Aparna Nemlekar is a Partner at Fox Rothschild LLP. A registered patent attorney with more than a decade of experience as both inside and outside counsel, Aparna provides strategic counseling on the creation and management of robust, value-driven intellectual property portfolios.
Trained in microbiology and human genetics, Aparna uses her knowledge to assist clients in identifying and protecting valuable innovations in the United States and around the world. She advises clients on maximizing the scope, term, and value of intellectual property, including developing product exclusivity strategies, strategic patent prosecution and counseling, due diligence, and transactional support for clients in the pharmaceutical, biologic, nutraceutical, cosmetic, medical device, and other health and life sciences fields. She often drafts, prosecutes and opines on patents owned by healthcare companies, including pharmaceutical companies, universities and medical centers, and drafts and negotiates non-disclosure, licensing, collaboration and joint venture agreements for healthcare clients.
Her patent experience, however, spans a range of other industries, including sports equipment, coatings and consumer products. She works with private equity, venture funds and other investment firms to conduct intellectual property due diligence regarding corporate mergers and acquisitions, complex technology transfers, licensing and asset purchases. She is experienced with IP transactions, including intellectual property licenses, collaboration and joint development agreements.
Beyond patents, Aparna is well-versed in copyright and trademark laws.
While part one of this two-part series on intellectual property (IP) due diligence focused on a life science company’s own IP portfolio, part two will address a company’s understanding of how it fits into the market by considering its freedom to operate, as well as its competitors’, and the interplay of patent and regulatory exclusivity as it relates to the company’s product. Patent and regulatory exclusivity—two areas that can provide the most value and protection to a life science product—are very interrelated. Simply identifying when a key patent naturally expires is not sufficient, because regulatory exclusivity could possibly extend the company’s ability to keep competitors off the market or allow competitors to speed up entry in certain situations.
The success of a life science product, and thereby the company, rests heavily upon a combination of patent protection, regulatory exclusivity and product life cycle management. A company’s ability to formulate and articulate an integrated strategy is critical to obtaining investments, strategic partnerships and market success. In this two-part series, we will discuss recent judicial developments that affect life science companies’ IP strategies and also outline the four basic principles of an integrated IP strategy on which a company’s intellectual property audit and preparation for third-party diligence should focus. These are: (1) patent prosecution and strategy, (2) rights and ownership, (3) interplay of patent and regulatory exclusivity, and (4) freedom to operate and competitors. Part one will focus on patent prosecution and strategy, as well as rights and ownership.