Wissam Aoun, J.D., CLP
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1 Wissam Aoun, J.D., CLP EDUCATION University of Windsor Law School 2008 Juris Doctor (J.D.) University of Victoria/University of Oxford/ University of Illinois at Chicago Law School Specialization Certificate in International Trade & Intellectual Property Law 2006 University of Windsor 2004 Bachelor of Applied Science Mechanical (Materials/Metallurgy) Engineering (B.A.Sc.) UNIVERSITY FACULTY & LECTURING EXPERIENCE SUMMARY Positions University of Detroit Mercy School of Law Assistant Professor of Law; Director, International Intellectual Property Law Clinic (United States Patent and Trademark Office (USPTO) Certified Patent Law Clinic) - Summer 2015 Present University of Windsor Faculty of Law Law, Technology and Entrepreneurship Clinic (LTEC), Intellectual Property Clinical Director - Fall 2010 Fall 2015 Courses International Intellectual Property Law Clinic Course University of Detroit Mercy School of Law o Fall Present Advanced Intellectual Property and Business Law Practicum University of Windsor Faculty of Law o Fall & Winter International Patent Law - Monash University (Florence, Italy) o Summer 2013 o Summer 2014 Patent Law University of Windsor Faculty of Law o Winter 2014 o Fall 2014 Copyright Law University of Windsor Faculty of Law o Fall 2010 o Fall 2011 Trade-mark Law University of Windsor Faculty of Law o Winter 2011 o Winter 2012 Advanced Contract Drafting University of Windsor Faculty of Law o Winter 2014 Business Associations & Corporate Law University of Windsor Faculty of Law o Winter 2013 o Fall 2013 Curriculum vitae JUNE
2 SELECTED PUBLICATIONS AND PAPERS Tawfik, Myra; Schlosser, Francine Dr.; and Aoun, Wissam. (2012). Strategies and Practices for Overcoming Obstacles to the Effective Commercialization of Student Innovation on University Campuses; (available online: Wissam Aoun, Canadian Patent Agent Regulation Reform Pt. 1 (In)Validity Issues Surrounding The Canadian Patent Agent Exam, Journal of the Patent and Trademark Office Society, 99 J. Pat. & Trademark Off. Soc y 1(2017) Wissam Aoun, Canadian Patent Agent Regulation Reform Pt. 2 Governance, Self-Regulation and Canada s Patent Professional Identity Crisis, Journal of the Patent and Trademark Office Society (forthcoming, September 2017) Wissam Aoun, Constructivism, Embedded Liberalism and Anti-Dumping - Canadian Public Interest Inquiry as Case Study of Embedded Liberalism, Canada-United States Law Journal (Vol. 41, No.1) The Possibility of an International Patent Law Clinic o [Publication Pending draft paper to be presented at 2018 International Journal of Clinical Legal Education Conference, July 2018] Prior User Rights Under the Patent Act: The Patented Process Conundrum, in progress = 5: The Canadian Patent Agent Examination Board and the Doctrine of Essential Elements, in progress Intellectual Property Clinical Text, in progress (estimated date of completion Summer 2019) SELECTED PRESENTATIONS/SPEAKING Center for International Intellectual Property Studies (CEIPI), Toward an International Intellectual Property Clinical Network, Master s (LL.M.) Research Workshop Presentation, May Canadian Council for Small Business and Entrepreneurship (CCSBE) Annual Conference (2011) o Wissam Aoun & Anthony Luppino Intellectual Property Ownership Issues for Student Inventors and Student Entrepreneurs- Clinical Best Practices and Recommendations NAFTA and Cross-Border Commerce for Entrepreneurs; Wayne State University TechTown Symposium (2011) o Cross-Border Patent Law Issues for Entrepreneurs Association for Canadian Clinical Legal Education (ACCLE) Annual Conference, University of Manitoba (2012) o The Innovative Approach: Strategies for Overcoming Obstacles in the Operation of a Intellectual Property Law Clinic Association for Canadian Clinical Legal Education (ACCLE) Annual Conference, University of Windsor (2014) o Establishing Intellectual Property Law Clinics within the Entrepreneurship Eco-system: One Step Forward, Ten Steps Back State Bar of Michigan International Law Section, Protecting U.S. Intellectual Property Rights in a Global Economy o Panelist Jurisdictional Differences in International Trademark Application, Registration and Enforcement, with Timothy Gorbatoff (Chief Trademark Counsel, General Motors) and Jennifer Anderson (Partner, Bridge Intellectual Property Services PLLC) Curriculum vitae JUNE
