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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

Ken Horton brings a blend of chemical engineering, business, and legal knowledge to advising on intellectual property law matters. His multidisciplinary approach to advising clients is rooted in continuous research and teaching. This multifaceted experience allows Ken to tackle complex IP challenges with a unique perspective that often benefits clients across various technology sectors.

OVERVIEW

Ken Horton brings a blend of chemical engineering, business, and legal knowledge to advising on intellectual property law matters. His multidisciplinary approach to advising clients is rooted in continuous research and teaching. This multifaceted experience allows Ken to tackle complex IP challenges with a unique perspective that often benefits clients across various technology sectors.

Ken’s comprehensive background supports him in bridging the gap between technical innovation and legal protection. Clients benefit from Ken’s ability to understand intricate technologies while navigating the nuances of IP law – frequently resulting in more comprehensive and effective patent applications, litigation strategies, and IP evaluations. His proficiency in pharmaceutical, nutraceutical, chemical, imaging, and semiconductor technologies leads to tailored IP strategies that can better align with each client's specific technological landscape and business goals.

Ken's experience spans domestic and foreign patent and trademark prosecution, IP litigation in state and federal courts, and tactical advocacy across all types of agency actions. He is dedicated to crafting meticulous patent and trademark opinions and technology agreements and conducting thorough IP due diligence. His cultivated and veteran approach helps guide clients throughout their IP journey.

With over 25 years of experience, including a stint as a patent examiner, Ken brings a multi-dimensional perspective to diverse industries and clients. Serving as an adjunct professor in IP law and strategy continues to sharpen Ken’s ability to distill complex legal concepts into digestible explanations – a talent that can be invaluable when advising clients or arguing cases. The academic environment keeps Ken at the cutting edge of IP law developments and their application to real-world disputes.

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

Managing Intellectual Property IP Stars, Notable Practitioner, 2024

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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