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Finnegan
James T. Masters, Ph.D.
Associate
More
vCard
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4127
james.masters@finnegan.com james.masters@finnegan.com

James T. Masters, Ph.D.

Associate

  • +1 202 408 4127 +1 202 408 4127
  • james.masters@finnegan.com james.masters@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard

Jim Masters, Ph.D., has an expansive intellectual property practice, covering patent prosecution, strategic client counseling, pre-litigation diligence, and patent litigation in the biotechnology, chemical, pharmaceutical, and medical device fields.

Jim’s experience includes drafting and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO) and in other jurisdictions; arguing ex parte appeals before the Patent Trial and Appeal Board (PTAB) of the USPTO; performing patentability, invalidity, and freedom-to-operate analyses; and representing clients in Hatch-Waxman patent litigation. He works closely with clients to develop global patent prosecution strategies and manage large patent portfolios.

Jim is well-versed in and regularly presents to legal audiences on patent inventorship, double patenting, Patent Term Adjustment (PTA), Patent Term Extension (PTE), as well as the interplay between PTA and PTE. He has prepared applications for PTE and is familiar with the specialized area of U.S. Orange Book listings.

Jim has considerable experience in a range of technological areas, including small molecule chemical compounds, polymorphs, antibodies and antibody-drug conjugates, polymer chemistry, medical devices, agrochemicals, and food and beverage products.

Prior to joining Finnegan, Jim was a senior scientist in the chemical development group of Boehringer Ingelheim, where he developed robust and scalable chemical processes to support deliveries of pharmaceutical candidates. Jim’s doctoral research at Stanford University concerned the development of new methods for the synthesis of small molecules, including biologically active natural products and pharmaceuticals. As an undergraduate, he researched the applications of titanium catalysis in organic synthesis. Jim also completed a research internship in medicinal chemistry at a research-based biopharmaceutical company, where he prepared novel small molecule compounds of therapeutic interest.

Et Cetera

  • Abbott Laboratories Stanford Graduate Fellowship, 2012-2014.
  • Phi Beta Kappa, 2010.
  • Norbert Wiech Award in Chemistry, University of Notre Dame, 2009.
  • McKnight Prize in Undergraduate Research, University of Texas Southwestern Medical Center, 2009.
  • Summer Undergraduate Research Fellowship, University of Notre Dame, 2008 and 2009.
  • Coauthor. "Copper-Catalyzed Asymmetric Propargylation of Cyclic Aldimines," Organic Letters, Nov. 22, 2016.
  • Coauthor. "Synthesis of a 1,3-Bridged Macrobicyclic Enyne via Chemoselective Cycloisomerization Using Palladium-catalyzed Alkyne-Alkyne Coupling," The Journal of Organic Chemistry, Sept. 20, 2016.
  • Coauthor. "Asymmetric Synthesis of Chiral b-Alkynyl Carbonyl and Sulfonyl Derivatives via Sequential Palladium and Copper Catalysis," Chemical Science, June 10, 2016.
  • Coauthor. "Transition Metal-catalyzed Couplings of Alkynes to 1,3-Enynes: Modern Methods and Synthetic Applications," Chemical Society Reviews, Feb. 1, 2016.
  • Coauthor. "Asymmetric Synthesis of Chiral Cycloalkenone Derivatives via Palladium Catalysis," Chemical Science, Jan. 13, 2014.
  • Coauthor. "Palladium-catalyzed Asymmetric Allylic Alkylation of 3-Aryloxindoles with Allylidene Dipivalate: A Useful Enol Pivalate Product," Angewandte Chemie International Edition, Jan. 17, 2013.
  • Coauthor. "Cooperative Titanocene and Phosphine Catalysis: Accelerated C-X Activation for the Generation of Reactive Organometallics," The Journal of Organic Chemistry, Oct. 24, 2012.

Insights

Articles

The Interplay of Patent Term Extension (PTE) and Reissue:  Merck v. Aurobindo and Its Implications, Part I

The Interplay of Patent Term Extension (PTE) and Reissue: Merck v. Aurobindo and Its Implications, Part I The Interplay of Patent Term Extension (PTE) and Reissue: Merck v. Aurobindo and Its Implications, Part I

April 7, 2026

Articles

The Interplay of Patent Term Extension (PTE) and Reissue:  Merck v. Aurobindo and Its Implications, Part II

The Interplay of Patent Term Extension (PTE) and Reissue: Merck v. Aurobindo and Its Implications, Part II

The Interplay of Patent Term Extension (PTE) and Reissue: Merck v. Aurobindo and Its Implications, Part II

April 7, 2026

Virtual Seminar

American Chemical Society Ignite: Global Digital Ventures - Business Models and IP Across Borders American Chemical Society Ignite: Global Digital Ventures - Business Models and IP Across Borders

March 22, 2026

Virtual

Articles

IP Law: In Defense of Polymorphs

IP Law: In Defense of Polymorphs IP Law: In Defense of Polymorphs

July 15, 2025

Life Science Leader

Virtual Seminar

Drafting Patent Applications

Drafting Patent Applications Drafting Patent Applications

February 19, 2025

Virtual

Webinar

Patent Inventorship: Best Practices for Determination and Correction Patent Inventorship: Best Practices for Determination and Correction

July 18, 2024

Webinar

More

Professional Activities

  • American Chemical Society
  • Order of the Coif
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • Massachusetts
  • District of Columbia

Education

Georgetown University Law Center
J.D., magna cum laude, 2022
Stanford University
Ph.D., Chemistry, 2016
University of Notre Dame
B.S., Chemistry, summa cum laude, 2010

James's Practices

Diligence, Licensing, and Opinions
Freedom to Operate Opinions
Global IP Enforcement, Litigation, and Trials
Branded Hatch-Waxman (ANDA) Litigation and Trials
ITC Section 337 Investigations and Trials
Patent Litigation and Trials
Prosecution and Portfolio Management
Appeals to the PTAB
Due Diligence
IP Portfolio Management
Opinions and Counseling
Patent Drafting and Prosecution
Patent Mining and Mapping
Patent Term Extension (PTE) and Supplementary Protection Certificate (SPC)

James's Industries

AI, Electronics, and Information Technology
Augmented Reality/Virtual Reality (AR/VR)
Chemicals, Industrials, and Materials
Chemical
Life Sciences
Biotechnology
Medical Device and Diagnostics
Pharmaceutical

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