Plants, patents and the unexpected

Catherine Lemay, assistant general counsel–IP at cannabis company Hexo, spoke to LSIPR about her career, a typical day and what it’s like working in the ‘dynamic’ cannabis industry.

LSIPR: Tell us about the course of your career.

Catherine Lemay: I started my career in IP working for the Canadian government (Health Canada) in a group responsible for administering the Patented Medicines (Notice of Compliance) Regulations, the Canadian version of the “Orange Book” regime in the US.

I started working there part-time and then full-time after my chemistry degree while I was completing my law degree. It was an amazing experience that gave me a lot of insight into the pharmaceutical/biotech industry and how patents can have a huge impact on that market.

I then worked for a boutique IP law firm in Montreal to complete my articles for my law degree. After obtaining my law degree, I moved to Germany and worked as a patent specialist for a large multinational pharmaceutical company, Schering (now Bayer Pharmaceuticals), for two years in the in-house patent department in the field of oncology.

When I returned to Canada, I went back to Health Canada for one year and then moved to another IP boutique law firm in Ottawa, MBM IP Law, where I worked as an associate for almost six years.

Then, I had an opportunity to go back in-house as a regulatory/IP legal counsel for a company called Nordion, which specialised in medical isotopes, radiopharmaceuticals and medical devices. In particular, I was responsible for the targeted therapeutics line of business that included a product called TheraSphere used to treat liver cancer.

Subsequently, I moved back to the Canadian federal government at the National Research Council of Canada (NRC), where I stayed for five years. At the NRC, I was group leader and the IP advisor responsible for a wide range of different research and development (R&D) programmes/research centres, including medical devices, vaccines, printable electronics, energy, mining and environment, among others.

Finally, I have been at Hexo in my role as the assistant general counsel–IP for nearly a year-and-a-half. I am responsible for all IP-related activities from developing and implementing our IP strategy, building a patent and trademark portfolio, mining our IP from our various functions around the organisation, IP due diligence, enforcement and IP-related contracts negotiations.

What does your typical working day look like?

There are no typical days! But if I have to paint a picture for some days, it would include touching base with my team to get the pulse on issues and items that require my input, being in touch with our researchers and external patent agents to discuss some of the ongoing invention disclosure forms and applications in drafting, and conversations with our marketing and product development teams and external trademark agent to discuss new proposed brands and filings/examinations of new trademark applications.

I undertake discussions with our business development team and sometimes our engineering and operations teams to go over some of their projects and mine some IP.

My team also participates in project review meetings for the R&D and cultivation teams and there is some IP mining happening there.

“The industry itself is exciting and fairly new which makes the IP side of things very interesting—there are lots of areas with some white space available and opportunities.”
Catherine Lemay

What are the best parts about your job?

The fact that there is no typical day, and that the organisation and higher management (including our chief executive officer, my boss and the board) are very supportive and believe that IP is important for the organisation. Having that buy-in at the highest level really helps.

I work with a dynamic group of individuals who understand the importance of IP and are generally very open to helping us achieve our objectives. The industry itself is exciting and fairly new which makes the IP side of things very interesting—there are lots of areas with some white space available and opportunities.

What is the most difficult part?

There are not too many difficulties, but if I have to say something, I would say that my days can be quite unpredictable. I can come in one day thinking I will be working on X or Y but because of the high-paced environment and shifting priorities, my whole day can be impacted by something unexpected.

Have you faced any challenges in your career?

I haven’t faced a lot of barriers or challenges. I am pretty open and adaptable—I like a challenge and I am always trying to make the best out of a given situation.

My biggest challenge has probably been balancing work and family life. I have three young children (including twins) and being there for them and working in a high-paced environment has had its challenges. I find the working-from-home situation, in light of COVID-19, much easier.

”The pandemic might help women, especially those working from home, as it may allow them more flexibility in work hours.”

Who or what inspires you?

The researchers and engineers I work with inspire me. I have had several key mentors in my career; I have looked up to and been inspired by them. My husband is also an IP lawyer and he has been very supportive and inspiring.

Is the legal profession doing enough to improve gender diversity?

I have seen some initiatives, but I honestly don’t know how much impact those initiatives have had because I still see surveys coming out that show a salary gap between women and men, that there are very few women in leadership or partnership positions, etc.

The pandemic might help women, especially those working from home, as it may allow them more flexibility in work hours.

How are you involved in promoting diversity?

I have been involved in some sessions hosted by an organisation in my region specifically targeted at women in science and engineering. I’ve contributed some time to speak and present to some younger women in university, share my experience and outlook and answer their questions.

I have also met with some young women to act as a sort of mentor or sounding board for questions they may have about the field of IP and their career in general.

I recently participated in an initiative organised by the university I graduated from to record videos destined to congratulate new graduates and provide them with some words of advice. I was approached in particular because I was a woman who has graduated from the faculties of science and law.

Image: / bjonesphotography

Autumn 2020

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