Partner, Lawyer, Trademark Agent
Norton Rose Fulbright Canada LLP
Related services and key industries
Amy Grenon practises in all areas of intellectual property law, with a particular emphasis on complex patent and trademark litigation before the courts and administrative tribunals. Ms. Grenon strives to provide her clients with a business-minded and strategic approach to solving intellectual property issues and obtains favourable results for her clients both through and outside of litigation.
Ms. Grenon has represented numerous pharmaceutical companies in patent proceedings in Canada, including proceedings under the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations), patent infringement and impeachment actions. She has also defended against several claims for damages pursuant to section 8 of the PM(NOC) Regulations and represented clients recovering patent infringement damages. Ms. Grenon's recent successes include matters on behalf of Pfizer, Gilead, and Eli Lilly.
Regarding her branding and copyright practice, Ms. Grenon advises clients on branding and copyright issues, trademark portfolio management and strategy, and has represented clients in trademark oppositions, trademark and copyright infringement and passing-off proceedings, as well as proceedings pertaining to domain names and social media-related disputes. Ms. Grenon regularly provides strategic IP enforcement advice to various emerging and scaling companies.
Ms. Grenon 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 frequently presents and contributes to publications in the intellectual property fields.
J.D., University of Toronto, 2007
B.Sc. (Hons.), Biochemistry, McMaster University, 2003
- Ontario 2008
- Canada (trademarks) 2012
Ms. Grenon has acted for the following clients:
- Eli Lilly and Company in various Federal Court proceedings in respect of teriparatide (FORTEO®) (discontinued)
- Gilead Sciences Inc. and Gilead Sciences Canada, Inc. in patent infringement and impeachment action against Idenix Pharmaceuticals Inc., 2015 FC 1156, affirmed 2017 FCA 161, Idenix's leave to appeal to the Supreme Court of Canada dismissed, 2018 CanLII 35644 (successfully invalidating Idenix's 191 Patent and maintaining Gilead's 657 Patent that pertains to the drug Sofosbuvir [SOLVALDI® and HARVONI®])
- Counsel on seven actions (representing variously Pfizer, Eli Lilly, GlaxoSmithKline) defending against claims for damages brought under section 8 of the Patented Medicines (Notice of Compliance) Regulations
- Royal Bank of Canada in trademark infringement and passing-off litigation
- Copyright and branding advice and dispute resolution strategy development for emerging businesses
- GlaxoSmithKline Inc. et al. in various Federal Court and Superior Court proceedings regarding Valacyclovir hydrochloride (VALTREX®)
- 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 an NOC concerning the compound patent)
- Judicial review applications regardning data protection: Canadian Generic Pharmaceutical Association v. Canada (Health), 2011 FCA 357
- Canadian Legal Lexpert Directory, 2020: Leading Lawyer to Watch - Intellectual Property
- IAM Patent 1000 - Intellectual Property Litigation
- LMG Award, 2016: Patent Contentious Case of the Year
Recent speaking engagements include:
- "Hot Topics in Patent Law" (panel member), Canadian Bar Association IP Day, May 2019.
- "Oppositions and s. 45 Proceedings," NRFC progamme on Understanding Canada's Modernized Trademark Regime, April 2019.
- "Expert Evidence – Cutting to the Case" (panel member), University of Toronto Patent Colloquium, November 2018.
- Canadian Bar Association
- Ontario Bar Association
- The Advocates’ Society
- Intellectual Property Institute of Canada
Webinar | October 15, 2020
Webinar | On demand
Publication | May 2019
Publication | May 16, 2019