Kendrew H. ColtonPartner

Kendrew H. Colton serves the intellectual property needs of his clients in established and emerging technologies. His primary focus is on chemistry, where his extensive experience in a variety of chemical and biochemical technologies ranges from agrochemicals to zeolites.

Ken’s intellectual property litigation experience spans the spectrum of patent infringement, contract (licensing) disputes, copyrights (software), unfair competition, trade secrets, and Environmental Protection Agency contract awards. He has also been on amicus curiae briefs in such precedent-setting cases as Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. and A.C. Ackerman Co. v. R.L. Chaides Construction Co.

Clients regularly seek Ken's counsel for securing, protecting, transferring, licensing, and enhancing the value of their intellectual property. In addition, he is frequently called upon to render patentability, validity, and infringement opinions, and he has conducted intellectual property audits.

Ken is well-versed in all phases of patent prosecution. His experience embraces post-grant proceedings, including reexamination proceedings, patent interferences, AIA proceedings (inter partes reviews), and applications to reissue U.S. patents, as well as patent term extensions and related ANDA patent certification procedures. Ken also served as a court-appointed Special Intellectual Property Counsel to the Trustee in a contested bankruptcy matter.

Domestic and foreign clients, industry groups, scientific organizations, universities, and government agencies have invited Ken to lecture on a variety of intellectual property and business strategy topics. In addition, he was an instructor in the Patent Resources Group Advanced Application and Amendment Writing Workshop. Ken is regularly quoted by business and legal publications on patent litigation developments, as well as by chemical trade journals on chemical patent practice. He currently serves on the Advisory Board for the American Chemical Society's Chemical & Engineering News.

Represented privately held pharmaceutical company in field of molecular imaging technology to obtain U.S. patents for its U.S. patent portfolio, with the issued U.S. patents now Orange Book listed, which contributed to an enhanced valuation and ultimately to a successful major liquidity event.

Represented U.S. aircraft manufacturer in successfully upholding non-infringement of patent for solid imaging process for alloying two components.

Represented company in patent infringement action in wastewater treatment and related bid protests with the U.S. Government Accountability Office and the U.S. Environmental Protection Agency, leading to a successful settlement.

Represented pharmaceutical company with U.S. freedom to operate (FTO) for its active pharmaceutical ingredient (API), which it Orange Book listed, and synthesis thereof as part of multinational transaction. Further assisted client in securing Intellectual Property Rights position for new synthesis of API.

Represented chemical company in flat lens technology by conducting FTO against extensive third-party U.S. patent portfolio and developing defenses that contributed to successful settlement of litigation.

Represented specialty chemical company in field of recombinant proteins to develop U.S. FTO while coordinating same with successful EPO opposition against competitor’s patent.

Represented specialty chemical company in field of pharmaceuticals (proteins as disease markers), including overseeing patent procurement in the U.S.

Represented company and Nobel Prize winner in analyzing the patent portfolio of a third-party competitor, ultimately developing and implementing a successful FTO strategy.

Represented chemical company in the field of additives in upholding a patent in a series of post-grant proceedings, including reissue and reexamination, to prevent a third party from evading its royalty obligations.

Represented chemical company in the field of magnets with U.S. FTO and portfolio analyses.

Represented chemical company in developing FTO against diverse third-party patents directed to alpha-olefin polymers.

Represented manufacturer in the field of membrane filtration with U.S. FTO against a portfolio of U.S. patents asserted by a third party, coordinating same with successful non-U.S. oppositions, and avoiding U.S. patent litigation.

Represented defense contractor to secure IPR primacy in certain chemical countermeasure technology to enhance its competitive bid position in the U.S.

Presentations

• "Navigating Patent Potholes Along the FDA's Proposed ANDA / 505(b)(2) Pathway," Fitch Even Webinar, December 2, 2015.
• "The Leahy-Smith America Invents Act – Summary of Key Changes," NAPP Conference, Alexandria, Va., August 20, 2012.
• "BPAI Post-KSR Decisions, May–Sept 2007," AIPLA Practice in Japan Committee, October 2007.
• "An Exquisite Integration: Science and the Law," American Chemical Society National Meeting, New Orleans, 2002.
• "Alliances – Joint Development," American Chemical Society National Meeting, Boston, 2002.
• Cushman Darby & Cushman Annual Intellectual Property Seminars, Instructor, mid-1980s to 1998.

Publications

• "The Solo Inventor Strikes Back," Chemical Innovation, vol. 31, no. 54, Nov. 2001: 54–55.
• Colton, K. and Haas, M., "Patent Law Developments in the United States Court of Appeals for the Federal Circuit During 1992," American University Law Review, vol. 42, no. 3, Spring 1993: 909–1069.

• American Chemical Society
  • Chemistry and the Law Division, 1991–present
  • Intellectual Property Secretariat, 2004–11
    • Executive Committee, Member, 1998–2011; Chair, 2003
    • Alternate Councilor, 2005–13
  • Chemical & Engineering News, Advisory Board, 2012–present
  • CHEMTECH/Chemical Innovation, Advisory Board, 1994–2001
• American Intellectual Property Law Association
• Federal Circuit Bar Association
  • PTO Committee
• International Association for the Protection of Intellectual Property–US
• International Trademark Association
• U.S. International Trade Commission Trial Lawyers Association