Leadership & Execution / Strategy Development / Innovation / Business Process Improvement
Registered patent attorney and inventor with extensive global experience in patent & trademark preparation and prosecution, and with a diverse background spanned across PCT international patent application examination; IP portfolio evaluation and management involving copyrights, patents, trademarks, trade secrets, and geographical indications; IP risk management in biotech, chemical, and pharmaceutical areas; research & development; and teaching in IP and science. Detail-oriented, with excellent planning, prioritization, and decision-making skills. Adept at guiding complex projects to successful completion in fast-paced environments. Demonstrates values-based leadership, flexibility, and integrity in communicating and collaborating with stakeholders of varying backgrounds and expertise. Core competencies: Legal Consulting Product Development & Launch IP Law Inventorship Issues Licensing
Technology Acquisition Research Writing Proofreading Quality Control Presentations Due Diligence
(M&A/Divestitures/Licensing) Negotiations Regulatory Compliance Policy/Procedure Development Privacy & Security Process Improvement Project & Risk Management Training
NORTHWESTERN UNIVERSITY, USA, Teaching Graduate Students IP Law
ROSENBAUM PC, USA, Biotech, Pharmaceutical, and Medical & Mechanical Device Patent Preparation & Prosecution
SAPALA ORGANICS, Business Development
SSMP PC, USA, Biotech & Pharmaceutical Patent Preparation & Prosecution
VEPACHEDU PC, USA, Biotech & Pharmaceutical Prosecution
INCYTE GENOMICS, USA, Biotech and Genomic Patent Prosecution.
Registered Patent AttorneyJan 2011 to Current CARDINAL LAW GROUP CLG
Demonstrated ability to manage a legal services program, including the ability to review and assess the organizational effectiveness of program services and policies, and to design and implement procedures to improve/optimize organizational performance, ability to make decisions that produce high-quality results by applying technical knowledge, analyzing problems, and calculating risks, ability to manage human, financial, and information resources strategically; ability to build coalitions; ability to lead people toward meeting the organization's vision, mission, and goals.
Defined strategies for protecting personally identifiable information, ensuring the safety and security of business and customer information, and briefing management on technical and business issues.
Developed and implemented IP procedures for new initiatives based on rule, law, and procedural changes.
Wrote educational and guidance articles on current IP issues and updates for publication on an IP firm website.
Identified opportunities for improving efficiency and best practices in risk management.
Delivered CLE presentations on IP portfolio risk management.
Provided Lack of Unity Opinions, International Search Reports (ISRs), and Written Opinions of the International Searching Authority (WOISAs) for PCT International patent applications in the biotech, chemical, pharmaceutical, and polymer areas (totaling 700+ patentability reports - ISR/WOISA).
Identified new inventions and devised patent protection strategies.
Evaluated patent portfolios of competitors and advised relevant teams.
Researched, strategized, and supported interference and litigation opportunities.
Evaluated new IP laws introduced in BRICS countries, provided guidance and protocols to coordinate foreign patent application filings avoiding conflict with the USPTO rules; monitored laws and educated scientists and attorneys on important/contentious IP issues and regulatory policies.
Updated IP protocols in response to legal changes in emerging markets, including case law impacting pharmaceutical patent applications, such as the first filing requirements in India, China, and the US for inventions involving multi-national inventors; a working requirement in India; and inventorship issues in Europe and the US.
Evaluated the quality of pharmaceutical-related written opinions and search reports from the International Searching Authorities of EPO, KIPO, and USPTO; provided clear and convincing PCT-ISA strategy to save hundreds of thousands of dollars.
Conducted freedom-to-operate analysis for pre-clinical and clinical candidates at various stages of development in the pipeline for multiple candidate compounds, including biologics, and guided several product launches worldwide.
Jan 2007 to Jan 2011 ABBOTT LABORATORIES
Patent Counsel & Head of India Focus Team.
Supported product/IP management and client counseling for multiple Abbott divisions, including Global Pharmaceutical R&D (Neuroscience, Metabolics, Respiratory, Oncology), Global Pharmaceutical and Analytical Services, Animal Health, Mature Business Organization, and international affiliates such as Abbott GmbH & Co.
KG, Solvay Pharmaceuticals, Abbott India Limited, and Piramal Generics.
Covered small molecules, antibodies, vaccines, formulations, platform technologies, and generic products for human and animal health and welfare (targets such as Amyloid-.
HSD, MGluR, NOGO, NNR, RAGE, and TNF-.
Supported global project teams (GPTs) in clinical studies involving regulatory agencies (FDA, AHI, EPA, USDA, others).
Prepared and prosecuted patent applications, managed outside counsel (US and foreign), and provided freedom-to-operate, infringement, and patentability opinions.
Supported a worldwide generic drug portfolio and product launches for Abbott's Established Pharmaceuticals Division (EPD) and supported the integration of drug portfolios from Solvay (Europe) and Nicolas Piramal (India).
