Jordana Sanft
Partner, Lawyer, Trade-mark Agent, Patent Agent
Jordana Sanft practises in all areas of intellectual property law, with an emphasis on complex patent and trade-mark litigation. She is a registered patent and trade-mark agent. Ms. Sanft has particular experience in matters involving the pharmaceutical industry, including infringement and validity actions as well as proceedings under the Patented Medicines (Notice of Compliance) Regulations. Ms. Sanft's trade-mark experience includes advocating before the courts and specialized tribunals as well as advising clients on portfolio strategy and management. She regularly works with clients in respect of the 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.
Year of call
Ontario 2001
Year of registration
Canada (trade-marks) 2008
Canada (patents) 2004
Law school
B.C.L./LL.B., McGill University, 1999
Education
B.A., Tufts University, 1995
Selected client work
Ms. Sanft has recently been involved in representing:
- An innovative pharmaceutical company in a patent infringement and validity action in respect of cefuroxime axetil (CEFTIN)
- An innovative pharmaceutical company in a proceeding pursuant to section 60 of the Patent Act in respect of vaccine adjuvants
- An author in a copyright matter pursuant to section 57(4) of the Copyright Act seeking expungement of a copyright registration 2009 FC 666; 75 C.P.R. (4th) 364, appeal allowed in part 2010 FCA 224
- A luxury hotel company in a trade-mark litigation matter pursuant to section 57(1) of the Trade-marks Act (successfully upholding the trade-mark registrations)
- A Canadian corporation involved in a corporate name dispute pursuant to section 12(2) of the Canada Business Corporations Act (successfully maintaining the registered corporate name)
- An innovative pharmaceutical company in a proceeding pursuant to section 6 of the Patented Medicines (Notice of Compliance) Regulations in respect of valacyclovir (VALTREX)
- 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 judgment of the trial court 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)
- Merck and Co., Inc. and Merck Frosst Canada & Co. in Merck & Co. Inc. v. Apotex Inc. 2006 FC 524, 2006 FC 631 (successfully obtaining judgment upholding the validity of Merck’s patent for lisinopril and judgment confirming infringement of that patent by Apotex)
- A North American label manufacturer involved in a patent infringement and validity action
- A North American manufacturer of oil field drilling equipment in a patent infringement and validity action
Speaking engagements
- “Intellectual Property Institute of Canada (IPIC)’s Annual General Meeting 2011- Session on Predictions on the Law of Sound Prediction” (moderator), September 15, 2011.
- “Pharmaceutical and Biotech Litigation,” IP Osgoode Intensive IP Course (Course Lecturer), September 2, 2011.
- “Intellectual Property Law and the Pharmaceutical Industry” (course coordinator and speaker), National Pharmaceutical Sciences Group, PSG Certification Program, June 2011.
- “Intellectual Property Institute of Canada (IPIC)’s Annual Trade-mark Law Update Webinar” (moderator), March 2011.
- “Canadian Bar Association Skilled Lawyer Series - Objections/Evidence (Counsel),” teaching video filmed June 2010.
- “Canadian Bar Association Skilled Lawyer Series - Motions (Counsel),” teaching video filmed June 2010.
- “Advocacy Before the Federal Court in Intellectual Property Matters - Motions That Matter” (moderator), Intellectual Property Continuing Legal Education Program in IP Advocacy, Canadian Bar Association, May 13, 2010.
- “IPIC’s Annual Trade-mark Law Update Webinar” (moderator), April 2010.
- “Intellectual Property Law and the Pharmaceutical Industry” (course coordinator and speaker), National Pharmaceutical Sciences Group, PSG Certification Program, June 2009.
- “IPIC’s Annual Trade-mark Law Update Webinar” (moderator), April 2009.
Memberships and activities
- Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
- Law Society of Upper Canada
- Canadian Bar Association, Intellectual Property Section
- Continuing Legal Education Committee
- Intellectual Property Institute of Canada
- Litigation Committee
- Forums and Seminars Committee
- The Toronto Intellectual Property Group
- American Bar Association
- Intellectual Property Section