1-4 years of patent prosecution experience in life sciences, particularly in chemical or pharmaceutical technologies
J.D. from an accredited law school with strong academic credentials
USPTO registration to practice
Advanced degree in organic chemistry or medicinal chemistry (Ph.D. preferred)
Excellent writing and communication skills for conveying complex chemistry concepts
Strong organizational skills to manage multiple deadlines effectively
Responsibilities
Draft and prosecute U.S. and international patent applications for life sciences technologies
Conduct inventor interviews to capture inventions and prepare responses to Office Actions
Develop global filing strategies aligned with clients' scientific and commercial goals
Perform patentability and freedom-to-operate analyses, translating complex issues into actionable advice
Support patent portfolio assessments for financing and licensing transactions
Collaborate with in-house counsel and R&D scientists across various practices
Gradually take on more client-facing responsibilities with mentorship
Benefits
Opportunity to work with a nationally respected life sciences patent team
Early responsibility and growth potential in client relationships
Mentorship from experienced attorneys to develop into a trusted advisor
Engagement with sophisticated clients in cutting-edge industries
Collaborative environment with cross-disciplinary teams
Full Job Description
Barnes & Thornburg LLP is seeking an associate with 1-4 years of life sciences patent prosecution experience to join its Intellectual Property Department. The associate will work alongside a nationally respected and growing life sciences patent team. You will help sophisticated clients protect and use innovations at the frontier of pharmaceuticals, specialty chemicals, and ag-biotech technologies.
The ideal candidate has an advanced degree in organic chemistry and will have hands-on experience in U.S. and foreign prosecution and an interest in the strategic side of patent practice, including global portfolio development, IP due diligence, patentability, and freedom-to-operate work. You will work directly with clients and inventors, take on meaningful responsibility early, and see that responsibility grow with your judgment and client relationships.
Key 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.
Qualifications
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.
