Seminar Pharmaceutical – Feb 2014









Two-Days International Symposium On
Strategies For Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios



3’rd – 4’th February 2014, at Hotel Hilton, Mumbai

5’th – 6’th February 2014, at The Gateway Hotel Ummed, Ahmedabad

About the Symposium

With Patents becoming a core part of existing economic ecosystem, for Pharmaceutical, Biotech, Chemical & Drug Industry, exploitation of Patent Portfolio has become an industry in itself; especially with the cost of development and protection of the portfolio being enormous. It is therefore crucial to understand important Patent issues, for IP teams and R&D Scientists so as to minimize the efforts in Patent Development and to maximize the 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.Exclusivity rights granted through patents can only be utilised if there is comprehensive knowledge of various patent related issues, more so when the National Patent Laws & Practices relating to prosecution drafting examination and enforcement practices differ substantially across geographies. Furthermore, the 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 and Japan. It is in this direction that the International Symposium is being organized to impart comprehensive knowledge to understand the nitty-gritty of Patent Regime.

How the Symposium is Unique and Why should the Delegates Attend

This Symposium features presentation of all important patent issues, as mentioned in this brochure. The speakers are a unique gathering of Patent Attorneys, Legal Counsels and Commercial Experts, who have extensive years of experience in their professional fields. These Speakers will put across to the delegates the real insight of Patent Laws, Practices and Legal-Commercial perspectives as prevalent and practiced in United States, Japan and India. The Workshop will provide an opportunity to receive -hand information including recent Judgment on various issues from the experts in the fields. The speakers would share real-life cases and experiences that can help the attendees in following the best practices for building their respective patent portfolios so as to best commercialize.

About the Organizers

IIPRD is among India's leading IP Consulting and Licensing Firms 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, Research, Litigation, and Prosecution Support Services to Global Corporates and International Law Firms. IIPRD has been established precisely to assist the business houses in strategizing their growth by leveraging their IPR's through effective Creation, Protection, and Commercialization of IP. IIPRD has a legacy of over twelve years of existence and is among the Indian IP Firms to have core focus on Commercialization, Technology Transfer, and Licensing for numerous Indian and Global Corporates.
About Cantor Colburn LLP
Cantor Colburn is one of the largest full service IP law firms in the U.S.A. providing exceptional counsel and representation to clients in litigation, patents, trademarks, and all areas of IP. Cantor Colburn LLP's Pharmaceutical Litigation Practice has successfully represented several generic drug companies in ANDA and Paragraph IV patent challenges. Experienced and highly skilled, Cantor Colburn helps its clients- including Fortune 100 companies, privately held companies, select high-tech start-ups, and universities- protect and defend their valuable IP.
About Fukami Patent Office p.c
Fukami Patent Office was founded by Mr. Hisao Fukami in 1969, is based in Osaka, Japan and also has its branch office in Tokyo. specialization in the electrical field, Fukami Patent Office has gradually expanded to cover all major technical areas and is truly a full-service IP firm. Clients of Fukami Patent Office include some of the largest and most prestigious clients in various business and technical fields. Currently, the office has a total of 239 staff members including 74 attorneys. By size, Fukami Patent Office ranks as the 6th largest in Japan.
About Khurana & Khurana, Advocates and IP Attorneys
Khurana & Khurana is among the leading full service IP Law Firms in India and has, in a short period of 6 years since establishment, gained repute and acknowledgment for its IP Contentious and Non-Contentious practice. K&K is among the youngest Indian Firms to have been strongly ranked and recommended by Legal 500 and Managing IP and through its team of Patent and IP Attorneys, represents numerous Corporates ranging from Fortune 500 and Start-up Companies, which span across technology domains. K&K is based in Delhi (Noida) and Pune and is an active member of AIPPI, INTA, APAA, LES, among other such international bodies.


