Nathaniel Lipkus

Nathaniel is an intellectual property litigator and strategist, with an emphasis on patent, commercial IP and life sciences regulatory issues. He is also a registered Canadian patent and trademark agent.

Nathaniel has represented numerous companies in a wide variety of industries in patent proceedings across Canada and pro hac vice in the United States. He has successfully argued leading cases on patent eligibility in the life sciences and software fields. He has also litigated trademark, copyright, trade secret and other commercial matters. Nathaniel was lead counsel for the Children’s Hospital of Eastern Ontario in Canada’s only patent litigation involving claims to human genes, representing the hospital pro bono.

Nathaniel has also advocated on behalf of life sciences clients before numerous regulatory agencies in Canada and the United States on intellectual property, regulatory approval, pricing and reimbursement, and antitrust matters. This advocacy involves managing IP issues, removing barriers to health product approval, and law reform efforts.

In addition to his role as advocate, a significant part of Nathaniel’s practice is assisting emerging and high-growth companies with business-critical intellectual property issues, including IP in large acquisitions, strategic IP licensing, IP risk management, and IP structuring in ongoing operations. This work enables Nathaniel to engage with a high throughput of clients and IP issues at the cutting edge in a variety of technological fields.

Nathaniel also has a depth of experience advising on international trade-related intellectual property matters, having served as Chair of the Intellectual Property Institute of Canada’s IP Trade Policy Committee during Canada’s negotiation of the Canada-European Union Comprehensive Economic and Trade Agreement and Trans-Pacific Partnership.


Representative Work

  • Canalyst

    Canalyst in its acquisition by Tegus

  • Nicoya Lifesciences

    Nicoya Lifesciences in its acquisition of LSK Technologies

  • Inkbox Ink

    Inkbox Ink in its US$65 million acquisition by BIC

  • Agilysys

    Agilysys in its US$25 million acquisition of ResortSuite

  • Waabi

    Waabi in its launch and US$83.5 million Series A financing round

  • Echosec Systems

    Echosec Systems in its acquisition by The Tusker Fund

  • Teva Canada

    Teva Canada in the Federal Court’s strike of judicial review by Novo Nordisk Canada Inc.

  • Teva Canada

    Teva Canada in its successful patent proceeding

  • Sinclair Interplanetary

    Sinclair Interplanetary in its acquisition by Rocket Lab

  • Georgian Partners

    Georgian Partners in its Series C investment in Fiix Inc.

  • JMI Equity

    JMI Equity's $115 million investment in Vena

  • Husky Energy Inc.

    Husky Energy Inc. in its proposed acquisition of MEG Energy Corp. for $6.4 billion

  • Sanja Fidler

    Sanja Fidler in her appointment to lead Nvidia's new Toronto AI research facility.

  • EMR Capital

    EMR Capital in its announced agreement to acquire the Cerro Colorado mine in Chile from BHP Billiton Limited for an aggregate cost of up to US$320 million, US$50 million of which is contingent on the future price of copper.

  • Professor Raquel Urtasun

    Professor Raquel Urtasun in her hiring by Uber to lead a new Toronto-based research and development centre for its Advanced Technologies Group

  • Mylan Pharmaceuticals ULC

    Federal Court Rules in favour of Mylan Pharmaceuticals ULC in an anti-inflammatory combination drug patent case

  • Dialogue Health Technologies Inc.

    Dialogue in its acquisition by Sun Life Financial

  • Lead counsel in Children’s Hospital of Eastern Ontario v Transgenomic Inc gene patent litigation (T-2249-14)
  • Represented several complex pharmaceutical companies, chemical suppliers, energy, and gaming technology companies including:
    • Teva Canada in the Federal Court’s strike of judicial review by Novo Nordisk Canada Inc.
    • Teva Canada in its successful multi-party patent proceeding involving the drug rivaroxaban (XARELTO)
    • Mylan Pharmaceuticals ULC in numerous proceedings under the Patent Act and Patented Medicines (Notice of Compliance) Regulations in matters involving patent infringement, validity and damages
    • Halliburton Energy Services Inc. in cross-border oil well extraction technology patent litigation
    • Innovators in high-profile cross-border software patent litigation involving wireless email and financial services technology
    • Multiple gaming technology companies in patent and trade secret proceedings
    • Multiple pharmaceutical companies and chemical suppliers in patent infringement and Patented Medicines (Notice of Compliance) Regulations proceedings

Latest Insights

  • Video Apr 27, 2023

    Can AI be an inventor on a patent or author of a copyrighted work?

