1. Dr. PRITI AGGARWAL
Contact No.: 09717178719 ~ E-Mail: piaaggarwal_127596@yahoo.com
Contact Address: I-38, Lajpat Nagar-3, New Delhi, Pin Code-110024
Doctorate in synthetic Organic Chemistry with around 9 years of experience in managing Intellectual property in Pharma sector.
Sound in enriching assignments in Client Relationship Management/ Legal Affairs/ Patent Management
WORK EXPERIENCE
Working with Reputed Law firm in Delhi. (Lall & Sethi Advocates) as Senior patent Analyst (7 months)
Earlier worked with pharmaceutical companies like Teva and Ranbaxy.
- Senior manager in Global Legal and Patent Group with Teva (1.9 years)
- Senior Research scientist with ranbaxy (6.5 years)
Total Experience: 9 years
Technical skills: Chemistry, Patent, subject knowledge of Trademark and copyright,
Cheminformatics, Product designing, drafting, prosecution, litigation, Oppositions,
Infringement & Invalidity Opinions, Product Patent landscapping, Claim mapping, Licensing
German language, Sound knowledge of patent databases and drug regulatory approval
process. Skilled in Patent laws of various countries and implementation of these laws to
patent related matters
Growth Path:
Apr’06 to Apr’ 10 Research Scientist (IPM) - API Group (Ranbaxy)
Apr’10 to Jun’10 Research scientist - NDDR Group (Ranbaxy)
Jun’10 to Oct’12 Senior Research Scientist - API Group(Ranbaxy)
Nov’ 12 to May’14 Senior Manager –Global patent and legal group (Teva)
RESEARCH PROFILE
- Highest Qualification
Ph.D in Synthetic Organic Chemistry (on open fellowship from CSIR (availed JRF and SRF)
Thesis submitted- 'Synthesis of some pyrazolobenzimadazoles, biphenyl-pyrazolobenzimadazoles, benzodiazepines, Benzothiazines
of medicinal interest”
- Additional Qualifications:
Diploma in Cheminformatics
UGC-NET cleared, Availed JRF and SRF from CSIR
Diploma in German language
Pursuing MBL (National Law School, Bangalore)
Certification course on Legal writing on Trademark, Copyrights, Design, GI
- Publications
“Studies on some benzodiazepine compounds” published in “Indian Journal of chemistry” 2003,
Vol 12.
“Synthesis of some 1, 4- & 1, 3-benzothiazines having antimuscaranic activity” published in l
“Synthesis” 2004, Vol 2.
“Synthesis and spectral studies of some pyrazolobenzimadazoles and biphenyl-
pyrazolobenzimadazoles” published in Synthetic communication, 2005, Vol 3.
PROFILE SUMMARY & EXPERTISE INMANAGING PATENT PORTFOLIO
• Landscapping
Initiation of Product development by preparing Landscape for pipeline Phase III &
Business strategic molecules Like Odanacatib, Simprenavir, Ibrutiib, Afatinib,
Sofosbuvir, ledipasvir etc…
2. Skilled in using various literature search tools Scifinder, STN, IMS, Pioneer, Delphion, Newport, ACD, ISIS, Get the
patent, pharmapendium to retrieve relevant literature.
Devising API strategy to evaluate claim clustering and claim mapping wrt innovator and third-party literature
Formulating roadmaps to strategies for specific and generic pathways
Identifying patent barriers and analyzing them to get non-infringing routes for regulated markets Like US, EP, CA, JP, IN.
Braketing various API related matters like Polymorph, Metabolite, intermediates, impurities, particle-size issues.
Preparing Pharma landscapes taking into consideration combination and composition patents of innovator and third-
party. Analyzing and establishing various relevant formulating schemes.
Devicing method of use patent applications and second method of use claims to evaluate launch strategies.
Helping marketing group to enhance business by development of non-infringing API and its commercialization prior to
launch product launch and thus creating client awareness.
• Infringement FTO opinions:
Prior-art invalidity, patent landscape and opposition search
Technical and skilled use of undisclosed prior-art and thereby targeting weak claims
Product deconstruction by analyzing, understanding and dissecting the technology. Formulating series of FTO analytical
questions followed by mapping of relevant IPR landscape
Legal techniques to define obviousness, anticipation and 3d issues .
Conducting technical analysis and crafting Patent infringement opinion by identifying potential issues wrt direct,
indirect infringement taking various parameters like induced and contributory infringement into material
consideration.
Analysis based on 35 USC 271(g) material change, product by process claims and “doctrine of equivalents (DOE)”
relating to conversion of intermediates to chemically and biologically distinct product.
Help Global sourcing group, supply chain, R & D, regulatory, and external customers to devise non-infringing marketing
product
Preparing techno-legal document by issuing Non-infringing statement /opinion on valid patents.
Provided various NI opinions related to contributory infringement and induced infringement for molecules like
statins(rosuvastatin, atorvastatin, simvastatin), erectile dysfunction molecules(sildenafil, vardenafil), gastric acid
inhibitors (omeprazole, esomeprazole, pantoprazole) involving use of particular intermediate, particular step,
metabolite, prodrug, labelling, advertisement including sale /offer for sale.
Customer request based FTO opinion related to biopharmaceuticals like Rutuximab, Herceptin and fermentation
products like Sirolimus, everolimus for US and EP.
Evaluating various options like Licensing options, Modify product, Invent around, and/or abandon the project and
thereby managing business needs.
• Drafting and prosecution:
Handled Intellectual Property Rights (IPR) issues involving:
o Patent Filing in IN, Foreign Filing and Patent Maintenance helping organization attain proprietary value
o Prior-art, Patentability Searches, Disclosures, Drafting Patent applications and timely filing for patents keeping in
view scope of claims, claim language, extent and inclusion of data in the applications and thus consolidating IP
o Attending to Office actions and making amendments when and as required
o Filing of divisional, continuation and patent of addition/continuation-in-part
o Keeping track of foreign filing, prosecution details and search reports generated thereof and timely provide the
information to IPO U/S 8
o Handled efficiently potential issues under section 2(1)(j), section 3d (polymorph, prodrug, ester) & 3e (admixture,
combination/s) during prosecution in India.
o Efficiently managed the non-working of patents in India, a pre-requiste to obtain compulsory licensing in India.
• Invalidity & Unenforceability opinions:
Evaluating potential basis of invalidity like anticipation, obviousness, double patenting, Lack of enablement, written
description, indefiniteness, Wrongfull obtaining, Failure to obtain a foreign filing license.
Generation of Pre-litigation exculpatory opinions under Attorney-Client privilege.
Provided invalidity opinions related to products like Ingenol, Rifaximin, Romidepsin, Dabigatran, Telmisartan,
Fosamprenavir, Rosuvastatin etc..
• Litigation/opposition:
Filing notice of opposition, written statements and reply statements in EP and IN
Para IV filings In US, Hatch-Waxmann litigation
Providing technical support during discovery in US and during 30 month stay based on requirement.
Sucessfully worked on filing pre-grant and post-grant oppositions in India like Fosamprenavir, Imatinib, Valacyclovir,
3. valgancyclovir etc..
• Client/Customer management:
Handled reputed customers like Mylan, Teva, Ranbaxy, lupin, Hetero for various small molecules and biopharma
products and finished dosage forms.
Generation of NI statements /opinions and Invalidity opinions.