Partner, Lawyer, Trade-mark Agent, Patent Agent
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 proceedings under the Patented Medicines (Notice of Compliance) Regulations as well as patent infringement and impeachment actions. Her experience also 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. Her copyright practice focuses on authorship and ownership disputes and the enforcement of copyright. She regularly works with clients concerning the protection of their intellectual property portfolios and 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.
B.C.L./LL.B., McGill University, 1999
B.A., Tufts University, 1995
Ms. Sanft has recently represented:
- Gilead Sciences Inc. et al. in the Federal Court proceeding in respect of sofosbuvir (SOVALDI, HARVONI), 2015 FC 1156, affirmed 2017 FCA 161 (successfully invalidating Idenix’s ‘191 Patent and maintaining Gilead’s ‘657 patent)
- Pfizer in a summary judgment motion regarding latanoprost (XALATAN), 2016 FC 136 affirmed 2017 FCA 201 (successfully upholding the validity of Pfizer’s ‘132 patent on summary judgment)
- Pfizer et al. in the Federal Court action regarding Apotex's claim for section 8 damages relating to azithromycin (ZITHROMAX)
- Gilead Sciences Inc. et al. in Federal Court proceedings (T-1330-15, T-1332-15) in a patent action and related counterclaim against Abbvie in respect of HCV patents
- Steven Page in a copyright action in the Ontario Superior Court of Justice against Ed Robertson relating to a hit song of the Barenaked Ladies
- Glaxosmithkline Inc. et al. in various proceedings in the Federal Court including regarding valacyclovir hydrochloride (VALTREX) and cefuroxime axetil (CEFTIN)
- Hoffmann-La Roche et al. in proceedings in the Federal Court regarding valganciclovir (VALCYTE)
- Fairmont Hotels in various trademark prosecution and litigation matters, including litigation matters to protect company trademarks and corporate name in the Federal Court, Opposition Board and pursuant to the Canada Business Corporations Act
- Bristol-Myers Squibb Canada Co. and Merck Sharp & Dohme Corp. in an application in respect of Mylan Pharmaceuticals ULC and the federal minister of health 2012 FC 1142 (successfully obtaining judgment to prohibit the issuance of a NOC in respect of efavirenz) (SUSTIVA)
- 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 the infringement damages reference
- Canada (patents) 2004
- Canada (trade-marks) 2008
- Ontario 2001
Rankings and recognitions
- 2018 Lexpert ranked lawyer - repeatedly recommended
- Best Lawyers in Canada (2015-2019): Intellectual Property Law
- IP Stars (2015-2019)
- IP Stars: Top 250 Women in IP (2018-2019)
- IAM Patent 1000 - The World's Leading Patent Professionals (2017)
- Who's Who Legal (Patents 2018)
- "Artificial intelligence and intellectual property considerations" (co author), published in Financier Worldwide, January 2018 issue
- "Get Your IP Game On: Intellectual Property Protection and Video Games" (author), September 19, 2017
- "Pharma In Brief - Top Headlines of 2016" (co-author), January 4, 2017
- "Current Directions in Regulatory and Intellectual Property Law in Canadian Pharmaceutical Cases" (co-author), March 28, 2016
- "Copyright and AI - Emerging Issues" (lecturer), Osgoode Professional Development LL.M. Program - Introduction to Intellectual Property: Theoretical Frameworks, September 15, 2018.
- "Patent Enforcement: Infringement" (lecturer), IPIC / McGill 2018 Summer Courses in Intellectual Property, July 18, 2018.
- "Conducting a Discovery and Implications for Trial" (speaker), The Advocates' Society Program Mastering Winning Discovery Techniques, October 30, 2017.
- "The Law of Utility in Canada - Where Are We Now and Where Are We Going" (moderator), Intellectual Property Institute of Canada (IPIC) AGM, October 12, 2017.
- "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.
- “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.
Memberships and activities
- The Toronto Intellectual Property Group
- American Bar Association
- Intellectual Property Section
- International Trademarks Treaties & Laws Committee
Join us for our Artificial Intelligence (AI) summit which will cover a range of business, ethical and legal issues around the topic of artificial intelligence..
Wednesday, November 15, 2017
Written submissions are now being solicited from all Canadians on the Copyright Act, as the Standing Committee on Industry, Science and Technology (Committee) conducts its mandatory five-year review of the statute. .
May 03, 2018
In late 2017, Innovation, Science and Economic Development Canada announced that Parliament will review Canada’s Copyright Act..
February 02, 2018
Norton Rose Fulbright Canada was honoured with two awards at the fourth annual LMG Life Sciences Awards ceremony held on September 14 in New York City..
September 23, 2016