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Steven Garland has 20 years of experience in intellectual property litigation of all types, including issues relating to patent, trade-mark, copyright, industrial designs, trade secrets and competition law. He has acted in many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, biotechnological, telephony, mechanical and industrial matters. Mr. Garland has appeared as counsel in intellectual property cases at both the trial and appellate levels of the Federal Court of Canada, in the Ontario Superior Court and Court of Appeal, and before the Supreme Court of Canada. He also regularly appears before the Patent Appeal Board and the Trade-marks Opposition Board. He has also been retained as a mediator in intellectual property disputes. A representative list of some of the parties on whose behalf Mr. Garland has acted is provided below.
Mr. Garland regularly acts on behalf of innovator pharmaceutical and biopharmaceutical companies in respect of patent related matters, including patent infringement actions and proceedings under the Patented Medicines (Notice of Compliance) Regulations.
Mr. Garland is a member of the firms' Executive Committee. He is the President of the International Association for the Protection of Intellectual Property (AIPPI) Canadian Group, and a Past President of the Intellectual Property Institute of Canada. He is also an adjunct professor at the University of Ottawa Law School, where he teaches patent law. Mr. Garland is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. He is also a member of the editorial board of the international publication Intellectual Property Magazine.
Mr. Garland (together with Colin B. Ingram and John R. Morrissey of Smart & Biggar) recently successfully represented Amazon.com in Amazon.com, Inc. v. Commissioner of Patents, 2010 FC 1011, 2011 FCA 328 in what has become a leading case regarding patentable subject matter, including computer implemented inventions and business methods, in Canada. The Federal Court decision was recognized as the 2010 Canadian Business Case of the Year, in the January 2011 issue of LEXPERT magazine.
Representative list of parties
3M Amazon.com Anchor Brewing Company Barmish Inc. Bauer/Nike Bayer Inc. Bombardier Clark Shoes DSM Dow Chemical Ferrari General Electric Glaxo Wellcome Harvard College (Harvard Mouse case) Imperial Tobacco Labatt Loeb IGA H. Lundbeck A/S McDonalds MCI Merz Pharma GmbH Nautica Pfizer Playboy Progressive Games sanofi-aventis Shell Canada Shoppers Drug Mart Shionogi & Co. Stamicarbon B.V. Takeda Vina Concha Y Toro
Rankings and recognition
- Selected to appear in Benchmark Litigation Canada 2012
- Recognized in IAM Patent Litigation 250 — The World's Leading Patent Litigators
- Selected by World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services
- Selected to appear in The Best Lawyers in Canada under Intellectual Property
- Recognized in The Canadian Legal LEXPERT® Directory under Intellectual Property and Litigation — Intellectual Property
- Listed in Chambers Global 2012 — The World's Leading Lawyers for Business under Intellectual Property: Litigation
- Listed in Euromoney's Guide to the World's Leading Patent Law Practitioners
- Listed in IAM Life Sciences 250 — The World's Leading Life Sciences Patent Litigators 2010
- Selected to appear in The International Who's Who of Patent Lawyers
- Recognized in The International Who's Who of Life Sciences Lawyers
- Recognized in Who's Who Legal: Canada 2011 under Patents
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Red Bull GmbH v. 9087-1047 Quebec Inc. 2011 TMOB 79
Corlac Inc. v. Weatherford Canada Inc. 2011 FCA 228 (for the Intervener IPIC)
Hortilux Schreder B.V. v. Iwasaki Electric Co. Ltd. 2011 FC 967
Amazon.com, Inc. v. Canada (Attorney General), 2010 FC 1011
Indigo Books & Music Inc. v. C. & J. Clark International Limited, 2010 FC 859
Copperhead Brewing Co. v. John Labatt Ltd. (1995), 61 C.P.R. (3d) 317
Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76
Lundbeck Canada Inc. v. ratiopharm Inc., 2009 FC 1102.
Eli Lilly and Company v. Apotex inc., 2009 FC 991
J2 Global Communications Inc. v. Protus IP Solutions Inc., 2009 FCA 42
Lundbeck Canada Inc. v. ratiopharm Inc., 2008 FC 579
Anchor Brewing Co. v. Sleeman Brewing & Malting Co., 2005 FCA 170
Sim & McBurney v. Anchor Brewing Co., 2005 FCA 171
Sleeman Brewing & Malting Co. Ltd. v. Anchor Brewing Co., 2005 FCA 170
Oakley Inc. v. Shoppers Drug Mart Inc., 2004 FCA 404
Anchor Brewing Co. v. Sleeman Brewing & Malting Co. Ltd., 2004 FC 384
Sim & McBurney v. Anchor Brewing Co., 2004 FC 118
Bauer Nike Hockey Inc. v. Regan, 2003 FC 1174
Diamant Toys Ltd. v. Jouets Bo-Jeux Toys Inc., 2002 FCT 384
Stamicarbon B.V. v. Urea Casale S.A., 2002 FCA 10
Andrés Wines Ltd. c. Vina Concha Y Toro S.A., 2001 FCT 575
President and Fellows of Harvard College v. Canada (Commissioner of Patents), [2000] 4 F.C. 528, 7 C.P.R. (4th) 1
Stamicarbon B.V. v. Urea Casale S.A., [2001] 1 F.C. 172, 8 C.P.R. (4th) 206
Osler, Harkin & Harcourt v. Canada (Registrar of Trade-marks), 77 C.P.R. (3d) 475
Allen & Hanburys, Ltd. v. Torpharm Inc., 75 C.P.R. (3d) 417
Central Transport Inc. v. Mantha & Associates, 59 C.P.R. (3d) 213
Mobil Oil Corp. v. Hercules Canada Inc., 57 C.P.R. (3d) 488
Bousquet v. Barmish Inc., (F.C.A.), 46 C.P.R. (3d) 510
Memberships
- Past President and Fellow, Intellectual Property Institute of Canada
- President, Canadian Executive Council for the International Association for the Protection of Intellectual Property (AIPPI)
- Member, American Intellectual Property Law Association
