Canada’s Intellectual Property Law Firm

Yoon Kang

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Yoon Kang

Partner
  • Smart & Biggar LLP
Barrister and Solicitor
  • Patent and Trademark Agent

Life sciences leader and successful lead counsel in ground-breaking patent litigation

With a reputation as a smart and pragmatic problem-solver, Yoon is a trusted legal advisor and leader in the life sciences industry.

A principal leader in the firm’s life sciences litigation practice, Yoon counsels global pharmaceutical innovators and research institutions on all aspects of patent rights, including those pertaining to small molecules and biologics inventions.

Exceptional experience and success as lead counsel

Yoon’s commitment to her clients’ success is clear in her work. She has significant experience as lead counsel, representing pharmaceutical clients before the Federal Court and Federal Court of Appeal in complex patent litigation, including under the Patented Medicines (Notice of Compliance) Regulations. Most recently, Yoon and her team successfully appealed to the Supreme Court of Canada on the controversial question of “promised utility.” The Supreme Court of Canada, in an important and highly anticipated decision, AstraZeneca Canada Inc v Apotex Inc (2017 SCC 36), rejected the “promise doctrine” and clarified the requirement for patent “utility” in Canada. The unanimous decision represents an important victory for innovators seeking protection in Canada.

Recognized throughout her career as an outstanding lawyer, Yoon was named in 2018 as the ‘Best Lawyer in Life Sciences’ in North America by Euromoney Legal Media Group at the Americas Women in Business Law Awards.

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • "How do I balance the professional with the personal?" (presenter), WIPR Influential Women in IP, San Francisco, CA, October 15, 2019
  • "Canada Patent Legislation Update" (co-presenter: David Schwartz), Life Sciences Patent Network (LSPN) North America Spring Conference, Boston, MA, April 25, 2019
  • "Patent Rights in Canada - an update on recent developments," (co-presenter: Daphne Lainson), Life Sciences Patent Network (LSPN) North America, San Francisco, CA, October 16, 2018
  • "Growing Your Women’s Group: Expanding Your Reach and Increasing Interest," panel discussion at the  American Conference Institute (ACI) Women Leaders in Life Sciences Law Conference, Boston, July 2018
  • "Managing Exclusivities in Canada:  The Patent-Regulatory Environment,” (co-presenter: Daphne Lainson), C5 Pharma & Biotech Patent Litigation 2018, Amsterdam, The Netherlands, February 2018
  • "Pharma Patents in Canada: 2017 Year in Review," (speaker), Smart & Biggar webinar, January 2018
  • “Canada & CETA: The times they are a changin’” (co-presenter: David Schwartz), C5’s 9th Pharma & Biotech Patent Litigation Conference, Amsterdam, April 2017
  • "A Focus on the Utility Doctrine" (co-presenter: Gunars Gaikis), The Canadian Institue's 13th Forum on Pharma Patents, October 2016 
  • "Global Perspective on Post Grant Oppositions and Limitations," Life Sciences IP Summit 2015, Berlin, Germany, October 2015
  • "Pharmaceutical Patents," University of Toronto 2012 TIP conference, Toronto, February 2012
  • "Manning the Barricades: New Chapter 17 of the MOPOP — CIPO's Policies Concerning the Patentability of Biotechnology-related Inventions," Drug Patent and Legal Forum, Toronto, May 2009
  • "Year in Review – Litigation" (co-presenters: Gunars A. Gaikis and J. Sheldon Hamilton), Smart & Biggar's Pharma Patents 2008, November 2008
  • "2007: The Year in Review" (co-presenter: Gunars A. Gaikis) and "Litigation and Strategies Under the Patented Medicines (Notice of Compliance) Regulations" (co-presenter: J. Sheldon Hamilton), Smart & Biggar's Pharma Patents 2007, November 2007
  • "Canadian and U.S./Foreign Patent Office Practice" (co-presenter: David E. Schwartz), Smart & Biggar's Pharma Patents 2006, November 2006
  • "Developing and Managing Your Patent Portfolio – Maximizing Patent Life Cycles and Minimizing the Impact of Patent Expiry and Innovation Uncertainty," The Canadian Institute’s 5th Annual Forum on Pharma Patents, Toronto, October 2006
  • "Drafting and Prosecuting Pharmaceutical Patent Applications," 5th Annual Forum on Drug Patents, March 2006
  • "Maximizing Your Pharma Patent Protection," 4th Annual Forum on Pharma Patents, October 2005
  • "A Global Perspective of Patent Procurement and Litigation Issues for Biotechnology Inventions," Biotechnology Industry Organization Annual Conference, Philadelphia, PA, June 2005

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
  • Member and past Co-Chair of the Patents and Industrial Design Committee, Canadian Bar Association

Teaching Activities

  • "Patent Law & Pharmaceuticals: What are the mandated provisions in Canada?" The Regulation of Pharmaceuticals, Osgoode Professional Development, Osgoode Hall Law School of York University, Toronto, June 2008
  • Presentation on Intellectual Property: Copyright, Trademark and Patent, University of Toronto Law School, Toronto, January 2008