Life Science Patent Prosecution Associate

Barnes & Thornburg LLP•Chicago, IL
•$215,000 - $295,000

About The Position

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 with the firm’s growing life sciences patent team and help clients protect and use innovations in pharmaceuticals, specialty chemicals, and agricultural biotechnology. The role involves U.S. and international patent preparation and prosecution, along with strategic patent work such as global portfolio development, IP due diligence, patentability, and freedom-to-operate analysis. The associate will work directly with clients and inventors, assume meaningful responsibility early, and take on increasing responsibility as their judgment and client relationships develop. Barnes & Thornburg LLP describes itself as an AmLaw 100 firm with 26 offices. Its intellectual property department has more than 125 attorneys and agents and is recognized by Chambers USA, IAM Patent 1000, World Trademark Review 1000, and IP Stars. The firm describes its environment as inclusive, collegial, and supportive, with a transparent path for professional growth.

Requirements

  • 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.
  • An advanced degree in organic chemistry, medicinal chemistry, or a closely related field.
  • 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.

Nice To Haves

  • Ph.D. strongly preferred; candidates with an M.S. and substantial relevant experience will be considered.
  • Experience supporting patentability, freedom-to-operate, clearance, non-infringement, or invalidity analyses, or preparing opinions.
  • Experience with patent due diligence for corporate transactions or portfolio management.
  • Familiarity with pharmaceutical life cycle management and the Hatch-Waxman/Orange Book framework.
  • Experience in foreign prosecution, including EPO practice.

Responsibilities

  • Draft and prosecute U.S. and international patent applications covering small molecule pharmaceuticals, specialty chemicals, agricultural biotechnology treatments, formulations, synthetic processes, and related life sciences technologies.
  • Handle PCT and foreign filings in coordination with foreign associates.
  • Conduct inventor interviews to capture and frame inventions.
  • Prepare responses to Office Actions and participate in examiner interviews and appeals as appropriate.
  • Work with clients and supervising attorneys to develop prosecution and global filing strategies aligned with clients’ scientific, commercial, and competitive goals.
  • Conduct and support patentability, freedom-to-operate, validity and invalidity, and non-infringement analyses, translating complex technical, legal, and commercial issues into actionable advice.
  • Assess patent portfolios for financings, licensing, and M&A transactions, and help draft and review related opinions, agreements, and client correspondence.
  • Collaborate with in-house counsel, R&D scientists, and colleagues across the firm’s intellectual property, corporate, and litigation practices.
  • Assume increasing responsibility for matters and client-facing workstreams over time.

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What This Job Offers

Job Type

Full-time

Career Level

Mid Level

Education Level

Ph.D. or professional degree

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