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About Karthika

Dr. Karthika Perumal’s practice involves all aspects of technology law with an emphasis on the protection, licensing, transfer, and acquisition of intellectual property. She advises clients on patent and transactional matters in the energy and healthcare sectors across a wide range of technologies, such as chemicals, oil and gas processing, biotechnology, biomedical devices, and software. She leverages her background and experience to assist clients meet their business objectives at every stage of product development, from early stage funding and product development to licensing and joint ventures arrangements, and other exit transactions. Karthika handles a variety of transactions, including multiparty collaboration, sponsored research, manufacturing, supply, and software development and support agreements.

Prior to joining Bracewell, Karthika served as the associate director for technology development at The University of Texas Medical Branch (UTMB). During her tenure at UTMB, she developed commercialization strategies for several technologies, and participated in the structuring and financing of six startup companies for various pharmaceutical, medical device and medical informatics products. As part of her scientific training, Karthika was also involved in biological research projects and has several publications in peer reviewed journals.

Experience

Recent Notable Matters

Oil and gas companies — prepare and prosecute patent and trademark applications relating to drilling compositions, petroleum products, and processes and software in the refinery operations

Client business and technical teams — strategizing to develop a comprehensive IP portfolio; prepared and prosecuted patent and trademark applications related to chemical extraction and purification processes for a company dealing with commodity minerals and metals

Medical research and development institutions — prepare and prosecute patent and trademark applications relating biological compositions and processes involving nucleic acids, antibodies, cell lines, and pharmaceutical formulations

Variety of companies and products — perform due diligence reviews in connection with financing and acquisition transactions, including multinational energy companies, electronics consumer product companies, an alternative fuel company, and an animal health company

Confidential clients — assisting with the structuring and negotiating of master services agreements for business process and information technology outsourcing

Several biologic companies — draft and negotiate licensing and joint development agreements and sales and distribution agreements

Syntrix Biosystems Inc. — Syntrix Biosystems Inc. v. Illumina Inc. Represented the client, a biotechnology research firm, in a patent suit against Illumina in the U.S. District Court for the Western District of Washington; assisted in preparation of infringement and validity expert reports, prepared expert witnesses for depositions and trial, assisted in taking and defending numerous individual and corporate representative depositions, managed the document review team, drafted Daubert motions and motions for summary judgment, and prepared various pretrial and trial documents. Verdict awarded "National Law Journal Top 100 Verdicts of 2013." 

Publications and Speeches

“Disruptive Models in Fostering Healthcare Innovation,” Licensing Executives Society Annual Meeting, October 2016.

“IP & Licensing Basics Course,” Licensing Executives Society, University of Houston, September 2014, September 2015, September 2016.

“Moonshots – Accelerated New Drug and Vaccine Developments,” Licensing Executives Society 2016 Spring PanAm Meeting, April 2016.

“Patent Eligible Subject Matter Post Mayo and Alice,” 29th Annual Course in Advanced Intellectual Property Law, State Bar of Texas, February 2016.

“Pursuing an Intellectual Property Career,” 2015 Annual Presidential Career Symposium, Texas Medical Center, February 2015.

“How to Protect Trade Secrets Internally,” Licensing Executives Society Annual Meeting, October 2014.

“Winning Negotiations Through Practice,” Licensing Executives Society Annual Meeting, October 2014.

“A Myriad of Issues to Consider in the Wake of Myriad,” Texas CEO Magazine, November 2013.

“Section 101 and Biotechnological Innovations,” 29th Annual Institute on Intellectual Property Law, Houston Intellectual Property Law Association and the University of Houston Law Center, September 2013.

“Texas Puts its Lone-Star Spin on Trade Secret Protection,” IP Today, May 24, 2013.

“Batting Practice with DNA Patents at the U.S. Supreme Court,” IP Today, April 19, 2013.

“On Remand, Federal Circuit Spreads Mayo on Myriad,” Westlaw Journal Intellectual Property, September 2012.

"The 3' end formation in small RNAs," Gene Expression, Vol 1. 10:59-78, 2012.

"Methylphosphate cap structure in small RNAs reduces the affinity of RNAs to La protein." Gene Expression, Vol. 10:243-53, 2012.

"Novel substituted methylenedioxy lignan suppresses proliferation of cancer cells by inhibiting telomerase and activation of c-myc and caspases leading to apoptosis," British Journal of Cancer, Vol. 87, No. 1: 98-105, 2002.

"Purification, characterization, and cloning of the cDNA of human signal recognition particle RNA 3'-adenylating enzyme," Journal of Biological Chemistry, Vol. 276: 21791-6, 2001.

"Evolutionary conservation of post-transcriptional 3’ end adenylation of small RNAs: S. cerevisiae signal recognition particle RNA and U2 small nuclear RNA are post-transcriptionally adenylated," Molecular and Cellular Biochemistry, Vol. 208, No. 1/2:99-109, 2000.

"Inhibition of translation of mRNAs containing gamma-monomethyl phosphate cap structure in frog oocytes and in mammalian cells," Gene Expression, Vol. 9:133-43, 2000.

"Presence of an adenylic acid residue on the 3’end of small RNAs blocks further uridylation of the RNA: a possible biological function of the 3’end post-transcriptional adenylation event in small RNAs," RNA, Vol. 6:1277-88, 2000.

"Post-transcriptional Adenylation of Signal Recognition Particle RNA Is Carried Out by an Enzyme Different from mRNA Poly(A) Polymerase," Journal of Biological Chemistry, Vol. 274: 30826-30831, 1999.

"Accurate 3’end processing and adenylation of human signal recognition particle RNA and Alu RNA in vitro," Journal of Biological Chemistry, Vol. 273:35023-35031, 1998.

Credentials

Education

University of Houston Law Center,
J.D.
2011
magna cum laude
Baylor College of Medicine,
Ph.D., Pharmacology
2001
Anna University, Chennai, India,
B. Tech., Industrial Biotechnology
1996

Bar Admissions

Texas
U.S. Patent and Trademark Office

Languages

Arabic
French
Hindi
Tamil

Certifications

Certified Licensing Professional TM - Licensing Executives Society

Affiliations

Licensing Executives Society
Chair - Life Science Sector Executive Committee, 2016 - 2017; Member, 2001 - 2017
The Honorable Nancy F. Atlas Intellectual Property American Inn of Court
Associate, 2014 - 2017
Houston Intellectual Property Law Association
Intellectual Property Owners Association

News

Knowledge Center

Knowledge Center

Privileged Communications in Patent Law

This presentation discusses attorney-client privilege for patent documents, global attorney client privilege issues, and the privilege from the “common-interest” doctrine. Most companies have a global portfolio of intellectual property in the form of patents, copyrights, and trademarks that are secured and maintained in different jurisdictions. In-house counsel face special challenges in managing the attorney-client privilege for these matters, especially during global disputes and investigations. Another challenge for controlling privilege arises in the context of mergers and acquisitions and these issues have to be addressed before and after the deal closes. Different jurisdictions differ in their approach, and corporate counsel should be aware of how privilege can be managed or transferred.

Noteworthy

Noteworthy

University of Houston Law Center
Order of the Coif
University of Houston Law Center
Houston Law Review
Associate Editor
Baylor College of Medicine
Prof. John Trentin Award for Scholastic Excellence

Events