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Jay Deshmukh, Ranbaxy, USA Successful Pharma & Biotech companies understand, that the
SVP Global IP IP and patenting practices are essential in facilitating enhanced
market exclusivity and revenue returns. Legal environment, in
Inma Estanol, European Patent Office, Germany
particular a patent and regulatory uncertainty, is becoming a
Senior Examiner Pharmacy
big challenge for operating globally. With problems with drug
Jurgen Hassa, UCB Group, Belgium registration in the new emerging markets and counterfeit drugs
Associate General Patent Attorney flooding the markets , the industry is doing all the possible legal
steps to protect their profits and good name. This event will
Thomas Bordner, Sanofi Pasteur, USA
bring together the experts to benchmark the best practices in
Director Intellectual Property
developing, implementing and improving IP, patent & litigation
Jean-Christophe Troussel, Bird & Bird, Belgium strategies. Understand, how the various patent offices throughout
Partner the world examine patent applications.
Mark Rachlin, GSK, USA Listen to the case studies on IP situation in India and
Senior Patent Counsel for Litigation China
Sandeep K. Rathod, Matrix Laboratories Limited, India Understand the practices of Patent Offices when
Head of Corporate IP & Formulations Department examining the patent applications
SilverMedia
Sponsor:
Partner: Media Partners:
Booking line: tel: + 420 257 218 505, fax: + 420 257 218 508
Day 1, February 21st, 2008 14:10 CASE STUDY Overview of the IP situation in
China
8:30 Registration and Coffee
• Protecting Pharmaceuticals in China
9:00 Opening remarks from the chair • Overview of Enforcement Issues
12:40 Luncheon
9:00 Opening remarks from the chair
• The recent updates and expected changes in USA law • Avoiding the inefficiency of litigation
Meet Our Comprehensive Speaker Panel where he was responsible for meeting the patent information needs for the company’s global
generic development portfolio. Leighton has obtained an Honours degree in Chemistry from
Loughborough University (UK) and an Executive MBA with the Australian Graduate School of
Andre Bourgouin, Ipsen, France
Management (AGSM). He is a member of the Royal Society of Chemistry and a member of the
Vice President, Corporate Intellectual Property Chartered Institute of Library and Information Professionals.
Andre is the Vice-President of Intellectual Property of SCRAS, the holding company of IPSEN which
he joined in 1996. Before this, he began his career in the Patent department of ROUSSEL UCLAF in Martin Voet, Allergan, USA
1974 where he finally became Deputy Head of Department. In 1993 he joined PASTEUR MERIEUX SVP Chief IP Counsel
CONNAUGHT (now SANOFI PASTEUR) where he held the position of Director, Corporate intellectual
property. Andre holds a Doctorate degree in Organic Chemistry and studied law at the University of Martin Voet is Senior Vice President, Chief Intellectual Property Counsel and Assistant Secretary
Paris (Licence en droit and DESS degrees). He graduated from the CEIPI and is a registered French for Allergan with over 20 years of experience in the pharmaceutical intellectual property field. He
and European patent attorney and a European Trade mark attorney. graduated from the University of California at Berkeley with a degree in Chemistry; received his Juris
Doctorate degree with Honors from the George Washington University National Law Center and an
MBA from Pepperdine University School of Business and Management. Mr. Voet is a member of the
Mary Catherine DiNunzio, H. Lundbeck A/S, Denmark
State Bar of California, the American Intellectual Property Law Association, the Licensing Executives
Head of Global Patent Alliances and Patent Operations Society and an Editorial Board member and contributing writer to “Managing Intellectual Property.”
