Béatrice T NgatchaPh.D., J.D. Partner, Lawyer and Patent Agent

Profile

Partner, Lawyer and Patent Agent

Béatrice T. Ngatcha is a lawyer and patent agent in Lavery’s intellectual property group. She is a patent agent registered to practice in Canada and the United States. She is also a lawyer called to the Ontario Bar and a member of the Quebec Bar (c.j.c). Béatrice holds a doctoral degree in chemistry from Université Laval and has been a post-doctoral fellow at the National Research Council in Ottawa.

In addition to a busy patent prosecution practice serving Canadian and foreign clients, Beatrice’s expertise in sought in the areas of intellectual property litigation, trade secrets, due diligence, strategy, portfolio value building, licensing and arbitration.

Beatrice is a regular speaker on intellectual properties topics at academic and professional conferences.

In September 2018, Lavery Lawyers and Goudreau Gage Dubuc (GGD) integrated their operations in order to offer their clients a complete range of legal services.

Publications

  • Validité”, JurisClasseur Québec, coll. “Droit des affaires”, Propriété intellectuelle, fasc. 28, Montréal, LexisNexis Canada, loose leaf
  • “Canada Federal Court of Appeal Plavix decision – A sigh of relief for pharmaceutical industry”, Quarterly Newsletter of AIPLA Chemical Practice Committee, Vol. 2, No. 1, Winter 2014
  • “Utility and Sound Prediction – Lessons from the Canadian Courts”, Chemistry and the Law (a division of the American Chemical Society) Newsletter, Spring 2012
  • “Good Faith Requirement During Patent Prosecution in Canada – Federal Court Clarifies its Impact on Patents”, Chemistry and the Law (a division of the American Chemical Society) Newsletter, Fall 2011
  • “Data Protection in Canada – Overview and Tips”, Chemistry and the Law (a division of the American Chemical Society) Newsletter, Spring 2011
  • “Canada: Re-examination Cannot Be Used To Avoid Dealing With Credibility Issues Surrounding Prior Art: Prenbec And Quadro v. Timberblade and Commissioner of Patents”, APLF IP Law Bugle, May 2010
  • Brevets de sélection: l’état du droit au Canada”, Canadian Intellectual Property Review (2010), Vol. 25, No. 1
  • “Section 8 of the Patented Medicines (Notice of Compliance) Regulations: Apotex Inc. v Merck Frosst Canada Ltd.”, APLF IP Law Bugle, March 2010
  • “Duty of Candour in Canadian Patent Prosecution enhanced: Lundbeck Canada Inc., H. Lundbeck a/s and Merz Pharma GmbH & Co. KGaA v. Ratiopharm Inc. and The Minister of Health”, Chemistry and the Law (a division of the American Chemical Society) Newsletter, Spring 2010
  • “Bayer Inc. v. The Minister of Health and The Attorney General of Canada”, Legal Alert 2010, Vol. 28, No. 11
  • “Listing of Formulation Patents – Beware: Bayer Inc. v. The Minister of Health and The Attorney General of Canada”, APLF Law IP Bugle, January 2010
  • T. Ngatcha, Béatrice; Trottier, M.-C.; Poirier, D. “13C Nuclear Magnetic Resonance Spectroscopy Data of a Variety of Androsterone and epi-Androsterone derivatives Substituted at Position 3ß or/and 3a”, Current Topics in Steroids Research 2011, 8, 35
  • T. Ngatcha, Béatrice; Laplante, Y.; Labrie, F.; Luu-The, V.; Poirier, D. “3ß-Alkyl Androsterones as Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase: Inhibitory Potency in Intact Cells, Selectivity Towards Isoforms 1, 2, 5 and 7, Binding Affinity for Steroid Receptors, and Proliferative/Antiproliferative Activities on AR+ and ER+ Cell Lines”, Mol. and Cell. Endocrinol, 2006, 248, 225-232
  • T. Ngatcha, Béatrice; Luu-The, V.; Labrie, F.; Poirier, D. “Androsterone 3a-Ether and/or 3ß-Substituted Derivatives as Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase: Chemical Synthesis and Structure-Activity Relationship”, J. Med. Chem. 2005, 48, 5257-5268
  • T. Ngatcha, Béatrice; Labrie, F.; Luu-The, V.; Poirier, D. “Androsterone C16-Substituted Derivatives: Chemical Synthesis, Inhibition of Type 3 17ß-Hydroxysteroid Dehydrogenase, Binding Affinities on Steroid Receptors and Proliferative/Antiproliferative Activities on Shionogi (AR+) Cells”, J. of Enzyme Inhibition and Med. Chem. 2002, 17(3), 155
  • T. Ngatcha, Béatrice; Luu-The, V.; Poirier, D. “Androsterone 3a-Substituted Derivatives as Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase”, Bioorg. Med. Chem. Lett. 2000, 10, 2533
  • T. Ngatcha, Béatrice; Poirier, D. “Diastereoselective Addition of Organomagnesium Reagents to 17ß-TBDMS-Dihydrotestosterone”, Synthetic Communications 1999, 29, 1065
  • Chênevert, R.; T. Ngatcha, Béatrice; Rose, Y.S.; Goupil, D. “Regio and Enantioselectivity of the Enzyme-Catalized Hydrolysis of Citric Acid Derivatives”, Tetrahedron: Assymetry 1998, 9, 4325
  • Dionne, P.; T. Ngatcha, Béatrice; Poirier, D. “D-Ring Allyl Derivatives of 17ß- and 17a-Estradiols: Chemical Synthesis and 13C NMR Data”, Steroids 1997, 62, 674