- Member, The Advocates' Society (Ontario)
- Member, Canadian Bar Association
Speaking engagements
- Participant in IPIC's 2012 Patent Law Update Webinar, February 24, 2012
- "Update on Patents 2012" Law Society of Upper Canada's 16th Annual Intellectual Property Law The Year in Review, Ottawa, January 13, 2012
- "IP Goes Digital – How the Internet Has Changed the Way We Look at IP Patents" (panelist) Law Society of Upper Canada's 16th Annual Intellectual Property Law The Year in Review, Ottawa, January 13, 2012
- "The Duty of Candour in Canada" presented at IPIC's Annual General Meeting, Chicago, IL, September 2011
- "The Weatherford Decision" presented at IPIC's The Weatherford Decision Webinar, Toronto, September 2011
- "Patent Law Review: The Top 20 of 2010," Presentation to CIPO Patent Examiners, Gatineau, QC, May 2011
- "Patentable Subject Matter: A Canadian Perspective," 2011 AIPLA Spring Meeting, San Francisco, May 2011
- "Update on Patents," Intellectual Property Institute of Canada webinar, March 2011
- "Canadian IP Law Update - Practical Tips and Information for U.S. Attorneys - Litigation," Smart & Biggar Seminar, Minneapolis, January 2011
- "Duty of Candour in Canada," Canadian Intellectual Property Office (CIPO) Patent Examiners, January 2011
- "2011 Patent Law Update," Law Society of Upper Canada's 15th Annual Intellectual Property: The Year in Review, Ottawa, January 2011
- "The Amazon.com decision and the patenting of business methods in Canada," Intellectual Property Institute of Canada webinar, December 2010
- "Duty of Candour in Canada," Canadian Institute's 9th Annual Forum on Pharma Patents, Toronto, November 2010
- "Update on Patents," Intellectual Property Institute of Canada Webinar — Patent Law Update, April 2010
- "Successful Management of IP Litigation and Dispute Resolution" (moderator), Canadian Corporate Counsel Association 2010 National Spring Conference, April 2010
- "Opening Statements & Closing Arguments," Federal Court Annual Education Seminar, Montreal, October 2009
- "Patent Law Update," Intellectual Property Institute of Canada Webinar — Update on Patent Law, April 2009
- "Update on Patents 2009," Law Society of Upper Canada's 13th Annual Intellectual Property Law: The Year in Review, Ottawa, January 2009
- "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 2008
- "Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions," WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, Geneva, Switzerland, May 2008
- "International and Comparative Patent and Trade Secret Protection: The Canadian Perspective," Intellectual Property Law Program, Oxford College, England, 2003, 2005, 2007
- "International Enforcement of Patents: Applications/Implications of Voda," Fourth Annual Intellectual Property Law Seminar, Howard University School of Law, Washington, DC, March 2007
- "Intellectual Property Rights: Practical Advice for the non-IP Practitioner," CCLA Continuing Education Program — Intellectual Property Rights, Ottawa, October 2006
- "Double Patenting and Patent Listing," AstraZeneca Patent Attorneys Workshop, Stockholm, Sweden, October 2006
- "Advocacy Before the Federal Court in Intellectual Property Matters — Trial Advocacy Part II — Examination in Chief," Canadian Bar Association Advocacy Program, Ottawa, May 2006
Teaching activities
- Patent Law, University of Ottawa, 1995-2007 and 2011-2012
Publications
- "The Duty of Candour in Canada" (co-author: Cameron P. Weir), Canadian Intellectual Property Review Vol. 27, No. 2 (December 2011), p. 219-256
"Canada and the duty of candour" (co-authors: Colin B. Ingram and Cameron P. Weir), Intellectual Property Magazine, November 2011
- "Amazon.com's 'single action ordering' patent application and the patenting of 'business methods' in Canada" (co-authors: John R. Morrissey and Colin B. Ingram), CBA Business & Corporate Bulletin, March 2011
- "An Update on the Scope of Patentable Subject Matter in Canada: The Amazon.com's "single action ordering" patent application and the patenting of "business methods" in Canada" (co-authors: Colin B. Ingram and John R. Morrissey), American Bar Association's LANDSLIDE magazine, May/June 2011
- Chapter Update – "Global Patent Litigation: Canada" (co-author: Kevin Graham), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, 2011
- "Amazon single action ordering patent and the scope of patentable subject matter in Canada," Intellectual Property Magazine, February 2011
- "Intellectual Property and Advisor/Client Privilege," AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, South Korea, November 15, 2009
- "Making IP Litigation in Canada More Attractive," Law360, August 7, 2009
- "Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal," AIPPI 41st World Intellectual Property Congress, Boston, September 6-11, 2008
- "Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions," WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, Geneva, Switzerland, May 22 and 23, 2008
- "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada," Patent World, October 2007
- "Recent Developments Lead to Changing Face (and Pace) of Patent Litigation in Canada," Patent World, 2007
- "Pharma Litigation Continues to Drive Canadian Patent Law," The Guide to the World's Leading Law Practitioners (Canada), 2007
- "Canada: Are Computer-Implemented Inventions Patentable?" World Focus: IP & High Technology, October 2006
- "Global Patent Litigation: Canada," Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006
"Canada and the Duty of Candour", Intellectual Property Magazine, (Fall 2011 ? - precise date not yet known)
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