Canada

The legalisation of cannabis in 2018 created a real buzz in the IP and patent community in Canada – several firms have established cannabis practices or industry groups to handle the many IP issues created by this new industry. Fintech is another growing area of interest for IP groups; the sector is burgeoning and giving rise to plenty of innovation. More generally, the Canadian government is working hard to enhance the country’s performance in terms of innovation; the Innovation Superclusters Initiative is one example of a programme designed to support companies ideating in Canada. From an IP perspective, the signing of the United States-Mexico-Canada Agreement was important news; the agreement’s full implications for rights holders will take time to become clear, but one important change arising from it is the extension of the period of guaranteed protection for biologic drugs from eight to 10 years.

Firms: litigation

Firms: prosecution

Firms: transactions

Aird & Berlis LLP | Aird & McBurney LP

No technology is beyond the understanding of the accomplished team at Aird & Berlis LLP | Aird & McBurney LP, which has mastered the art of efficient patent registration. The addition of Erica Lowthers and Kitt Sinden to the IAM Patent 1000 for 2019 means that the firm has four individuals recommended for prosecution, up from two in 2018. Pharmacology PhD Lowthers has “an excellent ability to evaluate patents and create fruitful development strategies. She knows how to generate IP value.” Sinden – who also has a pharmacology background – is not just a prosecutor but a business enabler. Retaining their places in the guide are Lola Bartoszewicz and Kimberly McManus, who have PhDs in clinical biochemistry and chemistry respectively. As one respondent enthuses: “Lola understands what clients want and she delivers. She provides a first-rate service when it comes to biotech and pharmaceutical patents.” McManus serves on the Canadian Patent Agent Examining Board and possesses outstanding drafting and strategic advisory skills, making her an influential figure on the patent landscape. The firm has recently formed a cannabis industry group, central to which are Lowthers and McManus, who have lately been speaking at international conferences on how the drug’s legalisation intersects with intellectual property. Litigants are also in safe hands with the firm, as they have Trent Horne and Timothy Lowman to turn to. Horne focuses on patent litigation and operates with confidence and poise whatever technology is in dispute. Lowman handles a broader spectrum of commercial and IP cases, which has honed his advocacy skills to a fine point.

Aitken Klee LLP

Gold-rated patent litigation firm Aitken Klee fight tooth and nail to deliver satisfying results for an impressive following of leading life sciences and high-tech innovators. Brands capitalise on the ample firepower afforded by a stacked team of gifted litigators; Teva, for example, has recently been working with David Aitken, Marcus Klee, Jonathan Stainsby, Bill Mayo and Bryan Norrie with respect to Federal Court applications under the Patented Medicines (Notice of Compliance) Regulations and patent infringement actions. Described as “one of the best patent litigators in the country, and an outstanding cross-examiner”, Aitken is an inspiring leader. The same is true of Klee, who has the processing power required for the most complex cases. As is the case with the name partners, Stainsby, Mayo and Norrie are all hugely experienced litigators – as well as excellent strategists. Of Norrie, one client enthuses: “He is a practical and methodical IP litigator whose results speak for themselves. He executes tasks with care and instils a sense of confidence that your matters will be handled properly, on time and within budget.” Michael Crinson is the other name to note; he is currently representing Boston Scientific Corporation in a tough cross-border battle with Edwards Lifesciences. “Mike can be extremely persuasive in court and is a phenomenal trial attorney.”

Belmore Neidrauer LLP

Belmore Neidrauer’s IP practice is broad – and the firm is a cogent choice for strategic advice around patent and technology development and licensing; however, its chief claim to fame is its mastery of life sciences patent litigation. Sharpshooters Jason Markwell and Peter Wilcox anchor the practice and put in resonant performances in lead trial counsel roles for Pfizer Canada and other industry leaders. As one interviewee praises: “Smart, practical and hardworking, Jason is a brilliant lawyer with outstanding client handling skills – he is thoroughly committed to providing an excellent service.” Markwell and Wilcox are leading experts on Patented Medicines (Notice of Compliance) proceedings and are litigating on behalf of Janssen against Teva Canada in one of the first cases initiated under the recently amended regulations governing such actions.

Bennett Jones LLP

Bennett Jones is distinguished by the breadth of its patent practice; the firm does a top-notch job in prosecuting and litigating patents across most of the active technology theatres in Canada, including the life sciences, agricultural, energy and mining industries. Most of the Bennett Jones IP professionals are multi-talented and work artfully across the contentious/non-contentious divide. Roseann Caldwell, Irene Bridger and Edward Yoo make up the core of an excellent prosecution team; Dominique Hussey and Barbara Murchie run a tight litigation ship; and Stephen Burns, Martin Kratz QC and Michael Whitt headline one of the country’s best IP transactional practices. Based in Calgary, Caldwell has handled a kaleidoscopic range of energy technology mandates and is an authority in the sector. Bridger, who has a microbiology PhD, puts her agile technical mind to use in prosecution, licensing and litigation; by working effectively with lawyers in other departments, she makes a huge contribution to the cohesiveness of the firm. Versatile technologist Yoo “has a wealth of experience and an engaging personality – he works excellently with inventors, knows how to overcome office actions and is a good negotiator of collaborative agreements. He’s one of Canada’s top agents.” In her litigation and advisory practices, Hussey performs at a consistently high level. Lately she has handled a number of actions brought under the amended Patented Medicines (Notice of Compliance) Regulations acting for Amgen and Aurobindo Pharma. Murchie stands out for the extent and diversity of her experience; for over three decades she has fought – and won – IP, contract, tort, construction and other cases. Burns navigates the labyrinths of complex multi-party deals with a true compass; he co-leads the innovation and technology group. A high-level IP and technology strategist, Kratz is a veteran of many game-changing deals. Whitt is a perspicacious thinker on all matters pertaining to computer technology.