Dates: 3'rd - 4'th Feb '14 Venue: Chancellor- II, Hotel Hilton Mumbai (Andheri East) (Earlier Known as Le Royal Meridian)Dates: 5'th - 6'th Feb '14 Venue: The Gateway Hotel Ummed, Ahmedabad

Who Should Attend

IP Management teams, Research & Development Scientists,Patent Agents & Attorneys in the field of Practice, Patent Litigators, Professionals in Legal-Business domain related to Pharma, Biotech and Chemical Industry.

programme outline

DAY-1 US Scenario
0915-1115:What impact the Myriad decision has had on patent examination and strategies? How has the patent scenario changed now that the "isolated" DNA is officially not patentable? Is the USPTO changing its examination approach? Are the life-sciences companies changing their IP strategies? Will this decision impact other products of nature such as proteins, natural products? Do the Myriad and Prometheus decisions together create a different value proposition for life sciences IP as contrasted with other industries? 1130-1145:Tea Break1130-1300:Impact of the American Invents Act (AIA) on obviousness standard: Leveraging Latest USPTO and Court Guidance; Overcoming Challenges of Obviousness and Attacks on Patent Validity. What are the steps that patent applicants can take to stand up to obviousness rejections? Guidance on the evolving obviousness standard in light of Federal Circuit treatment and analysis;Best practices to avoid obviousness rejections and defend patent validity; Under what circumstances has the obvious-to-try standard supported a finding of obviousness? 1300-1400:Networking Lunch.1400-1530:How do AIA changes impact the on sale bar and the public use bar to Patentability and Patent ineligibility and invalidation? Minimizing the risk of Patent ineligibility or invalidation; How are courts treating the on sale bar and the public use bar? What best practices can a counsel employ to adapt patent prosecution and enforcement strategies? 1530-1545:Tea Break.1400-1500:Patent Trial and Appeal Board (PTAB) or the District Court: Which is the better option when challenging patent validity? Strategies in choosing the best invalidity proceeding option; What are the similarities and differences between the various PTAB invalidity proceedings? What are the risks and benefits of the different PTAB proceedings? Are PTAB proceedings a better option than the district courts?1645-1745:Post-AIA Preissuance Prior Art Submissions at the USPTO: How do the revised USPTO rules change the landscape for third-party intervenors? What are the key considerations for patent counsel when deciding whether to make preissuance submissions? What are the benefits and limitations of submitting prior art or other information on a pending patent application?
DAY-2 US Scenario
0915-1015:Patent Infringement Litigation: Effective Strategies for Developing in-house expertise to facilitate smart decision-making and strong partnerships with outside counsel; Strategies for early establishment of appropriate discovery limitations.1015-1115:Exploring recent applications of Therasense; Exploring the role of Patent Reform in the inequitable conduct debate; supplemental proceedings under the AIA, an opportunity to cure inequitable conduct?; Assessing Supreme Court ruling in FTC v. Actavis: involving "reverse payment" settlement agreements between branded and generic drug companies. 1115-1130:Tea Break.1130-1230:Complying with FDA standards on the abbreviated biosimilars pathway requirements; Meeting the heightened standard of interchangeability and outlining parameters of similarity in the context of large complex biological compounds. Provisions of the BPCIA designed to prevent evergreening patents. The BPCIA patent dispute resolution process. Patent portfolios for biologic drugs.1230-1330:Analyzing the different conclusions concerning the bounds of the safe harbor in Classen and Momenta; reassessing inducement and divided infringement in the context of Orange Book-listed method patents; Is There a New Paradigm for Indirect Infringement? 1330-1430:Networking Lunch.
Indian Scenario
1430-1545:Recent developments for Patent Term Adjustments (PTA) in view of Exelixis and Novartis, and their potential impact, methods for calculating PTA, what can be done to preserve rights, and best practices for maximizing PTA; discussion of proposed guidance for calculating patent term adjustments.Compulsory Licensing scenario, Assignment and Commercialization of Pharma patents, Critical aspects from Indian Patent Act stand point. 1545-1600: Tea Break
Japanese Scenario
1600-1730:Best-Practices to get robust Patent in Japan with focus on patent prosecution, patent fencing and patent portfolio management with recent court judgments in Japan.
About the Faculty