Mary Catherine is responsible for managing Lundbeck’s patent portfolio pertaining to specific drug He recently published a book on pharmaceutical life cycle management entitled “The Generic
development projects. Her duties include assessing and augmenting, when necessary, the scope of Challenge: Understanding Patents, FDA and Pharmaceutical Life-Cycle Management.”
international patent protection needed for each project, conducting freedom to operate inquiries,
and assessing licensing/business opportunites related to the projects. Mary Catherine is also Sandeep K. Rathod, Matrix Laboratories Limited, India
responsible for developing and implementing intellectual property strategies relating to the extent Head of Corporate IP & Formulations Department
of patent protection needed for various assets at different stages during the drug discovery and
development process. She received a university degree in chemistry from Mississippi State University Sandeep is an experienced IP professional, specialising in patents & pharmaceutical IPR; presently
in 1990 and a law degree from The George Washington University National Law Center in 1995. heading Matrix Laboratories Limited’ Corporate and Formulations IP department (Part of Mylan,
Mary Catherine was a patent examiner at the United States Patent and Trademark Office from World’s 3rd largest generic pharmaceutical company). He obtained his LL.M. in IP & Corporate
1990 until 1992. She is a member of the state bars of New York and New Jersey and is registered laws, LL.B. from the Government Law College, Mumbai. He presented several papers/articles: e.g.
to practice before the US Patent and Trademark Office. Support-researcher for Intellectual Property and taxation published by LexisNexis Butterworths
[March 2007], invited by Medicine Sans Frontiers to conduct workshop on “prior art search for
Patent Oppositions” [2006] and “Intellectual Property licensing & Indirect Taxation” published in
Mark Rachlin, GSK, USA
Excise Law Times, India’s premier indirect tax monthly, Invited by C.S.I.R. to present a paper on
Senior Patent Counsel Licensing IPR [2003]. Sandeep received JPO- AOTS full fellowship for advanced training in Patents
Mark is a Senior Patent Counsel for Litigation at GlaxoSmithKline. He manages all phases of at Tokyo [2005]. He completed WIPO, Geneva scholarship for pursuing two years advanced
pharmaceutical patent litigation with an emphasis on Hatch-Waxman Act matters. Before joining Intellectual Property Rights specialization program [2004-5].
GSK, Mark was senior counsel with both The Dow Chemical Company and Union Carbide Corp.
Mark was also associated with Sidley Austin in the firm’s Washington and New York offices. Before Takashi Fujita, Hiraki & Associates, Japan
entering private practice, Mark clerked for Hon. Jane A. Restani of the U.S. Court of International Patent Attorney, Head of Biotech group
Trade and then was a Trial Attorney in the U.S. Department of Justice Civil Division under the
Attorney General’s Honors Program. Mark graduated from New York Law School, magna cum Takashi obtained a master’s degree in biophysics from the Graduate School of Science at Kyoto
laude in 1984. He is admitted to the bars of Pennsylvania, New Jersey, New York, and D.C. and is University in 1985. He joined the Japan Patent Office (JPO) as Assistant Examiner in 1985. In
registered to practice before the USPTO. 1989, Takashi became an Examiner of the Food Technology Division in the Fourth Examination
Department. From 1994 to 1997, he served in the Japanese Consulate at Munich. In 1997, he
was assigned as Deputy Director of the Examination Standards Office in the Japan Patent Office.
Jurgen Hassa, UCB Group, Belgium
Thereafter, he became Appeal Examiner in the 22nd Board of Appeals. In 2001, he left the JPO to
European Patent Attorney become a patent attorney at Hiraki & Associates.
