Geoffrey North



t: 613.854.6953
gnorth@anticipatelaw.com

Geoffrey North is the founder of anticIPate  Law. He had previously practiced in the intellectual property and litigation groups for two of the largest, full-service law firms in Canada before realizing that there was a better way to meet the needs of clients.

Geoffrey is the only intellectual property lawyer in Canada with degrees in both computer science and biology/environmental science. This has provided him with the intimate knowledge necessary to assist clients in the computer software, computer technology, bioinformatics, pharmaceutical, health care, medical devices, telecommunications, and oil and gas industries. Geoffrey has also become an expert in the sporting goods, marine technologies, financial quantitative and technical analysis, and unmanned autonomous vehicle / drone industries. He has also advised clients on administrative and regulatory matters under the Food and Drugs Act, Hazardous Products Act, Ontario Water Resources Act, Environmental Protection Act, Pesticides Act, Environmental Assessment Act, Fisheries Act, Species at Risk Act, Safe Drinking Water Act, and associated regulations.

In addition, Geoffrey has become intimately familiar with and has overseen patent infringement and separate re-examination patent validity proceedings in China, as well as issues concerning China’s Customs Intellectual Property Protection System.

Geoffrey has appeared before the Ontario Superior Court, the Federal Court and the Federal Court of Appeal.

Geoffrey’s practice has focused largely on:

• infringement/impeachment actions under the Patent Act;
• litigation under the Patented Medicines (Notice of Compliance) Regulations;
• litigation under the Industrial Design Act and Trade-marks Act;
• infringement actions under the Copyright Act;
• conducting IP clearance searches;
• drafting and prosecuting patent applications before the Canadian Intellectual Property Office and United States Patent and Trademark Office;
• providing freedom to operate and patent validity opinions;
• preparing and prosecuting industrial design and trade-mark applications before the Canadian Intellectual Property Office;
• drafting intellectual property license agreements;
• drafting IP sections of share and asset purchase agreements;
• performing IP due diligence for corporate transactions; and
• assisting tech start-ups with all of their intellectual property needs.

Osgoode Hall Law School (LL.B., 2001); Trent University (Hon. B.Sc. Biology & Envir. Sci., 1998); University of Western Ontario (B.Sc. Computer Sci., 1994).
Infringement and Invalidity Actions under the Patent Act, Trade-marks Act, Industrial Designs Act, and Copyright Act

The D Drops Company Inc. et al. v. Nutralab Canada Corp. (T-1975-15): patent infringement action in relation to a pharmaceutical composition, as well as trade-mark infringement concerning numerous trade-marks and packaging trade dress.

Grit Inc. v. Costco Wholesale Canada Ltd. et al. (T-1360-15): industrial design infringement action in relation to a sports equipment carrier, as well as trade-mark infringement to a distinguishing guise of a hockey bag design.

Malenger Inc. v. Winnwell Clean Hockey Inc. et al. (T-1554-13): infringement action in relation to a sports equipment rack.

Grit Inc. v. Sport Maska Inc. (Reebok CCM) (T-2130-12): infringement action in relation to a sports equipment carrier, as well as an industrial design and distinguishing guise trade-mark to a hockey bag design.

Pfizer Limited v. ratiopharm inc., Court File No. T-1712-07 (FC): impeachment action in relation to the ‘393 patent respecting the drug amlodipine besylate (Norvasc).

L.A. Printex Industries Inc. v. La Senza Inc., Court File No. T-1174-09: copyright infringement action in relation to 4 artistic designs incorporated into textiles.

Janssen-Ortho Inc. et al. v. Novopharm Limited, 2006 FC 1234, aff’d 2007 FCA 217: infringement/validity action in relation to the ‘080 patent respecting the drug levofloxacin (Levaquin).

Patented Medicines (Notice of Compliance) Regulations

Merck & Co., Inc. v. Pharmascience Inc., 2010 FC 510: dismissing Merck’s application in relation to the ‘457 patent respecting the drug finasteride (Propecia).

Pfizer Canada Inc. v. Novopharm Limited, 2008 FC 674, aff’d 2008 FCA 263: dismissing Pfizer’s application in relation to the ‘748 patent respecting the drug Viagra as an abuse of process.

Abbott Laboratories Limited v. ratiopharm inc., 2006 FCA 187: dismissing Abbott’s appeal from an order dismissing their application in relation to three (3) patents respecting the drug clarithromycin in 250/500 mg tablet strength (we successfully introduced the concept of inherent anticipation into Canadian law).

Janssen-Ortho Inc. et al. v. Novopharm Limited, 2005 FC 1603: dismissing Janssen’s application in relation to the drug levofloxacin in 5 mg/mL strength for I.V. administration as an abuse of process.

Patent Prosecution

• Drafting and prosecuting patent applications related to computer implemented inventions, business methods, pharmaceutical products, sports equipment, oil and gas technology, drone technology, vision guided robotic technology, power generation units, and medical and mechanical devices, etc. before the CIPO and USPTO; drafting Protests and Filing of Prior Art.
Industrial Designs

• Preparing and prosecuting industrial design applications related to mechanical devices and tools, electronic devices and accessories, household items, and sporting goods before the CIPO.

