Barnes & Thornburg Adds Expansive Life Sciences Patent Group

With addition of 17 lawyers and legal professionals, firm opens offices in Research Triangle, two other locations

Barnes & Thornburg has announced the addition of a highly experienced life sciences patent group comprised of 17 lawyers, patent agents, IP technical analysts, and paralegals. With the move, Barnes & Thornburg establishes three new offices in Raleigh, North Carolina, Ann Arbor, Michigan, and Salt Lake City, Utah.

Nine partners, one associate, two patent agents, an IP technical analyst, and four paralegals come to Barnes & Thornburg from the boutique IP firm Brinks Gilson & Lione. In addition to Raleigh, Ann Arbor, and Salt Lake City, a new member of the Barnes & Thornburg team will be based in Chicago. The group is led by Allen Baum, a respected intellectual property attorney who has been based in Raleigh-Durham for more than 20 years, and William R. Boudreaux, a leading IP attorney in Ann Arbor.

The group brings several decades of combined experience and advanced degrees in such fields as organic chemistry, molecular biology, chemistry and biotechnology. Group members also have in-house experience with some of the foremost names in life sciences and pharmaceuticals and complement the firm’s existing nationally recognized life sciences practice that includes 35 life sciences attorneys, patent agents and legal professionals. The addition of the group continues the firm’s strategic focus on growing its patent practice and overall intellectual property offerings.

“Barnes & Thornburg has a stellar reputation in life sciences and intellectual property, and we are excited to be joining forces with them,” said Baum.

“Bringing in a team of this caliber with their technical backgrounds, strong reputations, combination of client-side and firm experience, and presence across four different markets continues Barnes & Thornburg’s growth story of the past decade,” said Robert T. Grand, firm managing partner. “This latest step expands our geographic footprint, most notably in the booming Raleigh-Durham area, while adding to our already robust life sciences and IP capabilities.”

Expanded Footprint, Trajectory of Growth

The Research Triangle in North Carolina is home to three major research universities and is a leading hub of innovation and patent work. The Raleigh-based team of Baum, Bashir Ali, Amy Fix, Aisha Hasan and Mark Jenkins have practiced in the region for decades – immediately providing Barnes & Thornburg with an established presence in an important market. 

The Ann Arbor office, the firm’s third in Michigan, will be staffed by Boudreaux, former in-house counsel at major pharmaceutical companies, and Joshua Ney, a Ph.D. chemist. In July 2019, Barnes & Thornburg opened a Detroit Metro office, bolstering the firm’s Michigan presence that dates back more than 15 years when the Grand Rapids office was established.

Also among the additions are Eric Babych and Ryan Marshall, who will work from Salt Lake City, and Heidi Dare, who joins Barnes & Thornburg’s Chicago office.

“This talented group will further our ability to help clients cultivate and nourish their most valuable innovations,” said Julia Spoor Gard, chair of Barnes & Thornburg’s Intellectual Property Department. “The group is a great cultural fit with our team and their extensive experience in the life sciences sector will strengthen our thriving platform and coast-to-coast reach.”

“We were particularly impressed by Barnes & Thornburg’s growth over the past several years and its great reputation and depth of IP talent,” said Baum. “We’re excited to leverage Barnes & Thornburg’s full-service capabilities – which are increasingly important to clients given the way patent work is now so closely intertwined with regulatory matters and other related areas.”

“In addition to working with larger companies, practicing in the IP space means advising many young and innovative companies, and it’s not long before their success leads to other legal needs,” added Boudreaux. “But regardless of a company’s size, they all want a seamless experience – and we know we’re well positioned to provide that through Barnes & Thornburg’s single-minded dedication to helping businesses achieve their goals with the firm’s broad array of services.”

The Raleigh office is located at 4819 Emperor Boulevard, Suite 400, Durham, North Carolina 27703. The Ann Arbor office is located at 2723 South State Street, Suite 150, Ann Arbor, Michigan 48104. The Salt Lake City office is located at 222 S. Main Street, 5th Floor, Salt Lake City, Utah 84101.

The Team

Allen Baum, who joins as partner-in-charge of the Raleigh office, regularly counsels clients on strategies to protect commercial products, assesses freedom to operate in heavily patented areas and evaluates patents under consideration for licensing, acquisition or investment. He has extensive experience in chemistry, pharmaceuticals, biochemistry, biotechnology and medical devices. Allen also guides clients through post-grant litigation and inter partes review. He is a former president of the Licensing Executives Society (USA and Canada) and former president and chairman of the board of governors for Certified Licensing Professional (CLP). 

