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Anurag Bist, PhDFounder and Chairman, Ashmar IP

Dr. Bist brings years of entrepreneurial, leadership and IPR domain experience to the founding team of Ashmar, a boutique IP consulting firm that helps clients along the full spectrum of intellectual property management, including market analysis, patentability and competition analysis, patent prosecution support, licensee identification, and invalidity and infringement analysis. He holds 15 U.S. patents and has over 15 other patents pending.

He is a Charter member of TiE Southern California and a recipient of 2008 IIT Kanpur Alumni Award for Entrepreneurial Leadership and Technology Innovation.

Dr. Bist has lectured on the topic and commercialization and protection of mobile applications.

Andrew K. Gonsalves, Esq.Senior Attorney, Heslin Rothenberg Farley & Mesiti

P.C.

Mr. Gonsalves focuses his intellectual property law practice on the procurement and strategic development of patent, trademark, andCopyright protection for firm clients. He has handled intellectual property law matters for a wide range of clients, including universities, university spinouts, Fortune 500 companies, private start-ups, and individual inventors. He has a passion for assisting In the commercialization of university-originated technology from the pre-seed stage.

Mr. Gonsalves is particularly interested in the legal, technical, and strategic issues involved in developing cloud and mobile app solutions directed toward harnessing the “big data” being generated in the life sciences field.

Hossein PourmandAssistant Director for Physical Sciences & Engineering Technology Advancement and LicensingUSC Stevens Center for Innovation

Mr. Pourmand is responsible for developing and implementing IP and

commercialization strategies through licensing and other arrangements, with specific experience in the mobile application space. Hossein has over 20 years of industry experience in a

variety of engineering, strategy, business development and finance roles.

He started his career with Atlantic Richfield Company (ARCO) and after that worked with a number of high technology start-ups in various capacities including venture capital financing and business development.

Mr. Pourmand has worked closely with innovators and has played a

key role in the successful funding and launch of a number of high technology start-ups.

Introduction (5 mins) Mobile Apps Commercialization Models (15-20 mins) - Anurag

◦ Key Monetization Angles◦ Some Key Legal Issues: Privacy, IP◦ Some successful examples

University Spinoffs (20 mins) - Hossein◦ University policies◦ Best Practices for Successful university spinoffs in mobile Apps space◦ Example Case Study◦ Lessons Learned

Critical Legal Issues check list (20 mins) - Andrew◦ Ownership and Licensing◦ Regulatory Issues◦ Privacy Policies, Data collection and usage◦ Other critical legal issues

Open Q&A (15 mins)

Paid Downloads Subscriptions Merchandizing, In-App Purchasing

Banner Interstitial Affiliated and Referral Marketing Cross Promotion, Offer Walls

Behavioral Targeting Location Based Cohorts

Banner Ads – placements can improve CTRs and eCPMs

Full Screen Interstitial Ads – full page Ad that displays when your App is loading, between levels, other breaks in Action

Acquisition of users Engagement and Retention of User Tracking Behavior of User in Relation to your App

◦ Event Based Monitoring◦ Demography, Geography and Behavior Based Monitoring◦ Defining Key Metrics for Engagement

DAU (Daily Active Users), MAU (Monthly Active Users) Cost Per Acquisition; Cost Per Campaign

Monetization◦ App Value = Number of Users x Life Time Value (LTV)◦ Ad Monetization: CTR (Click Through Rate), CPM (Cost per thousand impressions)◦ Value Defined By

Actual Monetization Loyalty of Consumers Virality Marketplace (Downloads, Ratings, Comments) Social Feedback

CA Attorney Journal’s recommendations (Jan 2013) ◦ For App Developers

Checklist of personally identifiable data your app could collect and use it to make decisions on your privacy policy

Avoid or limit collecting personally identifiable data not needed for your app’s basic functionality

Develop a privacy policy that is clear, accurate, and conspicuously accessible to users

Use Enhanced Measures – “special notices” to draw user’s attention to data practices that may be unexpected

◦ For App Platform Providers Make App Privacy Policies Accessible from the app platform so that they may

be reviewed before a user downloads an App Use the platform to educate users on mobile privacy

Focus on the issues that enhance the mobile experience Unique aspects of translating a complex technology to meet

spontaneity, interaction, communication Issues that keep the value proposition of technology the same as

it’s translated down into mobile platform

Getting method/process patent that enable platform and analytics

Flurry Tapjoy Localytics Claritics

Free Scalable Backend providing◦ User Management◦ Limitless Cloud Storage◦ Intelligent Push Notifications◦ Scaling with ease

