How Do Intellectual Property Lawyers Interact Within a Larger Company?

During my time at Apotex, I had the opportunity to learn how the Global Intellectual Properties (GIP) group interfaced with some of Apotex’s other departments. Sometimes these interactions were in the form of regularly scheduled meetings, where a lawyer and representatives from other departments would meet to discuss the progress that is being made on Apotex products. Whether the interactions were more or less formal, scheduled or spontaneous, one thing was clear: in-house lawyers work hard to support every area of the company that requires their assistance. 

What is the Role of In-House Counsel?

Prior to beginning my Apotex internship, I was a bit unclear on what work was performed by in-house lawyers, rather than by external counsel. Throughout my internship, I was able to learn how various legal tasks were delegated.

The in-house legal team is tasked with advising the company, helping to make decisions about the best way to proceed in certain situations, and managing the tasks assigned to external counsel. In-house lawyers are also involved with drafting documents and revising external lawyers’ work. As in-house lawyers understand the specific nature and quality of work that is required and the needs of their company, they are best-equipped to critically review incoming work and act as a liaison between the organization and the external law firm.

What Did I Do?

At Apotex, I completed tasks for a number of lawyers and experienced a wide range of work as a result. My largest project was to draft a Notice of Allegation; the originating document for proceedings under the . I completed various research tasks, including determining the litigation status of relevant cases. I learned how to critically review a patent, its file-wrapper, and prior art documents to determine what invalidity and/or non-infringement arguments might plausibly be made. This type of assignment provides an opportunity for in-house counsel to assist in drafting legal documents and to critically review work done by external firms.

My work was not limited to patents.  I also gained exposure to trade-mark matters and corporate/commercial work. For the latter, one of my tasks was to draft a corporate policy from existing documents and memorandum. I then reviewed the current documents to determine whether they were compliant with the draft policy, and to note any ways in which their compliance could be enhanced.

What About the Employees?

I have left the best for last – everyone with whom I interacted at Apotex was great. My supervisor was very helpful, glad to answer all of my questions, and ensured I was exposed to as much of the company and its work as possible. Our daily meetings provided an opportunity to discuss my progress, and his door was always open for any unscheduled meetings, as well. Everyone else who worked in the department was friendly, and happy to help in my learning experience. I was grateful for the experience, and, at the same time, felt I was able to contribute to the department.

Would I Recommend the IP Intensive Generally, and Working at Apotex in Particular?

Absolutely! The IP Intensive is a great way to become exposed to the IP community, and begin to learn some of the tasks that IP lawyers seek to accomplish. Working in an in-house environment will certainly provide a different perspective from working in a firm, as each has different responsibilities and focuses.

For anyone interested in completing an internship at Apotex, my experience was fantastic and I was able to learn a lot in my short time with the company. If you are interested in patent (and perhaps some trade-mark and corporate) law, this might be the right experience for you!

Amanda Legeny is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a reflective blog about their internship experience.

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The Pharmaceutical Patent Regime

Several changes to Canada’s pharmaceutical patent regime were desired by Europe, and . Canada has agreed to allow a patent term extension (PTE) of up to two years. Additionally, the dual proceedings for patents – prohibition applications under the Patented Medicine (Notice Of Compliance) Regulations 1993 (as amended) for regulatory matters, followed by a court determination of patent validity or infringement – will likely be reformed. This second change is coupled with the newly acquired ability of brand companies to appeal an adverse PM(NOC) decision. However, the Canadian data and marketing exclusivity periods will , respectively, rather than move to the European period of 10 years. (To see past IPilogue coverage on this topic, click .)

These changes have predictably elicited polarized viewpoints. The Canadian Generic Pharmaceutical Association (CGPA) commended , but voiced their disappointment of others, including the PTE. The CGPA is pleased with the expected discontinuation of the dual litigation practice, the recognition of the generic pharmaceutical industry’s importance in Canada, and the limitations placed on the use of the PTE. Notably, a suggests that the PTE’s annual increased cost, even with the two year maximum, will range from $850 million to $1.65 billion.

By contrast, it was alleged in January 2013 that in Canada. Opinions nonetheless differ on whether brand companies have met previous promises to increase R&D in Canada in exchange for improved patent protection.

Whether these two changes are good for Canadians or not remains to be seen. Can the predicted annual cost of the PTE to Canadians be offset? The federal government’s will not help those paying for prescriptions out of their own pocket, and lacked any assurance that reimbursement will continue in the long term. Pharmaceutical companies may perhaps decrease their product costs in response to lower litigation costs, or may conduct more research in Canada – but probably not sufficient to offset the high PTE cost.

Geographical Indications

Protecting Geographical Indications (GIs) was another important aspect of CETA. Until now, the only GI protection in Canada has been for . Otherwise, GIs are protected under or as certification marks under the . These laws have not always protected European GI producers against prior Canadian users, as occurred with the Parma ham GI in . In Europe, GI protection is largely and is potentially available for any foodstuff or beverage, although some countries such as the UK have also long had a scheme like Canada’s and have also protected GIs under the law of unfair competition or false marketing.

Under CETA, Canada has agreed to increase the scope of GI protection to include . Areas that will remain unchanged in Canada include: words commonly used to describe items (Black Forest ham), generic plant names (kalamata olives), and components of longer terms, which can all still be used in association with wares. For other items, such as Asiago cheese, current users can continue to use the term, but future users are prohibited. It has not been indicated whether Canadian GIs can be protected in Europe. However, even if this protection is reciprocal, the limited use of GIs by Canadian producers suggests from the additional protection.

While existing Canadian trade-marks will , it seems that previously blocked European GIs, even if potentially confusing with Canadian trade-marks, may now be used in Canada. Thus, the European Commission has claimed that Prosciutto di Parma can in Canada. The possibility of harm to existing Canadian trade-mark owners and consumer confusion over the source of the two products becomes quite real. Consumer impact can of course be viewed as either a benefit (increased choice) or a detriment (confusion) but the potential harm to Canadian producers with valid trade-marks, coupled with the limited GI use by Canadian producers, suggests a clear victory for Europe in this sector.

Conclusion

In light of CETA’s impact on patent law and GIs, Canada appears to have lost the IP game to Europe. Whether this preliminary assessment holds true once the full text of CETA is released, and is applied in Canada, remains to be seen.

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