Barnes Life Science Patent Prosecution Associate at Barnes & Thornburg LLP drafts and prosecutes U.S. and international patent applications in life sciences. The role includes client engagement, portfolio strategy, and strategic patent analyses.
Responsibilities
Patent preparation and prosecution: Draft and prosecute U.S. and international patent applications covering small molecule pharmaceuticals, specialty chemicals, ag-bio treatments, formulations, synthetic processes, and related life sciences technologies. This includes handling PCT and foreign filings in coordination with foreign associates.
Inventor and examiner engagement: Conduct inventor interviews to capture and frame inventions. Prepare well-reasoned responses to Office Actions, and take part in examiner interviews and appeals as appropriate.
Portfolio strategy: Working with clients and supervising attorneys, develop prosecution and global filing strategies that match patent protection to clients' scientific, commercial, and competitive goals.
Strategic analyses: Conduct and support patentability, freedom-to-operate, validity and invalidity, and non-infringement analyses. You will turn complex technical, legal, and commercial issues into clear, actionable advice.
Transactional and diligence support: Assess patent portfolios for financings, licensing, and M&A transactions, and help draft and review related opinions, agreements, and client correspondence.
Client and team collaboration: Work closely with in-house counsel, R&D scientists, and internal colleagues across the firm's IP, corporate, and litigation practices.
Growing ownership: Take on more responsibility for matters and client-facing workstreams over time, with the mentorship and support to grow into a trusted advisor.
Qualification
Advanced degree in organic chemistryExcellent writingExperience supporting patentabilityExperience in foreign prosecutionWhy Barnes & Thornburg LLP?
Required
1–4 years of patent preparation and prosecution experience, with substantial work in chemical, pharmaceutical, or other life sciences technologies
J.D. from an accredited law school with strong academic credentials
Registration to practice before the USPTO
Advanced degree in organic chemistry, medicinal chemistry, or a closely related field (Ph.D. strongly preferred; candidates with an M.S. and substantial relevant experience will be considered)
Excellent writing, analytical, and communication skills, including the ability to explain complex chemistry clearly to clients, examiners, and colleagues
Strong organizational skills and the ability to manage multiple deadlines while consistently producing high-quality work
Preferred
Experience supporting patentability, freedom-to-operate, clearance, non-infringement, or invalidity analyses, or preparing opinions
Experience with patent due diligence for corporate transactions or with portfolio management
Familiarity with pharmaceutical life cycle management and the Hatch-Waxman/Orange Book framework
Experience in foreign prosecution, including EPO practice
We will not consider resumes submitted by external agencies or recruiters for this position. Recruiters and agencies will not be compensated for assisting Barnes & Thornburg LLP in recruiting for this position, regardless of whether such party has a recruiting contract with us.
Why Barnes & Thornburg LLP?
Barnes & Thornburg LLP is an AmLaw 100 firm with 26 offices. The firm and our intellectual property department have an exceptional reputation for fostering an inclusive, collegial, and supportive atmosphere with a well-defined and transparent path for professional growth. Our intellectual property practice delivers the strength of a powerhouse IP boutique housed within a full-service AmLaw 100 firm. With 125+ dedicated IP attorneys and agents, we have one of the largest and most technically skilled IP teams in the country, earning consistent recognition in Chambers USA, IAM Patent 1000, World Trademark Review 1000, and IP Stars. Our practitioners advise clients from startups to Fortune 500 companies, who call us "the absolute best" and their "go-to for all things intellectual property."
