Professionals

Sheldon Hamilton
Partner, Toronto
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 416.593.5514
Fax: 416.591.1690
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YEAR OF CALL
Ontario Bar 1992
QUALIFICATIONS
  • University of Toronto B.A.Sc. (Chemical Engineering) 1987
  • University of Toronto LL.B. 1990
  • Registered Trademark Agent 1995
  • Registered Patent Agent 1996
 

Sheldon Hamilton has been recognized as one of Canada’s leading patent litigation lawyers. For close to 20 years, Sheldon has acted as counsel for many of the world’s most innovative companies in relation to commercially significant products. Sheldon has particular experience in pharmaceutical litigation, appearing as both trial and appellate counsel, including in proceedings under the Patented Medicines (Notice of Compliance) Regulations. Sheldon has extensive trial experience focusing on issues of patent infringement and validity, and damage quantification.

Sheldon has been recognized by a range of leading Canadian and international publications, including IAM Patent Litigation 250 — The World's Leading Patent Litigators, IAM Life Sciences 250 – The World’s Leading Life Sciences Patent Litigators, Benchmark Canada, Chambers Global, and The Best Lawyers in Canada.

Sheldon writes and speaks on intellectual property issues and is active in committee work in a number of professional organizations.

During his off-hours, Sheldon is an avid runner, having completed 18 marathons including Boston (twice), New York, Chicago and Prague.


Rankings and recognition

  • Recognized in the 2015 edition of Who's Who Legal: Life Sciences
  • Recognized annually as an 'IP Star' since the inaugural edition in 2014 of Managing Intellectual Property’s IP Stars Handbook: Patents
  • Recognized annually in Who's Who Legal: Canada under Patents since 2013
  • Recognized annually since the inaugural Canada Chapter in 2013 of LMG Life Sciences as a 'Life Science Star' under Intellectual Property
  • Recognized annually since the inaugural edition in 2012 as a 'Local Litigation Star' in Benchmark Canada under Intellectual Property
  • Recognized in The Canadian Legal Lexpert® Directory under Intellectual Property since 2012 and Litigation - Intellectual Property since 2013
  • Recognized annually in Who's Who Legal: Patents since 2013
  • Recognized annually since the inaugural edition in 2012 of IAM Patent 1000 - The World's Leading Patent Practitioners under Litigation
  • Recognized annually in IAM Patent Litigation 250 — The World's Leading Patent Litigators since the inaugural edition in 2011
  • Recognized in IAM Life Sciences 250 – The World’s Leading Life Sciences Patent Litigators 2010
  • Listed in Chambers Global – The World’s Leading Lawyers for Business under Intellectual Property: Litigation, 2010-2011
  • Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2012
  • Recognized in the 2015 edition of Who’s Who Legal 100 under Intellectual Property
PRACTICE AREAS
Litigation
Pharmaceutical
Life Sciences
Life Sciences — Regulatory & Compliance
Energy
 

Proceedings under the Patented Medicines (Notice of Compliance) Regulations

AstraZeneca Canada Inc. et al v. Mylan Pharmaceuticals ULC et al, 2011 FC 1023 Court granted Order of prohibition rejecting generic's arguments of inutility and obviousness.

sanofi-aventis Canada Inc v. Pharmascience Inc., 2008 FC 782 — Court granted Order of prohibition following earlier finding that the generic was estopped from litigating the validity of the patent.

sanofi-aventis Canada Inc. v. Pharmascience Inc., 2007 FC 1057 — Court applied issue estoppel to preclude generic from litigating a second allegation of invalidity where the generic had initially failed on an allegation of invalidity and another generic had subsequently succeeded.

sanofi-aventis Inc. v. Laboratoire Riva Inc., 2007 FC 532 — Court would have found allegation of invalidity regarding compound patent not justified but ruled that it was bound by decision in another case that the same allegation was justified.

Aventis Pharma Inc. v. Pharmascience Inc., 2005 FC 340 — Allegation of invalidity not justified for compound patent.

