Michael E. Charles

Partner

Toronto, 416.957.1689

Practice Group(s)

Patents
Chemical
Litigation

Education

B.Eng.Sci. (Chem. Eng.), Western University, 1984
LL.B., Western University, 1987

Qualifications

Admitted to the Ontario Bar, 1989
Registered Canadian Patent Agent, 1993
Registered United States Patent Agent, 1994

Professional Memberships

American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Intellectual Property Institute of Canada (IPIC), Fellow
Toronto Intellectual Property Group (TIPG)

Michael E. Charles

B.Eng.Sci. (Chem. Eng.), LL.B.

Mike’s practice focuses on intellectual property law, with an emphasis on patent, trademark, copyright, breach of confidence, and trade secret litigation. He has appeared as trial and appellate counsel on numerous occasions in the Federal Court and the Ontario Court.

Mike has served on the Intellectual Property Institute of Canada’s (IPIC) Litigation and Alternate Dispute Resolution Committees. Mike has also served, by invitation, on the Federal Court's Intellectual Property Consultative Group. Mike has also been a panelist for the Harold G. Fox Moot.

While attending law school, Mike was a member of Western University's Law Review, and received the Harold G. Fox Award.
 

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Michael E. Charles

Michael E. Charles

B.Eng.Sci. (Chem. Eng.), LL.B.

Partner
Toronto      Ph: 416.957.1689

Practice Group(s)
Patents
Chemical
Litigation

Education
B.Eng.Sci. (Chem. Eng.), Western University, 1984
LL.B., Western University, 1987

Qualifications

Admitted to the Ontario Bar, 1989
Registered Canadian Patent Agent, 1993
Registered United States Patent Agent, 1994

Mike’s practice focuses on intellectual property law, with an emphasis on patent, trademark, copyright, breach of confidence, and trade secret litigation. He has appeared as trial and appellate counsel on numerous occasions in the Federal Court and the Ontario Court.

Mike has served on the Intellectual Property Institute of Canada’s (IPIC) Litigation and Alternate Dispute Resolution Committees. Mike has also served, by invitation, on the Federal Court's Intellectual Property Consultative Group. Mike has also been a panelist for the Harold G. Fox Moot.

While attending law school, Mike was a member of Western University's Law Review, and received the Harold G. Fox Award.
 

Articles

Proposed New Regulations for PM(NOC) Proceedings and CSPs
Don Cameron and Mike Charles
July 19, 2017
Download PDF
Pfizer Seeks Re-Consideration of the SCC Case Invalidating the Viagra Patent
Mike Charles
November 16, 2012
Download PDF
Supreme Court of Canada Finds Viagra Patent Unenforceable
Andrea Berenbaum and Mike Charles and Patricia Folkins
November 8, 2012
Download PDF
Articles authored in 2009
Mike Charles
August 11, 2009
Download PDF
Supreme Court of Canada Aligns Canadian Patent Law with the UK and US (case note re Sanofi v. Apotex 2008 SCC 61)
Mike Charles
October 1, 2008
Download PDF
No Inequitable Conduct Where Non-Disclosure Inadvertent (case note re Daiichi et al. v. Apotex 2008 FC 744)
Mike Charles
August 1, 2008
Download PDF
Aspects of Customs Enforcement in Canada, paper presented at the American Law Institute-American Bar Association (ALI-ABA) Cross-Border Business Transactions: Intellectual Property and Related Issues
Mike Charles
August 1, 2007
Download PDF
Litigation-Intellectual Property-Recent Developments of Importance
Mike Charles
August 1, 2007
Download PDF
Monetary Remedies in Intellectual Property Litigation, The Journal of Business Valuation, issue 159
Mike Charles
August 1, 2007
Download PDF
Proposed Amendments to the Patented Medicines (Notice of Compliance) Regulations and Data Protection Provisions of the Food and Drug Regulations
Mike Charles
June 1, 2004
Download PDF
Protecting Unregistered Rights: Trade Secrets and Confidential Information
Mike Charles
December 1, 2003
Download PDF
Standoff at the Border: Intellectual Property Rights Holders, the Courts, Canada Customs, and the RCMP, (2003) 19 Canadian Intellectual Property Review 141
Mike Charles
August 11, 2003
Download PDF
Written Advocacy-Motions In The Federal Court Trial Division on Intellectual Property Matters, paper presented at the CBA National Intellectual Property CLE Conference, Ottawa
Mike Charles
May 1, 2002
Download PDF
Case note re Apotex and Novopharm v. Glaxo Wellcome
Mike Charles
December 1, 2000
Download PDF
$50 M Plus Annual Windfall for Copyright Owners in Canada
Mike Charles
January 1, 1991
Download PDF

