IIPRD Symposium September 2016




khurana & khurana, advocates and IP attorneys




Dr. Ahn International Patent Law Office




Three-Days International SYMPOSIUM


Managing Pharma, Biotech & Chemical Patent Portfolios in US, EP, and Korea

26-28’th September 2016 at Hotel Taj Krishna, Hyderabad and 28-30’th September 2016 at Hotel Hilton, (Andheri East) Mumbai

About the Workshop

With Patents becoming a core part of the existing economic ecosystem, particularly for Pharmaceutical, Biotech, and Chemical Industries, exploitation of Patent Portfolio has become an industry in itself; especially with the cost of development and protection of the portfolio is enormous. It is therefore crucial to understand important Patent issues, not only for In-House IP Counsels, but even more importantly for R&D Scientists so as to minimize efforts in Patent Development, and maximize commercial gains. It is therefore important for Corporates and concerned stakeholders to understand the nitty-gritty’s of patent portfolio creation, protection, management, and commercialization, without which there would always remain an open door for a serious blow either from an infringement perspective or from a patent invalidation perspective or the the portfolio would remain under-commercialized.Exclusivity rights granted through patents can only be utilized if there is comprehensive knowledge of various patent-related issues, more so when the National Patent Laws & Practices relating to prosecution practices, drafting practices, examination practices, enforcement practices, and commercialization practices differ substantially across geographies. Furthermore, standards for protection and enforcement as applied by different National judiciaries often vary widely and therefore in the global business scenario, besides understanding of Patent Laws and Practices prevalent in India we also need to understand the practices in economically and financially important geographies such as United States, Europe, and Korea. It is in this direction that the three days International Symposium is being organized to impart comprehensive knowledge to understand the nitty-gritty of the Patent Regime.

How The Symposium Is Unique

This Symposium features the presentation of all important patent issues, as mentioned in this brochure. The speakers are a unique gathering of Patent Attorneys, Litigators and Legal Counsels, who have extensive years of experience in their professional fields and are well acquainted with the Industry’s need. These speakers will put across to the delegates the real insight of Patent Laws, Practices and Commercial perspectives as prevalent and practiced in United States, Europe, and Korea. The Workshop will provide an opportunity to receive first-hand information including recent Judgment on various issues from the experts in the fields.

Why The Delegates Should Attend

This is an opportunity when Patent Experts, Litigators, and Legal Counsels from varied backgrounds and having enormous expertise and different perception would be interacting with limited delegates and would answer to any the question that the delegates may have. The speakers have thorough knowledge on the subject and have been working in the field for many decades. The speakers are selected such that R&D Scientists, In-House Counsels, Patent Attorneys and IP Practitioners can get to know real insights and nitty-gritty followed in the United States, Europe, and Korea in Patent Domain. The speakers would share real-life cases and experiences that can help attendees in following best practices for building their respective patent portfolios so as to best commercialize.

Who Should Attend

IP Groups of R&D Organizations, Research & Development Scientists, In-House IP/Legal Counsels, Patent Agents & Attorneys in the field of Practice, Patent Litigators, and Professionals in Legal Domain related to Pharmaceuticals, Biotech and Chemicals.

About the Organizers


IIPRD is a premier IP Consulting and Licensing Firm with a diversified business practice providing services IIPRD is a premier IP Consulting and Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics, Transactional, and Litigation Support Services to Indian and International Corporates, Licensing Firms, and Global Law Firms. IIPRD has been established precisely to assist the business houses in strategizing their growth by leveraging their IPR's through effective Creation, Promotion, Protection, and Commercialization of IP. IIPRD has a legacy of over fifteen years of existence and is among the first Indian IP Firms to have a core focus on Commercialization, Technology Transfer, and Licensing. IIPRD has a strong team of over 65 professionals who focuses on complete Patent Support and Technology Consulting Matters ranging from conducting all types of Patent Searches, Research and Analytics, Preparation/Prosecution Support, Landscape Analysis, and Claim Charts/Infringement Analysis/Litigation Suppor.


