Sujatha Vathyam, Ph.D.

Associate

New York
Business Phone: 212.704.6029
Business Fax: 212.704.6288

sujatha.vathyam@troutman.com

vCard

Sujatha Vathyam, Ph.D., focuses her practice representing clients in the preparation and prosecution of patent applications, particularly in the area of pharmaceuticals, chemicals, hair care, cosmetics, biotechnology and food sciences. Dr. Vathyam ’s practice also includes client counseling, conducting infringement and validity analyses, drafting intellectual property licensing and joint development agreements and conducting intellectual property due diligence in connection with mergers and acquisitions. A substantial portion of Dr. Vathyam’s practice also involves patent litigation, particularly Hatch-Waxman ANDA litigation, and post-grant proceedings at the USPTO, including inter partes reviews (IPRs) and inter partes reexaminations.

Prior to launching her legal career, Dr. Vathyam was a research chemist as well as a negotiator involved in complex transactions, which often revolved around patent licenses and sales, divestitures, joint developments, and technology licenses with both U.S. and international companies. In addition to being a Merck Patent Scholar, she is also the author of several articles involving nuclear magnetic resonance and has been published in several peer-reviewed scientific journals, including Science. While in law school, Dr. Vathyam was Managing Editor for Rutgers Law Review.

Representative Matters

  • Representation of a branded pharmaceutical company in multiple-defendant Hatch-Waxman ANDA litigations related to its opioid dependence treatment medication
  • Representation of a major pharmaceutical company in several inter partes review proceedings of patents related to its opioid dependence treatment medication
  • Due diligence for a major pharmaceutical company in its $32 billion acquisition of another pharmaceutical company, including its commercial and pipeline products that focus on rare disease treatments
  • Due diligence and patent section transaction drafting for major pharmaceutical company in its $3.1 billion acquisition of a pharmaceutical division of a major company that specializes in treatments for ulcerative colitis and osteoporosis. Also handled review of freedom-to-operate studies and counseled on ownership issues and patent exclusivity
  • Management and prosecution of patent portfolios for small and large therapeutic molecules, food products, hair care products, cosmetics, fire-resistant fabrics, roof shingles
  • Counseling, preparing and reviewing licensing and various other agreements, conducting infringement, validity, patentability and freedom-to-operate analyses for pharmaceutical, biotechnology and consumer product companies
  • Representation of third party requester in several inter partes reexaminations challenging patents of a leading chemical company related to catalysts for automotive emission control
  • Representation of patent owner and its exclusive licensee in an inter partes reexamination of patent covering product for treatment of psoriasis. Patent upheld by Federal Circuit following inter partes reexamination

Selected Publications and Presentations

  • CLE Presentation at a major pharmaceutical company on Pharmaceutical and Biological Patent Strategies, May 2016
  • “Of rising importance: Pharmacokinetic patents in the US,” The Patent Lawyer, (September/October 2015), 17
  • “No more “Hand Me Downs” Please!: Children Deserve Medical Devices Specifically Designed for and Tested on Children” Spring, 2006; 58 Rutgers L. Rev. 719

Professional Experience

  • Associate, Troutman Sanders LLP, 2015-present
  • Associate, Fitzpatrick, Cella, Harper & Scinto, 2006-2014; Summer Associate, Law Clerk, 2005
  • Summer Associate, Dechert LLP, 2004

PrintPDF

Education

  • Rutgers University, J.D., with honors, 2006
    Order of the Coif
  • Princeton University, Ph.D., Chemistry, 1997
  • Indian Institute of Technology, Madras,
    M.Sc., Chemistry
  • University of Madras,
    B.Sc. Chemistry

Bar Admissions

  • New York
  • New Jersey
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York