Although sometimes overshadowed by the United States, Canada is nonetheless a large, vibrant jurisdiction with a varied and interesting patent landscape. The leaders of the field take various structures, ranging from small, regional boutiques to full-service outfits with multiple bases. Domestic firms still dominate, but several multinational entities are now making significant inroads. Most groups offer integrated contentious and non-contentious capabilities, with litigation-focused attorneys working alongside patent prosecutors; the latter must undertake a series of tough exams to attain the designation of patent agent (they are referred to as such throughout this section). An increasing number of agents are dual qualified as lawyers and are crafting wide practices, undertaking licensing and strategy alongside filing assignments. In terms of industry sectors, pharmaceuticals and biotechnology remain the busiest, especially in the commercial hub of Toronto. Ottawa hosts many prosecution outfits, due to its proximity to the national IP office, while firms in the western cities of Calgary and Edmonton tend to offer expertise in industries such as energy and heavy machinery, thanks to the wealth of natural resources in the region. A talking point among practitioners across the nation is the recent Amazon.com, Inc ‘1- Click’ battle; the case has helped to define the scope of business method patents and of patentable subject matter as a whole.
Bennett Jones has a sterling reputation across the board for expertly serving a diverse and flourishing client base. It enjoys a growing national profile and is realising ambitions of global expansion through recently established outposts in the Middle East and a representative office in China. The individuals at its western Canada branches win much applause for their oil and gas work. Heading the IP division, Calgary-based Martin PJ Kratz has “a fantastic name” on licensing matters across numerous technologies, including gas, pump, solar and renewable energy. Stephen D Burns is acclaimed for his international portfolio and forte in transactions and agreements. His strength in information technology and high-technology makes him a go-to figure for major energy and drilling deals. Michael R Whitt ’s dual qualification as a patent agent and an attorney at law enhances his varied practice. He is praised for his commercialisation and is “always au fait with the latest developments and challenges in the profession”. The prosecution team is particularly well regarded for its skill in energy and natural resources. As a “foremost authority on oil sands technology”, Irene T Bridger is highly sought after in this dynamic industry. Esteemed Roseann Caldwell is also well known for her deep involvement in the profession, while her concentration on mechanics is a boon to her energy, oil and gas clientele. The firm’s contentious arm is primarily based in Toronto, where pharmaceuticals represents a key part of its workload. Barbara J Murchie is a “wonderful litigator” whose wide-ranging experience includes representation of generics giant Teva. She operates alongside “extremely bright” Dominique T Hussey , who is quickly developing a name as a future star of the arena.
IP specialist Bereskin & Parr has long had an outstanding name in prosecution and now looks set to boost its contentious profile thanks to its 2012 merger with boutique Cameron MacKendrick. This “brilliant pairing” brought two additional litigation experts into the fold: Donald Cameron, “a tough opponent with truly significant trial experience”, and Scott MacKendrick, who boasts an impressive understanding of disputes in the pharmaceuticals, mechanical and chemical spheres. The pair join respected figure Robert MacFarlane, a seasoned litigator whose renown spans the nation. On the noncontentious side, “dedicated and intelligent” Philip Mendes da Costa is rated for his academic approach to licensing, strategic and prosecution assignments. A chemical engineer by training, he has a focus on the protection and management of patent portfolios in the petroleum, gas and consumer product spheres. The incisive and smart Micheline Gravelle’s leadership of the biotechnology and pharmaceutical team attracts a large client roster, including universities, research institutes and hospitals.
This business law firm takes an integrated approach to licensing work, drawing expertise from several other relevant departments. Main attraction Sheldon Burshtein is “a phenomenal practitioner with an incredible depth of experience”. His focus is on IP commercialisation, in which his patent licensing nous is “second to none”. Trained engineer Christine Ing wins plaudits for hammering out complex pharmaceuticals and technology agreements in her combined IT and IP practice. The licensing division works closely with the prosecution arm, in which Santosh Chari shines for his pharmaceuticals and biotechnology output. He can compose carefully structured and successful applications, thanks to his innate understanding of the underlying technology and science. He offers “clear guidance and timely advice, and has a nuanced understanding of jurisdictions worldwide”. The outfit’s litigation practice is also commended. Anthony Prenol is highly esteemed for his deft handling of disputes in the marine technology and chemical sectors, among others.