    Artificial intelligence (AI) proponents are testing the limits of today’s intellectual property laws. AI technologies, such as ChatGPT and DALL-E...

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    Can AI be an inventor on a patent or author of a copyrighted work?
  • Osler Update Nov 10, 2022

    PMPRB releases long-awaited draft guidelines regarding excessive drug pricing under new regime

    The Patented Medicine Prices Review Board (PMPRB) has updated its approach to excessive pricing. Osler’s Nathaniel Lipkus and Yael Mansour discuss...

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    PMPRB releases long-awaited draft guidelines regarding excessive drug pricing under new regime
  • Osler Update Aug 17, 2022

    Patty patents: Canadian courtroom grilling in the works?

    There is a new beef in the plant-based meat market, but you won’t find this one on the shelves of your local grocery store.

    Read more
  • Osler Update Jun 22, 2022

    Canadian Court again rejects problem-solution approach to subject-matter eligibility of computer-implemented patents

    The Federal Court of Canada has once again rejected the problem-solution approach to determining eligibility for computer-implemented patent...

    Read more
    Canadian Court again rejects problem-solution approach to subject-matter eligibility of computer-implemented patents
View all Insights

Awards and Recognition

  • Chambers Canada: Canada’s Leading Lawyers for Business: Recognized in Intellectual Property: Litigation
  • The Canadian Legal Lexpert Directory: Recognzied in Intellectual Property; Litigation – Intellectual Property; Life Sciences & Health
  • The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada: Recognized in Intellectual Property
  • Best Lawyers in Canada: Recognized in Intellectual Property Law
  • Legal 500: Recognized in Intellectual Property
  • Who’s Who Legal: Recognized in Life Sciences, Patent Litigation (International); Life Sciences (Canada); Patents
  • Intellectual Asset Magazine (IAM) Patent 1000: World’s Leading Patent Professionals: Recognized in Litigation as one of the world’s leading patent litigators
  • Thomson Reuters: “Stand-out Lawyer”
  • Managing Intellectual Property – IP Stars: Recognized as a Patent Star
  • LMG Life Sciences: Leading Lawyer (Intellectual Property)
  • World Intellectual Property Review (WIPR): Global Leader (2023)

Media Mentions

  • Osler News Apr 22, 2024

    Six Osler lawyers recognized by Who’s Who Legal Life Sciences — Canada

    Osler congratulations the six members of the firm who have earned the “Recommended” rating from Who’s Who Legal (WWL) Life Sciences — Canada.

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    Six Osler lawyers recognized by Who’s Who Legal Life Sciences — Canada
  • Osler News Jan 9, 2024

    34 Osler lawyers recognized in 2024 Lexpert/American Lawyer Guide to Leading 500 Lawyers in Canada

    Osler is pleased to announce that 34 of our lawyers have been recognized in the 2024 edition of the Lexpert/American Lawyer Guide to the Leading 500...

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  • Osler News Nov 23, 2023

    23 Osler lawyers recognized in Lexpert Special Edition: Litigation 2023

    23 Osler lawyers featured in the Lexpert Special Edition: Litigation 2023.

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  • Media Mentions Nov 16, 2023

    License to innovate – Glass Canada magazine

    Thorough research is essential when assessing the need for intellectual property protection.

    Read more
View all

Community Involvement

  • Counsel to Children’s Hospital of Eastern Ontario in Long QT human gene patent litigation
  • Provided assistance to Incentives for Global Health in respect of Health Impact Fund
  • Regular volunteer at Law Help Ontario at Ontario Superior Court of Justice, 2012-2014
  • Represented clients within Pro Bono Law Ontario Appeals Assistance Project

 


Speaking and Writing

Speaking Engagements

speaker 11/11/2019
Intellectual Property 101 for Emerging and High Growth Companies
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speaker 25/9/2019
The Osgoode Certificate in Intellectual Property (IP) Licensing
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speaker 29/1/2019
ACI’s 13th Annual Paragraph IV Disputes
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speaker 09/11/2018
Seventh Annual University of Toronto Patent Colloquium
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speaker 07/11/2018
Lunch & Law: Intellectual Property
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speaker 17/9/2018
Banking Roundtable: IP Considerations in Secured Lending Transactions
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speaker 22/1/2018
Protecting Your Intellectual Property in Innovative Collaborations
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speaker 23/5/2017
IP 101 for Emerging Companies: Protecting Your Ideas Your Way
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speaker 25/10/2016
The 13th Forum on Pharma Patents
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Published Work