Mr. Chid Iyer Chid 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 Cantor Michael Cantor for more than two decades is leading expansion at Cantor Colburn's wherein he oversees more than 110 attorneys, patent agents, and technical advisors who help a diverse client base of international innovators make the most of their IP assets. Michael couples his technical training in chemical and materials engineering with more than 25 years of experience as an IP attorney to help Fortune 50 corporations, universities, tech start-ups, and mid-sized companies develop and carry out targeted IP strategies that fulfil their needs and objectives in a complex global economy. Michael has taught patent law and procedure at the University Of Connecticut School Of Law for nearly twenty years and presently is serving as the Chairman of Connecticut Innovations. Michael is regular speaker and writer on IP-related topics.
Mr. Steven M. Coyle Steve Coyle is a Partner and trial lawyer at Cantor Colburn with nearly 20 years of experience in litigating and trying complex disputed matters, and has specialized in patent and all varieties of IP litigation for the past 15 years. Steve's areas of focus include ANDA and Hatch- Waxman litigation, and is the Group Leader of Cantor Colburn's Pharmaceutical Litigation Practice. Steve has represented clients in a variety of other patent and IP matters, as both plaintiffs and defendants, in courts as well as in alternative dispute resolution proceedings such as arbitrations and mediations.
Mr. Jeffery Arnold Jeffery is a Partner in Cantor Colburn since 2010. His main practice areas include Patent preparation and prosecution, Patent Landscaping and Risk Analysis, Non-infringement and Invalidity Opinions, Due Diligence in IP Acquisitions, Patent litigation, and Licensing. Before joining Canton Colburn in 2010, he represented as a Partner in a leading US Law Firm. He obtained his Bachelor of Science in Chemical Engineering in 1980 and a Juris Doctorate in 1987. He is currently pursuing doctorate in biochemistry.
Ms. Leslie-Anne Maxwell, Ph.D. Leslie is a Counsel at Cantor Colburn. Her main practice areas include Patent preparation and prosecution, Patent Risk Analysis, Non-infringement and Invalidity Opinions in the areas of small molecule pharmaceuticals, drug delivery and formulations, chemical processes, among other allied. Leslie also prepares invalidity and non-infringement opinions in ANDA litigation. Before Joining Cantor Colburn in 2003, she represented as a Patent Agent in Neurogen Corporation. She obtained her Ph.D in Biophysical Chemistry in 1995 and a Juris Doctorate in 2005.
Mr. David E. Rodrigues, Ph.D. Dave is a Partner at Cantor Colburn. His main practice areas include Patent preparation and prosecution, Patent Landscaping and Risk Analysis, Non-infringement and Invalidity Opinions, and Due Diligence in IP Acquisitions. Before joining Cantor Colburn in 2001, he worked as a Plant Chemist for Armstrong World Industries and also represented as a Polymer Processing Development Center Leader in General Electric Company. He obtained his Ph.D in Materials Engineering and Science in 1991 and a Juris Doctorate in 2005.
Dr. Toshio Nakamura Dr. Nakamura is a Japanese patent attorney in Fukami Patent Office, p.c. He has over 20 years of experience in patent prosecution and litigation covering general chemistry, pharmaceuticals, biotechnology, patent term extension, etc. He obtained his PhD in chemistry from Tokyo University in 1985. Before joining Fukami Patent Office in 2002, he worked for Sumitomo Pharmaceuticals, Co., Ltd. and Mitsubishi Tanabe Pharma Corporation as a researcher and also in the IP department while he was a trainee at J. A. Kemp in London, U.K. for two years. He made more than 20 publications in both chemical and patent fields, and made five presentations in the patent field.
Mr. Tarun Khurana Mr. Khurana focuses on Patent Preparation, Prosecution, Litigation, and Valuation related issues and represents IP portfolio of over 750 Indian and Global Corporates. Tarun brings a practice of over 9 years in the IP domain and has 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 represents a number of Fortune 500 Corporates and is involved in significant infringement and nullity proceedings. Tarun has a Bachelors in Engineering from Pune University, Masters in Software Systems from BITS Pilani, Bachelors in Law, and MBAfrom IIM Lucknow. Tarun is a member of AIPPI, APAA, INTA, TIE, and LES.

Registration Fees

Indian Delegates : INR 9,000/- Per Delegate (If 4 or more Delegates are nominated, the Delegate Fees would be Rs. 7500/-) Foreign Delegates : US$ 300 Per Delegate PAN N0:AADFI5380E

Nomination Form

Please Forward the Delegate Fees with the following details: Name, Organization, Designation, Address and Contact Details along with the cheque drawn in favour of " M/S IIPRD " to Mr. Tarun KhuranaIIPRD, E-13, UPSIDC Site-IV, Kasna Road, Greater Noida-201308, UP, India


Transfer Funds at our Bank; details are as Follow: Bank Name: UCO Bank Branch, Branch Name: Greater Noida Bank Account Number: 19620210002476 Bank 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 Mobile: +91-9910307992 Email: Mr. Tarun Khurana, +91-9810617992, +91-9810281321, Email:, Ph : +91-120-2342010/4296878, Fax: +91-120-2342011