multi-jurisdictional dispute with Idenix, invalidating the latter’s Canadian patent and reclaiming trial costs; and won a summary judgment for Pfizer against Apotex. Section 8 damages whizz Allyson Whyte Nowak also acts for Pfizer, among other innovative drug companies. The “brilliant litigator draws on valuable experience and provides penetrating insights into complex patent matters”. Regulatory expert Brian Daley and “elder statesman” Patrick Kierans are further weapons in the firm’s life sciences litigation arsenal. “Kierans is a polished courtroom operator whose ingenious and persuasive arguments help him to clinch victory. He also has a clear understanding of clients’ priorities.” A registered arbitrator and mediator, as well as a seasoned trial lawyer, Brian Gray has many ways to obtain a favourable outcome to disputes. Accomplished all-round IP litigator Mark Davis is a recent addition from Belmore Neidrauer. Not only an essential ally in the heat of battle, Norton Rose Fulbright helps companies to procure cast-iron legal protection for innovations and to exploit their full commercial potential. Jung-Kay Chiu captains the patents and IP transactions practice. The judicious drafter of biotechnological and medical devices patents is also an even-keeled manager of worldwide portfolios; the University Health Network’s global IP strategy bears his stamp and he has become a go-to prosecutor for Huawei Technologies, the world’s largest telecommunications company. Colleague Sébastien Clark is a thermodynamics, hydraulics and aeronautics hotshot who masterminds Pratt & Whitney’s global patent strategy. “A leading corporate firm with superb IP specialists”, Osler, Hoskin & Harcourt is an “extremely accomplished adviser on the full spread of patent matters, taking a global yet practical approach to every project”. Exemplifying the breadth of its practice is group leader Bradley White, who impresses on both sides of the contentious/non-contentious divide. “He cuts to the chase and is client orientated. Bradley doesn’t spend a lot of time pontificating, but thinks pragmatically about legal and business issues. He focuses on what matters for the company, rather than just the individual inventor, and he always adds value. In litigation, he is extremely articulate to clients, judges and juries; he can dig through the extraneous stuff and get to the point, breaking things down so that people understand them. Bradley is articulate and concise.” These qualities have attracted a slew of illustrious clients, such as Estée Lauder, Fisher-Price, Philips and Panasonic. White is also a favourite among generic pharmaceutical companies: he scored a significant win for longstanding client Mylan against Amgen recently, getting the opponent’s patent dismissed for obviousness, and also hammered out a favourable settlement with Amgen on behalf of Samsung Bioepis. Working alongside White on these matters was Vincent de Grandpré, a life sciences aficionado with wide-ranging court experience. Another stellar litigator at the firm is Nathaniel Lipkus who recently served as lead counsel for the Children’s Hospital of Eastern Ontario in a ground-breaking trial and settlement relating to the patenting of human genes; the case secured the right for public sector medical institutions to access the gene patents on a not-for-profit basis. Dispatching non-contentious briefs with élan is Lee Webster, a smart portfolio adviser and skilful overseer of technology licensing and joint venture agreements; he recently shepherded a major commercialisation agreement between Field Upgrading Limited and Ceramatec to close, and helped to structure and amend a technology sharing agreement on behalf of Turnstone Biologics.
Perry + Currier Inc
Proficient prosecution shop Perry + Currier continues to make its mark on the Canadian IP landscape; its expert practitioners dispense sage advice, while cutting-edge automated systems ensure a smooth and efficient service. Attracting instructions from blue-chips such as BlackBerry, the firm is also trusted counsel for start-ups in the Toronto-Waterloo innovation corridor. The “superb” Stephen Perry knows how best to secure watertight telecommunications and electronics patents for domestic and foreign inventors; his counsel is informed by finely honed strategic instincts and nuanced technical know-how. Partner Andrew Currier has a broader practice which encompasses portfolio management, licensing agreements and litigation support. A former electrical engineer with General Motors and general counsel for a flat-panel display manufacturer, Currier has walked a mile in clients’ shoes and affords crucial insights into the business significance of intellectual property.