Publications

  • Co-author of The Canadian Intellectual Property Guide (2018) published by the Chinese National Intellectual Property Administration (CNIPA – formerly SIPO).
  • Time to Revisit Exclusion of the Prosecution History in Patent Litigation (2015), 30(2) Canadian Intellectual Property Review 167 (with Matthew Frontini)
  • Patentability of New and Useful Arts in Canada: In Need of New and Useful Doctrine?, 27(1) Canadian Intellectual Property Review 61, 2011
  • The Evolution of Obviousness and Anticipation Law in Canada and the Impact on Pharmaceutical Litigation, Presented at 10th Annual Forum on Pharma Patents (October 26, 2011)
  • The risks of litigating drug patents in Canada, Managing Patents (online), 2010
  • Guidance for reconciling patent rights and disclosure of findings at scientific meetings (2010) Health Research Policy and Systems 2010, 8:15
  • Why you must prosecute with candour, Managing IP, February 2010, pages 24-26
  • Addressing Legal & Political Barriers to Global Pharmaceutical Access: Options for remedying the impact of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the imposition of TRIPS-plus standards (2008) Health Economics, Policy and Law (2008), 0:1-28
  • Follow-on Biopharmaceuticals: A New Frontier in the Battle between Brand and Generic (2007) Antitrust Health Care Chronicle
  • A Tale of Two Remedies: Rationalizing the Anton Piller Order in Canada (2006) 19(3) Intellectual Property Journal 459
  • How to Understand Product Development Public-Private Partnerships as Vehicles for Innovation in Combating Neglected Disease (2006) 10(1) Journal of Medicine & Law 385
  • Speaking Engagements

    • Testimony on behalf of IPIC at the House of Commons Standing Committee on International Trade with regard to balancing effective IP protection with the imperative of access to essential vaccines. April 16, 2021.
    • Conference Co-Chair, Canadian Institute, Pharma Symposium. March 31-April 1, 2015.
    • “The Fight against Counterfeit Drugs: Understanding the Problem and What We Can Do About It,”, Webinar for Pharmaceutical Sciences Group Members. October 23, 2014.
    • “CETA and TPP: How Trade Agreements are Transforming Canadian IP”, Presentation at Intellectual Property Institute of Canada 88th Annual General Meeting. October 17, 2014.
    • “Drug and Devices Hot Topics: Recent Patent Developments”, Panel Presentation at Food & Drug Law Institute’s Canada Conference. May 15, 2014.
    • “Where Regulation meets Litigation: How Courts are Used to Resolve Drug & Device Disputes”, Presentation at Pharmaceutical Sciences Group Annual Meeting. May 13, 2014.
    • “Patenting Life: Where Do We Draw the Line?”, Presentation at University of Toronto Faculty of Law Technology & Intellectual Property Law Conference. March 5, 2014.
    • “IP Management”, Presentation at MaRS Discovery District Entrepreneurship 101 Lecture Series.  November 20, 2013.
    • “Pharmaceutical Price-Setting: Nowhere to Go But Down?”, Presentation at Canadian Institute, 7th Annual Drug Pricing & Reimbursement Conference.  June 5, 2013.
    • “IP in the 21st Century – How International Trade Agreements are Transforming Global IP”, Webinar for Intellectual Property Institute of Canada Members.  May 22, 2013.
    • “Patent Wars”, Presentation at University of Toronto Faculty of Law Technology & Intellectual Property Law Conference. March 6, 2013.
    • “The Real Drug War: Pharma IP in International Trade Negotiations”, Presentation at Canadian Institute, 11th Annual Forum on Pharma Patents.  October 29, 2012.
    • “Biosimilars: You Ain’t Seen Nothing Yet”, Presentation at Canadian Institute, 6th Annual Drug Pricing & Reimbursement Conference.  June 11-12, 2012.
    • “Pharmaceutical Anticipation and Obviousness”, Presentation at Canadian Institute, 10th Annual Forum on Pharma Patents.  October 26, 2011.


Credentials

Education

  • University of Toronto, J.D./M.B.A. (Gold Medalist)
  • University of Toronto, B.Com. (Economics)

Languages

  • English

Professional Affiliations

  • Intellectual Property Institute of Canada – Treasurer (2022-2023)
  • The Advocates’ Society
  • Canadian Bar Association
  • American Bar Association