3 PROFESSIONAL EXPERIENCE ACADEMIC EXPERIENCE Assistant Professor of Law; Director, International Intellectual Property Law Clinic University of Detroit Mercy School of Law 2015-Current Inaugural Director of the University of Detroit Mercy s USPTO Certified patent law clinic; As Director, responsible for all aspects of clinical program launch and development, including curriculum development, creation of a roster of case management supervising attorneys, fund raising, development of revenue generating programs and alumni outreach; Responsible for supervision of law students in the clinical practice of intellectual property law, including searching, patent application preparation and filing and patent prosecution, in the USPTO, Canadian Intellectual Property Office (CIPO) and working to develop network of foreign associates for international clinical filings Established joint clinic operation between Detroit Mercy s Patent Law Clinic and University of Windsor s intellectual property clinic to form the International Intellectual Property Law Clinic, the first international intellectual property law clinical program in the world; Currently working on development of Intellectual Property Clinical Text (estimated date of completion Summer 2018) Notable accomplishments: - Negotiation of a first of its Memorandum of Understanding (MOU) with the USPTO for the development and national deployment of educational programming in conjunction with the USPTO The highlight of this collaborative relationship is the International Patent Drafting Competition held annually at the Detroit USPTO, schools from across the country (as well as other jurisdictions) are invited to participate in this unique competition that involves drafting a hypothetical patent application and presenting to a panel of high-profile expert judges. Other experiential learning programs developed in conjunction with the USPTO include A Day in the Life of a Patent Examiner, and the American Patent Talent Competition, a hypothetical patent searching exercise wherein students match their searching skills against USPTO patent examiners. - Development of a pilot international clinical collaboration with Queen Mary University (London, U.K.) entitled the Trans-Atlantic Patent Project Clinic students from both institutions are paired together into teams, to work collaboratively on client matters from each respective jurisdiction Students from both institutions participate in several training sessions and workshops conducted by attorneys and experts from Europe and the U.S. pertaining to comparative U.S./European patent practice topics Currently working to develop system for international clinical patent application filings on behalf of clinic clients from each jurisdiction - Negotiation of a MOU with the Canadian Intellectual Property Office (CIPO) for greater collaboration and development of educational programming Intellectual Property Clinical Director; Law, Technology and Entrepreneurship Clinic (LTEC) University of Windsor Faculty of Law Responsible for supervision of law students in experiential/clinical practice, serving on-campus and off-campus technology start-up companies- services including novelty search and invention analysis, and provisional patent application drafting; trademark clearance search/opinion and US/Canadian trademark application/prosecution; venture formation (including incorporation, Curriculum vitae JUNE
4 shareholder agreements, and intellectual property assignments); and all forms of business startup contractual agreements including website terms of use, employment contracts and software development agreements; Secured over eighty-thousand ($80,000.00) dollars in base funding from the University of Windsor to support the LTEC, which funding supported the hiring of additional clinical staff Clinical program and curriculum development in conjunction and collaboration with the Faculty of Business and Technology Transfer Office; Clinic Director of Canada s first multi-disciplinary entrepreneurship clinic (jointly with the Faculty of Law and Faculty of Business), Canada s first intensive intellectual property clinical program, and Canada s first intellectual property community clinic (in association with the Downtown Windsor Business Accelerator (DWBA), Windsor s community business incubator) Consultant & Intellectual Property Clinic Director - Centre For International Governance Innovation (CIGI) Intellectual Property Law Clinical Program As a consultant for the CIGI, assisted in development and launch of CIGI s inaugural intellectual property clinical program Reporting to CIGI s Director (International Law Research Program) and working in conjunction with CIGI s Corporate Counsel and newly hired intellectual property clinician, established documents, procedures and best practices for CIGI s 2014 intellectual property clinical program, including: - Development of clinical practice documentary material, including retainers, client file management documents, and template opinion/reporting letters; - Preparation of best practices guidelines for clinic administrative staff; - Preparation of clinic student manual; - Assistance in ensuring all clinical practices are in conformance with applicable Law Society regulations; and - Assisted in the development of student training and education curriculum material. Served as Clinic Director of the Summer 2015 CIGI-LTEC Intellectual Property Law Clinic Program Creator - ELLIPTEK Intellectual