Ridout & Maybee
Ridout & Maybee provides a one-stop patent service, expertly helping rights holders to safeguard their innovations and ready to go on the offensive when rights have been infringed. From offices in Toronto, Ottawa and Mississauga, its “well-versed” professionals combine legal, technical and business nous in a potent blend; they earn plaudits for their “skill in design matters, great mentality and seamless collaboration with clients”. Elliott Gould is the person to contact.
ROBIC LLP
French and English-speaking clients alike flock to the doors of Quebec-based ROBIC, which consistently meets and exceeds their expectations. The IP-focused outfit has built up valuable ancillary expertise in business law, giving it a 360-degree understanding of patent issues and allowing it to offer a truly comprehensive service. Its glowing reputation in the life sciences is matched by its high standing in physics-related fields. Bob Sotiriadis is a stalwart in contentious circumstances; his extensive litigation toolkit makes him a safe pair of hands in all enforcement scenarios. Another big gun is François Grenier, an American College of Trial Lawyers fellow who is noted for his strategic acuity. The firm also dispatches complex transactional mandates with aplomb, thanks in part to the commercially savvy François Painchaud; a former president of the Licensing Executives Society, he has unparalleled knowledge of how technology fits into corporate deals. “Brilliantly” helping patrons to strengthen their legal protection are electronics and telecommunications doyen Louis-Pierre Gravelle and Dominique Pomerleau, a materials science PhD who can instantly get to grips with the most sophisticated mechanical inventions. They work alongside skilled drafter and clued-up adviser Nathalie Jodoin.
Rowand LLP
Established in 2011 by rising stars Jeff Tracey and Fraser Rowand, Rowand LLP makes its debut in the IAM Patent 1000 following superlative market feedback. Boasting niche expertise in electronics and computing, the agile boutique provides gilt-edged prosecution services to pioneers in the fintech, gaming and smartphone spaces. “Jeff and Fraser can be trusted absolutely with the most complicated and significant matters; their quality is consistently high and their customer service is the best around. They are extremely bright and quick to understand complex new technologies and to spot important technical details. They also understand the commercial side of patents and take the time to get to know your business and industry. They know where the value lies in particular inventions, which makes them stand out in a crowded patent marketplace.” The two partners appreciate the nuances of US as well as Canadian patent law, and have worked hand in glove with European partners too. Rowand has an especially detailed understanding of industry standards, while Tracey thrives on mandates in which intricate subject-matter knowledge is vital. SIM IP – a combination of patent agency Sim & McBurney and law firm Sim Ashton and McKay – serves up holistic patent prosecution to innovators in the IT, electrical and mechanical engineering fields. Helping to fortify the inventions of prestigious companies such as Boeing, Baker Hughes and Hewlett Packard, the firm is also a touchstone for Canadian SMEs, building impregnable portfolios from the ground up. “Excellent patent agent” David Ruston works ably across the non-contentious spectrum; the electrical engineer drafts and manages patents, as well as advising on transactions and providing solid technical support for contentious efforts. Powerhouse Smart & Biggar marries a laser focus on patents with enviable resources and coverage; 110 dedicated practitioners are divided among bureaux in Ottawa, Toronto, Montreal, Vancouver and Calgary. With “unsurpassed depth and breadth of technical expertise”, the firm’s non-contentious practice is among the very best in the country. “Great prosecutor” John Knox heads the electronic engineering and computer sciences groups; the Vancouver-based portfolio manager has particular know-how in statutory subject-matter issues. Also on the high-tech side, the “excellent” Matthew Zischka is admired by clients and peers alike: “You need to meet him to understand how good he is; he’s a great ambassador for the profession. Matthew is a wonderful drafter – he is very technical and keeps up to date with the latest changes in the law. You can go to him with the most puzzling questions and can refer work to him with total trust.” Life sciences maven Christopher Robinson and electrical and mechanical arts buff Ronald Faggetter each bring a quarter-century’s patent procurement experience to the table when working with innovators big and small. Smart & Biggar is also a leading light when it comes to the commercialisation of intellectual property. A former global IP manager for Imperial Chemical Industries, Sanjay Goorachurn knows better than most how to extract maximum value from portfolios; while Theodore Sum blends creative flair with diligence and microscopic attention to detail when shepherding deals to close. Fellow licensing guru Alistair Simpson uses transactions not only to increase revenue, but also to resolve intractable disputes; the fully qualified US patent attorney is favoured by those with interests across the 49th parallel. When disputes cannot be avoided, the firm’s valiant litigators step into the fold, battling it out in various arenas all the way up to the Supreme Court. Among its seasoned gladiators is Gunars Gaikis, a skilled fighter and lifecycle strategist for original drugs companies. The “wonderful litigator” has granular knowledge of the evolving regulatory framework and crafts arguments which get to the core of the dispute. He has represented AstraZeneca in many notable skirmishes, including an ongoing landmark Supreme Court case against Apotex which promises to have a significant bearing on the ‘promised utility’ doctrine. Fellow pharma whizz Sheldon Hamilton has prevailed in many tricky courtroom scenarios, while “major practitioner” François Guay has a knack for finding the most efficient route out of trouble. “Fantastic lawyer” Steven Garland competes in a broad array of contests, ranging from the life sciences to mechanical engineering and telecommunications; he recently prevailed in an infringement trial and subsequent appeal for Dow Chemical Company in its dispute with Nova.
