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Intellectual Property / Patent Professional Resume Sample, Experience : 12 years

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Name of the Candidate:[Private]
Name of the Post Applied:Intellectual Property / Patent Professional
Job related skills / software:Chemical and Pharmaceutical domain Patent Claim, Drafting of Patent Application
Category:Legal, LPO Lawyer Advocate
Sub Category:Patent Analyst
Years of Experience:12 years
State:Karnataka
Gender:Male
Salary Expected per Month(Rs):Negotiable
Highest Qualification attained:PhD
Major / Specialization:Chemistry
Email Id:[Private]
 
Are you looking for job now?:Yes
Can the recruiter contact you?:Yes
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Resume
Contact : +91-9901971267 / 080-49533760
E-Mail : mallyamn AT gmail.com
Intellectual Property Professional with over 12 years of experience in Pharmaceutical Industry.

Core Competencies and Skills  :
Sound Technical Knowledge (Chemical and Pharmaceutical domain)
Good Understanding of the Fundamentals of Patents, ability to Understand Patent Language and Interpretation of Patent Claims
Thorough Knowledge and Understanding of the Patent Acts and Patent Rules of IN, US, CA, EP, UK, AU.
Independent and Effective Drafting of Patent Applications.
Advice/Suggest Experiments and/or Generation of Data for Enhancing and Strengthening Patentability and Allowance/Grant of Applications
Conducting in-depth Infringement Analysis for Products, Processes, Compositions, Uses, Technologies for Various Territories/Jurisdictions
Design Ways and Means to Work-around Bottle-neck Patents/Applications in Process Chemistry, Polymorphs, Composition, etc.
Preparing Strategies for Undertaking necessary Remedial Legal Measures in Various Jurisdictions in Anticipation of Potential Lawsuits in Launch of Products in such Jurisdictions
Identification of Weaknesses in Third Party Patent Rights
Identification Paragraph IV Opportunities for the USA
Liasoning and Establishing Meaningful Links with Patent Counsels, both within and Outside the Country on Matters related to Patentability, Infringement, Patent Oppositions, Invalidations, Re-examinations, Revocations, Litigations (Hatch-Waxman Litigations in the USA), etc.
Information mining through various databases
Training of R&D scientists on IP related aspects of research
Computer Literacy (MS Office applications, Chemical Drawing Tools)
Good Communication Skills, both Oral and Written
Strong analytical skills, quick learner, willing to acquire knowledge in new domains, effective communicator with strong relationship building skills.

Professional Experience :
December 2006
Present Organization : Apotex Pharmachem India Private Limited, Bangalore,
Department : IP-R&D
Designation : Team Leader - Since April 2010 Group Leader-II - December 2006
March 2010
Job Profile & Accomplishments :
Setting up of IP Department.
Developed IP strategy for generic market entry of more than 70 APIs for US, EP, CA, AU, JP and IN markets.
Evaluation of patentability and drafted 15 patent applications.
Guided R&D chemists in preparing attorney work-product requirements in anticipation of litigations and patent opposition/invalidation strategies.
Lead role in P-IV litigation providing technical support to attorneys in complying with Discovery and Depositions.
Addressed customer queries on patent matters on APIs from various countries.
Made inventive contribution in developing process, polymorphs and salt forms of certain APIs.

Named inventor in the following patent applications  :
1. IN 1288/MUM/2009
2. IN 522/MUM/2011
3. IN 1818/MUM/2011
4. IN 1572/MUM/2012

Regularly involved in training the R&D chemists on how to create, document, and protect IP assets without infringing upon third party rights.
Service Recognition Award in October 2010 and February 2013.

June 2004 - December 2006  :
Organization : Lupin Limited (Research Park), Pune,
Department : Patents & Information Cell
Designation : Research Scientist-II (M2) - July 2006 - December 2006
Research Scientist-I (M1) - June 2004 - June 2006
Job Profile & Accomplishments :
Patent landscaping, and process selection strategies for about 20 APIs for US and Europe markets.
Drafting, filing & prosecution of over 25 patent applications on process, polymorphs of APIs, NCEs, pharmaceutical compositions from natural products.
Actively involved in P-IV litigations as a technical support scientist reviewing technical documents such as affidavits, rebuttal briefs, and discovery related documents.
Worked as information specialist for R&D (Information retrieval from CAS Registry, CAPLUS, CASREACT, NAPRALERT, RTECS, BEILSTEIN, MARPAT, ORBIT, IMS Health, Westlaw, USPTO, EPO, IPO, and INPADOC). -
Recognized under the Leadership Acceleration Programme of the Company for leadership abilities and outstanding performance.