Several new hires have bolstered the profile, capabilities and bench depth of Borden Ladner Gervais. Among the most high-profile recent arrivals is Jamie Mills, a popular figure renowned for his litigation aptitude. He focuses on pharmaceuticals for a clientele comprising major innovative manufacturers and frequently handles issues related to the Patented Medicines (Notice of Compliance) Regulations. The firm’s efficient agency arm is responsible for a large volume of annual filings and offers finely tuned technical advice. Kathleen Marsman is noted for providing “exceptional biotechnology drafting and prosecution knowhow” to a diverse range of companies, from start-ups to established organisations.
Toronto-based IP boutique Deeth Williams Wall is acclaimed for fostering a personalised, specialist approach across the IP spectrum. Douglas Deeth is “a distinguished litigator and superb cross-examiner” who has cultivated an illustrious and loyal client base. The diverse portfolio of “very smart” Gervas Wall garners much respect; supremely qualified in the noncontentious arena, his reputation for constructing “remarkably insightful agreements and solutions” attracts top-level prosecution and licensing mandates.
Eight-partner IP specialist Dimock Stratton impresses for both its legal and agency services, but it is perhaps most distinguished by its dazzling performance in a string of highprofile litigations. Longstanding figurehead Ronald Dimock “consistently draws an outstanding clientele”; he has a track record that few can match, encompassing chemicals, electronics, plant technology and pharmaceuticals disputes. He is joined by Angela Furlanetto and Bruce Stratton, both “fine litigators with exceptionally active practices”. Furlanetto places an emphasis on life sciences, while Stratton focuses on computer-related technology matters. The firms non-contentious capacity is also well regarded, with Mark Eisen a “go-to name” for his skilful drafting and prosecution. He is noted for securing watertight rights in the electrical and electronics sectors, and for his expertise in emerging area of business method patents.
With business and litigation at its core, this international firm is well equipped to handle both contentious and non-contentious issues. A large team goes “above and beyond expectations to secure the best course of action for each organisation it collaborates with”. Astute licensing specialist Jean-Nicolas Delage has valuable experience of patent monetisation and patent pools, and is highlighted for his ability to grasp complex issues and present them in an accessible and articulate manner. On the contentious front, Marie Lafleur has enjoyed great success in the pharmaceuticals space and has significant involvement in infringement and validity proceedings. Prosecution is undertaken by a set of enormously knowledgeable agents, including high-technology expert Alexandre Abecassis , who wins plaudits for his strong client relation skills and keen understanding of the patent landscape. While life sciences is a focus for Mark Penner, his deep knowledge base enables him to handle matters across a range of disciplines with aplomb. As well as traditional prosecution, he advises on monetising portfolios.
Commercial outfit Goodmans has long played a “starring role in the nation’s major litigation”. Its representation of generic company Apotex, Canada’s largest drug manufacturer, ensures a steady flow of cases and frequent courtroom appearances. The “wonderful” Harry Radomski leads the charge. A stalwart of contentious issues, he has “forged a name as a formidable opponent”. He is joined by Andrew Brodkin, an “excellent arguer who makes an incredible impression during proceedings”. The electrical engineering background of Richard Naiberg adds breadth to the team; he is valued for his intellectual approach to complex assignments. Dino Clarizio completes the set. Commended for his versatile practice which encompasses prosecution and disputes, he has “exceptional strength” in his focus areas of chemicals, pharmaceuticals and biotechnology.