Torys LLP
Sure-footed in all aspects of patent law, general service outfit Torys is especially esteemed for its redoubtable performances in must-win litigation: “It is one of a small number of firms which can handle bet-the-company cases. Its lawyers are extremely smart and can call upon substantial resources. You can rely on them to fight hard and make their case well.” With exhaustive knowledge of the pharmaceuticals industry, the team is an enthusiastic champion of innovators in the sector; it has repeatedly been sought out by Pfizer to enforce its most crucial rights. Spearheading the litigation department, Andrew Bernstein is “an excellent courtroom lawyer at the top of the game”; he earned his stripes in a dizzying array of commercial law disputes and has pleaded before every court in the land. Another robust advocate is Andrew Shaughnessy, an IP specialist who unfailingly rises to the big occasion; the notice of compliance veteran has acted in federal court for Amgen, Astellas and GlaxoSmithKline. The firm also fields an impressive squad on the non-contentious side. Co-heads of the IP practice Conor McCourt and Eileen McMahon have an affinity for the fine print of licensing agreements and know to draft unassailable patents; together they offer the distilled wisdom of some 60 years’ combined legal practice.

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
Robert A Fashler - Gowling WLG (Canada) 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
P Bradley Limpert - Limpert and Associates
Timothy M Lowman - Aird & Berlis LLP
Conor DM McCourt - Torys LLP
Craig T McDougall - Dentons
Eileen M McMahon - Torys LLP
Lisa Melanson - McCarthy Tétrault LLP
François Painchaud - ROBIC LLP
Dan Polonenko - Gowling WLG (Canada) LLP
Bhupinder Randhawa - Bereskin & Parr LLP
Thomas F Reaume - Dentons
Alistair Simpson - Smart & Biggar/Fetherstonhaugh
Barry B Sookman - McCarthy Tétrault LLP
Theodore W Sum - Smart & Biggar/Fetherstonhaugh
Gervas W Wall - Deeth Williams Wall LLP
Michael R Whitt - Bennett Jones LLP

Individuals: prosecution

Highly recommended
Curtis Behmann - Borden Ladner Gervais LLP
Ken Bousfield - Bereskin & Parr LLP
Ian Clark - Marks & Clerk
Louis-Pierre Gravelle - ROBIC LLP
Dan Polonenko - Gowling WLG (Canada) LLP
Natalie Raffoul - Clancy PC + Brion Raffoul
Matthew Zischka - Smart & Biggar/Fetherstonhaugh
Recommended
Alexandre Abecassis - Fasken Martineau DuMoulin LLP
Lola Bartoszewicz - Aird & McBurney LP
Irene T Bridger - Bennett Jones LLP
Art Brion - Clancy PC + Brion Raffoul
Roseann Caldwell - Bennett Jones LLP
Isabelle Chabot - Fasken Martineau DuMoulin LLP
Santosh Chari - Blake, Cassels & Graydon LLP
Jung-Kay Chiu - Norton Rose Fulbright Canada LLP
Yuri Chumak - Chumak & Co LLP
Sébastien Clark - Norton Rose Fulbright Canada LLP
France Côté - Benoît & Côté
Andrew Currier - Perry + Currier Inc
Geoffrey de Kleine - Borden Ladner Gervais LLP
Hélène D'Iorio - Gowling WLG (Canada) LLP
Mark Eisen - Gilbert’s LLP
Ronald Faggetter - Smart & Biggar/Fetherstonhaugh
Patricia L Folkins - Bereskin & Parr LLP