Juergen received his Masters Degree in Chemie from the University of Erlangen in Nurnberg,
Germany in 1990 and his PhD in Organic Chemistry in 1993. He currently holds a position Inma Estanol, European Patent Office, Germany
of Associate General Patent Counsel in Corporate IP Department. His responsibilities includes: Senior Examiner Pharmacy
protection of UCB’s IP interests in the field of CNS research & development, Protection of UCB’s
Keppra® franchise, and IPD Internal – Collaboration Templates, Professional Association, Inma currently holds a position of Substantive Examiner in the field of Pharmaceuticals in the
Epoline, Review of policies. Prior to this position, Juergen was working as a Director, Corporate General Direction for Substantive Examination and Opposition (GD2) at the European Patent
IP Department at Serono International from 1999 to 2005. Between 1994 and 1999, he was Office. Between 1994 and 1998, she has been working as Project Leader in cooperation
working in a Patent Department of E. Blum & Co. Patentanwälte VSP, focusing on chemistry related programmes in the field of industrial property with Latin American countries, in the International
inventions. Affairs Directorate. Since 1994, she has been a Patent Expert in different missions organised by
the United Nation Organisation WIPO and the EPO in Latin American countries. Since 2006,
she is a member of the Assessment Committee for the project “Innovation Awards in health and
Jay Deshmukh, Ranbaxy, USA
food” organised by Merck Sharp & Dohme, Mexico. Inma received her BSc in Pharmacy from the
SVP Intellectual Property University of Barcelona and as well PhD in Microbiology at this university. She holds as well Msc
After receiving his Master of Science degree in Chemical Engineering at Cleveland State University, in Diary products from the University of Nancy, France. Inma has studied European Patent Law
Mr. Deshmukh received his law degree from Case Western University in 1992, while working full- in the International Section of CEIPI – Centre d’ Etudes Internationales de la Propiete Industrielle,
time as a patent agent. Mr. Deshmukh was registered to practice before the United States Patent Germany/France.
and Trade¬mark Office in 1990 and admitted to practice in Ohio in 1992. He is also admitted to
practice in the Southern District of Ohio, 6th Circuit, and the Federal Circuit courts. After successful Aleksandar Danilovski, Pliva, Croatia
associations as a Patent Attorney with the firms of Frost & Jacobs (1992-1994) and Dinsmore & Senior Director and Head of Global API Research and Development
Shohl, LLP (1994-1998), Mr. Deshmukh assumed the position of Director of Worldwide Intellectual
Property for Ranbaxy Pharmaceuticals Inc. in Princeton, New Jersey. While making the transition Dr. Aleksandar Danilovski is the Senior Director and Head of Global API Research and
from law firm to corporate practice, he also sat for and successfully passed the European Qualifying Development at PLIVA, subsidiary of Barr Pharmaceuticals, Inc. He is responsible for the research
Examination to practice before the European Patent Office. Since joining Ran¬baxy, Mr. Deshmukh and development of numerous active pharmaceutical ingredients (APIs or drug substances). His
has been admitted to the bars of New Jersey and NNew York in 1999. He now maintains the leadership role includes overseeing various aspects of organic and inorganic synthetic chemistry and
position as a corporate Senior Vice President, and directs the global Intellectual Property department analytics, scale-up and process development, solid-state chemistry and analytics (polymorphism
of Ranbaxy Laboratories Limited from Ranbaxy’s Princeton, New Jersey office. Ranbaxy’s global related phenomena), morphological and surface studies (particle size and shape) up to the final
Intellectual Property group consists of: (U.S.) three attorneys, two Technical Specialists, five goal of developing vertically integrated formulation (drug product). Dr. Danilovski received (with
paralegals/support staff; and (India) approximately 44 patent scientists/liaisons. Mr. Deshmukh’s honors) his Ph.D. in Chemistry and Crystallography from University of Cambridge, United Kingdom
daily responsibilities include overseeing Ranbaxy’s worldwide patent litigation and patent and University of Zagreb, Croatia. He has around fifteen years of experience in the pharmaceutical
prosecution and U.S. trademark prosecution and FDA legal matters. He heads a team of in-house industry, and quite a number of papers in peer-reviewed scientific journals, poster and oral
and law firm patent litigation attorneys which has successfully litigated various patent lawsuits contributions at various international conferences, as well as a high number of granted patents and
for Ranbaxy. These wins include successfully defending a $200 million (US$) patent infringement patent applications.
drug case brought by GlaxoSmithKline; winning a patent infringement action brought to facilitate
the launch of generic amoxicillin clavulanate; and winning in lower court and on appeal to prevent Jean-Christophe Troussel, Bird & Bird, Belgium
delisting of challenged patents, thereby restoring Ranbaxy’s 6 month exclusivity in regards to
simvastatin. Currently, Mr. Deshmukh is leading the company’s litigation efforts on numerous
Partner
ANDAs in the U.S. and other patent litigation matters in Canada, Europe, Latin America, Australia,
Africa, and Asia.
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