Sughrue Mion is one of the world's leading intellectual property law firms managing traditional and non-traditional intellectual property rights, for about five decades, with a wide range of clients around the world. Sughrue's more than 100 lawyers protect ideas- all ideas- and for the last 50 years have been helping their clients to develop, obtain, protect and leverage their intellectual property rights in technology areas ranging from a submicroscopic sequence of DNA to a vast constellation of satellites circling the globe. Sughrue's Phar maceuticals, Biotechnology, Chemical attorneys are trained in technical disciplines that include molecular and cellular biology, biophysics, pharmaceuticals, chemistry, immunology, virology, genetics and agriculture biotechnology. Their experts are particularly well versed in drafting claims to ensure the broadest possible coverage and have a long established expertise in handling patent interference proceedings that may be critical to determining basic patent rights in new areas of biotechnological and pharmaceutical dustries. Their litigators who specialize in chemistry have tried cases relating to pharmaceuticals, biotechnology, industrial chemical processes, specialty chemicals, and nanotechnology. Sughrue Mion handles a wide range of IP litigation matters for clients around the world, and when it comes to serving their clients, they go beyond traditional boundaries, advocating innovative theories and redefining the frontiers of law as they apply to creativity and invention.


A German based IP Law firm, as a team of chemists and biochemists with many years of experience, Hamm & Wittkopp represents its clients in all areas of intellectual property. A major focus of our activities lies in the fields of chemistry and pharmaceutics – with particular emphasis on generic pharmaceuticals and biosimilars. We offer a comprehensive service of the highest level, from analyzing and clarifying the IP situation, for example via oppositions and nullity actions against troublesome patents, to securing your own innovations via patent applications and defending your interests in litigation proceedings. Our structure allows us to provide tailor-made support in all patent and trademark matters, whereby we are able to act flexibly and efficiently, whilst adapting to the specific needs of each individual case.


Patent Law Firm has focused on pharmaceutical / bio / chemistry incidentsSince 2006. Dr. Ahn International Patent Law Office firm is a member of both the Attorney combines Ahn So-young researchers and patent examiners career as a patent Attorney and a representative of Pharmacy led by Dr. Byeonri to perform tasks based on a correct understanding of the technology majors in the field. Dr. Ahn International Patent Law Office firm has represented patent trail and patent litigation related to G-CSF as playing a role in the development and accumulation of landmark patent case law of the international pharmaceutical and biotechnology industries such as Baraclude, Gleevec, docetaxel, janidip, Avista, Lipitor, came to Plavix, Norvasc, Elrok Satin among others . The Law firm offers R&D technology trends trough patent map from the planning stage, patent acquisition and exercise of rights stages from research avoiding the design, patent portfolio construction, patent infringement whether preliminary review, patent strategy with every step, in cluding patent monitoring competitors’ products.

About Khurana & Khurana, Advocates and IP Attorneys

Khurana & Khurana, Advocates and IP Attorneys (K&K) is more than a full service Intellectual Property and Commercial Law firm. K&K was formed in the year 2007 with a very firm focus of providing end-to-end IP Prosecution/Litigation and Commercial Law services in a manner that is Corporate centric and follows stringent delivery practices that are consistent and are above defined quality standards. K&K works closely with its sister concern IIPRD, both of which supplement each other in order to provide end-to-end IP Legal and Commercialization/Licensing services to over 3000 Corporates. K&K is a team of over 65 professionals spread across 5 Offices in India, and has strong rankings from Legal 500, MIP, IAM, Chambers, Asia IP, among others. Our team of IP Attorneys/Practitioners, having high level of technical and legal competence, gives us the right competitive edge and positioning, as a law firm focused on creating immense IP value for our clients. K&K through its experienced and qualified team of Attorneys/Practitioners, across Technology and Legal Domains, gives a rare synergy of legal opinion, out-of-box thinking for protection of ideas/IP's and entrepreneurial spirits to its client base. K&K earnestly believes that success comes only when one has a long-term perspective and this is why we concentrate on building long-term relationships through high level of client orientation.