Bereskin & Parr LLP

There is no question that Bereskin & Parr is one of Canada’s best IP boutiques. This is evidenced by the fact that it has occupied top-tier rankings in every edition of the IAM Patent 1000 since it was first published in 2012 and consistently has multiple individuals recommended in all areas of patent practice. Lighting up the country’s litigation scene are Scott MacKendrick, Robert MacFarlane and Donald Cameron, all seasoned advocates with benchmark wins to their name. Worthy of special mention this year is IAM Patent 1000 debutant Adam Bobker, “a next-generation litigator with a fine tactical appreciation who produces top-grade work”. Making Bereskin & Parr a go to for high-quality prosecution are Micheline Gravelle, who leads the life sciences and cannabis practices; Patricia Folkins, who takes charge of the chemical group; Philip Mendes da Costa, who helms the mechanical and industrial process practice; electrical and computer chief Bhupinder Randhawa; and designs chair Robert Storey. Victor Krichker and Noel Courage have patent licensing on lock; both regularly publish and speak on the subject – Krichker focuses on high-tech deals, while Courage concentrates on the life sciences.

Blake Cassels & Graydon LLP

Blake Cassels & Graydon is known for its commercially agile approach to IP matters; whether prosecuting patent applications, litigating patent disputes or brokering deals, its professionals always devise solutions that work for the C-suite. The firm’s recent signing of Andrew Skodyn and Melanie Baird is one of the biggest coups in 2018’s transfer window – and a move that considerably bolsters its litigation practice; the former Lenczner Slaght lawyers can bring the heat in pharmaceutical and biotech cases. As one respondent highlights: “Exceptionally skilled, they will make Blakes a force to be reckoned with in the life sciences.” Helping to bring about the move as coordinator of the IP group was Anthony Prenol, an archetypal IP all-rounder who can cover vast ground for companies with diverse portfolios. He showed what he can accomplish in litigation recently by winning a four-week trial for Essential Energy Services against Packers Plus Energy Services and Rapid Completions regarding ubiquitous technology in the oil and gas sector. With him on this was Santosh Chari, another well-rounded operator who knows how to procure, defend and monetise patent assets. Another quality agent in the practice is Brett Slaney, an expert on energy matters and software and business method patents.

Borden Ladner Gervais LLP 

Borden Ladner Gervais (BLG) is a prolific patent filer and trusted adviser to a variety of sophisticated and discerning innovators. The firm has 12 individuals recommended for prosecution in this year’s IAM Patent 1000 – considerably more than any of its competitors; the depth of its bench is remarkable and enables it to cover any and all technical disciplines. Several within the BLG group have also earned promotions this year; life sciences specialist David Nauman, fintech and software maven Brandon Evenson and chemical and mechanical ace Andrew Sojonky all move into the highly recommended tier based on exceptional market feedback and work examples. Of Nauman, one client comments: “David is able to speak to me as a scientist. He knows how to extract the right information and contextualise it to get us the broadest coverage. He really cares about what we’re doing and is never afraid to challenge us directly; his professionalism and timeliness stand out too. He is a fantastic find.” Another happy customer describes Evenson as “nothing short of spectacular in the way that he works. He has an exceptional ability to translate a very technical set of scenarios into the appropriate patent language and gets what his clients need. He shows a strong aptitude for both mechanical, electrical and design patent applications and is excellent at explaining the similarities and differences between the Canadian and US patent systems”. New to the guide this year is Graeme Boocock, a life sciences expert – and amateur plant breeder – who also garners glowing notices: “He can communicate at the same level as inventors and he really takes the time to understand the challenges his clients face; he also knows how to keep costs down. The honesty of his feedback about patentability, for example in the field of diagnostics, is refreshing and really helpful with regards to decision making.” The firm’s life sciences practice is absolutely stacked and, alongside Nauman and Boocock, Mark Vickers, Scott Pundsack, Jennifer Raoul and Kathleen Marsman are experts in their field. BLG is also experienced in the high-tech realm in which – alongside Evenson and Sojonky – Curtis Behmann, Louis Allard, Jason Mueller-Neuhaus and Geoffrey de Kleine all produce sterling work. Behmann is a thoughtful strategist with a deft touch when it comes to designs; Allard is distinguished by his outstanding research background and as an inventor with four US patents to his name; Mueller-Neuhaus is an authority on business methods; and de Kleine is a Client Choice Awards winner with expertise encompassing the metallurgical, mechanical and electrical arts. The firm makes its rich technical know-how count at trial, although excellent results in court must also be credited to the finely honed advocacy skills that litigators Jamie Mills, Kevin LaRoche, Christine Pallotta, Evan Nuttall and Chantal Saunders bring to the table. With his mix of patent litigation and regulatory expertise, Mills is well suited to complex life sciences suits; IP commercialisation maven LaRoche secures high-tech litigation wins that make business sense; Pallotta litigates across the IP spectrum and has broken new ground in patent and trademark suits; from his base in Calgary, Nuttall fights the corner of oil and gas patrons; and Saunders has all-encompassing knowledge of the Patented Medicines (Notice of Compliance) Regulations.

