Ken is an intellectual property attorney who is highly regarded for his patent prosecution and counseling work for life sciences, chemical, and energy technology companies. He helps companies and research institutions secure patents on strategic innovations and manage patent portfolios. He has extensive experience in patenting a wide range of bioscience and chemical technologies involving antibody therapeutics, small molecule modulators, diagnostics, pharmaceutical formulations, stem cell therapies, nanotechnologies, and oil recovery technologies, among others. He also conducts due diligence reviews of patent assets for lenders and investors, including patent validity and freedom-to-operate analyses.
Ken’s practice focuses on patent counseling, primarily in the life sciences, chemical and energy technology industries.
Ken works with innovative companies and research institutions to develop patent claiming and filing strategies, procure patents on cornerstone technologies, and strategically manage patent portfolios to maximize investments. He also counsels lenders and investors in assessing the value of patent assets through due diligence reviews, including validity analyses, freedom-to-operate analyses, and in-licensed technology investigations.
Ken has extensive patent procurement experience in disruptive bioscience and chemical technologies, such as diagnostics, immuno-oncotherapies, small molecule therapeutics, stem cell therapies, CRISPR and CRISPR-related technologies, antibody therapeutics, green industrial chemical production, enhanced oil recovery, fracking, interfering RNA technologies, nutraceuticals, proteomics, pharmaceutical formulations, and nanotechnologies.
Education
- University of California - Hastings College of the Law (JD)
- University of Colorado (PhD, Chemistry and Biochemistry)
- University of Texas (BS, Biochemistry)
Recognition & Awards
- Recognized in Chambers USA: California – Intellectual Property: Patent Prosecution (2022)
- San Diego Business Journal, Leaders in Law Award Finalist (2021)
- IAM Patent 1000 World's Leading Patent Practitioners (2016 – 2017, 2019 – 2021)
- Managing Intellectual Property: Patent star - California (2016 – 2021)
- Chambers USA: California – Intellectual Property: Patent Prosecution (2016 – 2017, 2021)
- Best Lawyers in America: "Lawyer of the Year" for Patent Law (2021)
- Best Lawyers in America: Patent Law (2017-2023)
- San Diego Super Lawyers: Intellectual Property Law (2019 – 2021) / Southern California Super Lawyers Intellectual Property Law (2013-2017)
- Recommended by The Legal 500 United States for Healthcare: Life Sciences (2020)
- Daily Journal Top IP Lawyers (2020)
- San Diego Business Journal: "Best of the Bar" (2014 - 2015)
- San Diego Daily Transcript: “Transcript 10” attorney, Top Attorneys (2012)
- San Diego Daily Transcript:“Best Young Attorney” (2008)
- Young Investigator Award, Royal Society of Chemistry
Involvement
- Member, American Chemical Society
- Past president, San Diego Intellectual Property Law Association
- Member, US Bar Liaison Council, State Intellectual Property Office of China
- Member, BIOCOM Intellectual Property Committee
Recent Insights
Viewpoints
Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness
February 17, 2021 |Blog
Year in Review: The Most Popular IP Posts of 2020
January 14, 2021 |Blog
Viewpoints
Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness
February 17, 2021 | Blog | By Ken Jenkins
On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from PGR2018-00025; non-precedential).
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Year in Review: The Most Popular IP Posts of 2020
January 14, 2021 | Blog | By Christina Sperry
As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020. According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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Federal Circuit Awards Attorney Fees to the Defendant Following Dismissal of Lawsuit by Plaintiff
January 7, 2020 | Blog | By Ken Jenkins
The Federal Circuit affirmed a district court award of over $360,000 in costs and attorneys’ fees against a non-practicing entity, citing the need “to deter future abusive litigation.”
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Copy Cats: Evidence of Copying a Specific Product NOT Required
November 12, 2019 | Blog | By Ken Jenkins
On October 30, 2019, the Federal Circuit held that evidence of copying may be used to rebut an obviousness challenge, even if that evidence does not relate to the copying of a specific product. (Liqwd, Inc. v. L’Oreal USA, Inc.; appeal from PGR2017-00012).
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Prior Civil Action Bars IPR - A precedential decision
September 24, 2019 | Blog | By Ken Jenkins
On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars institution of IPR if the petitioner filed an earlier civil action, even if such action was voluntarily dismissed by the petitioner without prejudice.
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Under New Guidance: Patent Eligibility of Computerized Diagnostics at the PTAB
May 15, 2019 | Blog | By Ken Jenkins
We previously reported here on a Patent Trial and Appeal Board (PTAB) decision involving a case in which a patent eligibility rejection was overcome by replacing a “comparing” step with a recitation that the sample is from a particular patient population. However, because the eligibility rejection was dropped by the examiner before appeal, the PTAB did not revisit the issue.
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Prosecution Strategies for Avoiding Patent Eligibility Rejections for Diagnostics
November 19, 2018 | Blog | By Ken Jenkins
Under the Mayo/Alice test for patent eligibility, answering the questions of whether any particular claim is “directed to” a “judicial exception” without “significantly more” remains in many ways a substantial and unpredictable challenge for U.S. patent applicants in the diagnostic space. In cases where the detection processes are typically deemed “routine and conventional” (e.g., PCR) and the targets are known (e.g., expression of a known gene), claims must be crafted in ways that avoid rejections for both patent eligibility and anticipation and/or obviousness over the prior art. The recent PTAB decision in In re Srivastava et al. expressly addresses obviousness in this context, while highlighting a possible strategy for dealing with patent eligibility challenges as well (Appeal 2017-1981, Application 13/974,007, decided October 22, 2018; hereafter “In re Srivastava”).
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Inventorship
August 27, 2018 | Video | By Ken Jenkins
Ken Jenkins discusses the confusion surrounding inventorship and the need for inventors to maintain proper documentation once the initial inventorship determination is made to protect themselves as their patents gain value.
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News & Press
How USPTO Pharma Reform Could Lower Counsel Spend
July 15, 2022
Mintz is pleased to share that two attorneys and the firm’s Patent practice have been shortlisted in the 2022 edition of Managing Intellectual Property’s (MIP) Americas Awards. The awards recognize the “remarkable achievements and developments” of firms, individuals and companies impacting the IP sector over the past year.
Mintz Practice Groups and Attorneys Garner Top Rankings in 2020 Edition of The Legal 500 United States
June 12, 2020
In the latest guide, Mintz garnered rankings as a top national firm in eight practice areas, and 32 firm attorneys were individually recognized.
Mintz Levin is pleased to announce that nine attorneys have been named San Diego Super Lawyers for 2018 while two others have been named San Diego Rising Stars. The annual publication identifies lawyers who have attained a high degree of peer recognition and professional achievement.
Best Lawyers named 85 Mintz attorneys to its 2018 list of The Best Lawyers in America. In addition, Mintz attorneys Matthew J. Gardella and Samuel M. Tony Starr were named “Lawyer of the Year” in their respective practice areas.
Twelve Mintz Attorneys Named 2017 Southern California Super Lawyers and Rising Stars
February 14, 2017
Seven Mintz attorneys have been named Southern California Super Lawyers for 2017 and five have been named Southern California Rising Stars. Only five percent of area lawyers were named 2017 Southern California Super Lawyers and Rising Stars.
Best Lawyers named 73 Mintz attorneys to its 2017 list of The Best Lawyers in America. Mintz attorneys selected for inclusion in this year’s list span 44 practice areas.
Firm’s National Healthcare Practice, NY Corporate/M&A and Litigation: General Commercial Among Newest Rankings