Jordana Sanft

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

Jordana Sanft

Jordana Sanft

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Biography

Jordana Sanft practises in all areas of intellectual property law, with an emphasis on complex patent and trademark litigation. She is a registered patent and trademark 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's recent successes include matters on behalf of Roche, Genentech, Gilead and Pfizer.  Ms. Sanft was recently successful on a significant motion for Roche and Genentech pursuant to section 6.08 of the amended PMNOC Regulations, which was the first motion of its kind and with results having precedential effect. 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. 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.


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:

  • 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 the Federal Court applications 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)
  • Steven Page in a copyright action in the Ontario Superior Court of Justice against Ed Robertson relating to a Barenaked Ladies' hit song
  • 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
  • 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 

 

  • Chambers Canada, Nationwide: Intellectual Property - Litigation, Chambers and Partners, 2020
  • Canadian Legal Lexpert Directory, 2018: recommended in Intellectual Property; 2019: repeatedly recommended in Litigation - Intellectual Property
  • Best Lawyers in Canada (2015-2020): Intellectual Property Law
  • IP Stars (2015-2019)
  • IP Stars: Top 250 Women in IP (2018-2019)
  • Who's Who Legal: Patents (2018-2019)
  • "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
  • Patent Enforcement: Infringement" (lecturer), IPIC / McGill Summer Courses in Intellectual Property, 2018-2019.
  • "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.
  • “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.

 

  • Canadian Bar Association, Intellectual Property Section
    • IP Court Practice Committee - chair 2017-2020
  • Intellectual Property Institute of Canada (IPIC)
    • Conference Committee vice chair 2019
    • Women in IP Networking Group
  • International Association for the Protection of Intellectual Property (AIPPI, Association Internationale pour la Protection de la Propriété Intellectuelle)
  • Association Littéraire et Artistique International
  • Law Society of Ontario
  • The Toronto Intellectual Property Group
  • American Bar Association
    • Intellectual Property Section
      • International Trademarks Treaties & Laws Committee
  • Women Leaders in Pharma Toronto Chapter