Analyzed export and import related issues, laws, and roles of various agencies such as AHI, BIS, EPA, FDA, FTC, USDA, and USPTO in relation to existing Abbott practices; established necessary standard operating protocols for coordinating research involving international inventors, cross-border communications, and export of technology; gave presentations to legal and scientific divisions worldwide.
Instituted SOPs for ascertaining contentious inventorship in the US and foreign countries; delivered presentations to Abbott divisions in the US and Germany; developed a patent portfolio management strategy, along with a comprehensive portfolio for the neuroscience division, incorporating both offensive and defensive strategies.
Reviewed, drafted, and negotiated complex agreements and provided due diligence for licensing and acquisitions.
Conceived novel ideas, practiced together with scientists, and filed patent applications.
Managed publications, conferences, and other publication-related activities.
Analyzed proprietary software programs such as Prophet; defined standard protocols for using the program in medicinal chemistry of drug development; educated legal and scientist teams regarding strategy.
Prepares and prosecutes patent and trademark applications in biotech, nanotechnology, organic and inorganic chemistry, pharmaceuticals, veterinary pharmaceuticals and foods, water purification systems, environmental protection systems, fabrics, clothing, and medical, mechanical and musical instruments.
Manages the US and foreign prosecution, including anonymous and third-party submissions such as Ex Parte, inter partes and pre- & post-grant challenges.
Provides project management for the following: patentability, invalidity, infringement, freedom to operate, clearance, assertion, and defense studies; due diligence; valuation of IP portfolios; pre- and post-grant opposition support; IP portfolio development and management; and IP risk management.
Supervises a 20-member docket team and audits dockets for security and quality.
Keeps apprised of current docket protocols and IP rules/procedures-patent and trademark, domestic and foreign.
Researches and prepares protocols and staff training on changes to laws, rules, regulations, and procedures.
Presents training as needed to the docketing team as well as PCT examiners and analysts.
Holds accountability for various aspects of business development, account management, web development, and advertising.
Participates in the USPTO Pro Bono Program/Chicago-Kent Patent Hub and the Indian American Bar Association Pro Bono Clinic.
ILLINOIS INSTITUTE OF TECHNOLOGYUSATeaching Graduate Students Combinatorial & Organic Chemistry
MEDICHEM LIFE SCIENCES (DECODE GENETICS), USA, Combinatorial Chemist & Manager of Legal Affairs
ELI LILLY & CO., USA, Combinatorial & Medicinal Chemistry
Organic & Analytical ChemistryNATIONAL INSTITUTES OF HEALTHUSAOrganic & Analytical Chemistry
Bio-Organic ChemistryUNIVERSITY OF MARYLAND AT COLLEGE － PARK, USABio-Organic Chemistry
MASTER OF LAWS, Organic Chemistry Intellectual Property and International LawINDIAN INSTITUTE OF CHEMICAL TECHNOLOGY Howard University School of Law － Washington, DC, IndiaOrganic Chemistry Intellectual Property and International Law
Organic ChemistryDOCTOR OF PHILOSOPHY Indian Institute of Chemical TechnologyIndiaOrganic Chemistry
MASTER OF SCIENCE, Law Organic ChemistryJURIS DOCTOR University College of Law, Osmania University Kakatiya UniversityIndiaLaw Organic Chemistry
BACHELOR OF SCIENCE, Botany, Chemistry, and ZoologyOsmania UniversityIndiaBotany, Chemistry, and Zoology
Garnered a Neuroscience Team Award, Neuroscience Innovation Award, and two Neuroscience Spot Awards for assisting scientific and legal teams locally and globally across various time zones..
*Participated in the USPTO Pro Bono Program/Chicago-Kent Patent Hub, the Indian American Bar Association Pro Bono Clinic, and Baker McKenzie/Abbott Labs Pro Bono Program.
CIP IPPC, Thomson/Clarivate Analytics' IP Master/Manager, CPI Patent and Trademark Management Systems, CPA Global FoundationIP, Innography PortfolioIQ, Ipendo Platform; and search databases such as SciFinder, LexisNexis, PatBase, Thomson Innovation, PubWEST, ProQuest Dialog, USPTO PATFT, PATENTSCOPE, EPO esp@cenet, Google Scholar, Google Patents, CiteSeer, WayBack Machine, FPO, IPAIRS (India), and CPC/IPPC/USPC Classification; Microsoft Office and QuickBooks; Web Design and Management
INDIAN INSTITUTE OF CHEMICAL TECHNOLOGY Howard University School of Law
DOCTOR OF PHILOSOPHY Indian Institute of Chemical Technology
JURIS DOCTOR University College of Law, Osmania University Kakatiya University
Job Titles Held:
Registered Patent Attorney
Chief Privacy Officer & Director
Organic & Analytical Chemistry Bio-Organic Chemistry Organic Chemistry & Crystallography MASTER OF LAWS , Organic Chemistry Intellectual Property and International Law Organic Chemistry MASTER OF SCIENCE , Law Organic Chemistry BACHELOR OF SCIENCE , Botany, Chemistry, and Zoology
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