Property Training Program ( Present Online intellectual property training program, utilizing high-definition training videos incorporating CGI animations, educating students, entrepreneurs and technology start-ups on basic principles of intellectual property, invention analysis and patent drafting; Currently developing a hybrid print/online-video intellectual property clinical text, incorporating material (including video tutorials and CGI animated hypothetical case studies) from the ELLIPTEK program, for intellectual property clinical programs across North America. PRACTICE EXPERIENCE Intellectual Property Lawyer/Attorney Wissam Aoun Law Professional Corporation Experienced in all areas of patent and trademark practice including patentability searches, patentabiltiy and freedom-to-operate opinions; patent drafting and prosecution; trademark use and registrability searches; trademark applications and licensing; International patent and trade-mark portfolio management for a diverse array of clients across a broad scope of industries; Particular patent experience in technical fields including automotive (suspension systems; engine technologies), manufacturing (machining; casting; automation; non-destructive testing (NDT); and machine vision technologies) and mechanical-based medical devices (vision-based scanning; blood sampling devices; ex vivo diagnostic and treatment devices) Curriculum vitae JUNE
5 Have worked on contract with several intellectual property firms and organizations, in the U.S. and Canada, ranging from small firms (2-3 attorneys), large firms and internationally recognized research institutes and hospitals; Extensive professional experience working with attorneys from a number of Michigan intellectual property law firms, including working on contract, with firms including Harness Dickey, Young Basile and Miller Canfield Manager of Technology Transfer and Commercialization University of Windsor Office of Research Services and Technology Transfer Responsible for the negotiation and preparation of various research and development contracts, including funding agreements with Canadian, US and European federal and state/provincial funding organizations, international collaborative research agreements and multi-institutional agreements; Negotiated and drafted numerous technology/ip licensing agreements with various private organizations, including multi-national corporations as well as university spin-off/tech start-ups Responsible for the development and implementation of faculty invention mining procedures and practices, including IP management software, Invention Disclosure processes (with requisite documentation), processes and procedures for novelty assessment and early-stage IP valuation Development of internal policies pertaining to the development and management of faculty, employee and student intellectual property; Preparation of opinions pertaining to invention novelty, freedom-to-operate, technology development, valuation and licensing agreements; Engaging faculty across campus in discussions, workshops and lectures pertaining to sponsored research, intellectual property and commercialization of technology Articling; Associate MBM Intellectual Property Law LLP Extensive experience in patent drafting, application and prosecution, both domestically and internationally in Patent Cooperation Treaty (PCT) countries; Extensive experience in trademark application, prosecution, both domestically and internationally; Experienced in Canadian, U.S. and European patent prosecution, including researching and drafting Office Action responses, preparing and filing divisional and continuation-in-part applications, preparing and filing Information Disclosure Statements (IDS), preparing Voluntary Amendments and adapting foreign applications to Canadian patent requirements; Experienced in all forms of intellectual property litigation; AWARDS & RECOGNITIONS Intellectual Asset Management (IAM) World s Top 300 IP Strategists (first clinician ever named to be named to this list) Licensing Executive Society (LES) & Certified Licensing Professional (CLP) University of Windsor Faculty of Law 2013 & 2014 Hon. Justice Robert Abbey Award for Outstanding Special Lecturer Governor s Medal for Top Average in Graduating Class in Materials Engineering Winner of Bereskin Parr Intellectual Property Award for Top Mark in an Intellectual Property Class Winner of Odette Business Law Award for Top Mark in a Business Law Course (Secured Transactions) Curriculum vitae JUNE
6 SELECTED MEMBERSHIPS & PROFESSIONAL ASSOCIATIONS American Intellectual Property Law Association (AIPLA) Michigan Intellectual Property Law Association (MIPLA) American Inns of Court Intellectual Property Section (Michigan) International Trademark Association (INTA) Licensing Executives Society (LES) Intellectual Property Institute of Canada (IPIC) Curriculum vitae JUNE
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