Conferences

  • Béatrice is a frequent speaker on IP-related topics — a few titles listed below, at various institutions, academic and professional, including McGill, Concordia, UQAM, Université de Montréal, École Polytechnique, INRS, IRICoR, UNIVALOR, CDEC, REPAF and WeWork, 2012-present
    • “Intellectual Property and Commercialization”
    • “Inventorship and Ownership”
    • “Patents and Inventorship in Academia”
    • Le Brevet : plus qu’une protection, un outil de commercialisation
    • Entente de collaboration et propriété intellectuelle
    • La protection de l’innovation et les enjeux reliés à la propriété intellectuelle
  • “Patents and Inventorship – The Canadian perspective”, American Chemical Society National Meeting, Chemistry and the Law Division, Indianapolis, IN, September 2013
  • “Recent developments in Canadian Patent Law”, American Chemical Society National Meeting, Chemistry and the Law Division, Denver, Co, September 2011
  • “Selection Patents alive and well in Canada: the Sanofi decision”, American Chemical Society National Meeting, Chemistry and the Law division, Washington D.C., August 2009
  • “Patent Prosecution in Canada: What’s New?”, American Chemical Society national meeting, Chemistry and the Law division, Philadelphia, PE, August 2008
  • “A Second Patent on my Patented Compounds: The Law of Selection Patents in Canada”, American Chemical Society national meeting, Chemistry and the Law division, Philadelphia, PE, August 2008
  • “Value of a Chemical Patent”, Industrial Chemistry Symposium, Edmonton, AB, May 2008
  • “Patenting and Protecting your Life Science Invention”, Health Care Products Association of Manitoba, Winnipeg, MB, June 2007
  • “Patenting and Protecting your Chemical Invention”, Intellectual Property Seminar, Chemical Institute of Canada Annual Meeting, Halifax, NS, May 2006; Winnipeg, MB, May 2007; Edmonton, AB, May 2008
  • Luu-The, V.; Poirier, D.; T. Ngatcha, Béatrice; Labrie, F. “Characterization of New Potent Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase”, 81st Annual Meeting of the Endocrine Society, San Diego, June 1999
  • T. Ngatcha, Béatrice; Luu-The, V.; Labrie, F.; Poirier D. “Androsterone Derivatives Substituted at Position 3: Chemical Synthesis and Inhibitory Activity on Type 3 17ß-Hydroxysteroid Dehydrogenase”, 67th ACFAS Congress, Ottawa, Canada, May 1999
  • T. Ngatcha, Béatrice; Luu-The, V.; Labrie, F.; Poirier D. “3ß-Substituted Androsterone Derivatives as Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase”, 217th National American Chemical Society (ACS) Congress, Anaheim, March 1999
  • T. Ngatcha, Béatrice; Luu-The, V.; Poirier D. “3a-Ether Derivatives of 3ß-Substituted Androsterone as Inhibitors of Type 3 17ß-Hydroxysteroid Dehydrogenase”, 217th National American Chemical Society (ACS) Congress, Anaheim, March 1999
  • Poirier, D.; Maltais, R.; T. Ngatcha, Béatrice; Tremblay, M. “The Combinatorial Chemistry and the Development of Therapeutic Agents: The Case of 17ß-Hydroxysteroid Dehydrogenase Inhibitors”, 40th “Club de Recherche Clinique du Québec”, Mont-Tremblant, Canada, October 1998
  • T. Ngatcha, Béatrice; Poirier, D. “Stereoselectivity of the Addition of Organomagnesium Reagents to 17ß-TBDMS-Dihydrostestosterone”, 216th National American Chemical Society Congress, Boston, August 1998
  • T. Ngatcha, Béatrice; Labrie, F.; Poirier, D. “Synthesis and Hormonal Profile of Androsterone Derivatives Substituted at Position 16”, 10th International Congress on Hormonal Steroids, Québec City, Canada, June 1998
  • Poirier, D.; Tremblay, M.; T. Ngatcha, Béatrice; Dionne, P. “13C NMR Data as a Useful Tool in the Stereochemistry Determination of D-ring Substituted Steroids”, 8th Québec/Ontario Minisymposium in Bio-Organic Chemistry, Québec City, Canada, November 1997
  • T. Ngatcha, Béatrice; Luu-The, V.; Poirier, D. “Bromopropyl Androsterone Derivatives as Type 3 17ß-Hydroxysteroid Dehydrogenase Inhibitors”, “Ordre des chimistes du Québec” Congress, Laval, Canada, June 1997
  • Dionne, P.; T. Ngatcha, Béatrice; Poirier, D.; Labrie, F. “Estradiol D-Ring Substitution: Analysis by Nuclear Magnetic Resonance (NMR)”, 65th ACFAS Congress, Trois-Rivières, Canada, May 1997
  • T. Ngatcha, Béatrice; Luu-The, V.; Poirier, D. “Synthesis of Bromopropyl Androsterone Derivatives”, 65th ACFAS Congress, Trois-Rivières, Canada, May 1997
  • T. Ngatcha, Béatrice; Dionne, P.; Poirier, D. “D-Ring Allyl Derivatives of Estradiol: Synthesis and 13C NRM Data”, 7th Québec/Ontario Minisymposium in Bioorganic and Organic Chemistry, Waterloo, Canada, octobre 1996
  • T. Ngatcha, Béatrice; Chênevert, R. “Enzymatic Hydrolysis of Citric and Tricarballylic Esters”, 63rd ACFAS Congress, Chicoutimi, Canada, mai 1995