Speaking Engagements

Canadian Intellectual Property Moot

The Harold G. Fox Moot
Toronto, ON
February 24, 2017

Mike Charles was a panellist at The 2017 Fox Intellectual Property Lecture

The Moot is intended to promote the furtherance of education in the intellectual property field, and to provide participants with the opportunity to interact with jurists of the Supreme, Ontario and Federal Courts and experienced practitioners of intellectual property law. It is named in honour of the late Harold G. Fox, one of Canada's leading intellectual property scholars and advocates.

For further information, please click here.

Canadian Intellectual Property Moot

The Harold G. Fox Moot
Toronto, ON
February 19, 2016

Bereskin & Parr is proud to co-sponsor The 2016 Fox Intellectual Property Lecture Luncheon on Friday, February 19th.

Mike Charles and Joshua Spicer will be panellists at this event.

The Moot is intended to promote the furtherance of education in the intellectual property field, and to provide participants with the opportunity to interact with jurists of the Supreme, Ontario and Federal Courts and experienced practitioners of intellectual property law. It is named in honour of the late Harold G. Fox, one of Canada's leading intellectual property scholars and advocates.

For further information, please click here.

Secondary School Mock Trial Competition

OBA Law Day
March 1, 2011

Mike Charles  was a judge at OBA Law Day, Secondary School Mock Trial Competition (mock criminal trials).

9th Edition Drug Patents in Canada

May 1, 2010

Mike Charles was a presenter and panelist at the 9th Edition Drug Patents in Canada, Insight on Canadian Duty of Good Faith In Patent Prosecution.

Canadian Intellectual Property Moot

The Harold G. Fox Moot
Toronto, ON
January 1, 2010

Mike Charles was on committee of judges at the Fox Intellectual Property Moot.

The Moot is intended to promote the furtherance of education in the intellectual property field, and to provide participants with the opportunity to interact with jurists of the Supreme, Ontario and Federal Courts and experienced practitioners of intellectual property law. It is named in honour of the late Harold G. Fox, one of Canada's leading intellectual property scholars and advocates.

For further information, please click here.

Pharma Patents Conference

The Canadian Institute
October 1, 2009

Mike Charles was a presenter and panelist at the Pharma Patents Conference, The Canadian Institute on Selection Patents and Obviousness: Analysing the Legal Impact of Apotex v. Sanofi One Year Later.  

8th Edition Drug Patents and Legal Forum

Toronto, ON
May 1, 2009

Mike Charles presented at the 8th Edition Drug Patents and Legal Forum, Insight on What Patents Must Be Addressed in PM(NOC) Proceedings? It Depends on When You Ask!

American Intellectual Property Law Association (AIPLA)

Miami, FL
January 1, 2009

Mike Charles presented at the American Intellectual Property Law Association (AIPLA), Mid-Winter Institute on Canadian Law of The Inventive Step.

41st Congress of the International Association for the Protection of Intellectual Property (AIPPI) on Ethics in Intellectual Property Litigation

Boston, MA
September 1, 2008

Mike Charles  was a Panelist at the 41st Congress of the International Association for the Protection of Intellectual Property (AIPPI) on Ethics in Intellectual Property Litigation

Lexpert Intellectual Property in the New Knowledge Society

June 1, 2008

Mike Charles presented at  Lexpert Intellectual Property in the New Knowledge Society: A  Global Perspective  on Intellectual Property Litigation in Canada.

The American Law Institute-American Bar Association

Toronto, ON
October 1, 2007

Mike Charles presented at The American Law Institute-American Bar Association (ALI-ABA) Cross-Border Business Transactions: Intellectual Property and Related Issues on Intellectual Property-Aspects of Customs Enforcement Canada.

Osgoode Hall Law School

Toronto, ON
October 1, 2007

Mike Charles was a lecturer at Osgoode Hall Law School on Patent Law Remedies on Patent Law Course.

Lexpert Advanced Intellectual Property Issues

Toronto, ON
May 1, 2007

Mike Charles presented on Intellectual Property Litigation in Canada, Lexpert Advanced Intellectual Property Issues.

