| :Patent 2009

Leading experts

Author: Legal Media Group

One client from a prominent biotechnology firm describes Arthur B Renaud as "excellent, outstanding, thorough and insightful". Renaud's expertise as a patent litigator makes him a strong leader of Bennett Jones' IP and litigation group.

Robert H C MacFarlane practises at the IP law firm Bereskin & Parr. As well as being partner at the firm, MacFarlane, described by one competitor as a "very able patent litigator", leads its litigation practice group.

Toronto's H Roger Hart is of counsel with Bereskin & Parr. Hart has a practice specialising in patent and technology licensing and has over 35 years of experience.

Blake Cassels & Graydon attorney Sheldon Burshtein is based in Toronto, and is a highly-regarded lawyer in the patent and trademark fields.

Toronto's Donald M Cameron and Scott MacKendrick used their leading practices to found the specialist IP firm Cameron MacKendrick. Cameron specialises in IP litigation, with one competitor describing him as "one of Canada's top litigators ... an excellent patent litigator and top IP practitioner". One partner of a competing firm says Scott MacKendrick is a "talented patent attorney" who excels in all areas of IP law.

Leading patent attorney Douglas Deeth is a senior partner at IP boutique Deeth Williams Wall, renowned for its work with IT and computer law. Although Deeth practises in all IP law areas, he specialises in litigation and licensing issues.

Described by one client as an "outstanding patent litigator", Ronald E Dimock is a partner at the Toronto office of specialist patent firm Dimock Stratton. Dimock is widely experienced and focuses on biotechnology matters. One client from a global technology company chooses to instruct Dimock on "big litigation cases", and "anything involving biotech". Over three decades Dimock has accrued what one competitor describes as "a quality track record".

Bruce W Stratton has over 20 years experience and has been a partner of Dimock Stratton for 15 years. Stratton is a specialist in IP litigation in Federal courts and a top software patent attorney. One competitor says he has "substantive knowledge combined with litigation skills."

Goodmans has a raft of talented patent lawyers on its books. Andrew Brodkin leads the litigation group and represents the pharmaceutical industry in Ontario's Federal and Supreme courts. Dino Clarizio's highly-regarded work focuses on IP litigation and patent prosecution, while Richard Naiberg has an emphasis on patent and trademark work. Harry Radomski's impressive track record and wealth of experience has led him to become a member of the executive committee and head of the firm's IP litigation group.

Gowlings, one of Canada's largest firms, "has a lot of depth in its bench and they are high profile", says one global technology company client. Neil Belmore is singled out by one international client, describing the partner as "my number one choice in Canada". "I go to Belmore first" says the client, who adds that he has a "terrier instinct", a "sharp, smart and efficient" mind, and is an "interesting man".

Ottawa partner Anthony G Creber is a top Canadian patent litigator and a specialist in chemical and pharmaceutical matters. One client from a chemical company says of Creber: "I think Tony is known as the best patent litigator in Canada".

Toronto's Peter Milne is partner at Gowlings, where he has a large patent and trademark prosecution practice. A trained engineer, Milne is also a fellow of the IP Institute of Canada.

Partner R Scott Jolliffe is chair and executive officer of the firm, and is described by one partner from a competing firm as a "leading counsel in this field" and a "top IP practitioner". One client from a top global company describes him as a "very good and very calm senior counsel".

Patent and trademark specialist Keith Bird is a partner at Lang Michener's Toronto office. A partner since 2006, Bird is a member of the firm's IP property law group.

"You can share all the information with Donald that you want in a patent case," one international client says of Donald H MacOdrum, "and you will get the results back at the end of the day or week". MacOdrum's ability to work at a "very thorough and very deep" level, says the client, makes him a leading partner at Lang Michener. One competitor says the Toronto attorney is "experienced" and a "wise counsel and patent litigator" with an "enviable record of success". Meanwhile, Donald Plumley QC has over 30 years of legal experience, and is rated by the market as a leading counsel in the firm's IP group.

Francois M Grenier is a partner at Leger Robic Richard in Montréal. One competitor describes Grenier as "wise and talented ... a skilled advocate". Grenier is a specialist in all aspects of IP law, and his 25 years of experience makes him a leading patent counsel.

One client describes Alfred A Macchione, partner at the firm McCarthy Tétrault, as "extremely thorough and experienced". Macchione is a leading Toronto partner of the firm's technology, communications and IP group.

Daniel A Artola is a partner in Ogilvy Renault's Montréal office. Through his practice specialises in patent and IP litigation, Artola has maintained a top reputation in the patent law market, notably in representing drug companies in infringement and regulation cases.

Toronto's Brian Gray helps make Ogilvy Renault a "top tier firm ... one of the top five in Canada", according to one banking client. The client says simply that Gray is "brilliant", another international technology client says Gray "probably, as far as patent litigation is concerned, is the best claim writer in the business", and praises "his technical ability to write a patent as well as, or better than, any attorney I have experienced".

Patrick E Kierans has an "excellent and winning record" according to one competitor, helping establish him as a leading patent litigator in the country. Judith Robinson's experience as a patent lawyer and trademark agent allows her to manage highly-complex patent litigation cases. She chairs the firm's Montréal IP practice group.

David W Aitken is a leading IP lawyer and partner at Osler Hoskin & Harcourt, and boasts more than 20 years of experience. The Ottawa attorney is a member of the firm's IP group.

Smart & Biggar/Fetherstonhaugh has a strong bench of lawyers across Canada, and is rated highly by competitors. Ottawa partner John Bochnovic is a leading non-litigation IP attorney. He has over 25 years experience advising clients on patent portfolios and has risen to become the firm's chair. One competitor describes Bochnovic as a "quality, leading patent lawyer".

