Bunker IP Consulting

IP COUNSEL

Virtual in-house IP counsel for start-up, small or mid-size technology companies. For larger tech companies, outside counsel available for consultation and advice on special projects and complex problems.

PATENT STRATEGY

With an emphasis on medical devices and methods, aerospace, software-implemented inventions and business methods, and Section 101 subject-matter eligibility.

TRADEMARKS

Brand development and protection, including searches and filing and prosecuting applications, oppositions, cancellations, and all forms of disputes and pre-litigation strategy.

CONTENTIOUS MATTERS

Counseling and strategy on IP disputes, appeals and ADR, patent landscape searches and analysis, and freedom to operate studies (risk assessment from possible infringement on the IP of others).

GLOBAL

US domestic and international patent and trademark portfolio development, including shaping and executing both offensive and defensive strategies.

TRANSACTIONS

Due diligence in all types of transactions involving IP, including M&A, series financings, borrowings, assignments or transfers of title, and licensing agreements.

Automotive, Transportation & Power Sports

Communications Technology

Electronics & Semiconductors

Financial Services

Business Methods

Healthcare

eCommerce

Media & Entertainment

Medical Devices & Procedures

Software & IT

EDUCATION

Brigham Young University – J. Reuben Clark Jr. Law School (J.D. 1978), cum laude
California State Polytechnic University – Pomona (B.S. Aerospace Engineering 1975), Honors, Tau Beta Pi Engineering Honor Society, Most Outstanding Aerospace Engineering Student Award

AWARDS & HONORS

Named among The Best Lawyers in America, 2017 and 2018 Editions
Named “IP Star” for 2017 by Managing IP Magazine
Named among the "Top 25 Intellectual Property Portfolio Managers & Patent Prosecutors" in California by the Daily Journal in 2015
Recognized for his outstanding intellectual property legal work in the Managing Intellectual Property Magazine "IP Stars" Guide in 2013, 2014 and 2015
Recognized by American Lawyer Media (ALM) as a Top Rated Lawyer in Intellectual Property Law in 2013
Named in the 2012 International Who's Who of Patent Lawyers
Recognized in the 2011 IAM Licensing 250 - The World's Leading Patent and Technology Licensing Practitioners guide published by Intellectual Asset Management (IAM) magazine.
Nominated as the Who's Who in California Legal for Trademark Representation in 2007
Named one of the top patent law experts in Euromoney Legal Media
Group’s Guide to the World's Leading Patent Law Experts in September 1999 and June 2003.
Named one of the world's leading trademark practitioners, based on a survey of his peers, in Who's Who Legal USA: Trademarks 2006
Boy Scouts of America - District Award of Merit , District Chairman, Silver Beaver Award; Orange County Council, VP of District Operations

PUBLICATIONS

"Inter Partes Review and Post-Grant Review: New Options Under the America Invents Act to Challenge Patent Validity", Orange County Business Journal (September 2012)
"Fair Conditions," Establishing Present, Advancements in Intellectual Property Law, Supplement to the Los Angeles Daily Journal (April 1997), co-author
"Ashton-Tate 'Out-Foxed' by Copyright Application Form," California Republic, (February 1991)
"How to Handle Representations and Warranties in Transactions Involving Intellectual Property Law," Vol. VII, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1992)
"An Introduction to Computer Law," Vol. 3, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1988)
"A Model Trade Secret License Agreement: An Example from the Biotechnology Industry," Vol. 3, No. 4, California's Continuing Education of the Bar Business Law Practitioner (Fall 1988)
"Strategic Alliances: Trade Secret Protection in Joint Ventures and Partnerships," Vol. 2, No. 1, California's Continuing Education of the Bar Business Law Practitioner (Winter 1987)
"How to Protect Your Client's Trademark," Vol. 2, No. 2, California's Continuing Education of the Bar Business Law Practitioner (Spring 1987)
"A Checklist for Protecting Trademarks in the Healthcare Industry," Vol. 2, No. 2, California’s Continuing Education of the Bar Business Law Practitioner (Spring 1987)
"A Trade Secrets Checklist for Hiring Employees from Competitors," Vol. 1, No. 2, California’s Continuing Education of the Bar Business Law Practitioner (Spring 1986)