Brion Raffoul 

Ottawa-based IP specialist Brion Raffoul is the recipient of emphatic feedback from the market: “Its professionals are extremely organised, proactive and very easy to work with. They have an excellent grasp of their subjects, execute with speed and precision, all while being very responsive.” Cited as being “entrepreneurial and driven practitioners with world-class skills”, Art Brion and Natalie Raffoul form the fulcrum around which the practice turns. Brion is an influential figure in the start-up community and a sought-after representative for companies spun off from universities. Business methods and software patents are bread and butter for Raffoul, who is a “creative, cost-effective, efficient and solutions-oriented partner”.

DLA Piper (Canada) LLP

DLA Piper is in pole position to manage international patent portfolios thanks to its global, yet well-integrated network of offices. With a crack squad of litigators in Canada, it is also well placed to handle complex and multi-jurisdictional patent litigations, such as the dispute between top snowmobile manufacturers Arctic Cat and Bombardier Recreational Products. Defending Arctic Cat, Ronald Dimock, Angela Furlanetto and Ryan Evans masterminded a resounding victory after a 10-week trial in which three of the patents at issue were found invalid and the fourth not infringed. All three come in for resounding praise from the market: “Ronald is an encyclopaedia of patent law but still one of the most humble practitioners you could meet. In terms of the number of patent trials he has successfully handled, he is one of the top litigators in Canada. Angela is the complete package as a trial attorney. She masters the facts of her cases, stays calm, puts forward well-reasoned arguments and is fazed by nothing.” An associate in the group, Evans is “already devastating and he’s only going to get better in the years to come”. Joining Dimock in the gold tier this year is Bruce Stratton who has confected mutltiple wins in shootouts over computer technology. “Bruce resolves issues in a practical and sensible way. He has a profound knowledge of intellectual property and is extremely well organised.” Of late he has been battling on behalf of telecoms provider Videotron against Rovi Guides in a dispute over set-top box interactive programme guides. With him on this is Alan Macek, a “committed young partner who has already handled some major cases”.

Fasken 

Fasken applies an inter-disciplinary scheme of thinking to all IP matters; its prosecutors, litigators and transactional experts collaborate to deliver well-rounded business solutions to their clients. Worthy of special mention is the firm’s patent litigation practice, central to which are Julie Desrosiers, an inspiring leader of the IP group and a doyenne of life sciences litigation and Marek Nitoslawski, an assured trial lawyer with a focus on high-tech matters. “Both are world-class strategists and lawyers who you want in the trenches with you. They provide sound strategic advice and are always one step ahead of their opponents.” Nitoslawski has been in the limelight representing Bombardier Recreational Products against Arctic Cat; he met with considerable success at the appellate level, winning an award of C$2 million in trial costs for his client. Fasken can deploy impressive firepower for suits as substantial as this and experienced lead counsel David Turgeon put in serious work alongside Nitoslawski for Bombardier. The litigation team is completed by Marie Lafleur, the set’s leading light on proceedings under the Patented Medicines (Notice of Compliance) Regulations and on biologic drugs. On the prosecution side, the Fasken offering is just as impressive in terms of bench strength. Drawing praise for their work in the electrical arts, Alexandre Abecassis and Johann Gest are performing at the highest level right now. “Alexandre thoroughly understands the tech but importantly gives excellent strategic advice. He is very dedicated and never fails to deliver even when you need something turned around on the shortest notice.” Gest, who debuts in the guide this year “upholds the highest standards of draftsmanship. As one respondent espouses: “He is great at liaising with inventors and is strategically astute in the way he deals with examiners in different jurisdictions.” Serge Lapointe and Mark D Penner hold the keys to unlocking IP value for biotech, pharmaceutical and chemical companies. As another interviewee explains: “Serge always shows great dedication and makes thorough evaluations which clients find reassuring. When it comes to creating new applications, he is able to work to short timeframes and always provides balanced advice in evaluating the costs and benefits of different courses of action.” Penner is appreciated for his flexibility and apporachability. Mechanical and electromechanical patents are the preserve of Armand Benitah, who chairs the Toronto IP group. A lawyer and patent agent, he undertakes a mix of commercial IP and portfolio management work for clients such as Nova Ventures. While many contribute to Fasken’s vibrant technology transactions practice, the lodestar is Jean-Nicolas Delage, one of Canada’s top experts on SEPs.

Gilbert’s LLP 

Gilbert’s team of lawyers and patent agents wear their passion for innovation on their sleeves. They also adopt a collaborative approach and team up so that clients – whatever their industry or invention – have the best expertise available to them. Matthew Powell, Mark Eisen and Omar Nassif are the IAM Patent 1000’s picks for prosecution. Head of the patent and industrial design group, Powell is a master strategist; a patented inventor, his technical credentials, particularly in the IT sphere, are also on-point. In the mechanical and electrical arts, Eisen does a terrific job not just representing his clients but also developing and training other practitioners; inside and outside the firm he shares his knowledge generously. Adept at handling pharmaceutical and chemical cases, Nassif has a global outlook when it comes to patent protection and strategy. Needing no introduction among those who follow Canadian patent litigation, Tim Gilbert is one of the most creative IP advocates and advisers in the country.

