16 | Pharmaceutical Litigation
cent average annual growth
over the period 2006–2010
makes Canada the fourthfastest-growing
market
globally, after Brazil, China
and Spain.
It's also a practice area
where never the twain shall
meet; lawyers line up on
one side or the other: brand
name pharmaceutical or generic companies, and there's
nary agreement on anything.
So what is the state of
pharmaceutical patent litigation today and where may it
be headed?
"We don't seem to have a
problem in getting patents
issued in Canada because the
rules at the patent office are
clear," says Andy Shaughnessy, a Toronto partner focused almost exclusively on intellectual
property in the litigation department at
Torys LLP. "The issue is when the patents
are then scrutinized by the courts."
Shaughnessy, who represents brand
pharmaceutical clients, says, "we lack in
Canada clarity in our law in respect of
the rules the judges have to apply to determine whether a patent is valid or not.
Americans talk to us about their 'bright
Sebastian Duda/shutterstock.com
line rules.' They know what their rules
look like and they can predict an outcome
based on whether or not their patent does
or does not meet those rules."
Not so in Canada, he says. "There's an
utter lack of predictability as to whether
a patent will remain valid through to the
end of its term of exclusivity. Every time
the client says to us, 'are we going to win
or are we going to lose?' lawyers are in a
tough position. We say 'you should win,
but you may not.'" And that, he says, has
led to the rather incongruous situation
where a patent that may be valid in the
US and UK, for example, may not be
valid in Canada.
One issue ripe for disagreement is "the
promise of the patent." To have an invention, says Don Cameron, a partner and
intellectual property litigator at Bereskin
LEXPERT®Ranked Lawyers
Fontaine, Jean
Foran, QC, Frank R.
Forbes, Sandra A.
Fox, Mary Margaret
Franklyn, Peter H.G.
Stikeman Elliott LLP
Borden Ladner
Gervais LLP
Davies Ward Phillips &
Vineberg LLP
Clyde & Co Canada LLP
Osler, Hoskin &
Harcourt LLP
Bennett Jones LLP
(403) 232-9443
fforan@blg.com
(416) 863-5574
sforbes@dwpv.com
(416) 862-6494
pfranklyn@osler.com
(403) 298-3182
frienda@bennettjones.com
Mr. Foran's practice
emphasizes commercial
litigation and
arbitration related
to energy, banking,
securities, insolvency
and construction
matters before all levels
of court and tribunals.
He is an ACTL Fellow.
Ms. Forbes practises
corporate/securities,
administrative,
competition and classaction litigation before
all levels of courts
and tribunals. She is
Past President of The
Advocates' Society and a
Fellow of The American
College of Trial Lawyers.
Mr. Franklyn advises
Canadian and foreign
parties on domestic and
cross-border antitrust
matters (government
and private/class
actions) focusing
on mergers, cartels,
pricing and abuse of
dominance issues, as
well as Investment
Canada matters.
Mr. Friend practises in
the areas of commercial
and securities litigation,
corporate arrangements
and restructuring,
oil & gas industry
disputes, and medical
malpractice defence.
He has acted in over 85
corporate arrangements
and restructurings.
(514) 397-3337
jfontaine@stikeman.com
Head of the Montréal
Litigation and
Bankruptcy, Insolvency
& Restructuring Groups.
His practice focuses on
the areas of insolvency
and commercial
litigation. Among other
clients, he represents
financial institutions,
trustees and public
companies.
(647) 789-4808
marymargaret.fox@clydeco.ca
Ms. Fox specializes
in D&O liability
insurance, professional
E&O insurance,
coverage opinions and
commercial litigation
(defence) involving
directors, officers and
other professionals.
Friend, QC,
Anthony L.