Monetary Remedies in Intellectual Property Litigation

Conference of the Canadian Institution of Chartered Business Valuators
Toronto, ON
October 2, 2006

Mike Charles presented on Monetary Remedies in IP Litigation at the 6th Joint Business Valuation Conference of the Canadian Institution of Chartered Business Valuators and the American Society of Appraisers,

Pharma Patents Conference

The Canadian Institute
Toronto, ON
October 3, 2005

As a presenter, Mike Charles analyzed and discussed the proposed amendments to the Patented Medicines (Notice of Compliance) Regulations and Data Protection Provisions of the Food and Drug Regulations.

National Intellectual Property CLE Conference

Canadian Bar Association
Ottawa, ON
May 2, 2005

Mike Charles was a presenter at the Pretrial Conferences in the Federal Court at the CBA's National Intellectual Property CLE Conference on Pre-trial Issues.

Intellectual Property Forum

Infonex
Toronto, ON
December 1, 2003

Mike Charles presented “Protecting Unregistered Rights: Trade Secrets and Confidential Information” at the Infonex Intellectual Property Forum.

Canadian Bar Association

Intellectual Property ADR Conference
Ottawa, ON
October 1, 2003

Mike Charles was a panelist at the CBA's Intellectual Property ADR Conference.

Annual General Meeting

Intellectual Property Institute of Canada
Deerhurst, ON
October 1, 2002

Mike Charles presented on the topic of enforcement of IP rights through the Canadian Border Agency and RCMP.

National Intellectual Property CLE Conference

Canadian Bar Association
Ottawa, ON
May 1, 2002

Mike Charles presented Written Advocacy on Motions in the Federal Court at the CBA's National Intellectual Property CLE Conference.

Event Attendance

CBA IP Day

The Canadian Bar Association (CBA)
Ottawa, ON
May 12, 2016

Don Cameron and Mike Charles attended CBA IP Day in Ottawa on May 12.

CBA IP Day is the premier networking, educational and social event for IP litigators across Canada. This provides litigators with the opportunity to connect with their colleagues, discuss practice issues and debate controversial topics.

For more information on CBA IP Day, please click here.

Canadian Bar Association

IP Day 2015
Ottawa, ON
May 28, 2015

Cynthia Rowden, Don Cameron, Mike Charles and Adam Bobker attended the 2015 CBA IP Day. Cynthia Rowden participated in the IP Debates program taking place from 1:30pm to 4pm.

To learn more about the event, please click here.

Accolades

  • Best Lawyers in Canada 2018
  • Who’s Who Legal: Canada 2017
  • Who’s Who Legal Patents 2017
  • Best Lawyers in Canada 2017
  • Best Lawyers in Canada 2016
  • Best Lawyers in Canada 2015
  • Best Lawyers in Canada 2014
  • Named one of Best Lawyers in Canada 2012
  • Best Lawyers in Canada 2011

Professional Memberships

American Bar Association (ABA)
American Intellectual Property Law Association (AIPLA)
Intellectual Property Institute of Canada (IPIC), Fellow
Toronto Intellectual Property Group (TIPG)

