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Kenneth Horton
OVERVIEW

Kenneth E. Horton

Partner

Salt Lake City

299 S. Main Street
Suite 1825
Salt Lake City, UT 84111

P 801-906-5142

F 801-817-9811

With chemical engineering, MBA, and law degrees, Ken Horton provides a multidisciplinary approach to intellectual property matters. His client service is enhanced by his investment and interest in constantly researching and learning about the legal and strategic aspects of IP required by his practice and teaching roles.

OVERVIEW

With chemical engineering, MBA, and law degrees, Ken Horton provides a multidisciplinary approach to intellectual property matters. His client service is enhanced by his investment and interest in constantly researching and learning about the legal and strategic aspects of IP required by his practice and teaching roles.

Ken’s practice includes domestic and foreign patent and trademark prosecution and virtually all manners of IP litigation, including state and federal court and agency actions. He drafts patent and trademark opinions, technology and intellectual property agreements; copyrights, trade secret, intellectual property evaluations; and performs due diligence.

Ken started his career as a patent examiner working with semiconductor technologies. He has spent the last 25-plus years honing his craft, and brings extensive experience in pharmaceutical, nutraceutical, chemical, imaging, and semiconductor technologies to the clients he serves.

Additionally, Ken passed the certified patent valuation analyst program.

Professional and Community Involvement

Certified Licensing Professional

Associate professor, Westminster College Gore School of Business, MBA Technology Commercialization Program

Adjunct professor, Brigham Young University, J. Reuben Clark Law School

Member, American Intellectual Property Law Association

Member, American Institute of Chemical Engineers

Member, Licensing Executives Society

Member, LES IP100 Executive Forum

Former member, University of Utah Business Alumni Association

Former mentor, Technology-to-Market Alliance

Former chair, Licensing Executives Society, Salt Lake City Chapter

Honors

IP Star, Managing IP Magazine, 2013-2017
EXPERIENCE
Presentations
  • “Utah Engineering Law,” Half Moon Education Seminars, December 2020
  • “Patents & Trademarks Processing,” ACC Mountain West Chapter Best Practices program, May 2018
  • “Management Functions, Skills, and Responsibilities,” ACC Mountain West Chapter Mini-MBA program, Nov. 3, 2017
  • “USPTO Examiner Interview Strategies: Preparing for and Conducting Interviews to Advance Patent Prosecution,” Strafford Live Webinar, March 21, 2017
  • “IP Valuation,” ACC Mountain West Chapter Best Practices program, April 28, 2016
  • “Introduction to Organizational Behavior,” ACC Mountain West Chapter Mini-MBA program, Feb. 5, 2016
  • “IP Management Checklist & Identifying Corporate IP,” ACC Mountain West Chapter Best Practices program, Aug. 25, 2015
  • “Innovation without Borders: Managing Innovation, IP, and Product Development with International Teams and Partners,” AICHE Annual Conference, 2015
  • “Protecting Your Intellectual Property,” Utah World Trade Center, June 2014
  • “Protecting Your Intellectual Property,” Utah World Trade Center, 2012, 2014
  • “IP Challenges in University Industry Collaborations,” AICHE Annual Conference, 2010
  • “Comprehensive, Systematic IP Capture and Management,” ACS Annual Conference, 2009
  • “Intellectual Assets in the Digital Era,” AICHE Annual Conference, 2007 and 2010
  • “IP Portfolio Management,” Utah Bar Paralegal Annual Conference, 2007
  • “Intellectual Property Rights, University of Utah School of Business,” 2001-present
  • “The Law of the Internet in Utah, National Business Institutes,” 1999 and 2000

*These presentations occurred prior to joining Barnes & Thornburg

Publications
  • “The Changing Patent Litigation Landscape,” ACC Mountain West Newsletter, 4Q 2017
  • “Patent Trolls: Responding to the Shakedown, ACC Mountain West Newsletter,” 3Q 2015
  • “Post-grant Proceedings After the America Invents Act,” InsideCounsel, March 5, 2015
  • “The Advantages and Disadvantages of the First Action Interview Program,” InsideCounsel, Feb. 19, 2015
  • “How to Deal with Restriction Requirements in Patent Applications,” InsideCounsel, Feb. 5, 2015
  • “7 Ways to Use Patent Examiner Interviews to Expedite Patent Allowance,” InsideCounsel, Jan. 22, 2015
  • “Six Steps to Submitting Proper Priority Claims in Your Patent Applications,” InsideCounsel, Jan. 8, 2015
  • “Tips for Third Party Prior Art Submissions for Patent Applications,” InsideCounsel, Dec. 26, 2014
  • “Anti-Troll Patent License Pact May Be More Risk Than Reward,” Law360, July 11, 2014
  • “Lawyers Weigh In On High Court’s Patent Rulings,” Law360, April 30, 2014
  • “Working with ‘patent trolls’ could bring income, but at what cost?,” Technology Transfer Tactics, Jan. 2014
  • “Judge Nixes Samsung’s Request to Ban Apple Devices in Japan,” MacNewsWorld interview, March 1, 2013
  • “Electronically Posted Documents as Prior Art,” Bloomberg’s Patent, Trademark & Copyright Journal, January 2013
  • “9 Tips For 3rd-Party Prior Art Submissions,” Law360, Aug. 21, 2012
  • “More Ammunition Against Obviousness Rejections,” Law360, June 15, 2012
  • “Practical Guidelines to Defeating an Obviousness Rejection,” Bloomberg Law Reports, March 5, 2012
  • “Restriction Requirements: Strategies for Defeating Patent Application Restriction Requirements,” Bloomberg Law Reports, Feb. 27, 2012
  • “Patent fights increasingly wind up back in government offices,” interview with The Washington Post, Feb. 19, 2012
  • “Speeding Up USPTO Patent Appeals,” Law360, Jan. 27, 2012
  • “To Appeal or Not to Appeal, That is the Question: How and When Should you Appeal Patent Examiner Decisions,” Corporate Counsel, Sept. 7, 2011
  • “Intellectual Property Client Strategies,” Aspatore Books, co-author, 2007
  • “Basic Intellectual Property Law for Managers,” Westminster College, 2003
  • “1996 Patent Law Decisions of the United States Court of Appeals for the Federal Circuit,” 46 The American University Law Review 6, co-author, 1997

*These publications occurred prior to joining Barnes & Thornburg

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