Professional and community activities

  • Corporate Secretary of the Advanced Materials Research and Innovation Hub (PRIMA Québec), 2019-present
  • Coach and Project Evaluator at Fondation Montréal Inc., 2018-present
  • Member of the Board of Directors of Centre des arts de la scène Pauline-Julien, 2019-present
  • Member of the group Sistah Girl (black ladies in intellectual property), 2017–present
  • Member of “Réseau des Entrepreneurs et Professionnels Africains (REPAF)”, 2017–present
  • Mentorship program, University of Ottawa, 2017-present

Distinctions

  • Senior Chief Justice Award for the highest standing in the course “Art de la Plaidoirie”, University of Ottawa, 2009
  • Gowling-Lafleur-Henderson Admission Award, University of Ottawa, 2006-2007

Education

  • J.D., University of Ottawa, 2009
  • Postdoctoral studies, NRC Steacie Institute for Molecular Sciences, 1999-2000
  • Ph.D. Organic/Medicinal Chemistry, Université Laval, 1999
  • M.Sc. Bioorganic Chemistry, Université Laval, 1995
  • Maîtrise” Organic Chemistry, University of Yaoundé, 1992
  • License” Physics and Chemistry, University of Yaoundé, 1991

Boards and Professional Affiliations

  • Canadian Bar Association
    • Member of the Patents Committee, 2016-2018
  • Intellectual Property Institute of Canada (IPIC)
    • Member of the Board of Directors, 2021-2022
    • Editor-in-chief of the Canadian Intellectual Proprety Review (CIPR), 2019-present
    • Member of the Indigenous Intellectual Proprety Committee, 2018-present
    • Chair of the Membership and Information Committee, 2017-2019
    • Member of the Joint Liaison Committee (Patents), 2001-2006
    • Member of the Biotechnology Committee, 2003-2006
  • American Intellectual Property Law Association (AIPLA)
    • Member of the Chemical Patent Practice Committee, 2015-present
  • American Chemical Society (ACS)
    • Member of Patents and Related Matters Committee, 2004-2009
    • Co-Secretary of the Chemistry and the Law Division, 2005-2009
  • Chemical Institute of Canada (CIC)
    • Member of the Executive Committee, Montréal section, 2019-present­
    • Chair of the Economics and Business Management division, 2010
  • College of Patent Agents and Trademark Agents (CPATA)
  1. Natural Products and Pharmaceutical Innovations: What are the Patent Options?

