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Look Before You Leap - Avoiding Intellectual Property Problems When Starting a New IT Business

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On Tuesday, September 18, Partner John King presented at an OCTANe event, "Look Before You Leap - Avoiding Intellectual Property Problems When Starting A New IT Business." …

On Tuesday, September 18, Partner John King presented at an OCTANe event, "Look Before You Leap - Avoiding Intellectual Property Problems When Starting A New IT Business."

In businesses driven by information technology, your patents, trademarks and other intellectual properties are essential to your value. A well-executed intellectual property strategy can help you avoid common errors, take command of new territory, defend your existing turf, and increase a company’s valuation. The presentation discusses how to use intellectual property assets to attract capital, increase the success of a new product launch, maximize a company’s valuation, and protect your market niche.

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  • 1. Look Before You Leap - Avoiding John R. King Intellectual Property Problems When Partner Starting A New Information John.King@knobbe.com Technology BusinessThe recipient may only view this work. No other right or license is granted. © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 1
  • 2. © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  • 3. Intellectual Property Business Tools • Trademarks - tools that can greatly enhance marketing strategies • Patents - tools that help you obtain exclusivity in your market niche • Copyrights - tools for protecting content • Trade Secrets - tools for keeping proprietary information confidential© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
  • 4. What Is a Trademark? • A trademark is - any symbol capable of identifying and distinguishing its owner’s products from those of others.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  • 5. Selecting a Brand - Trademark Searching • It can be difficult to obtain a trademark. Thus, it is very important to conduct a search to determine whether the trademark is available.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  • 6. Selecting a Brand - Trademark Searching • Bandito Beer: – A trademark search shows that the registration for the Bandito trademark has expired.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  • 7. Selecting a Brand - Trademark Searching • El Bandido – Alcoholic beverages namely tequila© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
  • 8. Intellectual Property Business Tools • Trademarks - tools that can greatly enhance marketing strategies • Patents - tools that help you obtain exclusivity in your market niche© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  • 9. What Can I Patent? • The invention must be useful. • The invention must be novel – you have to be the first one to do it. • The invention must not be an obvious variation.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  • 10. Protect Your Market Niche Can be used as a single parameter, stand- alone monitor SatShare enables installed base of conventional monitor to easily upgrade to Masimo oximeters Can be used as a battery operated, handheld oximeter© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  • 11. Increasing Odds of Success • What Patent Office Program provides a 66% allowance rate in less than 4 months? – Patent Prosecution Highway – First Action Interview Program – Prioritized Examination© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  • 12. Increasing Odds of Success • What Patent Office Program provides a 66% allowance rate in less than 4 months? – Patent Prosecution Highway – 90% allowance within a year. – First Action Interview Program – 45% allowance within six months. – Prioritized Examination - 66% allowance in less than 4 months!© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  • 13. Patent as Business Tools • Attract Capital • Increase Licensing Revenue • Enhance Company Value • Stop Employee Theft • Protect Your Niche By Excluding Competition© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  • 14. Internet Advertising U.S. Patent No. 5,933,811© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
  • 15. © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  • 16. Multimedia Time Warping U.S. Patent No. 6,233,389© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  • 17. Patient Monitoring System U.S. Patent No. 5,558,638© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  • 18. Finger Tap Zoom U.S. Patent No. 7,864,163© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  • 19. Samsung Calls BS on Apple’s Charges of Copying – CONAN on TBS - YouTube©2012 Knobbe, Martens, Olson & all rights reserved.©2012 Knobbe Martens, Olson & Bear, LLPBear, LLP all rights reserved. 19
  • 20. © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
  • 21. Look Before You Leap • Freedom to Operate • When Launching New Products Conduct Patent Searching • Do Not Just Look At Competitors In The Market© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21
  • 22. Patent as Business Tools • Attract Capital • Increase Licensing Revenue • Enhance Company Value • Protect Your Niche By Excluding Competition • Stop Employee Theft© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22
  • 23. International Patent Protection You are here© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 23
  • 24. Intellectual Property Business Tools • Trademarks - tools that can greatly enhance marketing strategies • Patents - tools that help you obtain exclusivity in your market niche • Copyrights - tools for protecting content© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 24
  • 25. Copyright Protection • Copyright protection provided to the authors of “original works of authorship” including software, literary, dramatic, musical, and artistic. • Copyright Protection is Automatic © 2012 Company Name All Rights Reserved© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 25
  • 26. Intellectual Property Business Tools • Trademarks - tools that can greatly enhance marketing strategies • Patents - tools that help you obtain exclusivity in your market niche • Copyrights - tools for protecting content • Trade Secrets - tools for keeping proprietary information confidential© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 26
  • 27. Make Sure You Own Your Technology • Myth: I paid for it, therefore I own it. • Employee Agreements • Independent Consultant Agreements© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 27
  • 28. Thank you! John R. King John.King@knobbe.com© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 28

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