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Kenneth E. Jenkins, PhD

Member / Co-Chair, Intellectual Property Prosecution and Counseling Practice

[email protected]

+1.858.314.1082

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Ken is an intellectual property attorney practicing in the patent prosecution and counseling space. He provides creative and carefully considered patent strategies designed to maximize patent portfolio value. In addition to patent procurement, Ken 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 experience in patenting a wide range of life sciences technologies, including antibody therapeutics, small molecule modulators, diagnostics, immuno-oncotherapies, pharmaceutical formulations, gene editing, siRNA therapeutics, stem cell therapies, nanotechnologies, and machine learning and AI in life sciences technologies. He enjoys working closely with scientists to translate their discoveries to high-value patent assets.

Ken works with a diverse set of clients, from research institutions to pre-funded startups to some of the world’s largest life sciences companies. He carefully tailors patent strategies to the specific business needs of each client while considering the ever-changing global patent case law landscape.

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How Can the Updated USPTO Guidance on Determining Obviousness Help You?

March 7, 2024 | Blog | By Peter Hecker, PhD, Jenny Chen, PhD, Ken Jenkins, Christina Sperry

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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is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from PGR2018-00025; non-precedential).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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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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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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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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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

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Ken is an intellectual property attorney practicing in the patent prosecution and counseling space. He provides creative and carefully considered patent strategies designed to maximize patent portfolio value. In addition to patent procurement, Ken 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.

Recognition & Awards

  • Best Lawyers in America: Patent Law (2017 – 2027); Lawyer of the Year for Patent Law (2021, 2024)

  • Managing Intellectual Property: Patent Star – California (2016 – 2026)

  • Recognized in Chambers USA: California – Intellectual Property: Patent Prosecution (2016, 2017, 2021 – 2026)

  • IAM Patent 1000: World's Leading Patent Practitioners (2016, 2017, 2019 – 2026) 

  • San Diego Business Journal: Leader of Influence in Life Sciences (2023 – 2024); Leaders in Law Award finalist (2021)

  • San Diego Super Lawyers: Intellectual Property Law (2019 – 2023)

  • Southern California Super Lawyers: Intellectual Property Law (2013 – 2017)

  • Daily Journal: Top IP Lawyers (2020)

  • Legal 500 United States: Recommended for Healthcare: Life Sciences (2020)

  • San Diego Business Journal: Best of the Bar (2014 – 2015)

  • San Diego Daily Transcript: “Transcript 10” attorney, Top Attorneys (2012); Best Young Attorney (2008)

  • Young Investigator Award, Royal Society of Chemistry

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Ken is an intellectual property attorney practicing in the patent prosecution and counseling space. He provides creative and carefully considered patent strategies designed to maximize patent portfolio value. In addition to patent procurement, Ken 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.

Involvement

  • Past President, San Diego Intellectual Property Law Association
  • Member, BIOCOM Intellectual Property Committee
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Kenneth E. Jenkins, PhD

Member / Co-Chair, Intellectual Property Prosecution and Counseling Practice

San Diego