DAY 01 - Programme Outline (US Scenario)

0900-0930: Registration
0930-1100: Recent developments on Subject Matter Patentability in Patent Invalidity Challenges: Understanding the implications of Ariosa v. Sequenom and Endo Pharmaceuticals Inc. v. Actavis Inc and related jurisprudence on method of use patents; Strategies for due diligence and patent prosecution for small molecules in view of these case laws 1100-1115: Tea Break
1115-1215: Exploring Lilly v. Teva and its wider implications for Divided and Induced Infringement rulings in ANDA litigation: Review of the Limelight v, Akamai appeals; Understanding role of the label in the determination of divided and induced infringement in view of Lily;
1215-1315: Strategic Considerations for invalidating a patent at the PTAB vis-a-vis District Court: procedural and substantive comparisons to evaluate best options of the two; When an Inter partes (IPR) route is more suited vis-a-vis a District Court litigation; Review of outcomes of recent pharma patent invalidity challenges at the PTAB; Latest legislative developments at the PTAB and District courts impacting ANDA litigation 1315-1415: Lunch
1415-1545: Evolving obviousness standard: Evaluating inherency by anticipation in view Purdue Pharma L.P. et al v. Amneal Pharmaceuticals, LLC and Gilead v. Natco; Secondary considerations and unexpected results in view of Prometheus Laboratories, Inc. v. Roxane Laboratories and Spectrum Pharmaceuticals Inc. v. Sandoz Inc.; Exploring obvious-type double patenting in view of G.D. Searle LLC v. Lupin Pharmaceuticals, Inc.; Discussion on obvious findings at PTAB. 1545-1600: Tea Break
1600-1715: Claim Construction and Markman Strategies Post-Teva: Review of recent Federal Circuit and District Court opinions addressing Teva applicability; Teva applicability in IPR proceedings before the PTAB; Considering claim drafting in view of Teva with respect of written description and enablement requirements; Devising Markman strategies in view of Teva in Para IV challenge

DAY 02 - Programme Outline (US Scenario)

0915-1030: A review of the provisions of the BPCIA and the Amgen v. Sandoz case: How the Federal Circuit Interprets 'Patent Dance' Provisions of BPCIA; Statutory construction of the disclosure and marketing provisions; Sandoz non-disclosure arguments; Amgen's marketing notice arguments; Consequences of the Federal Circuit decision on the biosimilar process and future litigations
1030-1130: A shift in focus: from molecules to stem cells and biosimilars; Understanding how BPCIA timelines, transition of NDAs to BLAs in under the BPCIA, FDA’s proposed naming guidance and potential impact on biosimilars, Biosimilars patent tactics under new section 101 and 112 1130-1145: Tea Break
1145-1300: How has the Supreme Court's decision in Daimler AG v. Bauman defined personal and general jurisdiction in Hatch-Waxman setting? Review of Hatch- Waxman jurisdiction cases since AstraZeneca AB v. Mylan Pharms, Inc and Acorda Therapeutics v. Mylan; Status of Mylan appeals pending before the Federal Circuit; What strategies should be used to assert or challenge jurisdiction in ANDA litigation? Devising interim jurisdictional strategie 1300-1400: Networking Lunch
1400-1500: Comparison of the Federal Circuit’s latest Momenta ruling with its original safe harbor ruling; Understanding the implications of this ruling to ANDA litigation; Review of Angiomax case and 35 U.S.C. § 102(b) prior to and post AIA; Understanding the implications of this case in experimental use exception
1500-1600: Evaluating ex parte reexamination in view of other post-grant proceedings vis-a-vis double patenting, and how it can be used to invalidate vulnerable patents; : Discussing Gilead v. Natco with focus on tips for patent prosecution, as well as litigation outlook. strategies for managing ex parte appeals and AIA trials 1600-1615: Tea Break
1615-1715: Review of the recent at-risk-launches; Analysis of launching at-risk during trial or appeal; Examining New Guidance for Calculating Damages post an at-risk Launch; Damages calculation in view of AstraZeneca AB v. Apotex Corp.; Review of recent inequitable conduct cases impacting ANDA litigation post Therasense;