April 2001 - April 2004 :
Organization : Jubilant Biosys Ltd., Bangalore,
Department : Chemoinformatics
Designation : Scientist
Job Profile & Accomplishments :
Developed Database Products by analyzing patents on New Chemical Entities (NCEs) and Medicinal Chemistry research papers.
Developed protocols and procedures for information identification, data mining, excerption, data control, and quality assurance of database.
Project planning and management.
Prepared user manuals for the database products.
Actively involved with customers to understand their requirements and get feedback to improve the product.
Assisted the Business Development team in giving technical presentation on database products.
Actively involved with the IT team in database design as a subject expert and a database user.
Extensively used Chemical Information management tools such as ISIS Draw, Chemdraw, ISIS Base, ISIS Host.
Patent information retrieval from Delphion, USPTO and esp AT cenet. Products developed
Kinase ChemBioBase
SAR database on Protein Kinase drug targets covering over 500 kinases & 180,000 inhibitors.
Medicinal Chemistry Database : Small molecule database of over 150,000 small molecules including known drugs, drug-like molecules tested against various drug targets including (protease, GPCRs, Nucelar receptors and Ion channels), and antimicrobial compounds.

Professional Training :
Workshop on Team building and Team work at breakthrough learning, Off Bannerghatta Road, Bangalore, July 18-19 2008. -
Workshop on In-house Patent strategy and Management, Sep 30-Oct 01, 2006 at Academy of Intellectual Property Studies, Mumbai, conducted by Ms.


Win Eyles of NetsPat Limited, London, UK.
Symposium on Current Patent Issues in Pharmaceuticals, Sep 11, 2006 at Hotel Le Royal Meridian, Mumbai conducted by Sughrue Mion, PLLC, USA.
Leadership Acceleration Program, 1st 5th January, 2006 at North Point Khandala, Maharashtra, India.
Workshop on The U.S. Patent System as applied to Pharmaceutical and Biotechnology Inventions, April 11-16, 2005, Institute of Intellectual Property Research and Practice Gurgaon, India
IPR Summit : The International Intellectual Property Rights Conclave, January 20-21, 2005, Hotel Taj Lands End, Mumbai, jointly conducted by CII and The George Washington University Law School.
STN Searching for Chemistry and Patent Information, December 28-29, 2004, CDAC, Mumbai, India.
Workshop on Patenting in India & Abroad, July 16-17, 2004, CII Naoroji Godrej Centre of Excellence, Mumbai. Invitations to give Presentations
Physical Characterization of Pharmaceutical Solidsat Christ University, Bangalore, on March 26, 2012 as a part of UGC-FIP programme for Post Graduate faculty of Chemistry.
Patenting the Pharmaceutical Inventions : Opportunities for Generic Drug Industryat Sri Ramachandra University, Chennai on July 04, 2009.

Education :
Degree Subject(s) Year Institution Board/University Marks (%)
PhD Organosilicons 2001 Central College Bangalore University NA
MSc Organic Chemistry 1994 Mangalore University Mangalore University 75.84
BSc PCM 1992 St. Aloysius College Mangalore University 84.13
PUC PCMB 1989 St. Aloysius College Karnataka PU Board 81.5
SSC General 1987 S.A.T High School Kerala State Board 84.5

Academic Achievements :
University Grants Commission Research Fellowship for doctoral work Chemistry Department of Bangalore University from 1995-2000.
Junior Research Fellowship during 1994-1995 under UGC-DRS Programme at Chemistry Department of Bangalore University based on GATE-94 CHEMISTRY (95.21 percentile score).
Professor M R Gajendragad Gold Medal for securing first Rank in M.Sc. (Chemistry) 1992-94, Mangalore University.
10th rank in B.Sc., degree course (1989-92) from Mangalore University.
National Level Top 1% position in the National Graduate Physics Examination
1992, conducted by Indian Association of Physics Teachers, IIT Kharagpur.
National Merit Scholarship of academic excellence in 10th standard (1987) and B.Sc., degree course (1992).