Litigation Cases

Nova Chemicals Company ats. Dow Chemical Company
Acted for Nova Chemicals in a patent infringement action relating to polyethylene resin compositions at a monetary remedies reference, and at the liability trial and appeal.
Counsel: Robert MacFarlane, Mike Charles, Andrew McIntosh,Adam Bobker,Josh Spicer and Amrita V. Singh
(Reported decisions: 2017 FC 350, 2017 FC 637; 2012 FC 754, 2014 FC 844, 2016 FC 91 and 2016 FCA 216)
(2010), (T-2051-10)
Fero Corporation ats. Blok Lok Ltd.
Represented Fero Corporation to enforce a settlement agreement stemming from a patent infringement action relating to masonry connection technology used in the construction industry.
Counsel: Mike Charles and Josh Spicer
(2009), (Ont. Sup. Ct. J. 58001)
Daiichi Sankyo Company Limited et al. v. Apotex Inc. et al.
Represented Daiichi in Patented Medicines Notice of Compliance (PMNOC) proceedings against Apotex relating to the antibiotic LEVOFLOXICIN. A prohibition application was heard and an order was granted, but on appeal the matter was remitted back to the hearing judge for redetermination. The original hearing judge recused himself and a subsequently appointed hearing judge “terminated” the proceeding for mootness, because by then the patent had expired. A further appeal was taken from the decision to consider the application to have been “terminated”. On this further appeal, the prohibition application was determined to have been “dismissed” for mootness.
Counsel: Mike Charles
(Reported decisions: 2008 FC 744, 2009 FCA 212, 2010 FC 711, 2010 FCA 213, 2011 FCA 57, 2011 FCA 58)
(2005), (T-1508-05; A-373-08;A-240-10)
Daiichi Pharmaceutical Co. Ltd. et al. v. Novopharm Limited
Represented Daiichi in patent infringement proceedings against Novopharm relating to the antibiotic LEVOFLOXICIN. An injunction and damages were awarded at trial, a stay of the injunction was denied and the trial judgment was upheld by the Federal Court of Appeal. An application for leave to appeal to the Supreme Court of Canada was dismissed.
Counsel: Mike Charles, Andrew McIntosh and Josh Spicer
(Reported decisions: 2006 FC 1234, 2006 FCA 406, 2007 FCA 105, 2007 FCA 269, 2007 FCA 217)
(2004), (T-2175-04; A-500-06;)
Daiichi Pharmaceutical Co., Ltd. et al. v. Novopharm Limited et al.
Represented Daiichi Pharmaceutical Co. in Patented Medicines Notice of Compliance (PMNOC) proceedings against Novopharm relating to the antibiotic LEVOFLOXICIN. An application for a prohibition order was dismissed but Novopharm was subsequently enjoined and ordered to pay damages in an infringement action.
Counsel: Mike Charles
(Reported decisions: 2004 FC 1631, 2005 FCA 2, 2005 FCA 6)
(2003), (T-214-03; A-630-04)
Pfizer Canada Inc. et al. v. Lilly ICOS LLC et al.
Represented Pfizer in patent infringement proceedings in which a patent for Pfizer’s drug VIAGRA was asserted against Eli Lilly’s drug CIALIS, a competing drug for the treatment of erectile dysfunction. The action settled before trial.
Counsel: Robert MacFarlane, Mike Charles and Andrew McIntosh
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2003 FC 1278, 2004 FC 223)
(2003), (T-1721-03)
Burberry Ltd. v. Howard Colton et al.
Represented Burberry Ltd. in an action for trademark infringement and passing off relating to the BURBERRY and BURBERRY CHECK trademarks.
Counsel: Robert Storey, Mike Charles and Adam Bobker
(Reported decisions: 2003 FCT 107 and 230 FTR 1 (FC))
(2002), (T-415-02)
Pfizer Canada Inc. et al. ats Bayer Aktiengesellschaft et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Bayer.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don MacOdrum represented Bayer in the action. He joined Bereskin & Parr LLP in 2012.
(2002), (T-865-02)
Pfizer Canada Inc. et al. ats. Lilly ICOS LLC et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Eli Lilly. The action settled before trial.
Counsel: Robert MacFarlane, Mike Charles and Andrew McIntosh
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2006 FC 1465, 2006 FC 1500, 2006 FC 1501)
(2002), (T-341-02)
C.E.O. International Holdings Inc. ats. Natural Waters of Viti Ltd.
Defended C.E.O. International Holdings in an action for passing off and copyright infringement relating to FIJI bottled water.
Counsel: Mike Charles
(Reported decisions: 2000 CanLII 15141 (FC))
(1999), (T-1335-99)
Fero Holdings Ltd. v. Enterprises Givesco Inc.
Represented Fero Holdings in patent infringement proceedings relating to masonry connection technology used in the construction industry, as well as proceedings to enforce a settlement agreement entered into with one of the infringers.
Counsel: Robert MacFarlane, Mike Charles, and Josh Spicer
(Reported decisions: 1999 CanLII 8526 (FC), 2003 FCT 353)
(1998), (T-1828-98;T-167-99;T-779-01)
First Base Inc. v. Riverside Paper Corp.