Increased App Engagement with Flurry Analytics Event based Usability testing

Look how users interact with the App How, When and Where and By what kind of audience your app is used

Increased App Monetization with funnels Identification of best demography, interests, geography Crash Analytics

Measure Ad Effectiveness◦ Flurry Analytics for Channel Measurement◦ Defining Custom User Quality Metrics◦ Track Different Channels or Campaigns

Discover New Users (Acquisition) Find ways for User Engagement (Retention) Using Analytics and Rewards for both

Adding videos from brands Boosting reengagement by identifying people

who have not engaged recently Other ways to monetize – by referring other Apps

– get paid when your users install other Apps referred by your App links (Earn $10-$20 Average eCPM)

Instagram - “Instant “Fotogram”” - Fast and Cool photo sharing experience◦ Pivot Multiple Times to focus on creating a great user experience, gain virailty.◦ Launched as Brbn (Square like Photo sharing App), Launched as Instagram in Oct. 2010◦ 1 mil. User by Dec. 2010◦ Acquired by Facebook in mid-2012 for 1 Billion dollars. 13 Employees, 9 investors!

Monetization when started? None? Focus on User Experience, Gain Eyeballs Monetization Today: Actual Use by Brands – Gillete Tag the Weather

www.esraogucu.com

Balancing policies with time-to-market for mobile apps University-owned IP

◦ Use of University assets and resources Grants University monies Sponsored Research Support Equipment (computers, servers…) Lab Space

◦ Commercialization Pathways Licensing to existing company/companies Start-up

Student-owned IP◦ Innovations resulting from classes or free time◦ No significant use of University resources to develop or advance the

idea

Disclosure(s) to TCO required◦ Pre-Public Disclosure and/or Publication

Review process within 60 Days◦ Decision Process

Prior Art Search Technical Assessment

◦ Provisional patent(s), copyrights, trademarks, trade secrets etc.. TCO’s Patents and Compliance team works with

inventors to ensure compliance with sponsor-required obligations◦ Data◦ Digital Content rights◦ Open source code

Responsibility of the student TCO provides some guidance and

references to professional service providers Access to business plan competitions,

departmental showcases and university incubator

University may pursue patent protection if IP is assignment is made or student agrees to share royalties as if IP was owned by University

Translational Programs◦ Marketing & Business Development Plan◦ Matching teams with Business School and Law School

students ◦ Seed funding for early commercial milestones◦ Entrepreneur-in-Residence / Management Team

Business Development Activities◦ Corporate / Strategic Partnerships◦ Alumni Network◦ Investor introductions (VCs, Angels, Corporate..)

Inventors: PhD Candidate and USC Computer Sciences Professor & Chair

Funding: NSF and NIH Patent-pending Technology

◦ Use motion data from smartphone’s accelerometer; does not use GPS or any external sensing technique

◦ Bayesian regression fits data to calorie consumption.

◦ An algorithm fits consumption to user

TCO provided access to Entrepreneur-in-Residence◦ Coaching / Mentoring◦ Business / Revenue Model◦ University resources for App development

Android app launched June 2012; 4500 users

iOS app in progress Currently in USC Viterbi School of

Engineering Incubator

Inventors: PhD Candidate and USC Computer Sciences Faculty

Industry Collaborators: Google, Microsoft, Intel, Oracle and HP Research Labs

Patent-pending Technology Uses road sensor data for finding fastest path

◦ Big Data and Predictive Analytics Los Angeles Metropolitan Transportation

Authority (LA Metro) provided data Android app beta launched May 2013 iOS app in progress

Time to market is critical Opportunities to leverage university IP do

develop mobile apps with significant societal impact

TCO efforts and programs should be directed at connecting university researchers to relevant external entities (strategic partners, mobile app developers, entrepreneurs etc..)

Intellectual PropertyPrivacyOther Legal Issues to Consider

Mobile App Technology Assessment◦ Good Place to Start: Not only identifies IP needs, but

also spots privacy and industry-specific legal issues Overview of Types of IP Covering Mobile Apps◦ Patents, Copyrights, Trademarks, Trade Secrets

Managing Mobile App IP◦ Ownership Issues◦ IP Clearance◦ Ongoing IP Compliance

Software that runs the mobile app Toolkit that enables the mobile app to

function on a mobile platform (e.g., Apple’s App Store; Google Play/Android)

Icon that launches the mobile app on your mobile device

What will your mobile app do? What technology is needed for your mobile

app to function? How will you acquire that technology?