Gowlings’s roots lie firmly in intellectual property and the area continues to be a cornerstone of the firm. With eight offices nationwide and a host of excellent professionals, it is a towering force which dominates in both prosecution and litigation. Leading figure Anthony Creber has a sparkling track record in pharmaceuticals cases and is renowned for obtaining first-rate decisions. The team’s longstanding strength in life sciences was further boosted by the arrival of specialist Arthur Renaud in 2010. His litigation efforts are reaping great rewards for the group, which is also home to “fantastic resource” Jane Clark and “extremely well-respected” Patrick Smith; both earn acclaim for their valuable contributions to some of the most high-profile cases. Up-and-comer Christopher Van Barr is “attracting great notice for his excellent performance on a number of top-level files”; he has significant experience of both pharmaceuticals and software-related mandates. Prosecution plays a central role in cementing the firm’s leading reputation: “outstanding through and through”, the team has the capacity to handle applications in a multitude of technologies. Judy Erratt is a widely acknowledged authority on biotechnology, while Omar Nassif has “a brilliant life sciences mind” and is regularly called upon to provide technical support on disputes. The “exceptionally dedicated” Konrad Sechley acts for a variety of organisations, but is especially lauded for his work on behalf of pharmaceuticals developers. In licensing, Vancouver-based Robert Fashler is commended for his insightful construction of arrangements and peerless advice.
Clients are delighted by Heenan Blaikie’s “meticulous, helpful, communicative and responsive” practitioners, who “get to grips with the issues at stake incredibly fast”. Jonathan Stainsby exercises “consummate direction” on the litigation front. He has earned great respect for his development of the group and his successful representation of major companies, including generic giant Teva Pharmaceutical Industries Ltd. He is supported by a set of talented contentious experts, including “growing force” Mark Davis, whose experience includes acting on behalf of agriculture company Cargill, Inc. Rated for his intelligent and strategically minded approach, William Mayo is “wonderful to collaborate with”, while Andrew Skodyn provides “extremely high-quality output and fosters great working relationships”. The contentious arm liaises seamlessly with a team of bright and perceptive prosecution professionals, who also offer opinion and strategic support services. Biochemist Adrian Kaplan is lauded for his “efficient assistance and deep understanding of all technical and business aspects”, he has responsibility for large portfolios involving chemistry, life sciences and mechanical patents.
With five offices nationwide, plus a UK branch, McCarthy Tétrault is one of the biggest Canadian outfits. Its broad spread of expertise is illustrated by its recognition in the litigation, licensing and prosecution arenas. “Hugely successful” Steven Mason and Andrew Reddon make a formidable team on the contentious front and enjoy an increasing influx of mandates. Much of the pair’s workload involves pharmaceuticals and life sciences, where they attract weighty instructions from innovators including Merck & Co, Inc and Abbott Laboratories. The group’s commercial position is acknowledged as “right at the head of the market”, with Barry Sookman among “the absolute elite of licensing experts”. He maintains a thriving practice encompassing IP and IT transactions for an international clientele. Alfred Macchione is famed for his prosecution nous, particularly on hightechnology matters. His considerable experience of securing protection for innovations in a range of computer-related technologies, including software and networks, makes him a leading figure in the field.
Global giant Norton Rose continues to consolidate its presence in Canada. Its 2011 merger with large domestic firm Ogilvy Renault was followed more recently by the incorporation of Macleod Dixon, a group noted for its forte in the oil and gas sectors. Its five Canadian bases attract lavish praise, not least on the contentious front. Top-rated Patrick Kierans is “an excellent competitor with a mass of courtroom experience to his name”. As head of pharmaceuticals and life sciences, he is credited with developing a redoubtable team. Key member Judith Robinson consistently impresses on disputes, recently acting on behalf of pharmaceuticals and aviation companies. She is “a fine litigator and a real pleasure to cooperate with”. Brian Daley is lauded for his valuable contributions to highprofile proceedings, while tenacious Jason Markwell is rapidly climbing the ranks of life sciences litigators. Prosecution is another successful area, with the firm’s large set of agents impressing for the breadth of its technical expertise. Life sciences specialist Christian Cawthorn has a diverse practice and has long enjoyed the status of a market leader. Widely recognised in the mechanical engineering field, Sebastien Clark is “a brilliant agent with an enviable portfolio”, while Patrice Préville has “outstanding knowledge” in his focus area of chemistry and handles prosecution across the many subdivisions of the discipline.