Micheline Gravelle - Bereskin & Parr LLP
Neil Henderson - Gowling WLG (Canada) LLP
Nathalie Jodoin - ROBIC LLP
Adrian Kaplan - Piasetzki Nenniger Kvas LLP
Brian Kingwell - Gowling WLG (Canada) LLP
John Knox - Smart & Biggar/Fetherstonhaugh
Hetal Kushwaha - Marks & Clerk
Serge Lapointe - Fasken Martineau DuMoulin LLP
Alain M Leclerc - Goudreau Gage Dubuc LLP
James E Longwell - Gowling WLG (Canada) LLP
Alfred A Macchione - McCarthy Tétrault LLP
Kathleen E Marsman - Borden Ladner Gervais LLP
Conor DM McCourt - Torys 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 - Gowling WLG (Canada) LLP
David Nauman - Borden Ladner Gervais LLP
Mark D Penner - Fasken Martineau DuMoulin LLP
Stephen Perry - Perry + Currier Inc
Dominique Pomerleau - ROBIC LLP
Matthew D Powell - Gilbert’s LLP
Scott Pundsack - Borden Ladner Gervais LLP
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 and McKay LLP
Konrad A Sechley - Gowling WLG (Canada) LLP
Brett Slaney - Blake, Cassels & Graydon LLP
Andrew Sojonky - Borden Ladner Gervais LLP
Grant Tisdall - Gowling WLG (Canada) LLP
Jeff Tracey - Rowand LLP
Mark Vickers - Borden Ladner Gervais LLP
J Bradley White - Osler, Hoskin & Harcourt LLP
Edward Yoo - Bennett Jones LLP

Individuals: litigation

David W Aitken - Aitken Klee LLP
Andrew Brodkin - Goodmans LLP
Anthony G Creber - Gowling WLG (Canada) LLP
Ron 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
Andrew J Reddon - McCarthy Tétrault LLP
Judith M Robinson - Norton Rose Fulbright Canada LLP
Andrew M Shaughnessy - Torys LLP
Jonathan Stainsby - Aitken Klee LLP
Andrew Bernstein - Torys LLP
Donald M Cameron - Bereskin & Parr LLP
Dino Clarizio - Goodmans LLP
Mark E 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
Marguerite Ethier - Lenczner Slaght Royce Smith Griffin LLP
Steven Garland - Smart & Biggar/Fetherstonhaugh
François M Grenier - ROBIC LLP
Trent Horne - Bennett Jones LLP
Dominique T Hussey - Bennett Jones 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
Christopher C Van Barr - Gowling WLG (Canada) LLP
J Bradley White - Osler, Hoskin & Harcourt LLP
Peter R Wilcox - Belmore Neidrauer LLP
Michael Crichton - Gowling WLG (Canada) LLP
Michael D Crinson - Aitken Klee LLP
Brian R Daley - Norton Rose Fulbright Canada LLP
Angela M Furlanetto - DLA Piper (Canada) LLP
Tim Gilbert - Gilbert’s LLP
Brian W Gray - Norton Rose Fulbright Canada LLP
Bruce M Green - Oyen Wiggs Green & Mutala LLP
Ben Hackett - Goodmans LLP
Sana Halwani - Lenczner Slaght Royce Smith Griffin LLP
Sheldon Hamilton - Smart & Biggar/Fetherstonhaugh
Carol Hitchman - Gardiner Roberts 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 - Deeth Williams Wall LLP
Todd A Rattray - Oyen Wiggs Green & Mutala LLP
David M Reive - Miller Thomson LLP
Jordana Sanft - Norton Rose Fulbright Canada LLP
Chantal Saunders - Borden Ladner Gervais LLP
Patrick Stewart Smith - Gowling WLG (Canada) LLP
Bob Sotiriadis - ROBIC LLP
David Alan Tait - McCarthy Tétrault LLP
Allyson Whyte Nowak - Norton Rose Fulbright Canada LLP
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Issue 85