Our Team

Andrew Bernstein

Partner

	Direct: 416.865.7678 Office: Toronto Fax: 416.865.7380 Email: abernstein@torys.com

	Andrew is recognized by Chambers & Partners as one of Canada's leading IP litigators.

Practice

Andrew Bernstein's practice focuses on business law disputes, including intellectual property, commercial and public law matters. A significant portion of his practice involves patents, copyright, trademarks, domain names, trade secrets and privacy disputes arising in the life sciences, information technology, media and other industries. Andrew has substantial expertise in pharmaceutical patents and the Patented Medicine (Notice of Compliance) Regulations. He also has expertise in advertising and regulatory law, both inside and outside the pharmaceutical industry.

Andrew also maintains an active commercial litigation practice, including considerable experience in class actions, licensing, contract and tort actions. He also has substantial expertise in public law, having acted for both public and private sector clients in administrative hearings, judicial reviews and Charter matters. Andrew also frequently advises and defends traditional and new media clients on defamation and free expression issues.

Andrew has appeared as counsel at all levels of court in Ontario, the Federal Court, the Federal Court of Appeal and the Supreme Court of Canada, as well as in commercial arbitrations.

Recognitions

Chambers & Partners’ Chambers Global: World’s Leading Lawyers for Business, The Client’s Guide 2008/09—Leading lawyer in intellectual property: litigation

Lexpert's 2008 Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada—Canadian litigation lawyer to watch

Cases

Andrew has recently been involved in representing

Pfizer Canada in successful PM(NOC) applications related to Pfizer's drugs Norvasc®, Accupril®, Viagra®, Zithromax® and Celebrex®
The Globe and Mail, CHUM Limited, CTV Limited, and CanWest Global, defending defamation and copyright proceedings
a major Canadian financial institution in the defence of a business method patent and confidential information claim by a former employee
Government of Newfoundland in an appeal before the Supreme Court of Canada involving constitutional, administrative and employment law issues
a major consumer products manufacturer, before Advertising Standards Canada's trade complaints tribunal
Canadian Association of Broadcasters, in a successful judicial review from the decision of the Copyright Board of Canada before the Federal Court of Appeal

The Thomson Corporation in Robertson v. Thomson, a dispute about the intersection of copyright and information technology, recently decided by the Supreme Court of Canada

a software provider to the financial services industry, in a patent dispute

Canadian artist Haydn Davies in a claim against the former owner of his internationally recognized work Homage for breach of the Copyright Act

a Canadian pharmaceutical manufacturer in judicial review proceedings against Health Canada in respect of regulatory matters

Rogers Communications Inc. in various proceedings relating to copyright and trademarks

Procter & Gamble in a patent dispute related to its successful osteoporosis drug Actonel®

Government of Canada on a case involving an alleged breach of s. 15 of the Charter before the Federal Court of Appeal

various agencies of the Ontario Government in defending judicial reviews on administrative and/or constitutional law grounds

Professional Involvement

In 1997 and 1998, Andrew served as a law clerk to Chief Justice Lamer of the Supreme Court of Canada. In 2003–2004, Andrew obtained his LLM at the University of California (Berkeley), primarily focusing on intellectual property law.

Currently, Andrew is a member of the executive of the Canadian Bar Association’s Intellectual Property section.

Selected Publications and Presentations

Supreme Court of Canada PLAVIX Decision: The Aftermath
Chair and speaker, Insight Info's 8th Edition Drug Patents and Legal Forum, Toronto | May 28-29, 2009

What's Obvious About (or After) Sanofi?
Presentation to the Licensing Executives’ Society | January 22, 2009

User Generated-Content
Federated Press's Internet Law | December 10, 2008

The Legal Framework of Crown Litigaton—Navigating Through the Procedural Maze
Speaker, Osgoode's Fourth Conference on Crown Liability, Toronto | November 14, 2008

Supreme Court of Canada Upholds Selection Patents
Torys Intellectual Property Bulletin | November 6, 2008

Patentability of Business Methods: U.S. Court Decides Bilski
Torys Intellectual Property Bulletin | October 31, 2008

Demystifying Selection Patents
Speaker, The Canadian Institute's 7th Annual Forum on Pharma Patents: Patent Protection and Regulation of Biologics and Subsequent Entry Biologics, Toronto | October 30, 2008

The Intersection of Administrative Law and IP
Moderator, Intellectual Property Institute of Canada, Toronto | October 17, 2008

Bringing/Responding to a Federal Court Action: Procedural and Legal Issues
Osgoode Professional Development's Forum on the Practical Guide to Federal Court Advocacy, Toronto | October 2, 2008

Advocacy Before the Federal Court in Intellectual Property Matters—Expert Witnesses
Moderator, Canadian Bar Association | May 8, 2008

Journalists shouldn't rely on new defamation defence
The Lawyers Weekly | March 21, 2008

