Judith Robinson
Partner, Lawyer, Trade-mark Agent
Judith Robinson is regional chair of our Quebec intellectual property practice and practises as a barrister, solicitor and trade-mark agent in all areas of intellectual property law, with a particular emphasis on intellectual property litigation before the courts and alternative dispute resolution. She is also active in various administrative law matters that arise in relation to intellectual property rights, including the representation of clients before administrative tribunals and judicial review applications to the Federal Court.
As regards trial work, Ms. Robinson was lead counsel to Bell Helicopter Textron Canada Limited in a patent infringement and validity trial that was heard in the first quarter of 2011 (judgment taken under reserve). She led a team to a successful judgment in 2008 that the Servier perindopril patent was valid and infringed, defeating a counterclaim that asserted anti-competitive practices. Prior to that, she was counsel to Merck in obtaining a judgment of infringement and validity of Merck’s patent for lisinopril. She has particular experience in expedited trial procedure, including her role as counsel on a “test case” fast-track patent action before the Federal Court. Ms. Robinson is also involved in the damages assessment phase of intellectual property litigation.
In the pharmaceutical sector, Ms. Robinson has been active in litigation and strategic work related to the Patented Medicines (Notice of Compliance) Regulations since the introduction of this regime in 1993, as well as the subsequent data protection legislation. She also counsels clients on various regulatory matters.
The solicitor work in which she is involved includes freedom to operate, validity and infringement opinions across a variety of industries, as well as commercial agreements.
Ms. Robinson was chair of the Montréal intellectual property group from 2005 to 2011.
Year of registration
Canada (trade-marks) 1992
Law school
LL.B./B.C.L., McGill University, 1990
Education
B.A., Psychology - Neuropsychology and Neurophysiology, McGill University, 1985
Selected client work
- Bell Helicopter Textron Canada Limited
- Cephalon
- E.I. du Pont de Nemours and Company
- GlaxoSmithKline Inc.
- Merck Canada Inc.
- Merck Sharp & Dohme Corp.
- Pfizer Canada Inc.
- Pfizer Inc.
- Sanofi-aventis Canada Inc.
- Servier Canada Inc.
Speaking engagements
Ms. Robinson is regularly asked to give presentations on intellectual property law, including the following:
- “L’éthique dans la pratique du droit,” Les femmes en droit - La pratique du droit dans le contexte actuel, Montréal, December 2, 2011.
- “From Hair Tonic to Medicines and Beyond: A View of the Federal Courts and Intellectual Property,” Federal Courts Education Seminar, Ottawa, October 27-28, 2011.
- “Utility, Sound Prediction and Selection Patents - Clarifying Canadian standards and their impact on patent drafting, prosecution and litigation,” 9th Annual Forum on Pharma Patents, The Canadian Institute, Toronto, November 5, 2010.
- “Conflagration of Sufficiency of Disclosure and Utility,” IPIC 84th Annual Meeting, Fairmont Le Château Frontenac, Québec, October 15, 2010.
- “Interaction avec la Loi sur la concurrence; détermination de l’invention; la prédiction valable,” Quebec Bar Continuing Education, Hôtel InterContinental, Montréal, November 13, 2009.
- “Best Practices at Trial,” Federal Court Annual Seminar, Montréal, October 7, 2009.
- “2009 Advocacy before the Federal Court in Intellectual Property Matters CLE - To Appeal or Not To Appeal,” Hilton Lac-Leamy, Gatineau, Quebec, April 30, 2009.
- “Patent Infringement Cases - Trials and Tribulations,” Toronto Intellectual Property Group, King Edward Hotel, Toronto, November 5, 2008.
- “Patent Opinions and Litigation - Part 2: In the Thick of the Action,” IPIC 82nd Annual Meeting, Four Seasons Hotel, Toronto, October 16, 2008.
- “Patent Litigation in Canada,” IPO Annual General Meeting, Hotel Del Coronado, San Diego, California, September 2008.
- “Does Canada Recognize a Regulatory or Experimental Use Exception to Patent Infringement,” BIO 2006, McCormick Place Convention Center, Chicago, Illinois, April 12, 2006.
Rankings and recognitions
- Benchmark Canada, 2012-2013 - recognized as a local litigation star in Quebec
- LEXPERT, 2012 - Leading US/Canada Cross-Border Litigation Lawyer, Intellectual Property
- Best Lawyers in Canada, 2013 - Biotechnology Law, Intellectual Property Law
- IAM Patent 1000 - World’s Leading Patent Practitioners, 2012
- Canadian Legal Lexpert Directory, 2012: recommended in Biotechnology, Litigation - Intellectual Property and Intellectual Property
- Chambers Global: The World’s Leading Lawyers for Business, 2011-2012: Intellectual Property: Litigation
- Best Lawyers in Canada, 2012 - Intellectual Property Law
- The International Who’s Who of Life Sciences Lawyers, 2012
- IAM Patent Litigation 250 - The World’s Leading Patent Litigators 2011
- IAM Life Sciences 250 - The World’s Leading Life Sciences Patent Litigators 2011
- The International Who’s Who of Patents Lawyers, 2011-2012
- The Legal Media Group Guide to the World's Leading Patent Law Practitioners
- PLC Which lawyer?, 2010-2011 - Life Sciences: Patent Litigation; Intellectual Property: Patent Litigation
- European Counsel Life Sciences Industry Report
Memberships and activities
- Intellectual Property Institute of Canada ( IPIC)
- Intellectual Property Owners Association (IPO)
- Antitrust & Competition Law Committee
- Licensing Executives Society (LES)
- Canadian Bar Association
- BIOTECanada
- BioQuébec