AB Hassle v. Apotex Inc., 2005 FC 234 — Court applied issue estoppel to preclude generic from relitigating allegation of non-infringement and litigating allegation of invalidity that could have been raised in an earlier proceeding.

Astrazeneca AB v. Apotex Inc. and AB Hassle v. Apotex Inc., 2004 FC 761, 2004 FC 762 — Court permitted filing of further evidence related to testing of samples produced by generic.

AB Hassle v. Apotex Inc., 2003 FCT 771 — Allegation of invalidity of salt patent not justified.

AB Hassle v. Apotex Inc., 2002 FCT 931 — Allegation of non-infringement of formulation patents not justified.

Hassle v. Canada (Minister of National Health and Welfare), T-366-98 — Allegation of non-infringement of formulation patent not justified.

AB Hassle v. Canada (Minister of National Health and Welfare), T-1712-95 — Allegation of non-infringement of compound patent not justified on basis of non-infringing process; generic process is obvious chemical equivalent of patented process. Court prohibits Minister from issuing notice of compliance.


Patent infringement and validity actions

sanofi-aventis Canada Inc. v. Apotex Inc.; sanofi-aventis Canada Inc. v. Novopharm Inc., 2009 FC 676 — Actions for infringement and validity of compound patent and reference for damages. Cases proceeded to trial on all issues, including remedy, in two years.

Merck & Co. Inc. v. Apotex Inc., 2006 FC 524 — Compound patent valid and infringed; generic enjoined from further sale pending patent expiry and damages awarded to patentee and licensee.

Apotex Inc. v. Syntex Pharmaceuticals International Ltd., T-2870-96 — Sustained release formulation patent.


Applications for judicial review

AB Hassle v. Canada (Minister of National Health and Welfare) and AstraZeneca Canada Inc. v. Canada (Minister of Health), 2004 FC 377, 2004 FC 378 — Court granted motion allowing use of confidential information from one proceeding in a judicial review application.

Hoffmann-La Roche Ltd. v. Canada (Minister of National Health and Welfare), T-2309-98 — Court quashed notice of compliance issued to generic.


Appeals

Apotex Inc. v. sanofi-aventis Inc., 2008 FCA 394 — Court of Appeal upheld Trial Judge’s decision not to recuse herself from trial on the basis of reasonable apprehension of bias arising from an earlier decision by the same Judge.

Pharmascience Inc. v. sanofi-aventis Canada Inc., 2008 FCA 213 — Court of Appeal confirmed the application of issue estoppel where generic had failed on one allegation of invalidity and attempted to litigate a second allegation of invalidity on the basis of another generic's intervening success. The Court refused to allow the generic to relitigate.

Apotex Inc. v. Merck & Co., 2006 FCA 323 — Court of Appeal affirmed findings of infringement and validity of compound patent.

Pharmascience Inc. v. sanofi-aventis Canada Inc., 2006 FCA 210 — Court of Appeal dismissed motion by generic to have appeal dismissed as abuse of process.

Apotex Inc. v. AstraZeneca Canada Inc. and Apotex Inc. v. AB Hassle, 2004 FCA 226, 2004 FCA 227 — Court dismissed appeal from variation of protective Order allowing use of evidence from one proceeding in another proceeding.

Apotex Inc. v. AB Hassle, 2004 FCA 255 — Court of Appeal upheld trial decision permitting further evidence related to testing of samples provided by the generic.

Apotex Inc. v. AB Hassle, 2003 FCA 87 — Court of Appeal declined to admit fresh evidence on appeal.

Rhoxalpharma Inc. v. AB Hassle, 2002 FCA 147 — Court of Appeal affirmed decision that allegation of non-infringement regarding formulation patent was not justified.


Other

Laboratoires Servier v. Apotex Inc., 2008 FC 321 — Court quashed subpoenas issued at request of generic to patent attorneys involved in settlement of prior proceeding.

sanofi-aventis Canada Inc. v. Apotex Inc., 2008 FC 320 — Court dismissed in part motion by generic for relief from the implied undertaking not to use discovery documents from one proceeding for purposes of another proceeding.