This business law firm is an esteemed allrounder of the Canadian patent scene. Its standing in pharmaceuticals litigation has seen spectacular growth and it attracts some of the biggest names in generic drug manufacturing. David W Aitken is “extremely well regarded for conducting some of the nation’s most significant cases”; his clientele includes major generic Teva Pharmaceutical Industries Ltd. Also recommended are “very smart up-and-comer” Marcus Klee and J Bradley White , who is “rapidly gaining in stature and recognition thanks to a string of recent successes”. Both act on a variety of pharmaceuticals assignments, while White recently represented app developer Kik Interactive Inc in a technology-related dispute. The “approachable and dedicated” W Lee Webster has broad licensing experience, including sophisticated joint ventures and R&D contracts. He works across a number of industries, including electronics and medical devices. The group’s prosecution function is feted for its “spectacular commitment to providing support through every stage of the process and valuable assistance in expanding protection internationally”. Jonathan Cutler is highlighted for his “fantastic service levels and intrinsic understanding of business needs”, enhanced by his previous role as an inhouse director of intellectual property.
Relatively new presence Perry & Currier is fast cementing its name as a top-quality prosecution provider, with satisfied clients rating its “progressive, efficient, resourceful and informative” staff and thorough, considered service. The successful advancement of the outfit by eminent name partners Stephen Perry and Andrew Currier bears testament to their “excellent business acumen, in addition to their established prosecution and strategic nous”. The firm’s forte in communications and electronics is bolstered by the partners’ expertise in electrical engineering, with leading brands Research In Motion Limited and Christie Digital Systems, Inc comprising part of its prestigious client base. It also has experience in representing developers of medical imaging.
IP boutique Ridout & Maybee is famed in its Ontario locality and beyond for longstanding prosecution excellence. The compact team is based across three offices in the province and offers a complete set of services in disciplines including mechanics, high-technology, biotechnology and clean-tech. Many of its practitioners have previously worked in industry, equipping them well to understand clients’ needs and business demands. The recent arrival of P Bradley Limpert from Cameron MacKendrick is a real coup which looks sure to boost the outfit’s licensing profile. His dual qualification and experience as both attorney and patent agent afford him great perspicacity on a wide range of matters, including commercialisation and strategic planning.
Quebec-based ROBIC focuses exclusively on IP law and prosecution, and wins acclaim for its performance across the gamut of services. Litigation doyens François Grenier and Bob Sotiriadis have a nationwide profile; both maintain global practices and represent innovators across an assortment of technologies. Their contentious efforts are supported by a prolific prosecution arm. The firm’s talented set of agents provides finely honed drafting in virtually all fields – including semiconductors, software, optics and aerospace engineering – and is especially noted for its biotechnology and chemicals output. Electronics, telecommunications and IT expert Louis-Pierre Gravelle is highlighted for his efficient filing and insightful strategic advice. Licensing is another area of specialism, where solutions-oriented François Painchaud stands out for his deft drafting and negotiation skills.
“One of the foremost Toronto boutiques”, this firm is best known for its prosecution output, provided through agency arm Sim & McBurney. While relatively small, the streamlined team submits an impressive number of filings to the Canadian and US patent offices. Its “consistent, adroit and responsive” agents possess technical excellence in highly specialised sectors of chemistry, electronics and mechanics, and cooperate with IP law outfit Sim Lowman Ashton & McKay in a successful and productive model. Toni Polson Ashton is a key contact.