Goodmans LLP

Goodmans is, quite simply, an elite pharmaceutical patent litigation and general IP disputes firm. Its trial lawyers, including Andrew Brodkin, Harry Radomski, Ben Hackett, Richard Naiberg and Dino Clarizio all put in resonant performances when the chips are down. Conducting textbook-worthy cross examinations is routine for Brodkin; fellow gold-tier ranked Radomski is the “godfather of drug litigation in Canada. He is creative and pushes the boundaries for his clients.” While “Hackett is probably the best young partner in the Canadian patent scene” and has been doing great things for Apotex, Naiberg and Clarizio have both put in strong showings in the Supreme Court as litigators, while staying sharp on prosecution too.

Gowling WLG 

Gowling WLG is the go-to firm for some of the biggest names in the pharmaceutical and technology industries. “It has a terrific team of dedicated practitioners who genuinely want to see their clients’ businesses thrive; customer service is exemplary too.” On the prosecution side, the firm gives itself an edge through its clever deployment of a technical toolkit, which is designed to maximise efficiency and minimise costs; crucially, quality is not sacrificed because the group’s leading practitioners can direct more of their processing power to questions of strategy as opposed to administration. Capitalising on this in the life sciences are Hélène D’Iorio, Brian Kingwell, Konrad Sechley, Daniel Polonenko and Susan Tandan. D’Iorio, who heads the IP group in Montréal, has abundant litigation experience which informs her approach to prosecution and counselling; Vancouver-based Kingwell is an inventor who applies his natural creativity to portfolio management tasks. As one client reports: “Konrad Sechley is extremely attentive and detail-oriented and develops creative and effective strategies. His reputation for excellence is well deserved and it instils confidence to see how many others rely on his skill, effectiveness and user-friendliness.” Another offers the following commendation: “Daniel Polonenko is a tremendous resource in terms of figuring out what we need to protect and helping us define patentable technology. He does the amazing work that he does because he loves it! Putting himself in his clients’ shoes, he is also very reasonable when it comes to his fees. Among the best Canadian patent attorneys, Susan Tandan is always reliable and helpful, and provides a quality service at a fair price. She doesn’t make mistakes – her work is superior and her attention to detail is very impressive.” Working with speed and efficiency while never settling for second-best in terms of strength of protection is a trick also mastered by the high-tech-focused crew, leading members of which are Neil Henderson, James Longwell, Grant Tisdall and Brian Lee. Henderson and Longwell have been making waves in Asia – the former developing strong contacts with Japanese businesses and the latter focusing on China; Tisdall, a former leader of the patent group – and now head of the technology team in Toronto – has excellent contacts in Russia; while Lee is a connoisseur of clean energy technologies. In action for Google, LG Electronics, Takeda, Bayer and many others, the litigation team is hitting its stride right now. Top names include Michael Crichton and Christopher Van Barr, who are described as “consummate professionals who are meticulous, well-prepared, strategic and tenacious”. Another award winner is Patrick Stewart Smith, the IP leader in Calgary and the firm’s life sciences practice engine. Anthony Creber has written litigation headlines over the course of an illustrious 35-year career, putting in many Supreme Court appearances along the way.

Lenczner Slaght Royce Smith Griffin LLP

Despite some recent losses, Lenczner Slaght Royce Smith Griffin remains a leading litigation boutique. Reputed for its winning ways with life sciences patent trials – and its success rates in relation to biologic drugs – the Lenczner team can be counted on to deliver. Sana Halwani, who moves into the silver tier this year, has proven her mettle in many complex pharmaceutical cases, including situations in which drug originators have faced off against each other. She has a busy technology practice too and has handled many cases relating to interactive television programme guides acting for TiVo. Sources describe her as “a superb up-and-coming litigator”.

Marks & Clerk Canada

When it comes to protecting patents and managing them worldwide, few do it better than Marks & Clerk, a firm with a rich history dating back to 1921, a deep bench of engineers and scientists, and a strong presence in North America, Europe and Asia. In Canada, 2018 was an important year for the firm and saw it merge with Sim & McBurney and Sim Ashton & McKay – a move that has broadened its service offering to litigation and commercial law and increased its domestic office count. Setting the tone of excellence are partners Ian Clark and Hetal Kushwaha. Lauded as being “highly responsive and someone you can just pick up the phone to”, Clark manages the prosecution practice and is the first port of call for life sciences matters. Kushwaha, who leads the way on mechanical, electrical and computer briefs, is “a genuine partner to her clients. She is attentive to all requests and provides excellent legal analysis. She also stays up to date on all developments in Canadian patent law and conveys news in a timely fashion.” Also at the partner level David Ruston and Jean-Charles Grégoire stand out for engineering and high-tech expertise respectively. Described as a “responsive, cost-effective, clear agent who cares about his clients, Grégoire can be relied on to provide the most accurate and contemporary advice” and makes his debut in the IAM Patent 1000 as a result.

