Alain M Leclerc

Profile

Partner | Lawyer - Patent Agent - Trade-mark Agent

Alain M. Leclerc is a partner and practice leader of Lavery’s intellectual property group and member of the Board of Directors of the firm (previously comanaging partner with Goudreau Gage Dubuc* since 2006 and partner since 1994).  He specializes in intellectual property with emphasis on patents.

In addition to a busy patent prosecution practice for clients here and abroad, his expertise is sought in the areas of intellectual property litigation, due diligence, strategy, portfolio value building and licensing. He is particularly active in patent litigation and appeared before the Federal Court and the Supreme Court of Canada.

He holds a degree in chemical engineering from the University of Ottawa and is a lawyer called to the Bar in both Quebec and Ontario. He is also a registered patent agent in Canada and the United States and a trade-mark agent in Canada.

He is a regular speaker on intellectual property topics at professional conferences and client events.

* 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

  • Jurisclasseur Québec – Propriété Intellectuelle – Fascicule 28 – « La validité des brevets », 2013-now, Lexis Nexis

Conferences

  • “Intellectual Property” module of “Technological Innovation Course” course, Mathematics and Industrial Engineering Department, University of Montreal (Polytechnic) Montreal, Yearly, 2011-present
  • “Mediation: An interactive experience”, Plenary Session; 17th FICPI Open Forum of the International Federation of Industrial Property Attorneys (FICPI), Italy, October 2017
  • “Talent Management: Keeping The Right People”; 17th FICPI Open Forum, Italy, October 2017
  • “Management Bootcamp, How to compensate Professionals”, FICPI World Congress, Cape Town, South Africa, April 2015
  • “Internal Audit Committees – Quality Control in a Fast-Moving Environment”, 14th FICPI Open Forum, Italy, November 2013
  • “Panel Discussion on Patent Utility: International Harmonization – Common Standards Yet Divergent Results”, Moderator at the Comparative Intellectual Property Law Symposium, Ottawa, April 2012
  • “Empowering employees”, 13th FICPI Open Forum of the International, Italy, November 2011
  • “The Lundbeck Story”, presented in England, as part of the Congress of the International Federation of Industrial Property Attorneys (FICPI), June 2011
  • “The Duty of Candour in Canadian Patent Prosecution” presented in England, as part of the Congress of the International Federation of Industrial Property Attorneys (FICPI), June 2011
  • “Mentoring – What exactly is it and how does one go about doing it”, 12th Open Forum of the International Federation of Intellectual Property Attorneys, Munich, September 2010
  • “Drafting Patentability Opinions”, presented as part of an opinion drafting clinic organized by the International Federation of Intellectual Property Attorneys, February 2007
  • “La propriété intellectuelle…un atout à exploiter”, Association des industriels d’Anjou, 2006
  • “Are statements of inventions still required? “, Intellectual Property Institute of Canada, 79th IPIC Annual Meeting, Mont-Tremblant, September 2005
  • “Les brevets pharmaceutiques”, Conférence sur la commercialisation des médicaments au Québec et au Canada, November 2004
  • “Reach-through patent claims: a comprehensive update”, presented at the conference on Commercializing IP in the Life Sciences, January 2004
  • “From Genome Info to Better Medicine”, Canadian Bar Association, conference to the Federal Court of Canada, 2003
  • “Obtaining Strong Patents in Canada”, presented to various Japanese audiences
  • “Patent Foreign Filing Strategy and Decision Making Tools”, Pharmaceutical and Biotechnological conference of Québec, Quebec City, 2003
  • “Patent Cooperation Treaty Practice”, Infonex conferences on intellectual property, Montreal, 2002
  • “International Patent Cooperation Treaty”, presented as part of the FICPI activities, 1999
  • “Intellectual Property Practice in Canada”, presented to the Wisconsin I.P. Law Association, 1992 and 1996
  • “Survey of Intellectual Property”, presented in various conferences and seminars since 1990
  • Moderator and Discussion Leader, 7th American, British and Canadian Meeting of the International Federation of Industrial Property Attorneys (FICPI ABC 2013 Conference), New Orleans, May 2013

Professional and community activities

  • Fondation Villa Ste-Marcelline (education), President of Board of Directors, 2010-2016
  • Fondation Mont-Jésus Marie (education), Member of Board of Directors, 2006-2011
  • Alzheimer Society du Suroît, Member of Board of Directors, 2008-2015


Education

  • Member of the Ontario Bar since 1992
  • Member of the Barreau du Québec since 1991
  • Juris Doctor (JD) Cum Laude, Common Law, University of Ottawa, 1990
  • L.L.L., Civil Law, University of Ottawa, 1989
  • B.Sc.A., Chemical Engineering, University of Ottawa, 1986

Boards and Professional Affiliations

  • Barreau du Québec
  • Law Society of Upper Canada
  • American Bar Association – Intellectual Property Section (ABA)
  • American Intellectual Property Law
  • Association (AIPLA)
  • International Federation of Industrial Property Attorneys (FICPI)
    • ­  President, FICPI Canada, 2012-2015
    • ­  Vice President, Professional Excellence Commission, 2009-now
    • ­  Member of the Board of Directors FICPI Canada, 2003-2015
  • International Association for the Protection of Intellectual Property (AIPPI)
  • International Intellectual Property Forum – Québec (FORQIP)
    • ­  Member of the Board of Directors, 2003-2005
  • Quebec Industrial Research Association (ADRIQ)
    • ­  Member of the Board of Directors, 2003
  • Intellectual Property Institute of Canada (IPIC)
    • ­  General Secretary of Council 2017-2018
    • ­  Member of Council, 2009-2011
    • ­  Member of the Advisory Committee (Standards Committee) relating to the reform of the National Patent Agent’s Exam, 2003-now
    • ­  President 2009-2011
    • ­  Member of the Examination Board of the Patent Agents Exam 1999-2002
    • ­  President of Montreal Informals Group, 1998-1999
  • Licensing Executive Society (LES)
  • United States Patent and Trademark Office (USPTO)
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