Trademarks

• Preparing and prosecuting applications (including distinguishing guise applications); opposition proceedings (including both regular marks and “colour, shape and size” pharmaceutical marks); section 45 proceedings.

Environmental Work

• Assisting clients with obtaining / compliance with regulations and conditions set in any Certificate of Approval (CoA’s are required for facilities that discharge contaminants to the ground or surface water, release emissions to the atmosphere, or process, store, transport or dispose of waste, and the like).

 

Geoffrey was an associate editor of the Canadian Patent Reporter, one of Canada’s renowned intellectual property reports, from 2004 to 2008. He was tasked with editing and headnoting precedent-setting intellectual property judicial and board decisions from across Canada.

Geoffrey re-wrote the “Patented Medicines” section in the Intellectual Property Law of Canada text, published by Juris Publishing and was also the lead author of Stikeman Elliott’s “Patents” and “Litigation” posts in the firm’s Canadian Technology & IP Law blog.

Geoffrey has also been published in the official newsletter of the New York State Bar Association Intellectual Property Law Section (Bright Ideas).

Education

Osgoode Hall Law School (LL.B., 2001); Trent University (Hon. B.Sc. Biology & Envir. Sci., 1998); University of Western Ontario (B.Sc. Computer Sci., 1994).

Representative work

Infringement and Invalidity Actions under the Patent Act, Trade-marks Act, Industrial Designs Act, and Copyright Act

The D Drops Company Inc. et al. v. Nutralab Canada Corp. (T-1975-15): patent infringement action in relation to a pharmaceutical composition, as well as trade-mark infringement concerning numerous trade-marks and packaging trade dress.

Grit Inc. v. Costco Wholesale Canada Ltd. et al. (T-1360-15): industrial design infringement action in relation to a sports equipment carrier, as well as trade-mark infringement to a distinguishing guise of a hockey bag design.

Malenger Inc. v. Winnwell Clean Hockey Inc. et al. (T-1554-13): infringement action in relation to a sports equipment rack.

Grit Inc. v. Sport Maska Inc. (Reebok CCM) (T-2130-12): infringement action in relation to a sports equipment carrier, as well as an industrial design and distinguishing guise trade-mark to a hockey bag design.

Pfizer Limited v. ratiopharm inc., Court File No. T-1712-07 (FC): impeachment action in relation to the ‘393 patent respecting the drug amlodipine besylate (Norvasc).

L.A. Printex Industries Inc. v. La Senza Inc., Court File No. T-1174-09: copyright infringement action in relation to 4 artistic designs incorporated into textiles.

Janssen-Ortho Inc. et al. v. Novopharm Limited, 2006 FC 1234, aff’d 2007 FCA 217: infringement/validity action in relation to the ‘080 patent respecting the drug levofloxacin (Levaquin).

Patented Medicines (Notice of Compliance) Regulations

Merck & Co., Inc. v. Pharmascience Inc., 2010 FC 510: dismissing Merck’s application in relation to the ‘457 patent respecting the drug finasteride (Propecia).

Pfizer Canada Inc. v. Novopharm Limited, 2008 FC 674, aff’d 2008 FCA 263: dismissing Pfizer’s application in relation to the ‘748 patent respecting the drug Viagra as an abuse of process.

Abbott Laboratories Limited v. ratiopharm inc., 2006 FCA 187: dismissing Abbott’s appeal from an order dismissing their application in relation to three (3) patents respecting the drug clarithromycin in 250/500 mg tablet strength (we successfully introduced the concept of inherent anticipation into Canadian law).

Janssen-Ortho Inc. et al. v. Novopharm Limited, 2005 FC 1603: dismissing Janssen’s application in relation to the drug levofloxacin in 5 mg/mL strength for I.V. administration as an abuse of process.

Patent Prosecution

• Drafting and prosecuting patent applications related to computer implemented inventions, business methods, pharmaceutical products, sports equipment, oil and gas technology, drone technology, vision guided robotic technology, power generation units, and medical and mechanical devices, etc. before the CIPO and USPTO; drafting Protests and Filing of Prior Art.
Industrial Designs

• Preparing and prosecuting industrial design applications related to mechanical devices and tools, electronic devices and accessories, household items, and sporting goods before the CIPO.

Trademarks

• Preparing and prosecuting applications (including distinguishing guise applications); opposition proceedings (including both regular marks and “colour, shape and size” pharmaceutical marks); section 45 proceedings.

Environmental Work

• Assisting clients with obtaining / compliance with regulations and conditions set in any Certificate of Approval (CoA’s are required for facilities that discharge contaminants to the ground or surface water, release emissions to the atmosphere, or process, store, transport or dispose of waste, and the like).

Publications

Geoffrey was an associate editor of the Canadian Patent Reporter, one of Canada’s renowned intellectual property reports, from 2004 to 2008. He was tasked with editing and headnoting precedent-setting intellectual property judicial and board decisions from across Canada.

Geoffrey re-wrote the “Patented Medicines” section in the Intellectual Property Law of Canada text, published by Juris Publishing and was also the lead author of Stikeman Elliott’s “Patents” and “Litigation” posts in the firm’s Canadian Technology & IP Law blog.

Geoffrey has also been published in the official newsletter of the New York State Bar Association Intellectual Property Law Section (Bright Ideas).