Jay Zakaïb is an intellectual property litigation partner in Gowling WLG's Ottawa office, acting primarily for IP rights’ holders to maintain exclusivity or obtain damages for loss of exclusivity.
The primary focus of Jay’s practice is patent litigation, mainly in the life sciences, material sciences, petrochemical, manufacturing and agri-food industries. Clients with valuable technologies have retained Jay to enforce and protect their patent rights in compounds (e.g. small molecules, macromolecules and their solid states), formulations, materials, articles of manufacture (e.g. medical devices, food products and industrial equipment), processes of manufacture and novel uses of known integers.
Included in his life sciences work are patent litigation cases brought as judicial review applications for the listing of patents on the Patent Register, as well as the enforcement of listed patents in Notice of Compliance proceedings for pharmaceutical clients. Clients have retained Jay for advice on trade secrets and competition law, as well.
For trademark owners, Jay has also handled a variety of trademark litigation cases for brand owners on enforcement and validity issues for their trademark rights. He has advised and litigated the judicial review of administrative decisions issued from the Registrar of Trademarks (and delegates), the Commissioner of Patents, the Minister of Health and the Minister of the Environment.
For over fifteen years, Jay has appeared before the Federal Court and the Federal Court of Appeal, as well as other Canadian courts and regulatory bodies, in advocating for his clients. He has represented Eli Lilly and Company, Shire, Allergan, F. Hoffmann-La Roche, Astellas, Amgen, Bristol-Myers Squibb, Actelion, Sanofi-Aventis, Goodyear, Sofina, Pinnacle Foods, Sobeys and many others.
As a licensed patent agent, Jay also advises clients on managing patent prosecution and regulatory requirements to secure appropriate product protection through patent enforcement, regulatory strategies, and, where available, data protection. For example, he advises clients about protection of medicines considering subject matter objections and other claiming requirements for patent protection, criteria for data protection, and regulatory requirements for approving subsequent entry biologics (SEBs).
For many years, Jay was a lecturer at the Faculty of Law for the University of Ottawa, teaching introduction to intellectual property, patent law, and intellectual property litigation. He has also lectured on patent law at the Fordham IP conference, and has spoken at Bio-Europe on technology transfer and IP protection.
Prior to his legal studies, Jay worked as a chemical engineer to support manufacturing for several microelectronic companies, including IBM, where his chemistry and engineering skills were applied to research and commercial-scale manufacturing processes. He graduated from McGill University with a degree in Chemical Engineering (with a minor in biotechnology), and degrees in common law (LL. B.) and civil law (B.C.L.).
Jay is fully fluent in English and French, and has litigated before the Courts in both official languages.