DAY 03 - Programme Outline (EP, Korea, Indian Scenario)

0930-1130: An overview on the new Unitary Patent system: Discussing advantages and drawbacks, describing the nature of the new patent and the related prosecution process; discussing the introduction of the Unified Patent Court; How to make informed decisions on the upcoming issues related to patent protection in Europe. 1130-1145: Tea Break
1145-1300: Prosecution of pharmaceutical/chemical/biotech patent in Korea, Patentability Requirements; Grace Period; Patent Obligation Penalties; Impact of new law on future patent litigation, recent IP trends and regulatory changes in Korea. Amendments to the Patent Law and important changes 1300-1400: Networking Lunch
1400-1500: Marketing authorization process in EP; Medicinal Product Directive and Medical Device Directives, Patent term extension for patented medical product; German Federal Patent Court’s decision on SPCs and Medical Devices. 1500-1515: Tea Break
1515-1700: Recent Changes in Indian Patent Procedures and Practices, Key Pharmaceutical Prosecution and Litigation Cases, Take Aways and Recommended Practices

Speaker Profile

Mr. Chid Iyer received a B. Tech in Chemical Engineering from IIT, Bombay in 1984, MS in Chemical Engineering from University of Akron and MS in Computer Science from the University of Tennessee Space Institute. He received his JD from Georgetown University in 1997. Chid is a partner of International Law Firm of Sughrue Mion and is involved in all aspects of patent practice including litigation, prosecution and client counselling in a variety of technologies with focus on chemical and pharmaceutical. Chid has prepared and prosecuted over 100 applications for a leading research laboratory
Mr. Michael R. Dzwonczyk is a partner at Sughrue Mion and has about 20 years of experience in successfully representing multinational companies in patent litigation, including trials and appeals of patent cases. His experience has encompassed technical areas that include pharmaceuticals, recombinantly produced hormones, protein synthesis and expression products, fibers, and medical devices. Michael also counsels clients on intellectual property issues, including validity and infringement of intellectual property rights, licensing and contract matters and Hatch-Waxman issues.
Ms. Aiyda Ghahramani practices in all areas of intellectual property law with a focus on litigation, rendering opinions on patentability, infringement, and validity, as well as on the prosecution of intellectual property matters. Ghahramani has served as litigation counsel in matters involving the chemical, pharmaceutical and mechanical arts and has significant experience in nearly all pre-trial, trial, and post-trial aspects of patent litigation. She also engages in pharmaceutical/biotechnology patent infringement and validity opinion practice and counseling particularly in connection with preparation of Paragraph IV Notifications under section 505(b), as well as freedom-tooperate, due diligence and product clearance work, licensing and con ntract matters, including joint ventures.
Mr. Shackelford is an associate in the chemical patent and biotechnology / pharmaceutical practice groups, where he maintains an active patent prosecution and litigation practice. Mr. Shackelford earned his J.D. from the IIT Chicago-Kent College of Law. He received his B.S. in Biochemistry from the University of Missouri-Columbia and M.S. in Chemistry and Chemical Biology from the University of California, San Francisco. As an undergraduate and graduate research scientist, Mr. Shackelford focused his research in the area of protein chemistry, studying protein superfamilies to identify mechanisms of enzymatic function and routes through which enzymes develop new functionality.
Ms. Azy S. Kokabi practice focuses on worldwide procurement, defense and enforcement of patents in the biotechnology and pharmaceutical industries, with focus on prosecution, interference, and litigation motions practice. Kokabi did her post graduation in Biology and JD from George Mason University School of Law . Kokabi has served as counsel in interference proceedings and related matters, before the Board of Patent Appeals and Interferences and the Court of Appeals for the Federal Circuit. Kokabi counsels clients about preinterference matters, such as provoking or avoiding interference proceedings, copying claims, and evaluating inventorship disputes. Prior to joining Sughrue Mion, Ms. Kokabi also served at the U.S. Patent and Trademark Office as an Examiner.