McCarthy Tétrault LLP

Ranked in the gold tier for litigation, highly recommended for transactions and recommended for prosecution, McCarthy Tétrault is a top all-around performer in the patent space. “The team is exceptional from its most senior partners down to its most junior lawyers – everyone can be relied on to be proactive and provide well-considered, on-point legal advice.” The jewel in the outfit’s crown is the litigation practice, which is especially strong in the life sciences and energy fields. Steven Mason and David Tait were behind one of the firm’s recent precedent-setting actions in the pharmaceutical area, successfully representing Bristol-Myers Squibb in an expedited patent appeal concerning its top cancer drug, of which Apotex was seeking to launch a generic version. Of the pair, one source comments: “I consider them to be my most trusted advisers and my go-to IP litigation counsel – they know the law and the science and have the toughness necessary to litigate complex pharmaceutical cases.” Debuting in the IAM Patent 1000 this year are Steven Tanner and Timothy St John Ellam who are currently teaming up on an oil and gas matter on behalf of MEG Energy Corporation against Jason Swist and Crude Solutions. Tanner co-leads the McCarthy Tétrault oil and gas practice while also putting in a shift on the life sciences side and St John Ellam co-chairs the firm’s international arbitration group. Recommended for both prosecution and transactions, Alfred Macchione, Lisa Melanson and Vincent Kam-Sun Yip are versatile protectors and value creators. Macchione provides resolute leadership to the advisory, commercial and prosecution practice and is in his element when getting hands-on with game-changing inventions in the communications, financial services and software fields. Melanson relishes managing global portfolios and applies her keen strategic eye to the task; she also draws on her litigation experience to keep her clients out of hot water. She frequently links up with Yip to advise clients on patent and regulatory matters. Specialising in transactions and leading the IT and fintech groups, Christine Ing ably sees through confusingly complex deals thanks to her combination of technical nous, industry knowledge, IP smarts and data expertise.

Norton Rose Fulbright Canada LLP

Norton Rose Fulbright is a compelling option in Canada because of its A-to-Z patent capabilities, domestic coverage – it has offices in Québec, Montréal, Ottawa, Toronto, Calgary and Vancouver – and international network. The firm’s muscular litigation team has been going great guns of late, scoring wins aplenty for life sciences industry leaders. Playing a key role in this regard is Jordana Sanft, who recently secured a dismissal of a motion for summary judgment brought by Apotex, which sought to invalidate a patent of her client Pfizer. In the course of representing Genentech and Hoffmann-La Roche against Amgen Canada and Celltrion Healthcare in the first four actions under the post-CETA Patented Medicines (Notice of Compliance) Regulations, she also successfully defended the first motion to dismiss under Section 6.08 making important new case law. “Jordana treats the attorney-client relationship as a true partnership, and she helps clients find the best possible solutions. She is great at negotiating paths forward and her reasonableness with opposing counsel is definitely an asset in this respect.” Allyson Whyte Nowak is also an expert on the Patented Medicines (Notice of Compliance) Regulations, while Judith Robinson and Mark Davis are accomplished and precedent-setting litigators. Robinson is head of the national IP group and is “extremely well prepared and knows her files like the back of her hand. She is a terrific lawyer all around and widely respected for her big-picture thinking, diligence and integrity.” “Mark Davis is smart, organised, proactive and an excellent communicator. The advice he gives is always good for your business”. An up-and-coming litigator in the group is Amy Grenon, “she is smart about which points to fight on and what to give up” and has a confidence that is usually only found in those more senior. As a patent filer, Norton Rose Fulbright is also prolific although it is not a filing mill; the firm’s practitioners inject smart strategies and commercial thinking into everything they do. Jung-Kay Chiu, the national patent and IP transactions leader, does this in the biotech and medical device spaces and Sébastien Clark for mechanical systems innovators. The litigation and prosecution teams work closely together so that clients get the benefit of joined-up thinking across the contentious/non-contentious divide.

Osler, Hoskin & Harcourt LLP 

“In addition to being a top filer, Osler is responsive and efficient and enjoys a high rate of success in the courtroom.” In pharmaceutical patent litigation, the set acts for a who’s who list of leading generic drug companies, including Mylan and Teva; out of the latter, it hired Kane Denike as a patent litigation consultant in 2018, thereby enhancing its already outstanding industry knowledge. In other noteworthy news, Osler has been forging an excellent reputation for expertise in biologic drugs and biosimilar litigation; in particular J Bradley White “consistently achieves fantastic results in high-pressure situations, and Vincent M de Grandpré, a “sharp lawyer who quickly hones in on the key issues of a case”. Further showcasing the momentum within the practice, Nathaniel Lipkus has been promoted to the partnership. Widely regarded as a rising star, Lipkus has a lot to offer pharmaceutical and biotech companies with his litigation and regulatory expertise. Both White and Lipkus also undertake prosecution tasks with finesse, “handling matters promptly and efficiently, ensuring that docketing processes run smoothly and providing excellent responses to office actions”. Underscoring the end-to-end nature of the firm’s support, the transactions practice is worthy of particular recognition. W Lee Webster anchors this side of the business; he is a deft negotiator of lucrative deals in the energy, financial services and life sciences sectors.

Perry + Currier Inc

Perry + Currier is a technologically savvy, agile, innovative and business-oriented outfit that is always looking for new and creative ways to improve efficiency in the workplace and enhance the experience of its clients; using a paperless system and sophisticated workflow management tools are prime examples of this. Co-authors of a major work on Canadian patent law – the third edition of which will be published soon – Stephen Perry and Andrew Currier possess all-inclusive knowledge and experience. Perry shines brightest as a strategist in the high-tech and medical areas. Currier adds to his clients’ bottom lines with his ability to identify patentable technologies and monetise the assets he protects; he is the brains behind the ensemble’s efficiency drive.

