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.

1. Look Before You Leap - Avoiding John R. King
Intellectual Property Problems When Partner
Starting A New Information John.King@knobbe.com
Technology Business
The recipient may only view this work. No other right or license is granted.
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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.
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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.
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6. Selecting a Brand - Trademark Searching
• Bandito Beer:
– A trademark search shows that the registration for
the Bandito trademark has expired.
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7. Selecting a Brand - Trademark Searching
• El Bandido
– Alcoholic beverages namely tequila
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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.
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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
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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
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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!
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13. Patent as Business Tools
• Attract Capital
• Increase Licensing Revenue
• Enhance Company Value
• Stop Employee Theft
• Protect Your Niche By Excluding Competition
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14. Internet Advertising
U.S. Patent No. 5,933,811
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15. © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15

16. Multimedia Time Warping
U.S. Patent No. 6,233,389
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17. Patient Monitoring System
U.S. Patent No. 5,558,638
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18. Finger Tap Zoom
U.S. Patent No. 7,864,163
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19. Samsung Calls BS on Apple’s Charges of
Copying – CONAN on TBS - YouTube
©2012 Knobbe, Martens, Olson & all rights reserved.
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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
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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