December 01, 2013
Partner Andrew Shaughnessy commented on the dynamics of Canadian patent litigation in an article on life sciences litigation for the Globe and Mail’s Report on Business.
Below is an excerpt of the article.
“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 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.