PhD Thesis Title :
Synthesis and Investigation of Stereochemical and Mechanistic Aspects of some Reactions of Organosilicon Compounds
Summary :
The study involved the synthesis of trimethylsilylcycloalkenes from cycloalkanones and/or cycloalkenes.
The trimethylsilylcycloalkenes were oxidized to novel cyclic cis-- , - -dihydroxysilanes using permaganate cetyltrimethylammonium permanganate a phase transfer catalyzed permanganate oxidation.
A kinetic study on stereoelectronic requirement and effect of ring size on acid catalysed elimination of silanol from the cyclic cis-- , - -dihydroxysilanes to cycloalkanones was carried out. In another study, the mechanism of electrophilic addition of NOCl to trimethylsilylcycloalkenes was investigated in detail by establishing the stereochemistry and regiochemistry of addition, through single crystal X-ray analysis, and from the hydrolysis and reduction products of chloronitroso adducts.
A detailed study was carried out to understand the mechanism of unusual syn addition of NOCl across the double bond and reversal of regiochemistry of addition expected from beta-effect of silicon.
Supervisor  : Prof. Gopalpur Nagendrappa, Department of Chemistry, Bangalore University, India. Examiners : Prof. Paul F Hudrlik, Howard University, Washington, DC, 20059 Prof. M. Nagarajan, University of Hyderabad, India

Publications :
1. Journal of Chemical Crystallography, Volume 38, Number 7, (2008), 547-551
Title :
Hydrogen Bonded Channel Formation in a Molecular Complex : cis- 1-Chloro-2-ammonium-1-trimethylsilylcycloheptane Picrate- .
Authors : N. S. Begum, D. E. Vasundhara, C. R. Girija, M. Narendra Mallya and Gopalpur Nagendrappa.
2. ARKIVOC, (2006) (xiv) 155-174
Title : - Nitrosyl chloride addition to cycloalkenyltrimethylsilanes. An unexpected reversal of regiochemistry of addition and synthesis of -aminosilanes- .
Authors : M. Narendra Mallya and Gopalpur Nagendrappa.
3. Journal of Molecular Structure, Volume 751, Issues 1-3, (2005) Pages 127-132
Title : - Self-assembly of cis- and trans-cyclic-1, 2-diols. Supramolecular synthon equivalence between cis-1, 2-diols and primary amides.
Authors : N. S. Begum, C.R. Girija, M. Narendra Mallya and Gopalpur Nagendrappa.
4. J. Chem. Soc., Perkin Trans. 2, (2001), 2248-2252
Title : - Stereoelectronic requirement and effect of ring size on silanol elimination: a kinetic study- .
Authors : M.Narendra Mallya and Gopalpur Nagendrappa.
5. Tetrahedron Letters, (2001), 42, 2565-2568
Title : - Addition of NOCl to Cyclic Vinylsilanes: an unexpected reversal of regiochemistry- .
Authors : M. Narendra Mallya, Gopalpur Nagendrappa, J. Shashidhara Prasad, M. A. Sridhar, N. K. Lokanath, and N. S. Begum.
6. Synthesis, (1999), 37-39
Title : - Cis-Hydroxylation of Cyclic Vinylsilanes using Cetyltrimethylammonium permanganate- .
Authors : M. Narendra Mallya and Gopalpur Nagendrappa,

Academic Seminars/Workshop  :
International Symposium on Crystallography and Bioinformatics in Structural Biology, November 20-25, 2001, Molecular Biophysics Unit, IISc, Bangalore, India.
Poster presentation at National Symposium in Chemistry, January 27-30, 1999, Department of Chemistry, IISc, Bangalore, India.
Silylation experiment demonstration at Winter School on Organometallic Chemistry, December 15-20, 1997, Gulbarga University, Gulbarga, India.
Poster presentation at Indo-German Symposium on Organic Synthesis-Growing Interface with Adjacent Science, held at IICT, Hyderabad, India during September 1996.

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