Professionals

Yoon Kang
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 1995
QUALIFICATIONS
  • University of Toronto B.Sc. (Microbiology and Genetics) 1988
  • University of Toronto M.Sc. (Molecular Biology and Medical Genetics) 1990; thesis titled Homologous recombination between transferred and chromosomal DNA: effects of linearizing the targeting vector at different sites
  • University of Toronto LL.B. 1993
  • Registered Patent Agent 1995
  • Registered Trademark Agent 1995
  • Registered to practise before the United States Patent and Trademark Office
 

Yoon Kang is a partner in the Toronto office where her practice has focused on patent litigation and prosecution for over 20 years. She also serves on the firm’s Shareholder Committee.

Yoon is responsible for leading the life sciences practice in the firm’s Toronto office. Yoon counsels global pharmaceutical innovators and research institutions on all aspects of patent rights including in small molecules and biologics inventions, and plays a leading role in the firm’s life sciences litigation practice. Yoon has significant experience as the lead counsel, representing pharmaceutical clients before the Federal Court and Federal Court of Appeal in complex patent litigation, including under the Patented Medicines (Notice of Compliance) Regulations. Most recently, Yoon and her team successfully appealed to the Supreme Court of Canada on the controversial question of “promised utility”.   The Supreme Court of Canada, in an important and highly anticipated decision, AstraZeneca Canada Inc v Apotex Inc (2017 SCC 36), rejected the “promise doctrine” and clarified the requirement for patent “utility” in CanadaThe unanimous decision represents an important victory for innovators seeking protection in Canada.


Rankings and recognition

  • Named 2014 Canadian Patent Non-contentious Attorney of the Year by LMG Life Sciences
  • Recognized annually since 2014 in Euromoney's Expert Guides: Women in Business law as a top female legal practitioner in the area of patents
  • Recognized in the 2015 edition of Euromoney's Expert Guides: Patents
  • Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2015 and recognized under Biotechnology Law in 2018
  • Recognized annually since the inaugural Canada Chapter in 2013 of LMG Life Sciences as a 'Life Science Star' under Intellectual Property
  • Recognized in Benchmark Canada 2015 under Intellectual Property
  • Recognized in the 2015 edition of Who's Who Legal: Patents and Life Sciences
  • Recognized annually in The Canadian Legal LEXPERT® Directory under Intellectual Property since 2010, Biotechnology since 2013 and Intellectual Property Litigation since 2015
PRACTICE AREAS
Patents
Litigation
Pharmaceutical
Life Sciences
Chemical & Industrial Biotechnology
Life Sciences — Regulatory & Compliance
Agricultural Sciences
 

Selected Cases:

Federal Court of Canada

Merck Frosst Canada Inc v Canada (Minister of Health), (2000) 8 CPR (4th) 87

AB Hassle v Canada (Minister of National Health & Welfare), (2000) 10 CPR (4th) 38

AB Hassle v Rhoxalpharma Inc, 2002 FCT 780

AB Hassle v Genpharm Inc, 2003 FC 1443

AstraZeneca AB v Apotex Inc, 2004 FC 71

Astrazeneca AB v Apotex Inc, 2004 FC 761

Apotex Inc v Canada (Minister of Health), 2004 FC 650

Aventis Pharma Inc v Apotex Inc, 2005 FC 1381

Astrazeneca Canada Inc v Apotex Inc, 2008 FC 1301

AB Hassle v Apotex Inc, 2008 FC 184

AstraZeneca Canada Inc v Apotex Inc, 2010 FC 714

AstraZeneca Canada Inc v Pharmascience Inc, 2012 FC 1189

AstraZeneca Canada Inc v Ranbaxy Pharmaceuticals Canada Inc, 2013 FC 232

AstraZeneca Canada Inc v Apotex Inc, 2014 FC 638


Appeals

Federal Court of Appeal

Merck Frosst Canada Inc v Canada (Minister of Health), 2001 FCA 192

AB Hassle v Genpharm Inc, 2004 FCA 413

AB Hassle v Apotex Inc, 2004 FCA 255

AB Hassle v Apotex Inc, 2006 FCA 51

Pharmascience Inc v Sanofi-Aventis Canada Inc, 2006 FCA 210

Apotex Inc v AB Hassle, 2008 FCA 416

AstraZeneca Canada Inc v Apotex Inc2015 FCA 158


Supreme Court of Canada

AstraZeneca Canada Inc v Canada (Minister of Health), 2006 SCC 49

AstraZeneca Canada Inc v Apotex Inc, 2016 SCC No 36654, granting leave to appeal from 2015 FCA 158

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
  • Member and past Co-Chair of the Patents and Industrial Design Committee, Canadian Bar Association


Speaking engagements

  • "A Focus on the Utility Doctrine" (co-presenter: Gunars Gaikis), The Canadian Insittue's 13th Forum on Pharma Patents, October 2016 
  • "Global Perspective on Post Grant Oppositions and Limitations," Life Sciences IP Summit 2015, Berlin, Germany, October 2015
  • "Pharmaceutical Patents," University of Toronto 2012 TIP conference, Toronto, February 2012
  • "Manning the Barricades: New Chapter 17 of the MOPOP — CIPO's Policies Concerning the Patentability of Biotechnology-related Inventions," Drug Patent and Legal Forum, Toronto, May 2009
  • "Year in Review – Litigation" (co-presenters: Gunars A. Gaikis and J. Sheldon Hamilton), Smart & Biggar's Pharma Patents 2008, November 2008
  • "2007: The Year in Review" (co-presenter: Gunars A. Gaikis) and "Litigation and Strategies Under the Patented Medicines (Notice of Compliance) Regulations" (co-presenter: J. Sheldon Hamilton), Smart & Biggar's Pharma Patents 2007, November 2007
  • "Canadian and U.S./Foreign Patent Office Practice" (co-presenter: David E. Schwartz), Smart & Biggar's Pharma Patents 2006, November 2006
  • "Developing and Managing Your Patent Portfolio – Maximizing Patent Life Cycles and Minimizing the Impact of Patent Expiry and Innovation Uncertainty," The Canadian Institute’s 5th Annual Forum on Pharma Patents, Toronto, October 2006
  • "Drafting and Prosecuting Pharmaceutical Patent Applications," 5th Annual Forum on Drug Patents, March 2006
  • "Maximizing Your Pharma Patent Protection," 4th Annual Forum on Pharma Patents, October 2005
  • "A Global Perspective of Patent Procurement and Litigation Issues for Biotechnology Inventions," Biotechnology Industry Organization Annual Conference, Philadelphia, PA, June 2005


Teaching activities

  • "Patent Law & Pharmaceuticals: What are the mandated provisions in Canada?" The Regulation of Pharmaceuticals, Osgoode Professional Development, Osgoode Hall Law School of York University, Toronto, June 2008
  • Presentation on Intellectual Property: Copyright, Trademark and Patent, University of Toronto Law School, Toronto, January 2008

Publications

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