Gunars A Gaikis is a partner with a focus on IP rights litigation, and a recognised patent litigator at the bar who primarily represents pharmaceutical companies. Steven B Garland is established as an IP litigation partner in the firm's Ottawa office and appears in the Ontario Supreme Court, as well as Canada's Appeal Court and Supreme Court. IP litigator François Guay is based in Montréal. With 25 years of experience under his belt he is a leading partner at the firm and well-regarded attorney at the Quebec and Federal Canada Courts.

Michael D Manson is a partner in the Vancouver office who covers all IP matters and has well-recognised trademark experience. John R Morrissey, with over 30 years experience and a high-profile pharmaceutical infringement case on his record, is a leading partner in the firm's Toronto office.

"Any briefs you receive from him you only have to read once," says one client of partner A David Morrow. The acclaimed Ottawa attorney "is very clear" and "has a 360 degree approach", says the international client, adding: "I like his style". The client rates Morrow as one of the top four patent lawyers in Canada.

Leading patent litigator Andrew Shaughnessy is partner of Torys' litigation and dispute resolution practice. One client from a global pharmaceutical says that Shaughnessy "takes a lot of high profile cases for us and has gotten excellent results ... I don't think we've lost a patent case since 2004/2005". The Toronto attorney is known as a rising star and his expertise has allowed him to set up, lead and develop Torys' relatively new intellectual property practice.

| :Patent 2009

Canadian patent law

Author: Ronald E Dimock and Jennifer Ko, Dimock Stratton, Toronto

Introduction

Canadian patent law has undergone significant changes over the last two decades since our patent system switched from a first-to-invent system to a first-to-file system with virtual absolute novelty. However, from a broad perspective, the underlying principles of patent law have remained the same over the past century. What follows is a brief overview of the current state of Canadian patent law.

Patent rights

For making a full description of the invention and setting out claims that define the scope of the invention in an application to the Patent Office, the patentee obtains the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used for the term of the patent. The term of a Canadian patent, where the application was filed on or after October 1 1989, is 20 years from the filing date.

Patentability

Canadian patents are only granted for new, inventive and useful arts, processes, machines, manufactures or compositions of matter, or any new, inventive and useful improvements thereon.

Current Canadian case law provides that higher life forms, architectural plans, methods involving professional skill and methods of medical treatment are not patentable. The Canadian Patent Act also specifically provides that a mere scientific principle or abstract theorem is not patentable.

Although business methods per se are not considered by the Canadian Patent Office to be patentable, any method, regardless of whether its primary purpose is business-related, that accomplishes some change in the character or condition of material objects is considered to be patentable subject-matter. Computer software or programs are also not patentable per se, but a series of steps that can be characterised as a mode or method of operation by which a result or effect is produced by chemical action, by the operation or application of some element or power of nature or of one substance to another is considered to be patentable by the Patent Office.

To be new, the invention must not have been anticipated by a prior disclosure. There is a one year grace period, however, before the filing date during which the applicant may have disclosed the subject-matter of the invention to the public without jeopardising those rights. The two-step approach of the UK was recently adopted in Canada to determine whether an invention is anticipated. In the first step, it must be determined that there was prior disclosure in a single publication of subject-matter which, if performed, would necessarily result in infringement of the patent. If it is found that there was prior disclosure of the invention, it must be determined whether that prior disclosure was enabling, that is to say, whether a person skilled in the art would have been able to perform the invention.

To be an invention, the inventive step must not be obvious. A four-step approach is followed to determine whether an invention would have been obvious on the claim date: First, the notional person skilled in the art and that person's relevant common general knowledge must be identified. Second, the inventive concept of the claim in question must be determined or construed. Third, the differences, if any, that exist between the matters cited as forming part of the state of the art and the inventive concept of the claim or the claim as construed must be identified. Fourth, viewed without any knowledge of the alleged invention as claimed, it must be determined whether those differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of inventiveness.

Enforcement and jurisdiction

A patentee and all persons claiming under the patentee (for example, the patent owner, a licensee, a distributor or a representative) can enforce their rights in Canada by suing an infringer in either provincial superior courts or the Federal Court of Canada. The Court may grant both monetary and injunctive relief.

The Federal Court of Canada is the preferred venue for both infringement and impeachment actions as the Federal Court has more experience with patent cases and only the Federal Court has the jurisdiction to vary or expunge records of the Canadian Patent Office relating to validity and title. Canadian patent trials are heard and decided by judges alone, without juries.

Claim construction

Before considering whether a patent is valid or infringed, the Court must first construe the claims. It does so without reference to extrinsic evidence such as the file wrapper and the prior art, but with regard to the common general knowledge and the patent as a whole. Claims are construed purposively, not literally, and on an informed basis from the perspective of a person skilled in the art. Claims receive one and the same construction for all purposes.

Infringement

A patent is infringed if the allegedly infringing subject matter has all the essential elements of at least one claim of the patent. The onus is on the patentee to prove this.

Grounds of invalidity

In Canada, an issued patent is, in the absence of evidence to the contrary, presumed to be valid. Where the validity of the patent is at issue, either as a defence to an allegation of infringement or in an action to impeach the patent, the onus is on the party alleging that the patent is invalid to prove this on a balance of probabilities.

Patent claims can be invalidated on the grounds of a lack of novelty, obviousness, covetous claiming, ambiguity, unpatentable subject-matter, inadequate disclosure or failure to pay the required fees in the Patent Office.

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