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Brian R. Daley

Partner, Lawyer, Trade-mark Agent

Brian R. Daley

Montréal

T:+1 514.847.4764

Brian Daley practises intellectual property law, with a focus on patents, trade-marks and litigation at the trial, appellate and Supreme Court levels. He has particular experience in regulatory matters and litigation involving mechanical, medical device and pharmaceutical patents. He worked as an engineer for four years before studying law.

Mr. Daley is often retained to act as lead counsel on complex patent litigation and has been recognized as one of Canada’s leading lawyers in this area. This includes patent infringement actions as well as summary proceedings under Canada’s Patented Medicines (Notice of Compliance) Regulations. He has also successfully defended damages claims brought by generic pharmaceutical companies who claim to have been kept off the market because of proceedings brought by patentees.

Mr. Daley recently obtained an important victory in the Federal Court of Appeal in one of the few patent cases in recent years involving interim and interlocutory injunctions.

Mr. Daley is a frequent presenter to professional organizations and companies as well as a contributor to publications in the intellectual property and regulatory fields in North America and Europe.

He is the pharmaceutical and life sciences international business group leader within the life sciences and healthcare industry group in Canada.

He is a member of the Canadian Bar Association National Intellectual Property Section Executive.

 

 

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  • Education

    LL.B./B.C.L., McGill University, 1993
    M.A.Sc., Technical University of Nova Scotia, 1985
    B.Eng., Mechanical Engineering, Memorial University, 1983

  • Representative experience

     

    • Mr. Daley is counsel to major pharmaceutical companies such as AstraZeneca, Cephalon, DuPont, Elan, Gilead, GlaxoSmithKline, Merck & Co., Pfizer and sanofi-aventis. He advises them in respect of intellectual property, data protection and regulatory compliance.
    • Mr. Daley advises clients in the aerospace and refrigeration industries and in 2015 completed an important trial for a client in this industry.

    Recent decisions of note in which Mr. Daley has acted include: 

    • TearLab Corporation v. I-MED Pharma Inc. and The Regents of the University of California, 2017 FCA 8  (court file A-199-16) appealing 2016 FC 606 (court file T-300-16). Represented I-MED Pharma Inc. as lead counsel in the appeal of judgments dismissing interlocutory and interim injunctions in a medical device patent infringement action
    • Gilead Sciences, Inc. et al v. The Minister of Health and Apotex Inc, 2016 FC 857 (court file T-1694-14).  Represented Gilead as co-lead counsel in an application to prevent a generic drug company from coming to market with a generic version of an important anti-HIV drug prior to patent expiry
    • Toromont Industries Limited v Carnot Réfrigération Inc., (court file T-393-13). Represented Toromont in English and French in a patent infringement trial in April 2015
    • Merck & Co., et al v Apotex Inc. (court file T-2792-96).  Acted for Merck and AstraZeneca in a damages reference after successfully suing Apotex for patent infringement
    • Gilead Sciences, Inc. v Teva Canada Limited, 2013 FC 1270. Obtained an order prohibiting the Minister of Health from issuing marketing authorization (notice of compliance) to Teva in respect of various drugs containing tenofovir disoproxil fumarate
    • Apotex Inc. v Pfizer Canada Inc., 2013 FC 493. Acted for Pfizer in defence of a claim for damages under s. 8 of the Patented Medicines (Notice of Compliance) Regulations
    • Apotex Inc. v Merck & Co., Inc. 2010 FC 287. Acted for Merck in a claim for damages under section 8 of the Patented Medicines (Notice of Compliance) Regulations. Successfully limited the period during which Apotex claimed damages
    • Apotex Inc. v Wellcome Foundation Ltd. [2002], S.C.J. No. 78. Acted for the Wellcome Foundation in successfully upholding the validity of its Canadian patent covering zidovudine (AZT) for the treatment of HIV infection, the original pioneering breakthrough in the treatment of AIDS

     

  • Admissions
    • Professional Engineer, Ontario 1986
    • Canada (trade-marks) 1995
    • Quebec 1994
  • Rankings and recognitions
    • Best Lawyers in Canada (2013-2018): Intellectual Property Law
    • Who's Who Legal: Life Sciences 2016
    • Canadian Legal Lexpert Directory (2013-2017): recommended in Biotechnology
    • Canadian Legal Lexpert Directory (2017): recommended in Intellectual Property
    • IAM Patent 1000: World’s Leading Patent Professionals (2012, 2015)
    • Who’s Who Legal, Canada (2010-2011, 2014-2015, 2017): Life Sciences and Patents
    • Canadian Legal Lexpert Directory (2013-2014): recommended in Litigation – Intellectual Property
    • The International Who’s Who of Life Sciences Lawyers (2012-2013)
    • The International Who’s Who of Patents Lawyers (2011-2013)
    • The World’s Leading Patent Litigators (2011)
    • Guide to the World’s Leading Patent Law Practitioners
    • IAM Life Sciences 250: The World’s Leading Life Sciences Patent Litigators (2010)
  • Speaking engagements
    • “Practice Tips from the Court and Bar,” IPIC Annual Meeting, Gatineau, QC, September 27, 2013.
    • “How to Steer Clear of the Patent Cliff,” Canadian Institute’s 11th Annual Forum on Pharma Patents, Toronto, October 30, 2012.
    • “Does the doctrine of sound prediction prevent smart people from patenting their inventions in Canada?” IPIC Annual Meeting, Chicago, September 15, 2011.
    • Legal Project Management for Litigators (co-host: Ann Gomez, Clear Concept Inc.), Canadian Bar Association webinar, Toronto, September 14, 2011.
    • “Recent issues in patent prosecution and enforcement in Canada, including a special mechanism for pharmaceutical patents,” Important New Developments in International Prosecution and Enforcement, New York Intellectual Property Law Association (NYIPLA) October CLE Luncheon, New York, October 15, 2010.
    • “Summary Judgment - Has its Time Come?” presented at the Advocacy in Intellectual Property Matters: Motions That Matter, professional development program of the Canadian Bar Association, Ottawa, May 13, 2010.
    • “Everything an IP Lawyer Needs to Know about FDA Law” (session coordinator), AIPLA Annual Meeting, Washington, DC, October 23, 2008.
    • “Using Decision-tree Analysis to Intelligently Manage Litigation” (moderator), Association of Corporate Counsel Annual Meeting, Seattle, Washington, October 19-22, 2008.
  • Memberships and activities

     

    • Canadian Bar Association
      • member of the National Intellectual Property Section Executive
    • Intellectual Property Institute of Canada
      • past chair of the Montreal Informals Committee
    • American Intellectual Property Law Association
      • Professional Programs Committee
    • International Association for the Protection of Intellectual Property
    • Professional Engineers of Ontario