Jordana Sanft

Partner, Lawyer, Trademark Agent, Patent Agent
Norton Rose Fulbright Canada LLP

Jordana Sanft

Jordana Sanft

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Biography

Jordana Sanft is recognized for treating the attorney-client relationship as a true partnership, providing practical and strategic advice and obtaining successful results in and out of the courtroom. Ms. Sanft practises in all areas of intellectual property law.  She is particularly well known for her excellence in enforcing patents and trademarks.

Ms. Sanft has particular expertise in matters involving the pharmaceutical and life sciences industry. She regularly litigates proceedings under the Patented Medicines (Notice of Compliance) Regulations, patent impeachment and infringement actions, judicial review proceedings, and damages actions. As part of her approach in leading Canadian IP litigation Ms. Sanft works with clients to maximize enforcement success on a local and global level. Ms. Sanft recently was counsel in matters on behalf of Roche, Genentech, Gilead, Pfizer, AstraZeneca, and FibroGen. Her trademark 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. Ms. Sanft has an interest in legal issues at the intersection of IP and artificial intelligence.  She regularly works with clients concerning the protection and optimization 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 Trademarks Opposition Board.  She is a registered patent and trademark agent.


Professional experience

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B.C.L./LL.B., McGill University, 1999
B.A., Tufts University, 1995
  • Ontario 2001
  • Canada (patents) 2004
  • Canada (trademarks) 2008

Ms. Sanft has recently represented:

  • FibroGen Inc. and AstraZeneca AB in an impeachment action in the Federal Court in respect of Canadian Patent Nos. 2,468,083, 2,467,689, and 2,526,496 (discontinued)
  • Merck Canada Inc. in a judicial review proceeding in the Federal Court in regards to patent listing for KEYTRUDA, Merck Canada Inc. v. The Minister of Health, 2021 FC 345
  • Gilead Sciences Inc. in a judicial review proceeding in the Federal Court, which was the first ever challenge of data protection for anti-HIV combination drug therapies in respect of DESCOVY, Natco Pharma (Canada) Inc. v. Canada (Health), 2020 FC 788 (successfully upholding data protection)
  • Hoffmann-La Roche Limited and Genentech, Inc. in various Federal Court actions under the new PMNOC Regulations in respect of trastuzumab (HERCEPTIN), which were the first actions under the new regime (dicontinued)
  • Eli Lilly and Company in various Federal Court proceedings in respect of teriparatide (FORTEO) (discontinued)
  • Hoffmann-La Roche Limited and Genentech, Inc. in various Federal Court proceedings in respect of bevacizumab (AVASTIN) (discontinued)
  • 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)
  • Glaxosmithkline Inc. et al. in various proceedings in the Federal Court including regarding valacyclovir hydrochloride (VALTREX) and cefuroxime axetil (CEFTIN)
  • 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

 

  • Canadian Legal Lexpert Directory, 2018, 2020 - 2021: Repeatedly recommended in Intellectual Property; 2019 - 2021:  Consistently recommended in Litigation - Intellectual Property; 2021: Special Edition: Technology; 2021: Lexpert Special Edition:  Health Sciences
  • Acritas Stars 2020, 2021 – Designated as an "Independently rated lawyer"
  • Chambers Global, Canada, 2020-2021: Intellectual Property - Litigation, Chambers and Partners
  • Best Lawyers in Canada, 2015-2021: Intellectual Property Law
  • IP Stars, 2015-2020; IP Stars, 2020-2021:  Patent; IP Stars 2020-2021:  Trademark
  • IP Stars, 2018-2019 and 2020-2021: Top 250 Women in IP
  • Who's Who Legal, 2018-2020: Patents; Who's Who Legal, 2020-2021:  Life Sciences
  • IAM Patent 1000, 2019-2020
  • LMG Award, 2016: Patent Contentious Case of the Year
  • "Intellectual Property Strategy for AI Technology in Canada" (Medeiros, Maya, Chalmers, William, & Sanft, Jordana), in G. D'Agostino, A. Gaon, and C. Piovesan, Leading Legal Disruption:  Artificial Intelligence and a Toolkit for Lawyers and the Law. Toronto: Thomson Reuters. pp. 71-96, 2021
  • "Supreme Brand Recognition - The Notorious RBG," March 5, 2021
  • "Trouble at the Henhouse (and the Court House)," February 19, 2021
  • "Pharma In Brief:  The 2020 Year in Review" (co author), January 24, 2021
  • "Burritos, Biden & Branding; Trump & Trademarks," November 4, 2020
  • "AI and Drug Discovery - A Three-Part Update" (co author), September 9, 16, 23, 2019
  • "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," September 19, 2017
  • "Current Directions in Regulatory and Intellectual Property Law in Canadian Pharmaceutical Cases" (co-author), March 28, 2016
  • "Non-traditional trademarks: a new and valuable branding strategy" (speaker), NRFC IP Brands Day, May 19, 2021.
  • "Strengthening Expert Evidence in Court - Compelling Chief/Cross Strategies" (speaker), Ontario Bar Association, November 2020.
  • Patent Enforcement: Infringement" (lecturer), IPIC / McGill Summer Courses in Intellectual Property, 2018-2020.
  • "Recent Trends in Patent Infringement: Indirect Infringement" (speaker), University of Toronto Patent Colloquium, November 2019.
  • "Post-Application Changes to the Prosecution Process" (speaker), NRFC program on Understanding Canada's Modernized Trademark Regime, April 2019.
  • "Copyright and AI - Emerging Issues" (lecturer), Osgoode Professional Development LL.M. Program - Introduction to Intellectual Property:  Theoretical Frameworks, September 15, 2018.
  • "Compliance in the Digital Era" - The intersection of artificial intelligence and compliance layering in IP strategy (speaker), Pharmaceutical Compliance Congress Canada, June 7, 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.

 

  • Canadian Bar Association, Intellectual Property Section
    • IP Court Practice Committee - Chair 2017-2020
  • Intellectual Property Institute of Canada (IPIC)
    • Conference Committee Vice Chair 2019-2021
    • Women in IP Networking Group
  • International Association for the Protection of Intellectual Property (AIPPI, Association Internationale pour la Protection de la Propriété Intellectuelle)
  • Law Society of Ontario
  • The Toronto Intellectual Property Group
  • ChIPs organization advancing women in technology, law and policy
  • American Bar Association
    • Intellectual Property Section
      • International Trademarks Treaties & Laws Committee
  • The York School, Risk Committee of the Board of Directors, member at large 2017-