    Natural products play an important role in pharmaceutical innovation. They are active components in many medicines. For example, nearly half of the small molecules used to treat cancer are natural products or directly derived from natural products.1 They are also components of vaccines. The pharmaceutical industry is constantly seeking access to natural products and the traditional knowledge associated with them. These include plants (roots, bark, leaves), micro-organisms (terrestrial and marine), toxins, venoms and other natural biological agents.  In the current race to develop a drug and/or vaccine against COVID-19, natural products or derivatives are surely worth considering as a starting point. The harvesting of natural resources for use by the pharmaceutical industry is usually carried out by partners such as traditional healers, farmers, academics or businesses. Thus, the process usually involves several stakeholders, including providers and users of natural resources and associated traditional knowledge, which are often located in different parts of the world. Fair and equitable collaboration in such a context requires well-developed collaboration agreements and access and benefit-sharing agreements. Various instruments of international law encourage the signing of such agreements, including: The Convention on Biological Diversity (CBD), which recognizes the sovereignty of states over their natural resources. The CBD sets out fundamental principles to regulate access and benefit-sharing, including that access to natural resources, their use and the sharing of benefits arising from them should be based on “mutually agreed terms.”2 The Nagoya Protocol covers the sharing of the results of research and development, the payment of royalties and joint ownership of intellectual property (IP) rights.3 The World Intellectual Property Organization (WIPO) has developed a guide to assist providers and users of natural resources and associated traditional knowledge in the negotiation and establishment of IP clauses in access and benefit-sharing agreements. The guide describes how IP rights can be exploited and managed to achieve the desired objectives, and how the benefits arising from the use can be created and shared in a fair and equitable manner, thereby promoting the conservation and use of biodiversity.4 Furthermore, research and development activities in the pharmaceutical industry are known to be associated with high risk and high investment costs. Indeed, it is widely recognized that the process to develop a drug can take up to 15 years, only about 16% of molecules entering the clinical phase will be approved, and only 1 in 5 marketed drugs generates revenues equal to or greater than the research and development costs involved.5  In the pharmaceutical industry, intellectual property, especially patents and data protection, is thus considered an essential instrument for securing the economic benefits of an innovation. Efforts in this intense period of development of a drug/vaccine against COVID-19 are of course focused on the technical aspects directly related to research and development. Nevertheless, those involved should not lose sight of the importance of collaboration agreements and access and benefit-sharing agreements.  When it comes to natural products in particular, concluding agreements with solid clauses on possible innovations and patents is key for providers of natural resources and traditional knowledge. The same applies to users of these resources and knowledge. We explore some of these clauses below. Initial consideration – deciding whether or not to patent Factors to be considered include the nature and purpose of the project, the expected value of the project results, business objectives, and the ability to manage acquired patents. The decision to apply for a patent, or not to do so, depends largely on whether the benefits of patent protection will outweigh the cost of obtaining it. Confidentiality What information must be kept confidential to ensure that its disclosure does not jeopardize the chances of obtaining patent protection? Agreements should include clear clauses on information management (publication of scientific articles, presentations at conferences, press releases, etc.). The parties may agree to make public disclosures only after mutual approval and the filing of a patent application. Some jurisdictions (Canada, United States, Japan) offer a grace period after a disclosure of the innovation, but for other jurisdictions (Europe, China) there is virtually no such grace period. Where patent protection is desired, the US Provisional Patent Application is a key tool for managing the confidentiality of an innovation under development. Patentability of research and development results While a natural substance as such generally cannot be patented, some results derived from the use of natural resource and associated traditional knowledge can be protected by patent, provided that the innovation is new, useful and not obvious. Parties obtaining the patents Should a general principle applicable to all innovations resulting from the use of natural resources obtained from providers be adopted? Should users have the obligation of reporting all developed innovations? Should they have the obligation of agreeing on the terms for obtaining a patent? Countries where patent protection can be obtained Countries where patents can be obtained are determined by taking into account key markets, strategic locations for drug manufacturing and other considerations, such as the country of origin of natural resources and the traditional knowledge associated to them. Depending on the number of countries ultimately chosen, a strategy involving a Patent Cooperation Treaty (PCT) international application could be considered.  