Norton Rose Fulbright awarded two Canadian Impact Cases of the Year Awards by Managing IP

We were honoured with two Impact Cases of the Year Awards at the sixteenth annual Managing IP Americas Awards on April 7. Norton Rose Fulbright’s intellectual property practice was recognized for their work on the Amgen v Pfizer Canada ULC and the Glaxosmithkline Biologicals v Canada (Health) cases. The Managing IP Awards are presented to firms, individuals and companies behind the most innovative and challenging IP work of the past year, as well as those driving the international IP market.

About the Canadian Impact Cases of the Year

Amgen v Pfizer Canada ULC

Our leading intellectual property lawyers successfully represented our client Pfizer in a patent infringement action commenced against it by Amgen under the Patented Medicines (Notice of Compliance) Proceedings PM(NOC) Regulations) relating to the drug filgrastim. This is a significant case as it was the first action to go to trial under the new version of the PM(NOC) Regulations. The trial judge agreed with Pfizer that the asserted claims of Amgen’s patent were obvious and invalid.

The team’s success cleared the way for Pfizer to bring its NIVESTYM (filgrastim) and NYVEPRIA (pegfilgrastim) products to the Canadian market.

The team was co-led by Orestes Pasparakis, Daniel Daniele and included Paul Jorgensen.

Glaxosmithkline Biologicals v Canada (Health)

Norton Rose Fulbright’s Toronto intellectual property lawyers acted as counsel to Glaxosmithkline in the first court challenge under Canada’s newly enacted Certificate of Supplementary Protection (CSP) Regulations. The challenge concerns GSK’s blockbuster shingles vaccines, SHINGRIX. A CSP provides eligible patentees with up to two years of restored patent term to compensate for regulatory delays in drug approval.  

This case is unique as it is the first court challenge brought under Canada’s Certificate of Supplementary Protection Regulations. Canada enacted the CSP Regulations in 2017 as part of its intellectual property obligations under the Canada-EU Comprehensive Economic Trade Agreement (CETA). Canada was the last G7 country to provide patent term restoration.

In a decision dated April 7, 2020, Norton Rose Fulbright was successful in striking out the government’s decision to deny the CSP for being unreasonable. The government has now pursued an appeal to the Federal Court of Appeal.

The team was led by Kristin Wall.

For more information and to view the full list of winners visit the Managing IP site.