Kiernan A. Murphy Partner


Speaks:  English, French

Year of Call: 2010 - Ontario

Primary phone: +1 613-786-0273

Fax: +1 613-788-3603

Email: Kiernan.murphy@gowlingwlg.com

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Primary office:  Ottawa




Kiernan A. Murphy

Kiernan A. Murphy is an Ottawa-based intellectual property lawyer at Gowling WLG. Kiernan’s practice focuses primarily on litigation in the area of patents and related pharmaceutical regulatory law, including pharmaceutical damages claims, as well as copyrights, trademarks, trade secrets and breach of confidence. His litigation and enforcement experience spans a broad range of subject matter, including computer hardware and software, mechanical, agricultural and electrical technologies, as well as pharmaceuticals and related processes.

Kiernan has appeared as trial, application and motion counsel in patent, trademark and pharmaceutical damages litigation and has appeared before the Federal Court, the Ontario Superior Court of Justice and the Ontario Court of Appeal. He recently appeared as first-chair counsel on behalf of a leading international pharmaceutical client in a prohibition proceeding under the Patented Medicines (Notice of Compliance) Regulation.

Kiernan regularly provides strategic counselling and opinions regarding patent infringement, patent validity and related issues. He also frequently assists clients with the drafting of intellectual property assignments and licences, and distribution agreements. Kiernan was certified as a Patent Valuation Analyst in 2014.

Kiernan also advises clients with respect to regulatory matters in the field of health sciences, such as listing patents on the Patent Register and obtaining data protection under the Food and Drug Regulations, as well as drug pricing and reimbursement.

Kiernan was recently named one of only three “Next Generation” intellectual property lawyers in The Legal 500 (2018) and has previously twice won the Canada IP Writing Competition. Kiernan frequently authors commentary on intellectual property matters, including articles published by Canadian Intellectual Property Reporter, the Journal of World Intellectual Property and the Federated Press. He is also a regular contributor to the Canadian Bar Association IP Quarterly Summaries. Kiernan has often presented on intellectual property issues and related regulatory matters, including at the American Bar Association (International Law Section)'s annual conference in 2015 and annually for the Intellectual Property Institute of Canada.

As a member of the Litigation Committee of the Intellectual Property Owners' Association since 2014, Kiernan works directly with leading stakeholders to formulate strategies and resolutions addressing their pressing and topical IP concerns. He is now also a member of that committee’s Education Sub-committee. Kiernan also assists businesses with broader industry-based concerns, for example, through his participation in BIOTECanada’s Orphan Drug Working group. Kiernan has also previously taken on leadership roles beyond the field of IP, including as vice-president of both a community orchestra and of the University of Ottawa Law and Technology Student Society.

Prior to studying law, Kiernan was a researcher and technology developer in both the private and public sector, working in the fields of computer and electrical engineering with a focus on wireless communications and hybrid recording technologies.

Career & Recognition

Filter timeline:
  • 2018

    • Rankings & Awards
      2018
      "Next Generation” Lawyer, The Legal 500
  • 2017

  • 2014

    • Education
      2014
      Business Development Academy, Certified Patent Valuation Analyst
  • 2011

    • Rankings & Awards
      2011
      Canada's IP Writing Competition (Winner / Associate Category)
  • 2010

    • Career
      July2010
      Gowling Lafleur Henderson LLP, Associate
    • Qualifications (Year of Call/Admission, etc.)
      2010
      Year of Call, Ontario
    • Rankings & Awards
      2010
      Canada's IP Writing Competition (Winner / Student Category)
  • 2009

    • Education
      2009
      University of Ottawa, LLB., cum laude
    • Rankings & Awards
      2009
      Torys Writing Award
  • 2005

    • Education
      2005
      University of Ottawa, BASc. (Computer Engineering), summa cum laude

Memberships

  • Canadian Bar Association
  • Law Society of Upper Canada

Peer-reviewed Publications

  • "Obviously Different: Technological Divergences and the Spectrum of Obviousness" (with M. Crichton), 2011, Canadian Intellectual Property Review, 26(2), 387-409 [winning article of Canada’s IP Writing Competition].
  • "Post-expiry Patent Losses: Recoverable, but Unpreventable?" forthcoming, Osgoode Hall Review of Law and Policy [winning article of Canada’s IP Writing Competition].
  • "The Precautionary Principle and Patent Law: A View from Canada," 2009, Journal of World Intellectual Property, 12(6), 649-689 [winning article of the Torys Writing Award].