Represented Canadian paper company First Base in a trademark dispute with a US competitor. The dispute was with respect to First Base’s registered trademarks MARBLE BOND and GRANITE BOND for paper products. Interim and interlocutory injunctions were obtained in an Ontario Court trademark infringement and passing off action. Even though the registrations were expunged in a Federal Court proceeding, the dispute was settled favourably during the trial of the passing off action.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 1999 CanLII 8530 (FC))
(1998), (98-CV-145861CM; T-1112-98)
Sta-Rite Industries Inc. v. GSW Inc.
Represented Sta-Rite Industries in trademark opposition proceedings against its competitor GSW. GSW was attempting to register the trademark STA-DRY for use in association with submersible and utility pumps. The Registrar’s decision to deny the application was upheld on appeal to the Federal Court and the Federal Court of Appeal.
Counsel: Mike Charles
(Reported decisions: 1999 CanLII 8381 (FC), 2001 FCA 89)
(1998), (T-1652-98, A-568-99)
Warner Lambert Canada Inc. and Warner Lambert Export Limited ats Fournier Phama Inc. and Fournier Industrie et Sante S.A
Defended Warner Lambert in a trademark and expungement action relating to the LIPITOR trademark.
Counsel: Michael E. Charles and Andrew McIntosh
(Reported decisions: (1998), 82 CPR (3d) 493 (FCTD), 1998 CanLII 8268 (FC); (1997), 77 CPR (3d) 417 (FCTD), 1997 CanLII 5883 (FC), 140 FTR 221)
(1997), (T-2000-97)
Kirkbi AG et al. v. Ritvik Holdings Inc. et al.
Represented Lego in a passing off action against Mega Bloks based on the confusion caused in the marketplace by Mega Bloks having copied the stud pattern on LEGO bricks.
Counsel: Robert MacFarlane, Mike Charles, Christine Pallotta and Adam Bobker
(Reported decisions: 1998 CanLII 7434 (FC), 1998 CanLII 8100 (FC), 2000 CanLII 15333 (FC), 2000 CanLII 16454 (FC), 2001 FCT 850, 2002 FCT 585, 2002 FCT 1109, 2003 FCA 297, 2005 SCC 65)
(1996), (T-2799-96; A-395-02;)
Manufacturer’s Life Insurance Co. ats. London Life Insurance Co.
Assisted Manulife to overcome oppositions by London Life to Manulife’s applications to register the trademarks NEW FREEDOM TO PLAN YOUR FUTURE and LA LIBERTE DE PLANIFIER VOTRE AVENIR for use in association with life insurance services. The oppositions were based on London Life’s FREEDOM 55/LIBERTÉ 55 and related trademarks. The Registrar’s decisions to reject London Life’s oppositions were upheld by the Federal Court.
Counsel: Mike Charles and Mark Robbins
(Reported decisions: 1999 CanLII 7775 (FC), 1999 CanLII 7781 (FC))
(1996), (T-1109-96; T-1284-97)
Sprint Communications Co. L.P. et al. v. Merlin International Communications
Represented the US telecommunications company, Sprint Communications, in a trademark infringement and passing off action against a Canadian company that was using the trade name SPRINT CANADA in association with a marketing, advertising and public relations business. The action was tried and the defendant company was enjoined.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 2000 CanLII 16461 (FC), 2001 FCT 358)
(1994), (T-2814-94)
Techniquip Ltd. v. Canadian Olympic Association
Successfully overcame a trademark opposition by the Canadian Olympic Association to the registration of a stick figure trademark based on the COA’s official marks comprising stick figures. An initial opposition board decision was overturned on appeal to the Federal Court, and that decision was upheld on appeal to the Federal Court of Appeal.
Counsel: Mike Charles
(Reported decisions: 1998 CanLII 7573 (FC), 1999 CanLII 8993 (FCA))
(1994), (T-1532-94; A-266-98)
Enterprise Rent-A-Car et al. v. Singer et al.
Represented Enterprise Rent-A-Car in passing off actions against a Canadian company that had misappropriated the goodwill in Canada attached to the ENTERPRISE trade name and trademark. The trial judge’s decision to enjoin the defendant was upheld on appeal by the Federal Court of Appeal.
Counsel: Dan Bereskin, Mike Charles, and Mark Robbins
(Reported decisions: 1998 CanLII 7405 (FCA), 1996 CanLII 4034 and 1999 CanLII 8757 (FCA))
(1993), (T-1078-93, T-397-93;)
Interface Flooring Systems (Canada) Inc. ats. Milliken & Co.
Acted for Interface Flooring System in the defence of a copyright proceeding relating to the design of floor tiles installed at the Calgary airport. The claim for copyright infringement was dismissed at trial and the trial judgment was upheld on appeal.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 1997 CanLII 5231 (FC), 1998 CanLII 7706 (FC), 1998 CanLII 9044 (FC), 2003 FC 1258, 2000 CanLII 14871 (FCA))
(1992), (T-3016-92;T-1212-95;A-120-98)
Other Reported Cases
1990-2002
()
 

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