Ridout & Maybee LLP

Ridout & Maybee is one of Canada’s IP pioneers and has been at the forefront of the country’s innovation scene for over 120 years. The firm understands how patent law, practice and policy has evolved and where it is heading, and dispenses future-proof advice enhanced by a thorough understanding of the competitive landscapes in which its clients operate. “The group is outstanding at patent prosecution and Ken Bousfield is one of the best there – and in the market generally.” He is a vastly experienced mechanical engineer.

ROBIC LLP

ROBIC has a rich tradition but is definitely not stuck in the past: “It’s an excellent firm which is always very forward thinking. Its lawyers demonstrate high-level expertise and their service is a quality one.” The outfit has an impressive prosecution bench with five individuals recommended in the IAM Patent 1000. Collectively the team covers a lot of technological areas, but materials science and engineering and high-tech are their main happy hunting grounds. Nathalie Jodoin and Dominique Pomerleau both have a background in metallurgy and excel at protecting industrial process innovations. David Enciso, who debuts in the guide this year, studied mechanical engineering at university and has a vibrant practice in the aeronautical and construction fields. Trained in physics and electrical engineering respectively, Isabelle Girard and Louis-Pierre Gravelle do their best work in the high-tech area. ROBIC also acquits itself with distinction in the IP litigation and transactions practice areas thanks to the sterling work of advocate Bob Sotiriadis and deal broker François Painchaud, a former president of the Licensing Executives Society United States and Canada.

Rowand LLP

Rowand garners some of the most emphatic feedback from clients: “It is the only firm that hits its timings consistently. It has outstanding technical skills and produces high-quality work for a reasonable price.” The prosecution specialist has multiple computer scientists in its ranks and maintains a dominant software practice; lately, it has focused on developing its talents in fintech and has been representing one of the world’s top filers of blockchain technology patents; the autonomous vehicle sector is another hot area in which it is taking the lead. Partners-in-charge Fraser Rowand and Jeff Tracey are associated with excellence in prosecution. According to one source: “Fraser is one of the best patent attorneys you could select. He has prosecuted some of the most valuable patents in our portfolio and never fails to deliver. He is worthy of the highest recommendation.” While another enthuses: “Jeff produces very concise and precise applications – he can wrap things up very neatly while hitting the nail on the head. He has the technical and legal skills to handle the most difficult patent questions, and a level of commercial acumen that helps him exceed the expectations of business executives. He is extremely diligent and his communication line is always open.”

Smart & Biggar 

Smart & Biggar is Canada’s number one patent filer; it files thousands of patents each year, approximately 15% of the total number of patents filed in Canada. Such impressive statistics would not be possible without the firm’s continuous investment in some of the most sophisticated back-office systems and IP management tools around – or without the unwavering commitment to quality displayed by every member of staff. Three individuals – out of a total of 13 in the country – make the top tier for prosecution in the IAM Patent 1000 this year; these are Daphne Lainson, Matthew Zischka and John Knox. Lainson plies her trade in the pharmaceutical and biotech industries and is cited as an “experienced and pragmatic partner”. “Daphne is brilliant at the intersection of IP and regulatory law and has fantastic legal and business acumen, which she uses to provide thorough, best-in-class legal advice. She also has a tremendous ability to simplify and explain complex issues to non-lawyers, which helps hugely with decision making.” Zischka and Knox are electrical engineers who apply their talents to a wide range of high-tech invention matters, with consistently satisfying results. Zischka is much more than just a prosecution agent – he embeds with clients on a strategic and business level and plays a pivotal role in helping them establish IP best practices and forge IP-driven deals. Knox plays a key role in bringing in the next generation of patent professionals at the firm but is really a mentor to all. From a client perspective: “John’s thorough, practical and sensible counselling is a key enabler. He doesn’t make anything more complex than it needs to be.” Also recommended is Ronald Faggetter who, by virtue of his expertise in US and international patent prosecution, is a reliable guide for Canadian companies with global interests. Smart & Biggar combines its world-class prosecution practice with a hard-hitting litigation offering that has led to major wins and many Supreme Court appearances. Gold-tier placements for Gunars Gaikis and François Guay this year are well deserved; Gaikis reigns supreme in pharmaceutical litigation, as does Guay in the high-tech and computer fields. Steven Garland, who became managing partner at the start of 2018, also keeps a cool head when only a win will do. He litigates diverse cases across the technical spectrum as far as patents are concerned, making him one of the most versatile trial lawyers in the Canadian IP community. “He is incredibly strategic in his approach to litigation and a true leader for the firm.” Smart & Biggar has several representatives on the transactions table as well, proving its all-around IP credentials. Theodore Sum, Sanjay Goorachurn and Alistair Simpson have earned recognition in every edition of the IAM Patent 1000 and are stalwarts of the commercial IP scene. They understand what keeps clients awake at night and what can make or break a deal and have the skills to see negotiations through to a successful close.

