Jonathan Mesiano-Crookston


Jonathan graduated from Queen’s University with an Honours degree in biochemistry, and subsequently received his J.D. from the University of Western Ontario with a specialization in Information and Intellectual Property law.

He is also a registered Canadian patent and trade-mark agent, and won the IPIC Educational Award for receiving the top mark in Canada on the 2004 trade-mark agent’s exam.

Jonathan has significant experience with complex pharmaceutical litigation and has appeared before the Ontario Court of Justice, Ontario Superior Court, Ontario Court of Appeal, and Federal Court of Canada.

Jonathan is counsel to anticIPate Law.

Jonathan’s practice has focused largely on:

• litigation under the Patented Medicines (Notice of Compliance) Regulations;
• providing strength/weakness assessments of litigation positions;
• analyzing patents, and providing freedom to operate and validity opinions;
• health and drug-related matters involving advertising, labelling, drug approval, and reimbursement;
• computer / IT / technology matters;
• assisting artists, writers, producers, directors, dance studios, and other media and entertainment professionals with copyright, licensing, and litigation issues;
• computer / internet law and digital issues;
• privacy and access to information (i.e. PIPEDA, FIPPA and MFIPPA);
• dispute resolution, including arbitration and mediation;
• filing and prosecuting trade-mark applications through the Canadian Intellectual Property Office, and enforcing trade-mark rights;
• trade secrets;
• franchising; and
• civil and commercial litigation over a wide range of practice areas, including contract disputes, partnership disputes, construction lien, personal injury, negligence, and family law.

University of Western Ontario (JD); Queen’s University (BScH Biochem).
  • providing strategic advice to small- to mid-size companies, entrepreneurs, and start-ups, including about IP strategy and how to best protect their IP portfolios;
  • acting for clients on a number of private arbitrations and mediations;
  • successfully negotiated resolutions of numerous disputes in a wide variety of areas, including DMCA take-down notices, patent infringement claims, trade-mark infringement claims (including one for over a million dollars), copyright claims (including one for over $500,000), franchise disputes, and partnership disputes;
  • Abbott Laboratories v Canada (Health), 2009 FC 648 and 2010 FCA 168: represented generic pharmaceutical company in an application under the PM(NOC) Regulations and subsequent appeal in relation to extended-release clarithromycin drug products;
  • Abbott Laboratories v Canada (Health), 2008 FC 1359 and 2009 FCA 94: represented a generic pharmaceutical company in an application under the PM(NOC) Regulations and subsequent appeal in relation to extended-release clarithromycin drug products – this case was one of the first cases to discuss anticipation and obviousness after the Supreme Court of Canada decision in Sanofi-Aventis;
  • Nycomed Canada Inc. v Canada (Health), 2008 FC 555 and Nycomed Canada Inc. v Canada (Health), 2008 FC 541: represented generic pharmaceutical companies in motions under s. 6(5) of the PM(NOC) Regulations to dismiss those applications as abuses of process;
Jonathan has written articles for peer-reviewed academic journals and international publications on a wide range of subjects, including intellectual property, civil procedure, information, and franchising; and he has been quoted in legal newspapers and journals. Selected media appearances include:

  • Mesiano-Crookston, Jonathan. 2012. ”Trademark Case Hinges on Confusion”. Lawyers Weekly. May 4, 2012. This article originally appeared in the May 4, 2012, issue of The Lawyers Weekly published by LexisNexis Canada Inc.
  • Quoted in Julie King. 2012. ”Canadian Postal Codes Threatened in Copyright Lawsuit“. Published on CanadaOne.com, May 3, 2012.
  • Quoted in Judy Van Rhijn. 2012. “Federal Courts Invite Change”, Law Times March 12, 2012, page 11. The article dealt with changes to the Federal Courts Rules.
  • Jonathan Mesiano-Crookston. 2012. “Federal Court of Appeal clarifies that Canada has no bar on business method patents”, Intellectual Property magazine, February 2012, p. 75.

Jonathan is also the author of a very highly trafficked Canadian intellectual property law blog iplawincanada.ca.

Education

University of Western Ontario (JD); Queen’s University (BScH Biochem).

Representative work

  • providing strategic advice to small- to mid-size companies, entrepreneurs, and start-ups, including about IP strategy and how to best protect their IP portfolios;
  • acting for clients on a number of private arbitrations and mediations;
  • successfully negotiated resolutions of numerous disputes in a wide variety of areas, including DMCA take-down notices, patent infringement claims, trade-mark infringement claims (including one for over a million dollars), copyright claims (including one for over $500,000), franchise disputes, and partnership disputes;
  • Abbott Laboratories v Canada (Health), 2009 FC 648 and 2010 FCA 168: represented generic pharmaceutical company in an application under the PM(NOC) Regulations and subsequent appeal in relation to extended-release clarithromycin drug products;
  • Abbott Laboratories v Canada (Health), 2008 FC 1359 and 2009 FCA 94: represented a generic pharmaceutical company in an application under the PM(NOC) Regulations and subsequent appeal in relation to extended-release clarithromycin drug products – this case was one of the first cases to discuss anticipation and obviousness after the Supreme Court of Canada decision in Sanofi-Aventis;
  • Nycomed Canada Inc. v Canada (Health), 2008 FC 555 and Nycomed Canada Inc. v Canada (Health), 2008 FC 541: represented generic pharmaceutical companies in motions under s. 6(5) of the PM(NOC) Regulations to dismiss those applications as abuses of process;

Publications

Jonathan has written articles for peer-reviewed academic journals and international publications on a wide range of subjects, including intellectual property, civil procedure, information, and franchising; and he has been quoted in legal newspapers and journals. Selected media appearances include:

  • Mesiano-Crookston, Jonathan. 2012. ”Trademark Case Hinges on Confusion”. Lawyers Weekly. May 4, 2012. This article originally appeared in the May 4, 2012, issue of The Lawyers Weekly published by LexisNexis Canada Inc.
  • Quoted in Julie King. 2012. ”Canadian Postal Codes Threatened in Copyright Lawsuit“. Published on CanadaOne.com, May 3, 2012.
  • Quoted in Judy Van Rhijn. 2012. “Federal Courts Invite Change”, Law Times March 12, 2012, page 11. The article dealt with changes to the Federal Courts Rules.
  • Jonathan Mesiano-Crookston. 2012. “Federal Court of Appeal clarifies that Canada has no bar on business method patents”, Intellectual Property magazine, February 2012, p. 75.

Jonathan is also the author of a very highly trafficked Canadian intellectual property law blog iplawincanada.ca.