Dr. Ahn is a Korean patent attorney and the founder/CEO of Dr. Ahn International Patent Law Office. She has extensive experience in all areas of IP matters in the pharma/bio/chemical fields. Dr. Ahn has successfully handled litigation cases in Korea, including Baraclude, Viagra, Gleevec, Taxotere, Zanedip, Evista, Lipitor, Plavix, Hepsera, Norvasc, Eloxatin, Ultracet, Gemzar, Cozaar Plus, Arimidex, EPO and G-CSF. Before establishing her own office, Dr. Ahn worked as a patent examiner at the KIPO, a litigator at the Tribunal (KIPT) and a senior researcher at Cancer Research Center. Dr. Ahn is a member of the Committee for Fostering Pharmaceutical Industry of the Ministry of Health & Welfare and a member of the Industrial Intellectual Property Dispute Resolution Committee. Dr. Ahn also served as an expert advisor for Free Trade Agreement of the Ministry of Foreign Affairs and Trade. She has pharmacist license and oriental medicine pharmacist license.
Alexander Wittkopp is a partner at Hamm&Wittkopp Patent Attorneys, based in Hamburg (Germany). He represents his international clients in the areas of German, European, and US intellectual property law, including patent prosecution, oppositions, nullity and infringement proceedings, as well as preparing freedom-to-operate and validity opinions in the field of chemistry, biochemistry, and pharmaceuticals. Alexander is a qualified German and European Patent Attorney, as well as a US Patent Agent. He regularly provides complete FTO-analyses for generic products and biosimilars, conducts detailed assessments of the relevance and validity of crucial proprietary rights, and represents his clients in oppositions and revocation actions.
Tarun Khurana has over 14 years of experience in a broad range of Intellectual Property subject matters, and is the Co-Founding Partner and Patent Attorney of Khurana & Khurana, which is among the Leading IP Practices in India with 4 Offices and over 65 Practitioners. Tarun is among the top 12 Patent Prosecution Practitioners in India as rated by IAM, and has executed numerous assignments related to exercises of Patent Portfolio Creation, Protection, Prosecution, Litigation, Valuation and Commercialization for Indian and International Corporates. Tarun focuses on the Patent Preparation, Patent Valuation, Commercialization, Prosecution and Litigation opinions for Electronics, Computer Implemented, and Mechanical subject matters. Tarun has, apart from handling Indian and International Clients for filing and prosecuting cases in India, helped numerous US and European Patent Attorneys in providing Patent Support Services including Patentability Searches, Invalidation Searches, FTO, Infringement Analysis, Patent Preparation and Responding to Office Actions. Tarun has drafted and prosecuted over 1000 patent applications and represents large Corporates on complex infringement and invalidation matters. Tarun has a Bachelors in Computer Science Engineering, a Masters in Software Systems, Bach elors in Law, an MBA from IIM Lucknow, and is in pursuit of his PhD.

Registration Fees

For Indian Delegates : INR 12,000/- Per DelegateFor Foreign Delegates : USD 300/- Per Delegate

Nomination Form

Please Forward the Delegate Fees with the following details: Name, Organization, Designation, and Contact Details along with the cheque drawn in favour of "M/S IIPRD" to Mr. Tarun Khurana IIPRD, E-13, UPSIDC Site-IV, Kasna Road, Greater Noida-201308, UP, IndiaORTransfer Funds at our Bank; details are as Follow: Bank Name: UCO Bank Branch, Branch Name: Greater Noida Bank Account Number: 19620210002476Bank Address: G.N. Shopping Plaza, Plot No.-S-7/1, Site-IV, Kasna Road, Greater Noida MICR Code: 110028055 IFSC Code: UCBA 0001962 Name of the Account Holder: M/S IIPRD

for any query contact

Contact Person: Ms. Meenakshi Khurana (M): +91-9910307992 Email: Meenakshi@iiprd.comMr. R. Srinivasan (M): +91-9716064337 Email: Srinivas@iiprd.com, iiprd@iiprd.com Ph : +91-120-4296878, 2399113, 2399010 Fax: +91-120-2399011