Torys LLP

“Torys provides a broad assortment of services encompassing IP litigation, strategic patent procurement, competition law and pricing and reimbursement, which enables it to perform at a very high level in the life sciences. Because it works with so many major pharmaceutical companies, it is very good at issue spotting.” Andrew Bernstein and Andrew Shaughnessy, who co-lead the IP litigation practice, “work incredibly well together” for prestigious clients, such as Sanofi Aventis and Amgen Canada. They get excellent feedback individually too: “Andrew Bernstein is an outstanding lawyer and litigator who is exceptional at thinking on his feet.” While Shaughnessy is “creative, energetic, responsive and receptive to feedback and suggestions. He does an excellent job at anticipating what his clients need from a business perspective.” With her combined expertise on IP protection and regulatory clearance, IP chair Eileen McMahon stands out from the crowd. The prosecution, strategy and licensing doyenne is “incredibly dedicated and business savvy. She enables you to make the best decisions in complex biopharmaceutical matters – before taking any action you would be wise to brainstorm it with her!”

Other recommended experts

Alaka Chatterjee of Vanguard IP LLP consistently demonstrates “sound judgement regarding the management of chemical and pharmaceutical portfolios and is extremely client-oriented. Her services are reasonably priced too.” Chumak & Co practitioners Yuri Chumak and Peter Elyjiw garner glittering feedback for their patent prosecution work: “Highly intelligent, hardworking and conscientious, Yuri communicates effectively and is well-respected for his attention to detail and professionalism. A young leader of the Canadian patent bar, he has an unrivalled command of the law that makes him a go-to professional whenever a complex issue arises. He leaves nothing to improvisation but really studies his cases, taking into consideration all possible angles when addressing matters.” “Peter distinguishes himself in the area of software patents with his technical know-how and expertise on the question of patent eligibility. He is strategic in his thinking and pragmatic in his execution; his advice is laser focused on his clients’ business needs and how they build commercial value using their intellectual property.” Biotech whizz France Côté “has a solid reputation and has done a great job in growing and developing a successful patent prosecution practice” out of Benoît & Côté. She helps to train and mentor the biotech patent agent community in Canada. Deeth Williams Wall founders Douglas Deeth and Gervas Wall each draw on three decades of experience in the practice of intellectual property. Deeth is a litigation and licensing master, while Wall prosecutes and litigates with aplomb. Eduardo Fonseca of Moffat & Co Patent & Trademark Agents “has developed a strong prosecution practice and, being fluent in Portuguese and a native of Brazil, an impressive roster of Brazilian clients”. An experienced technology and media sage who prides himself on being as efficient and economical as possible is Brian Gray, who runs his own eponymously titled firm. He is often sought out for a second opinion on strategy and for his expertise at resolving disputes. Heading up the technology group at Farris, Vaughan, Wills & Murphy, James Hatton QC is an award-winning biotech lawyer who does much outside of his practice to support the life sciences community. The impressive Alain Leclerc and Serge Shahinian are in a healthy groove following the Lavery Lawyers and Goudreau Gage Dubuc merger. Leclerc is “highly experienced in patent prosecution and litigation” and Shahinian is an “excellent agent in the life sciences who stays true to his clients”. In the pharmaceutical space, Kavita Ramamoorthy of Fineberg Ramamoorthy “has had some key successes working for generic companies. She is a terrific practitioner who is going from strength to strength.”

Individuals: litigation

  • David W Aitken - Aitken Klee LLP
  • Andrew Brodkin - Goodmans LLP
  • Anthony G Creber - Gowling WLG
  • Ronald E Dimock - DLA Piper (Canada) LLP
  • Angela M Furlanetto - DLA Piper (Canada) LLP
  • Gunars Gaikis - Smart & Biggar 
  • François Guay - Smart & Biggar 
  • Harry B Radomski - Goodmans LLP
  • Judith M Robinson - Norton Rose Fulbright Canada LLP
  • Andrew M Shaughnessy - Torys LLP
  • Jonathan Stainsby - Aitken Klee LLP
  • Bruce Stratton - DLA Piper (Canada) LLP
  • Peter R Wilcox - Belmore Neidrauer LLP
  • Andrew Bernstein - Torys LLP
  • Donald M Cameron - Bereskin & Parr LLP
  • Dino Clarizio - Goodmans LLP
  • Michael D Crinson - Aitken Klee LLP
  • Mark Davis - Norton Rose Fulbright Canada LLP
  • Vincent M de Grandpré - Osler, Hoskin & Harcourt LLP 
  • Douglas N Deeth - Deeth Williams Wall LLP
  • Julie Desrosiers - Fasken 
  • Steven Garland - Smart & Biggar 
  • Sana Halwani - Lenczner Slaght Royce Smith Griffin LLP
  • Trent Horne - Aird & Berlis LLP | Aird & McBurney LP
  • Dominique T Hussey - Bennett Jones LLP
  • Marcus Klee - Aitken Klee LLP
  • Alan Macek - DLA Piper (Canada) 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 
  • Anthony M Prenol - Blake Cassels & Graydon LLP
  • Jordana Sanft - Norton Rose Fulbright Canada LLP
  • Andrew Skodyn - Blake Cassels & Graydon LLP
  • David Tait - McCarthy Tétrault LLP
  • Christopher C Van Barr - Gowling WLG
  • J Bradley White - Osler, Hoskin & Harcourt LLP 
  • Allyson Whyte Nowak - Norton Rose Fulbright Canada LLP
  • Melanie Baird - Blake Cassels & Graydon LLP
  • Adam Bobker - Bereskin & Parr LLP
  • Michael Crichton - Gowling WLG
  • Brian R Daley - Norton Rose Fulbright Canada LLP
  • Timothy St John Ellam - McCarthy Tétrault LLP
  • Ryan Evans - DLA Piper (Canada) LLP
  • Tim Gilbert - Gilbert’s LLP 
  • Brian W Gray - Brian Gray Law
  • Amy Grenon - Norton Rose Fulbright Canada LLP
  • Ben Hackett - Goodmans LLP
  • Marie Lafleur - Fasken 
  • Kevin L LaRoche - Borden Ladner Gervais LLP
  • Nathaniel Lipkus - Osler, Hoskin & Harcourt LLP 
  • Barbara J Murchie - Bennett Jones LLP
  • Richard Naiberg - Goodmans LLP
  • Bryan Norrie - Aitken Klee LLP
  • Evan Nuttall - Borden Ladner Gervais LLP
  • Christine Pallotta - Borden Ladner Gervais LLP
  • Kavita Ramamoorthy - Fineberg Ramamoorthy
  • Chantal Saunders - Borden Ladner Gervais LLP
  • Patrick Stewart Smith - Gowling WLG
  • Bob Sotiriadis - ROBIC LLP
  • Steven Tanner - McCarthy Tétrault LLP
  • David Turgeon - Fasken 