Demystifying Recent Developments in Pharma Patent Litigation—What's New in Invalidity?
Pharma Patents, Canadian Institute, Toronto | October 17, 2007

Courtesy and Civility in the Courtroom and Elsewhere
Intellectual Property Institute of Canada, Vancouver | October 13, 2007

Digital Media: The Fight in Robertson v. Thomson
University of Toronto, Faculty of Law | April 18, 2007

Recent Topics in Invalidity: Obviousness, Anticipation and Utility
Moderator, Intellectual Property Institute of Canada, Ottawa | April 6, 2007

Essential Information for Bringing Your Claim Against the Federal Crown
Osgoode Hall Continuing Education, Toronto | December 6, 2006

Liability of Media for User-Generated Content: Copyright, Defamation and Negligence
Co-author and co-presenter, Ad Idem Conference, Montreal | November 18, 2006

Basics: Fundamentals of Canadian Pharma Patent Law
Post-conference workshop, The Canadian Institute's 5th Annual Forum on Pharma Patents, Toronto | October 18, 2006

Conflicts: Where and How to Draw the Line
Co-author, 80th Annual IPIC Conference, New Brunswick | September 27-30, 2006

Considering the Constitutionality of the Trade-marks Act: a Case Comment on Kirkbi AG v. Ritvik Holdings Inc.
Federated Press’s Intellectual Property, vol. 12, no. 3 | August 1, 2006

Trial Advocacy
Moderator, Canadian Bar Association, Intellectual Property Section Annual Program in Advocacy in the Federal Court in Intellectual Property Matters, Ottawa | May 18, 2006

Hot Topics for Brands and Generics
Insight Information's Pharma Patents Conference, Toronto | February 27-28, 2006

Case Law Update: Privacy and Freedom of Information
Ad Idem Conference, Halifax | November 12, 2005

Sands Shift for Pharma Patents
Americas Enforcement Focus 2005 | November 1, 2005

Cyberlibel: Defamation-Proofing Your Online World
Co-presenter, Ninth Annual IT Law Association Conference, Montreal | October 27-28, 2005

Federal Court of Canada: Jurisdiction, Practice and Procedure
Post-conference workshop, Litigation Against the Crown, Canadian Institute, Toronto | May 6, 2005

Patent Litigation: Choosing Between the United States and Canada
The Metropolitan Corporate Counsel | February 1, 2005

The Patented Medicine (Notice of Compliance) Regulations
Pre-conference workshop, Pharmaceutical Patents, Canadian Institute, Toronto | November 8, 2004

E-Commerce Regulations Coming Soon
Information Technology & E-Commerce, Ontario Bar Association newsletter, vol. 6, no. 1 | October 1, 2004

ISP Liability: Canada Proposes Copyright Reforms
MLRC MediaLawLetter | May 1, 2004

How to Stop Grey Goods
Brand Management Focus 2004 | April 1, 2004

The Ethics of Discovery
The Ethics of Tactics Over Merits, Canadian Bar Association CLE Program | October 2003

The Same, Only Different: The Status of the Abstraction-Filtration-Comparison Test in Ontario
Ontario Intellectual Property Institute of Canada Bulletin | December 30, 2002

Don’t Shoot the Messenger! A Discussion of ISP Liability
Canadian Journal of Law and Technology, vol. 1, no. 2 | July 30, 2002

Web-based Providers: Anonymity and the Legal Process
Co-author with T. Piper, Internet and E-Commerce Law in Canada | October 2000

Web-Based Providers, Anonymity and the Legal Process
Internet and E-Commerce Law in Canada | October 1, 2000

Primacy to Privacy? The Supreme Court and the Privacy Threshold in Edwards
Co-author with J. Lawn, vol. 55, no. 2, University of Toronto, Faculty of Law Review | 1997

Selected Media Highlights

March 11, 2009: Chambers Global 2009 names three of Torys' practitioners among Canada's top intellectual property lawyers

October 23, 2006: The issue on which the Supreme Court of Canada split in its copyright decision in Robertson relates to historical content only, says Wendy Matheson in Law Times

June 30, 2004: Supreme Court ruling is clearly a pro-Internet, pro-service provider decision, says Andrew Bernstein in The Globe and Mail

Memberships

Intellectual Property Section, Canadian Bar Association
Information Technology Section, Media and Entertainment Section, Ontario Bar Association
The Advocates’ Society

Practice Areas and Industry Groups

Administrative and Regulatory Class Actions Constitutional Copyright Corporate and Securities Litigation Industrial Designs Intellectual Property Intellectual Property Litigation Life Sciences Litigation and Dispute Resolution Media and Defamation Patents Technology Litigation Technology, Media and Telecom Trademarks White Collar Crime

Bar Admissions

Ontario, 1999, (Treasurer's Medal)

Education

LLM (Fulbright Fellow), 2003
University of California (Berkeley)

LLB (Gold Medallist), 1997
University of Toronto

BComm (FC Honours, Economics), 1994
McGill University