Sandeep Pandey

As Principal Associate, my role involves IP legal work, particularly in patent prosecution, IP strategies and IP transactional work.

IP Portfolio Management

• Drafting and filing patent applications and managing patent prosecution
• Drafting and filing patent oppositions and reply to oppositions
• Advising clients on patent portfolio optimization and cost-effective protection measures
• Conducting trademark searches and advising clients, filing trademarks and trademark oppositions

Patent Analysis

• Conducting prior art searches such as patentability, invalidity searches etc
• Conducting Freedom to Operate (FTO) assessments to identify patent risks and mitigation strategy
• Performing infringement analysis to assess potential legal risks and prepare defensive strategies

Cross-Jurisdictional Collaboration

• Working with attorneys worldwide to ensure global IP protection and compliance
• Coordinating multi-jurisdictional patent filings - PCT and Paris convention

Intellectual Property Due Diligence & Transactions

• Conducting IP due diligence for mergers, acquisitions, and investment deals to assess risks and value
• Analyzing patent portfolios to determine the strength and potential litigation risks of IP assets
• Advising on IP strategy in corporate transactions

Drafting & Negotiating Contracts

• Negotiating and structuring IP licensing agreements for clients
• Drafting and reviewing Technology Transfer Agreements, ensuring the proper transfer of rights and compliance with legal frameworks
• Drafting and reviewing software contracts related to licensing, development, and SaaS agreements

As assistant director, I played a critical role in managing the company's patent portfolio, ensuring regulatory compliance, and collaborating with global legal teams to safeguard innovations in medical devices and healthcare technology

Patent Portfolio Management & Strategy

• Managed end-to-end patent portfolios related to medical devices and healthcare technologies, ensuring comprehensive protection of intellectual property
• Developed IP strategies aligned with business and R&D goals to optimize patent filings and ensure market exclusivity
• Advised internal teams on the strength, enforceability, and monetization of patent assets

Patent Prosecution & Global Filings

• Led patent prosecution efforts by preparing and reviewing responses to office actions from European (EPO) and Indian (IPO) patent offices
• Worked closely with European Patent Attorneys to ensure compliance with EPO examination standards and improve the chances of patent grant
• Drafted and filed patent oppositions and third-party observations, challenging competitor patents to protect Fresenius Kabi’s market position

Freedom to Operate (FTO) & Risk Mitigation

• Conducted FTO searches and analyses before the launch of new medical products, ensuring that the company did not infringe on existing patents
• Assessed IP risks in product development and provided legal opinions to mitigate potential infringement issues

R&D Collaboration & Invention Harvesting

• Worked closely with in-house R&D teams to identify and protect innovative medical technologies
• Organized brainstorming sessions with researchers to catalyze inventions and ensure timely patent filings
• Acted as the bridge between engineering teams and legal teams, ensuring that inventions were properly documented and legally protected

Cross-Functional & Global Legal Collaboration

• Coordinated with global attorneys and IP teams to manage Fresenius Kabi’s international patent portfolio
• Provided legal training and strategic IP guidance to internal stakeholders, including R&D, business, and regulatory teams
• Participated in discussions on IP strategy for different jurisdictions, ensuring that patent filings were optimized for key markets

Team Leadership & IP Operations

• Led and mentored junior team members in conducting patent searches, FTO assessments, and prior art analysis
• Streamlined IP management processes, improving the efficiency of patent prosecution workflows
• Contributed to the development of internal IP policies to enhance Fresenius Kabi’s innovation pipeline and patent filing strategy

As patent attorney, my role provided a strong foundation in core patent filing and prosecution

Patent Prosecution & Office Actions

• Handled over 1,000 patent office actions across multiple jurisdictions, including India, the US, and Europe
• Successfully conducted oral hearings before patent office examiners and controllers
• Drafted and filed patent applications, ensuring strong technical and legal arguments

IP Licensing & Agreements

• Drafted IP licensing agreements for various industries, including mechanical, automotive, and medical devices

Patent Litigation & Contentious Matters

• Worked on patent oppositions and litigation cases, drafted plaints/suits
• Provided expert legal opinions on patent validity and infringement

IP Analysis & Client Advisory

• Advised clients on patentability assessments, patent strategy, and enforcement
• Conducted FTO searches to assess litigation risks before product commercialization
• Provided legal strategies for avoiding patent infringement risks

Team Leadership & Training

• Led a team handling mechanical and automotive IP matters
• Trained junior associates in patent drafting, prosecution, and litigation strategies

• Hands-on experience of databases such as Thomson Innovation, Questel Orbit, Google Scholar, Web of Science, ScienceDirect etc
• Analysis and preparation of Reports in relation to Freedom to Operate (FTO), Patentability, Invalidity, Infringement analyses
• Searching and classification of captured/screened patent documents into categories finalized for technology based taxonomy and representation of categorized result set in a structured excel reports
• Preparing presentations with insights to help client understand the outcome of landscape study
• Drafting defensive publications for US based client

• Analyzed suspension system of various BMW vehicles, learned ways to detect leakage of coolant, prepared analysis report in respect of the project

• Analysis of manufacturing processes and preparation of process flow charts in relation to machining of various components of reciprocating air compressor and performing various machining processes in the workshop