◦ New: University or Non-University◦ Existing: University-Owned or Licensed-In◦ Open Source Software

PatentsCopyrightsTrademarksTrade Secrets

Inventions (useful, novel, nonobvious) Protects process or method embodied by

the app Does not protect software code, but

rather protects how the software operates Can protect inventive concepts used in

numerous mobile apps, not just one specific app

Expensive; Time-Consuming

Example“Method and System to Analyze Sports Motions Using Motion

Sensors of a Mobile Device”

(US2013/0102419A1, published 4/25/13)

Protects “original works of authorship” (e.g., literary, dramatic, musical, artistic, and certain other intellectual works)

Source code, text, artwork, design Copyright created when work fixed in a

tangible medium

U.S. Copyright Office registration◦ Inexpensive; Fairly Quick◦ Required for litigation◦ Timing Important: statutory

damages/attorneys fees Digital Millennium Copyright Act (DMCA)

(17 U.S.C. § 512)◦ “Safe Harbor” for app developers whose mobile

apps include user content

Example

ANGRY BIRDS®© 2013 Rovio Entertainment Ltd.

Identifies and distinguishes the goods/services of one seller or provider from those of others, and indicates the source of the goods/services

Name, word, phrase, logo, symbol, design, image, color, smell, sound

Federal registration preferred◦ Federal Courts; nationwide ownership; notice

Example

ANGRY BIRDS®Word Mark (Reg. No. 3976576)

Rovio Entertainment Ltd.

International Class 009: Video games for mobile devices, personal computers, consoles, tablets; electronic game programs; downloadable electronic game programs; electronic game software; computer game programs; downloadable computer game programs; interactive game programs; interactive game software; apparatus for games adapted for use with television receivers; cinematographic apparatus; protective carrying cases specially adapted for phones and handheld computers

Formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers

Trade secret policies are important

Ownership of IP◦ Formalize who owns mobile app IP

Assignments; Work-for-Hire Clauses

IP Clearance◦ FTO, Licensing, Open Source

Ongoing IP Compliance◦ Digital Millennium Copyright Act (DMCA)◦ Compliance with IP Licensing Terms◦ Mobile platform toolkit that enables app to function

Apple iOS and Android developers agreements

End-user privacy major issue Personal Information

◦ Name, address, date of birth◦ Medical information◦ Financial account information◦ Drivers license number◦ Social security number◦ Passport number◦ Geolocation information◦ Purchases◦ Etc…

Mobile app privacy centers around how personal information is collected, used, disclosed, shared, maintained, and protected

Federal and State privacy laws End-User License Agreement (EULA)

Privacy Policy: FTC Guidance◦ Build privacy considerations from the start◦ Be transparent about your data practices◦ Offer choices that are easy to find and easy to

use◦ Honor your privacy promises◦ Protect privacy of children (COPPA)◦ Collect sensitive information only with consent◦ Keep user data secure

(Source: FTC)

Privacy Policy Best Practices:◦ Only collect the data you need◦ Secure the data you keep by taking reasonable

precautions against well-known security risks◦ Limit access on a need-to-know basis◦ Safely dispose of data you no longer need

(Source: FTC)

Truthfulness in Advertising◦ Perspective of the average user◦ Competent and reliable evidence to support

claims◦ Disclose key information clearly and

conspicuously◦ FTC action possible

(Source: FTC)

Promotional Material◦ Contests, sweepstakes, promos◦ Beware of illegal lotteries and gambling◦ Third-party advertising through your app

Telephone Consumer Protection Act (TCPA)◦ Private causes of action; statutory penalties◦ Related FCC rules

Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (CAN-SPAM)

Medical Devices◦ FDA: Developer needed 510(k) clearance before

marketing mobile app (uCheck Urine Analyzer) Health Insurance Portability and

Accountability Act (HIPAA)◦ Does HIPAA apply to your mobile app?

Fair Credit Reporting Act (FCRA)◦ Does app function as a “Consumer Reporting

Agency”? Financial Services

Utilize the public chat at the bottom left of your screen to submit your question. The panel will address them in the order they are

received.

Thank You!