Sheldon Hamilton

Sheldon Hamilton

Key Details

Sheldon Hamilton
Smart & Biggar

  • Patents
  • Pharmaceutical


For more than 20 years, Sheldon Hamilton has acted as counsel for many of the world’s most innovative companies in relation to commercially significant products. He has particular experience in pharmaceutical litigation, appearing as both trial and appellate counsel, including in proceedings under the Patented Medicines (Notice of Compliance) Regulations. Hamilton has extensive trial experience of patent infringement and validity, and damage quantification.

Professional Highlights

  • AstraZeneca Canada Inc. et al v. Mylan Pharmaceuticals ULC et al, 2011 FC 1023 Court granted Order of prohibition rejecting generic's arguments of inutility and obviousness.
  • sanofi-aventis Canada Inc v. Pharmascience Inc., 2008 FC 782 — Court granted Order of prohibition following earlier finding that the generic was estopped from litigating the validity of the patent.
  • sanofi-aventis Canada Inc. v. Pharmascience Inc., 2007 FC 1057 — Court applied issue estoppel to preclude generic from litigating a second allegation of invalidity where the generic had initially failed on an allegation of invalidity and another generic had subsequently succeeded.
  • sanofi-aventis Inc. v. Laboratoire Riva Inc., 2007 FC 532 — Court would have found allegation of invalidity regarding compound patent not justified but ruled that it was bound by decision in another case that the same allegation was justified.
  • Aventis Pharma Inc. v. Pharmascience Inc., 2005 FC 340 — Allegation of invalidity not justified for compound patent.

Participation in Wider Community

  • "A Bird's Eye View Of The Canadian Patent Landscape." (co-author: Daphne Lainson), Corporate Counsel IP Canada Report, August 2013
  • "The disclosure bargain," The Patent Lawyer, January/February 2013
  • "The patent-regulatory regime in Canada" (co-author: Nancy P. Pei), Pharmaceutical Patent Analyst, November 2012, Vol. 1, Issue 5
  • "Supreme Court of Canada: VIAGRA patent "void" for insufficient disclosure" (co-authors: Colin B. Ingram and Gunars A. Gaikis), IP Update — Canada, November 8, 2012; Lexology, November 8, 2012; Mondaq, November 9, 2012; International Law Office Intellectual Property Newsletter, December 3, 2012
  • "The Right Dose: Update on the Canadian Patented Medicines (Notice of Compliance) Regulations and Data Protection for Pharmaceuticals in Canada" (co-authors: Steven B. Garland and Amelia Choi), Patent World, October 2007

Professional Affiliations

  • Fellow, Intellectual Property Institute of Canada; member of the Litigation Committee; member of the Forums & Seminars Committee
  • Member, International Association for the Protection of Intellectual Property (AIPPI); member of Amicus Brief Committee (Q. 221)
  • Member and Director, The Advocates' Society
  • Member, Canadian Bar Association

Academic Affiliations

  • "Litigating Biosimilars in Canada," C5’s Pharmaceutical & Biotech Patent Litigation Conference, Amsterdam, Netherlands, March 2016
  • "Updates on the Non-infringing Alternative Defence, Promise and Utility/Sound Prediction and Expert Blinding," Toronto Intellectual Property Group’s: Hot Topics in Phama Patent Cases, Toronto, March 2016
  • “Working With Experts after Moore v. Getahun: Retainers, Communications and report Development,” The Advocates' Society, Toronto, May 2015
  • “Intellectual Property in Pharmaceuticals and Biotech Industries” (moderator), China Intellectual Property & Innovation Summit 2015, Shanghai, China, April 2015
  • “Cross-Border Litigation Strategies: Planning, Managing and Reacting to Patent Enforcement Proceedings in Concurrent Jurisdictions,” C5’s 7th Forum on Pharma & Biotech Patent Litigation, Amsterdam, March 2015