 Other Publications

  • "Federal Court Rejects Ramp-Up and Free Competition In Pharmaceutical Damages Claims" (with C. Van Barr, A. Gloor), December 2013, IP Reports, Gowlings.
  • "'Plain and obvious' that innovators' profits are not available to generics in Ontario" (with C. Van Barr, P. Smith, W. Boyer), September  2013, IP Reports, Gowlings.
  • "Parliamentary Committee Issues IP-based Recommendations to Promote Innovation," March 2013, IP Reports, Gowlings.
  • “Profiting in the Provinces? Evolving Strategies of Generic Pharmaceutical Damages Claims” (with C. Van Barr), 2012/13, Life Sciences & Law: Current Issues.
  • "Amazon One-Click Application Ordered Back to Patent Office for Re-Examination: A Litigation Perspective" (with C. Van Barr), November 2011, IP Reports, Gowlings.
  • "From bargains to duties: has Canadian patent law adopted the ex parte model?" (with J. Norman, C. Too), XV(3), 2010, Federated Press Intellectual Property.
  • "Industry Pushes For Biosimilars Approval Process; Some IGOs Take Notice" (with K. Mara), February 24, 2009, Intellectual Property Watch.

 Presentations

  • "Generic Damages in Life Sciences Patent Litigation: Strategic Considerations" (with C. Van Barr), January 2013, Webinar, Gowlings, Ottawa.
  • "Patent Litigation for Life Sciences Companies: Disclosure, Deceit, and Damages" (with C. Van Barr), September 2011, Webinar, Gowlings, Ottawa.
  • "Digital Rights Management Technologies and Consumer Privacy: A Canadian Market Survey and Privacy Impact Assessment" (with D. Fewer, P. Gauvin, K. Constable), 2007, 17th Annual Conference on Computers, Freedom and Privacy, Montreal.

• Janssen Inc v Apotex Inc et al (T-1659-17): patent litigation under the PMNOC Regulations relating to antiretroviral treatment with darunavir (counsel for the United States of America, represented by the Department of Health and Human Services)

• Wi-LAN Inc et al v LG Electronics Inc. (T-1349-17): patent litigation involving wireless technologies (counsel to LG Electronics)

• Apotex Inc v Takeda Canada Inc (T-2159-16): generic section 8 damages litigation under the PMNOC Regulations (counsel to Takeda)

• Bauer Hockey Corp v Under Armour Canada ULC (T-2182-15): patent litigation involving slip-resistant hockey apparel (counsel for Under Armour)

• Louis Garneau Sports Inc c 7898959 Canada Inc faisant affaire sous le nom SS Lacasse (T-965-16) : patent litigation involving cycling seat pads (counsel for SS Lacasse)

• Walter Surface Technologies Inc. v. Pearlman Industries, Inc et al (T-811-16) : patent litigation involving grinding wheels (counsel for Pearlman)

• Actton Super-Save Gas Stations Ltd v Broadfence (T-1284-16): trademark litigation involving alleged passing off and infringement regarding the application of the colour blue to fences (counsel for Broadfence)

• Teva Canada Ltd et al v Janssen Inc et al (T-944-15) : generic section 8 damages under the PMNOC Regulations and patent infringement litigation involving bortezomib pharmaceutical compositions (counsel for the United States of America, represented by the Department of Health and Human Services)