Inventors It is important to name the “real” inventors in a patent application—the validity of the future patent could depend on this. Those who participated only in collecting natural resources or verifying use results may not qualify as inventors. The extent of scientific contribution is one of the main factors to consider. Ownership of future patents The Nagoya Protocol mentions joint (provider-user) ownership of patents as a possible benefit-sharing mechanism. However, companies in the pharmaceutical industry are not keen on this practice. They try to avoid the complications and legal uncertainties associated with joint ownership. Although most countries, including Canada, require the co-owner of a patent to obtain the consent of the other co-owner in order to grant a license, this is not the case in the United States, where a co-owner can grant a license without the consent of the other party and without having to give any justification with respect to royalties or other payments. One commonly adopted solution allows the user to retain ownership of the patent while the provider is granted a royalty-free license. However, some providers consider this option unfair because the patent is not co-owned. In cases of joint ownership, it will of course be necessary to determine how responsibilities will be divided between the provider and user. The parties must decide who will be responsible for filing the patent application and for maintaining the continuing effect of the patent, and who will provide the resources necessary for performing these actions. Patent exploitation What is the most appropriate model for exploiting a patent and disseminating innovation? Which among a license, assignment or joint venture is preferable? Who will negotiate and approve the terms of any subsequent patent exploitation agreement? Should licenses be granted free of charge, or should preferential conditions be granted to entities in the provider’s country or to other partners? Benefit-sharing How, when and between whom will the monetary or non-monetary benefits arising from the commercial exploitation of a patent be distributed? What benefit-sharing mechanisms can be applied in this case? Management of conflicts between provider and user It is important to determine what jurisdiction will apply and how possible conflicts will be resolved (mediation, binding or non-binding arbitration, civil action, etc.). Disputes Only a patent owner can sue for infringement. If the patent is owned only by either the provider or the user, the other party’s cooperation can be negotiated. End of collaboration A collaboration can end for a number of reasons, for example, as a result of problems with the flow of natural resources (volume, quality). What happens to acquired patents then? Conclusion Providers and users of natural resources and associated traditional knowledge should carefully consider their relationship ahead of time. It is very likely that research and development using natural resources will lead to patentable innovations. If there are no plans for patent co-ownership, it is important to include relevant clauses in agreements that ensure a fair and equitable distribution of monetary or non-monetary benefits resulting from the commercial exploitation of patents.   Newman D. et Cragg G., “Natural products as sources of new drugs over 30 years from 1981 to 2014”, Journal of Natural Products (2016), 79.3, 629-661. Convention on Biological Diversity. Nagoya Protocol. World Intellectual Property Organization (WIPO) (2018), A Guide to Intellectual Property Issues in Access and Benefit-sharing Agreements. Report of the Meeting of the Group of Legal and Technical Experts on Concepts, Terms, Working Definitions and Sectoral Approaches (UNEP/CBD/WG-ABS/7/2).

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  1. Béatrice Ngatcha joins the board of IPIC - Intellectual Property Institute of Canada

    Lavery is pleased to announce that Beatrice Ngatcha, a partner in the Intellectual Property group, has recently been appointed to the Board of Directors for 2021-2022 by the IPIC Annual General Meeting. IPIC is the professional association for patent agents, trademark agents and lawyers specializing in all areas of intellectual property law. Beatrice has been involved in IPIC's development and outreach since 2003, and this appointment is a reflection and recognition of the strength of her expertise in the field of intellectual property. For more information, see IPIC's Board of Directors page: Read here

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  2. Béatrice Ngatcha appointed editor-in-chief of the Canadian Intellectual Property Review

    We are pleased to announce that our professional, Béatrice Ngatcha, was appointed to the position of editor-in-chief of the Canadian Intellectual Property Review (CIPR) last September at the annual general meeting of the Intellectual Property Institute of Canada (IPIC).  For a tenure of two years, her role as editor-in-chief will be to coordinate the review process and ensure that only high-quality articles are published. The CIPR is a journal for professionals working in intellectual property law. All submissions undergo a double-blind peer review process: the reviewers are not given the authors' identities and the reviewers' identities are shielded from the authors.

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