Bashir M. Ali, who joins as a partner in Raleigh, holds a Ph.D. in chemistry and has worked with companies to obtain hundreds of U.S. patents. He has a deep understanding of complex chemical and pharmaceutical innovations and regularly works to prosecute patents throughout North America, Europe and Asia. He also counsels clients on strategies and prepares opinions on validity, non-infringement and freedom-to-operate issues.

Eric D. Babych, who joins as a partner in Salt Lake City, has deep international experience and has prepared and prosecuted patent applications worldwide. He handles patent appeals before the United States Patent & Trademark Office, Oppositions before the European Patent Office, and he routinely provides guidance on patentability, invalidity, and freedom-to-operate matters. As a former medicinal chemist and inventor, he focuses on the chemical and pharmaceutical arts, although he also has significant experience working with medical devices, consumer products and electronics.

William R. Boudreaux joins as partner in Ann Arbor and serves as attorney-in-charge of the Ann Arbor office. He has spent more than 20 years in private practice and as an in-house counsel, including for major pharmaceutical companies. He counsels biotech and pharmaceutical clients including Fortune 500 companies and has deep experience in global patent portfolio creation and management, pharmaceutical patent life-cycle planning, IP due diligence, freedom-to-operate studies, due diligence reviews, infringement/validity studies, and strategy and support for Hatch-Waxman litigation. 

Heidi A. Dare, who joins as a partner in Chicago, has prosecuted over 1,000 patent applications. She focuses on international patent portfolio management and due diligence analyses, with an emphasis on patent prosecution of molecular biology, medical device and medical diagnostics. She has prepared and prosecuted applications related to RNA interference, recombinant nucleic acid and protein technologies, mutational analysis, antibody therapies, transgenic animals and plants, therapeutic vectors, stem cell therapies and gene therapy.

Amy H. Fix, who joins as a partner in Raleigh, has spent approximately two decades representing companies in pharmaceutical, agricultural, and veterinary technologies, and has deep experience with small-molecule drug development. She previously held in-house patent counsel positions with a large, international, pharmaceutical company, as well as an emerging biotech company. She regularly represents clients producing innovative human and animal health drug products to create valuable, worldwide patent portfolios for development assets. Additionally, she counsels her clients through due diligence reviews and collaboration agreements.

Aisha R. Hasan, who joins as an associate in Raleigh, was previously a scientific researcher and focuses her practice on counseling large and small companies on U.S. and foreign patent prosecution, as well as due diligence reviews and complex intellectual property transactions. She regularly works with clients covering a wide breadth of technical areas, including immunotherapies, biotechnology, small-molecule pharmaceuticals, agricultural biotechnology, and diagnostic assays.

Mark Jenkins, who joins as partner in Raleigh, provides clients with guidance on IP strategies and manages both large and small international patent portfolios and applications. Formerly a product development chemist for a global absorbent product design company and analytical chemist for a major healthcare corporation, he now works with companies in sectors such as pharmaceutical, crop science, petroleum additives, polymer, and personal care, and has worked with tissue-banking and biotech companies in the emerging area of regenerative medicine.

Ryan Marshall, who joins as a partner in Salt Lake City, focuses on the pharmaceutical, biotech, chemical and medical device sectors. His clients range from startups to Fortune 50 companies, and he is a regular speaker on intellectual property topics. His experience includes global patent portfolio creation and management, pharmaceutical patent life-cycle planning and IP due diligence, patentability and freedom-to-operate studies, due diligence reviews, infringement/validity studies, and litigation in intellectual property cases.

Joshua E. Ney, who joins as a partner in Ann Arbor, has a Ph.D. in chemistry and is focused on patent litigation and prosecution in the pharmaceutical, biotechnology and chemical industries. He has experience in therapeutic applications, including antiviral therapies, antibiotics, cardiovascular disease, central nervous system disorders, Huntington’s disease, lower urinary tract disorders, menopausal symptoms, osteoarthritis, and pain management. He represents clients regarding new chemical entities, second medical uses, pharmaceutical formulations, synthetic processes and pharmaceutical polymorphs.

With more than 600 attorneys and other legal professionals, Barnes & Thornburg is one of the largest law firms in the country. The firm serves clients worldwide from offices in Atlanta, California, Chicago, Delaware, Indiana, Michigan, Minneapolis, Ohio, Raleigh, Salt Lake City, Texas and Washington, D.C. For more information, visit us online at www.btlaw.com or on Twitter @BTLawNews.