Individuals: prosecution

  • Yuri Chumak - Chumak & Co LLP
  • Brandon Evenson - Borden Ladner Gervais LLP
  • John Knox - Smart & Biggar 
  • Daphne Lainson - Smart & Biggar 
  • Eileen M McMahon - Torys LLP
  • David Nauman - Borden Ladner Gervais LLP
  • Natalie Raffoul - Brion Raffoul 
  • Fraser Rowand - Rowand LLP
  • Konrad A Sechley - Gowling WLG
  • Andrew Sojonky - Borden Ladner Gervais LLP
  • Susan Tandan - Gowling WLG
  • Edward Yoo - Bennett Jones LLP
  • Matthew Zischka - Smart & Biggar 
  • Alexandre Abecassis - Fasken 
  • Louis Allard - Borden Ladner Gervais LLP
  • Lola Bartoszewicz - Aird & Berlis LLP | Aird & McBurney LP
  • Curtis Behmann - Borden Ladner Gervais LLP
  • Armand Benitah - Fasken 
  • Graeme Boocock - Borden Ladner Gervais LLP
  • Ken Bousfield - Ridout & Maybee
  • Irene T Bridger - Bennett Jones LLP
  • Art Brion - Brion Raffoul 
  • Roseann Caldwell - Bennett Jones LLP
  • Santosh Chari - Blake Cassels & Graydon LLP
  • Alaka Chatterjee - Vanguard IP LLP
  • Jung-Kay Chiu - Norton Rose Fulbright Canada LLP
  • Ian Clark - Marks & Clerk Canada
  • Sébastien Clark - Norton Rose Fulbright Canada LLP
  • France Côté - Benoît & Côté
  • Andrew Currier - Perry + Currier Inc 
  • Hélène D'Iorio - Gowling WLG
  • Geoffrey de Kleine - Borden Ladner Gervais LLP
  • Mark Eisen - Gilbert’s LLP
  • Peter Elyjiw - Chumak & Co LLP
  • David Enciso - ROBIC LLP
  • Ronald Faggetter - Smart & Biggar 
  • Patricia Folkins - Bereskin & Parr LLP
  • Eduardo Fonseca - Moffat & Co Patent & Trademark Agents
  • Johann Gest - Fasken 
  • Isabelle Girard - ROBIC LLP
  • Louis-Pierre Gravelle - ROBIC LLP
  • Micheline Gravelle - Bereskin & Parr LLP
  • Jean-Charles Grégoire - Marks & Clerk Canada
  • Neil Henderson - Gowling WLG
  • Nathalie Jodoin - ROBIC LLP
  • Brian Kingwell - Gowling WLG
  • Hetal Kushwaha - Marks & Clerk Canada
  • Serge Lapointe - Fasken 
  • Alain M Leclerc - Lavery Lawyers
  • Brian Lee - Gowling WLG
  • James E Longwell - Gowling WLG
  • Erica Lowthers - Aird & Berlis LLP | Aird & McBurney LP
  • Alfred A Macchione - McCarthy Tétrault LLP
  • Kathleen E Marsman - Borden Ladner Gervais LLP
  • Kimberly McManus - Aird & Berlis LLP | 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 
  • Mark D Penner - Fasken 
  • 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
  • Bhupinder Randhawa - Bereskin & Parr LLP
  • Jennifer Raoul - Borden Ladner Gervais LLP
  • David A Ruston - Marks & Clerk Canada
  • Serge Shahinian - Lavery Lawyers
  • Kitt Sinden - Aird & Berlis LLP | Aird & McBurney LP
  • Brett Slaney - Blake Cassels & Graydon LLP
  • Robert Storey - Bereskin & Parr LLP
  • Grant Tisdall - Gowling WLG
  • Jeff Tracey - Rowand LLP
  • Mark Vickers - Borden Ladner Gervais LLP
  • J Bradley White - Osler, Hoskin & Harcourt LLP 
  • Vincent Kam-Sun Yip - McCarthy Tétrault LLP

Individuals: transactions