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Jordana Sanft

Partner, Lawyer, Trade-mark Agent, Patent Agent

Jordana  Sanft

Toronto

T:+1 416.216.4798

Jordana Sanft practises in all areas of intellectual property law, with an emphasis on complex patent and trade-mark litigation. She is a registered patent and trade-mark agent. 

Ms. Sanft has particular experience in matters involving the pharmaceutical industry, including infringement and validity actions as well as proceedings under the Patented Medicines (Notice of Compliance) Regulations. Her experience extends to patent damages actions. Ms. Sanft most recently obtained successful judgment as counsel for Gilead Sciences Inc. and Gilead Canada at both trial and the court of appeal. Her trade-mark experience includes advocating before the courts and specialized tribunals as well as advising clients on portfolio strategy and management. She regularly works with clients concerning the enforcement of their intellectual property rights. 

Ms. Sanft has appeared as counsel in matters before the Federal Court of Appeal, the Federal Court, the Ontario Superior Court of Justice and specialized tribunals such as the Trade-marks Opposition Board.

Ms. Sanft is national leader of our Canadian IP litigation team.

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  • Education

    B.C.L./LL.B., McGill University, 1999
    B.A., Tufts University, 1995

  • Representative experience

     

    Ms. Sanft has recently been involved in representing:

    • Gilead Science Inc. et al. in the Federal Court proceeding in respect of Sofosbuvir, 2015 FC 1156, affirmed A-483-15 (successfully invalidating Idenix’s ‘191 Patent and maintaining Gilead’s ‘657 patent)
    • Pfizer et al. in the Federal Court action in respect of Apotex's claim for section 8 damages relating to azithromycin (Zithromax)
    • Pfizer in a summary judgment motion in respect of latanoprost (Xalatan), 2016 FC 136 (successfully upholding the validity of Pfizer’s ‘134 patent on summary judgment)
    • Steven Page in the Ontario Superior Court action against Ed Robertson relating to a hit song of the Barenaked Ladies
    • Connacher Oil and Gas Limited in a Federal Court action in respect of a patent infringement/validity action
    • Glaxosmithkline Inc. et al. in various proceedings in the Federal Court in respect of valacyclovir hydrochloride (VALTREX)
    • Hoffmann La Roche et al. in proceedings in the Federal Court in respect of valganciclovir (VALCYTE)
    • Premier Tech Ltd. et al. in trade-mark proceedings in the Ontario Superior Court
    • Merck and Co., Inc. and Merck Frosst Canada & Co. in  Merck & Co. Inc. v. Apotex Inc. 2006 FCA 323, 2006 FCA 324, 2006 FCA 296, 2006 FCA 297 (successfully defending against Apotex’s appeal against a finding of validity and infringement of Merck’s patent for lisinopril that confirmed the trial court's judgment and its reference for damages to be assessed in favour of Merck; Apotex’s leave to appeal to the Supreme Court of Canada dismissed in May 2007). Further representing Merck & Co. et al. in an infringement damages reference 

     

  • Admissions
    • Canada (patents) 2004
    • Canada (trade-marks) 2008
    • Ontario 2001
  • Rankings and recognitions
    • Best Lawyers in Canada (2015-2018): Intellectual Property Law
    • The Legal 500, Canada (2016): Intellectual Property
    • IP Stars (2015-2017)
    • IP Stars : Top 250 Women in IP, 2017
    • IAM Patent 1000 - The World's Leading Patent Professionals (2017)
  • Speaking engagements
    • "The Dos and Don'ts of Appeals" (speaker), IP Day 2017, The Canadian Bar Association, May 11, 2017.
    • “An Update on Patent Damages in Section 8” (speaker), 13th Forum on Pharma Patents, The Canadian Institute, October 25-26, 2016.
    • “Patentability: Medical Treatment and Diagnostic Methods” (speaker), Intellectual Property Institute of Canada (IPIC) webinar, April 15, 2016.
    • “Protection of Pharmaceutical Patent Rights vs. Access to Affordable Drugs” (speaker), IPIC Annual General Meeting, October 14, 2015.
    • “Branding and Social Media: Protecting Your Trade-mark Rights Online” (speaker), Toronto Region Board of Trade, September 30, 2015.
    • “Stakes and Stakeholders: Generics vs. Innovators - Practical Impact of the Theoretical Patent Framework” (co-lecturer), Osgoode LLM - Health Law Program, Toronto, September 2013.
    • “Do We Smell an Opportunity for Trademark Practitioners? Registering Non-traditional Marks Across the Globe” (moderator/speaker), American Bar Association Annual General Meeting, San Francisco, August 2013.
    • “Interim and Interlocutory Injunctions” (speaker), Canadian Bar Association Spring Advocacy Program, Ottawa, May 2013.
    • Annual Trade-mark Law Update Webinar (moderator), Intellectual Property Institute of Canada (IPIC), 2009-2013.
    • “Pharmaceutical and Biotech Litigation” (course lecturer), IP Osgoode Intensive IP Course, September 2, 2011.
  • Memberships and activities

     

    • Canadian Bar Association, Intellectual Property Section

      • IP Court Practice Committee
    • Association Internationale pour la Protection de la Propriété Intellectuelle
    • Law Society of Upper Canada
    • Intellectual Property Institute of Canada
      • Litigation Committee
      • Forums and Seminars Committee
    • The Toronto Intellectual Property Group
    • American Bar Association
      • Intellectual Property Section
        • International Trademarks Treaties & Laws Committee