Jane E. Caskey
Global Practice Leader - Intellectual Property, Partner, Lawyer, Trade-mark Agent
Jane Caskey is global practice leader of our intellectual property practice. She currently sits as a member of our Canadian management committee.
Ms. Caskey practises intellectual property law, including all aspects of trade-mark and patent litigation including expertise in remedies and damages references, trade-mark prosecution, and opposition work. She is also involved in advising clients on strategy, branding issues, identifying and commercializing IP rights, IP support in corporate commercial transactions and trade-mark portfolio management and strategy. Ms. Caskey has particular expertise in the pharma/life sciences industry.
Ms. Caskey has extensive experience as an advocate at both the trial and appellate levels and appears regularly before the Federal Court of Canada and the Superior Court of Justice of Ontario. She also participates in resolving client issues through negotiation/alternative dispute resolution and has broad experience as an advocate on arbitrations and mediations. Ms. Caskey is a frequent lecturer at Insight, The Canadian Institute, Federated Press and the Advocates’ Society, and has written articles on IP enforcement, counterfeiting, protection and licensing of IP rights.
Year of call
Year of registration
Canada (trade-marks) 2007
LL.B., McGill University, 1994
B.A. (Hons.), Western University, 1991
Selected client work
Ms. Caskey has acted for the following clients:
- Warner Chilcott plc in its acquisition and financing of Procter & Gamble's worldwide pharmaceuticals business for US$3.1 billion and its branding and marketing strategy and management
- Visa Canada Corporation for trade-mark strategy, prosecution, and litigation and in connection with its global restructuring of the Visa worldwide enterprise and its trade-mark rights worldwide
- Royal Bank of Canada in relation to its trade-mark litigation, oppositions, and prosecution, portfolio management and strategy for protection of IP rights
- GlaxoSmithKline in multiple patent infringement actions, trade-mark oppositions, and Damages References
- Eli Lilly in multiple patent infringement and Section 6 PM (NOC) proceedings
- Research In Motion (now BlackBerry) for advising on IP strategy and IP ownership protection
- Henkel Corporation for IP strategy and trade-mark protection, oppositions, and litigation
- Pfizer Ireland Pharmaceuticals in trade-mark and patent litigation regarding the import, distribution and sale of Cialis
- Dial Corporation for trade-mark infringement and comparative advertising against Apollo Inc. before the Federal Court of Canada
- Tamko Roofing Products, Inc. in trade-mark infringement and passing off litigation with Ideal Roofing Co. before the Federal Court of Canada
- “Disconnect in the Canadian Courts’ Approach to Drug Patents - Favouring Economic Rights over Exclusivity yet Falling Short on Compensation,” Insight, January 2006.
- “Intellectual Property License Agreements (Patents and Trade-marks): Obligations of the Licensee,” The Canadian Institute, December 8, 2004.
Rankings and recognitions
- Chambers Global: The World’s Leading Lawyers for Business, 2012-2013: Intellectual Property: Litigation
- World Trademark Review, 2013 - expert in enforcement and litigation
- Best Lawyers in Canada, 2013 - Intellectual Property Law
- Ranked “Excellent” under Patent Litigation and Trademarks by Leaders League: Innovation - Technology & Intellectual Property, 2011
- Lexpert’s Leading Litigators to Watch, 2008
- Lexpert’s Top 40 Under 40, 2007
Memberships and activities
- International Trademark Association (INTA)
- Canadian Bar Association
- Intellectual Property Owners Association (IPO)
- Intellectual Property Institute of Canada (IPIC)
- The Advocates’ Society
- IP Osgoode Law School
- Huron University College Corporation
- Women’s Law Association (former director)
- Society of Obstetricians and Gynaecologists of Canada (former director)