Featuring a battalion of dynamic, IP-dedicated practitioners, Smart & Biggar/Fetherstonhaugh has sufficient focus and bench depth to provide top-drawer counsel across the board. Legal division Smart & Biggar fields several leading litigators, including Gunars Gaikis. A licensed pharmacist, he has chalked up many convincing wins in pharmaceuticals battles. He builds “fantastic working relationships” with major innovators including AstraZeneca plc and Sanofi SA. Steven Garland also garners much acclaim, most recently for his representation of Amazon.com: its famed “1- click” victory has been instrumental in defining the scope of business method patentability. Pre-eminent François Guay’s “great courtroom performance” has seen Bauer Hockey Corp and Nike International Ltd prevail in a case concerning a hockey skate patent. Pharmaceuticals expert Sheldon Hamilton possesses “a straightforward yet highly effective litigation style”. IP commercialisation also plays a central role. Firm chair and key player John Bochnovic cultivates a broad practice encompassing licensing issues in electronics and pharmaceuticals. “Outstanding strategist” Sanjay Goorachurn is appreciated for his astute advice across a multitude of sectors; while Alistair Simpson is especially noted for his skilful drafting of agreements in the high-technology, computing and mechanical spheres. Theodore Sum’s commercialisation nous is identified as “among the best of the best” nationally. He structures deals for a diverse range of entities, including inventors in the clean-tech, energy, defence and robotics sectors. The attorneys at law work closely with their peers at linked agency Fetherstonhaugh, which commands a significant market share of filings and hosts many talented prosecutors. Among them is Brian Kingwell, who is noted for his meticulous drafting in the biology and chemistry arenas. Electronics and computer science authority John Knox is singled out as a forerunner in his discipline, while Christopher Robinson’s first-rate life sciences prosecution skills win much praise. The “extremely strong and well regarded” Matthew Zischka’s training in electrical engineering is put to great effect in an ever-expanding computer and telecommunications-focused portfolio.
The international clout of business law firm Torys attracts mandates from around the globe. It is a particularly fearsome contender on the contentious front, taking on disputes for major innovator Pfizer, Inc and global giant Procter & Gamble. At the core of the team is “tough, tenacious and compelling litigator” Andrew Shaughnessy, who maintains longstanding relationships with his wide-reaching clientele. Pharmaceuticals and biotechnology specialist Peter Wilcox is commended for his leadership and success in top cases, including a substantial recent victory for GlaxoSmithKline plc. Intelligent and determined Andrew Bernstein also has several remarkable results under his belt and is tipped as a future star. Licensing is another area of excellence and is enhanced by the group’s general commercial emphasis. Daniel Logan specialises in technology-related matters, with recent assignments involving large infrastructure and electronic payment systems. He produces “exceptional results in fast-paced, pressurised situations” for both public and private organisations. “Resourceful, efficient and precise” life sciences expert Cheryl Reicin employs her financial acumen to devise effective, high-value deals in biotechnology and medical devices. General IP specialist Conor McCourt operates at the pinnacle of the prosecution and licensing sector. Chemicals, biochemicals and pharmaceuticals form the foundations of his “exemplary” portfolio. “Personable and insightful” Eileen McMahon is hailed for her varied practice, which has a strong strategic emphasis. Her deep understanding of lifecycle management, asset protection and commercialisation earns her kudos on the market.
Litigation Belmore Neidrauer founder Neil Belmore is a well-known player who continues to develop his reputation as an authority on pharmaceuticals disputes. As founding partner of boutique Gilbert’s LLP, Tim Gilbert wins recognition for cultivating a modern and innovative practice. A much-admired figure, he is lead counsel on a number of key matters in his specialist area of pharmaceuticals. Vancouver-based James Hatton heads the technology group at Farris Vaughan Wills & Murphy. His international practice has an emphasis on IP licensing, including biotechnology and healthcare patents. Business law outfit Gardiner Roberts has a valuable asset in the form of life sciences expert Carol Hitchman. “A powerful advocate with a deep knowledge of all aspects of patent law”, she persuasively asserts her clients’ positions. Craig McDougall and Thomas Reaume are strongly recommended at business law firm Fraser Milner Casgrain. McDougall’s diverse skillset includes negotiating complex agreements involving oil sands technology, pipelines and nanotechnology. Reaume is acclaimed for his technology focus and deftly deploys his past experience as in-house counsel to get to grips with clients’ corporate needs. David Reive at Miller Thomson LLP enjoys a growing profile and consistently gives highly effective courtroom performances. Biomedical devices and pharmaceuticals form the base of his practice. Licensing expert William Richardson is credited with raising the IP profile of multinational Baker & McKenzie’s Canadian branch since his arrival in 2010. A litigation veteran, he has a superb appreciation of the patent landscape and emerging trends, especially in biopharmaceutical cases.