• Mylan Pharmaceuticals ULC v Takeda Canada Inc et al (T-85-16): generic section 8 damages litigation under the PMNOC Regulations (counsel for Takeda)

 Canadian Auto Preservation Inc v The Auto Saver System Inc et al (T-350-15): patent litigation involving anti-corrosion methods for metal objects, eg. a car (counsel to Auto Saver and LAR)

• Eli Lilly Canada Inc v Hospira Healthcare Corporation et al (T-366-14): patent litigation under the PMNOC Regulations relating to novel compounds with anti-tumour effects (counsel for Takeda)

• Janssen Inc v Teva Canada Ltd et al (T-2195-12): patent litigation under the PMNOC Regulations relating to bortezomib pharmaceutical compositions (counsel for the United States of America, represented by the Department of Health and Human Services)

• Takeda Canada Inv et al v Mylan Pharmaceuticals ULC  (Fed Ct. T-1161-13): patent litigation under the PMNOC Regulations relating to hydrate forms of proton pump inhibitors (counsel for Takeda)

• Takeda Canada Inv et al v Apotex Inc (Fed Ct. T-772-13): patent litigation under the PMNOC Regulations relating to nasal sprays containing the corticosteroid ciclesonide (counsel for Takeda)

• Canadian Broadcasting Corporation / Société Radio Canada v Sam Nowrouzzahrai et al (Fed Ct. T-513-13): trade-mark litigation involving official marks and the expungement of the television channel’s mark (counsel for Radio-Canada)

• Domaines Pinnacles Inc v Beam Inc et al (Fed Ct. T-290-13): trade-mark litigation involving passing off and infringement of the mark PINNACLE in association with spirits (counsel for White Rock)

• ABB Inc. et al. v. Hyundai Heavy Industries Co., Ltd. (Fed. Ct. T-735-11, A-379-13): patent case involving gas-insulated switchgear assemblies (counsel for ABB)

• International Control Systems, LLC et al. v. Haier America Trading LLC (Fed. Ct. T-1654-11): patent case involving automatic volume levellers for televisions (counsel for Haier)

• Seewind Design Corp. v. Accenture Business Services For Utilities Inc. et al.(Ont. Ct. 11-50541): trade secret case involving business processes for collection of accounts receivable (counsel for SeeWind)

• Canada Post Corporation v. Geolytica Inc. c.o.b. Geocoder.ca (Fed Ct. T-519-12): copyright infringement case involving a compilation of postal information (counsel for Canada Post)

• Bayer Inc. et al v. Cobalt Pharmaceuticals Company et al (Fed Ct. T-1044-11): patent litigation under the PMNOC Regulations relating to oral contraceptive pharmaceutical (counsel for Bayer)

• Bayer Inc. et al v. Apotex Inc. et al (Fed Ct. T-1640-11): patent litigation under the PMNOC Regulations relating to oral contraceptive pharmaceutical (counsel for Bayer)

• Bayer Inc. et al v. Lupin Limited et al (Fed Ct. T-214-12): patent litigation under the PMNOC Regulations relating to oral contraceptive pharmaceutical (counsel for Bayer)

• Bayer Inc. et al v. Famy Care Limited et al (Fed Ct. T-19-13): patent litigation under the PMNOC Regulations relating to oral contraceptive pharmaceutical (counsel for Bayer)

• adidas AG v. Bata Brands S.a.r.L. et al (Fed Ct. T-2011-11): trade-mark infringement case involving adidas’ famous 3-stripe mark (counsel for adidas)

• Apotex Inc. v. Abbott Laboratories, Limited et al (Ont. Ct. CV-09-391938): generic section 8 damages and patent infringement case involving pharmaceutical compositions (counsel for Takeda)

• Abbott Laboratories, Limited et al v. Mylan Pharmaceuticals ULC (Fed Ct. T-1451-11): patent litigation under the PMNOC Regulations relating to ora-dispersible pharmaceutical tablets (counsel for Takeda)