Apotex Inc. v. Syntex Pharmaceuticals International Ltd., T-2870-96 — Court dismissed motion by generic for summary judgment related to sustained release formulation patent.

Memberships

  • Fellow, Intellectual Property Institute of Canada; member of the Litigation Committee; member of the Forums & Seminars Committee
  • Member, International Association for the Protection of Intellectual Property (AIPPI); member of Amicus Brief Committee (Q. 221)
  • Member and Director, The Advocates' Society
  • Member, Canadian Bar Association


Speaking engagements

  • "Litigating Biosimilars in Canada," C5’s Pharmaceutical & Biotech Patent Litigation Conference, Amsterdam, Netherlands, March 2016
  • "Updates on the Non-infringing Alternative Defence, Promise and Utility/Sound Prediction and Expert Blinding," Toronto Intellectual Property Group’s: Hot Topics in Phama Patent Cases, Toronto, March 2016
  • “Working With Experts after Moore v. Getahun: Retainers, Communications and report Development,” The Advocates' Society, Toronto, May 2015
  • “Intellectual Property in Pharmaceuticals and Biotech Industries” (moderator), China Intellectual Property & Innovation Summit 2015, Shanghai, China, April 2015
  • “Cross-Border Litigation Strategies: Planning, Managing and Reacting to Patent Enforcement Proceedings in Concurrent Jurisdictions,” C5’s 7th Forum on Pharma & Biotech Patent Litigation, Amsterdam, March 2015
  • "Biotech patenting in Canada: The view from the Supreme Court," presented at the Technology and Intellectual Property (TIP) Conference at University of Toronto, Faculty of Law, March 2014
  • "Litigation Friendly Patents" (moderator), IPIC Annual Meeting, Halifax, October 2014
  • "Analysis of the Ground breaking Case of Association for Molecular Pathology et al. v Myriad Genetics Inc., et al. and how it’s Aftermath Might Affect Your Patent Strategies in the US," C5's 6th Forum on Pharma & Biotech Patent Litigation, Amsterdam, January 2014
  • "Evaluating the Impact of the Supreme Court of Canada's Decision of Teva Canada v Pfizer on Patent Validity Challenges and Infringement Cases," The Canadian Institute's 11th Annual Forum on Pharma Patents, Toronto, October 2012
  • "Patent Damages in Canada: Who Owes What to Whom and When?" IPIC Annual Meeting, Vancouver, October 2012
  • "Navigating the potential minefield of pharmaceutical patents" (co-presenter: Colin B. Ingram), Benchmark Canada Cross-Border Litigation Forum, New York, September 2012
  • Panel discussion: "Canada and the World," AIPLA Comparative Intellectual Property Law Symposium, Ottawa, April 2012
  • "Develop Strategies to Protect or Challenge Exclusivity In Patent Regime," The Canadian Institute's 10th Annual Forum on Pharma Patents, Toronto, October 2011
  • Co-chair, Insight Information’s 9th Conference on Drug Patents in Canada, May 2010

Publications

  • "A Bird's Eye View Of The Canadian Patent Landscape." (co-author: Daphne Lainson), Corporate Counsel IP Canada Report, August 2013
  • "The disclosure bargain," The Patent Lawyer, January/February 2013
  • "The patent-regulatory regime in Canada" (co-author: Nancy P. Pei), Pharmaceutical Patent Analyst, November 2012, Vol. 1, Issue 5
  • "Supreme Court of Canada: VIAGRA patent "void" for insufficient disclosure" (co-authors: Colin B. Ingram and Gunars A. Gaikis), IP Update — Canada, November 8, 2012; Lexology, November 8, 2012; Mondaq, November 9, 2012; International Law Office Intellectual Property Newsletter, December 3, 2012
  • "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada" (co-authors: Steven B. Garland and Amelia Choi), Patent World, October 2007
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