Brian R. Daley
Norton Rose Fulbright Canada LLP
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Brian Daley practises intellectual property law, with a focus on patents, trademarks 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 led a team that obtained an important victory in the Federal Court of Appeal in defence of a patent infringement action against a Canadian company specializing in dry eye diagnosis and management. He also defeated motions for 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.
- Quebec 1994
- Canada (trademarks) 1995
- Professional Engineer, Ontario 1986
- Mr. Daley is counsel to major pharmaceutical companies such as AstraZeneca, Cephalon, DuPont, Elan, Gilead, GlaxoSmithKline, Merck & Co., Pfizer, sanofi-aventis and Servier. He advises them on 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, 2018 FC 164 (court file T-300-16). Represented I-MED Pharma Inc. in its successful defence of an action for patent infringement brought by TearLab Corporation. I-MED successfully asserted that the claims of TearLab's patent that were allegedly infringed were invalid for obviousness and lack of novelty. I-MED also won an order entitling it to recover its costs and disbursements from TearLab.
- 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
- LMG Life Sciences (2017)
- Co-lead counsel for Gilead in litigation against Apotex that was chosen as one of the top three "Canadian IP Impact Cases of the Year" for 2016 by LMG Life Sciences
- Best Lawyers in Canada (2013-2018): Intellectual Property Law
- Who's Who Legal: Life Sciences 2016
- Canadian Legal Lexpert Directory, 2013-2019: recommended in Biotechnology; 2017-2019: recommended in Intellectual Property; 2013-2014, 2018-2019: recommended in Litigation - Intellectual Property
- IAM Patent 1000: World’s Leading Patent Professionals (2012, 2015, 2017, 2019)
- Who’s Who Legal, Canada (2010-2011, 2014-2015, 2017): Life Sciences and Patents
- 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)
- "Damages or Accounting of Profits - A Valuator's Guide," Intellectual Property Institute of Canada webinar (co-presenter with Jeff Pellarin and Denise Lacombe) February 26, 2018.
- "Interlocutory Injunctions: The Unicorns of Patent Law," Intellectual Property Institute of Canada webinar (co-presenter with Professor Norman Siebrasse), November 10, 2017.
- “Practice Tips from the Court and Bar,” IPIC Annual Meeting, Gatineau, QC, September 27, 2013.
- “How to Steer Clear of the Patent Cliff,” The 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 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.
- 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
IP monitor - A tearful conundrum: Canada's FCA affirms dismissal of infringement claim in patent suit regarding ophthalmic medical devices
Publication | July 09, 2019
Publication | March 21, 2019
Publication | May 2018
IP monitor - Cry me a river: plaintiffs’ proposed claim construction leads to invalidation of asserted claims by the Gillette defence
Publication | March 2018