SPEECHES & SEMINARS

Guest Lecture, “Identifying and Protecting your Intellectual Property.” BYU-Hawaii University. February 2, 2017
Panelist, USPTO Community Symposium on “Patent Quality,” April 27, 2016
Webinar Presenter, Consumer Electronics Association (CEA, now CTA), “10 ÷ 2 Patent Commandments for Startups,” June 26, 2014
Seminar and Follow Up Webinars, Knobbe, Martens, Olson & Bear, “Software Patent Eligibility – A Post-Alice Landscape Discussion,” April 2015, November 2015, Feb. 2016
Co-Moderator, 'Tech transfer: JV or Licensing", IBA World Life Sciences Conference, Philadelphia, PA (June 2015)
Moderator, "What are the emerging life sciences business models and what will they be in five and ten years from now?” IBA World Life Sciences Conference, San Diego, CA (June 2014)
Panelist, "Learn How to Protect Your Intellectual Property", Northern Virginia Tech Council (NVTC), Small Business and Entrepreneur Committee, Fairfax, VA (March 2014)
Moderator, "Why Didn't Someone Tell Me That?” International Bar Association Annual Conference, Boston (October 2013)
Co-Moderator, "What are the emerging life sciences business models and what will they look like in five years and ten years from now?", IBA World Life Science Conference, Dallas, TX (May 2013)
Co-Moderator, "Tech transfer tactics: Licensing in the academic and commercial realms," IBA World Life Science Conference, Dallas, TX (May 2013)
Facilitator, "Intellectual Property, e-Commerce and Privacy", International Bar Association Conference, Dublin, Ireland (October 2012)
Panelist, "Patenting the Unpatentable: Claim Drafting After Prometheus" and “Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patent Protection", Firm-hosted IP Impact Seminar, McClean, Virginia (May 2012)
Moderator, "Patent Reform: New Sheriff in Town", OCBA Corporate Counsel Section (April 2012)
Presenter, "Patent Reform (AIA): What You Need to Know", IP Impact 2011: Innovative Intellectual Property Strategies for Emerging Technology Companies, McClean, Virginia (September 2011)
Presenter, "Patent Reform: What You Need to Know" and "Preparing Your IP Portfolio for Investment, Acquisition, and/or Litigation Events", IP Impact 2011: Innovative Intellectual Property Strategies for Technology and Life Science Companies, Research Triangle Park, North Carolina (September 2011)
Presenter, "Recent USPTO Programs", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Research Triangle Park, NC (September 2010)
Presenter, "Recently introduced USPTO pilot programs and initiatives that you can utilize to improve the quality of your IP portfolio", IP Impact 2010: Innovative Intellectual Property Strategies for Emerging Technology Companies, Silicon Valley, California (July 2010)
Moderator and Presenter, "User Generated Content on the Internet - Its Business Case, IP Rights, Litigation, and Relevant Statutes", IBA all-day session, Madrid, Spain (October 2009)
Presenter, "Innovative IP Strategies for Emerging Companies", Firm-hosted IP Impact Seminar, Research Triangle (Chapel Hill), NC (September 2009)
Moderator, "Licensing Practices: What Has the U.S. Supreme Court Done to your Agreements?” USC Gould School of Law, IP Institute (March 2009)
Moderator and Presenter, "Thinking Outside the Box - Creative Defenses to IP Infringement Actions", IBA all day session, Buenos Aires, Argentina (Fall 2008)
Moderator and Presenter, "Real IP in a Virtual World - Issues Arising Out of Virtual Characters and Scenes in On-Line Video Games," IBA all day session, Singapore (Fall 2007)

BAR ADMISSIONS

State Bar of California
U.S. District Court – Central District of California
U.S. District Court – Eastern District of California
U.S. District Court – Northern District of California
U.S. District Court – Southern District of California
U.S. Patent and Trademark Office

Bill Bunker was instrumental in directing, supervising, and managing the activities of Knobbe Martens, an IP “boutique” law firm specializing in intellectual property law, including litigation, PTAB trials, and prosecution. For nearly 40 years since 1978, Bill helped grow Knobbe from eight attorneys in one small office in Orange, California, to almost 300 attorneys across eight offices located throughout the U.S. During his tenure at Knobbe, Bill led teams that represented hundreds of clients in connection with thousands of different matters, established the San Diego office which is now home to 70 attorneys, organized the firm’s first formal Trademark Department, and implemented its recruiting system, helping to bring to the firm some of the nation’s best IP talent.

Bill focuses on developing and executing worldwide patent and trademark protection strategies for a wide diversity of clients - from startups to multi-national corporations. He has extensive experience in the many fields of medical devices, as well as computer implemented and internet based inventions. Bill frequently advises clients on clearance matters (so called "freedom to operate" or "right to practice" analyses) as well as responding to and conducting due diligence in investment and acquisition contexts. Licensing and all forms of business transactions involving IP is a substantial portion of Bill’s work.

He's been a contributing author on intellectual property law for the Los Angeles Daily Journal, including such topics as the GATT amendments to U.S. intellectual property laws, European Community trade mark system, color trademarks, doctrine of equivalents, and declaratory judgment practice. Bill has served as a legal expert witness in various IP matters. He has over 10 years of experience in teaching patents and trade secret law at Chapman University School of Law and University of San Diego School of Law. In 2013, Bill founded the IBA’s World Life Sciences Conference, presented by the Intellectual Property and Entertainment Law Committee of the IBA. The WLSC examines the critical issues often found at the interface between law and business in the life sciences industries, and sessions and round tables bring together experts in the pharmaceutical, biotech, medical device and medical IT industries.

"I have worked with Bill for over 30 years on Intellectual Property issues covering three companies where I was in a leadership position. He is responsive, sensitive to costs, insightful, and simply the best. I recommend Bill for anyone who wishes to have wise counsel."

PETER RULE

"I have been consistently impressed with the advice I receive from Bill and the results he obtains at the USPTO. As the law changes, Bill has counseled me on what the impact might be and how to best position our IP practice going forward. In the M&A context, Bill has helped me review and think strategically about a target company's IP, pre- and post-acquisition. Bill would be my first call if a complex issue came up regarding my company’s intellectual property strategy."

MATT SPERLING, SR. CORPORATE COUNSEL, ADDEPAR

"Bill Bunker is a phenomenal intellectual property attorney. I have worked with him for more than a decade. He has an elite understanding of the nuances of the law that can be crucial for his clients. Importantly, his integrity is also unparalleled."

ALLAN MISHRA, MD

BUNKER IP CONSULTING

WHAT WE DO