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Commercializing Mobile Apps: Effective Management of Legal Threats and Challenges

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: June 13, 2013

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The explosion in sales of smart phones, tablets and other mobile devices has given rise to a market for mobile apps that forecasters predict will exceed $25 billion by 2015. For university TTOs, this presents a tremendous opportunity for new revenues as well as new relationships with the hundreds of students and faculty creating apps on campus. But the fast-moving mobile app market is also riddled with legal issues that can derail your efforts and lead to time-consuming, costly litigation.

From trademark, copyright, patent and private data collection issues, you must learn to effectively manage a gnarly legal thicket that can block or delay commercialization efforts and frustrate your faculty and student apps developers.

That’s why Technology Transfer Tactics’ Distance Learning Division has created this critical program:

Commercializing Mobile Apps:
Effective Management of Legal Threats and Challenges

Please join our panel of experts­ — an IP attorney, a consultant, and a university tech transfer insider — when they reveal how to best manage and overcome the legal challenges facing mobile apps commercialization efforts. After a brief overview of mobile application commercialization models, our panelists will cover:

  • The regulatory issues (e.g. FDA, Privacy Acts etc.) that inventors, entrepreneurs, TTOs, and investors must be mindful of
  • Ownership and licensing issues – and how to protect the various forms of IP associated with a successful app, including:
    • The software that runs the app
    • The toolkit that enables the app to function on the mobile platform
    • The icon that users click to launch the app
    • Patentable processes
    • Updates and future iterations
    • Legal issues surrounding contractors (work-made-for-hire)
  • Critical legal issues related to:
    • Private data collection
    • Media clips and images
    • Open source code
    • End-user privacy
    • End-User License Agreements
  • Legal Issues Involving advertising and promotional material in mobile apps
    • Federal (e.g., FCC, FTC) and state laws/regulations
    • Third-party advertising, promotional material, contests (e.g., sweepstakes)
  • Crafting a university mobile app development policy, or updating existing software development policy to cover mobile apps

PLUS: Examples and case studies of fundamental technologies being commercialized through apps

Panel of Presenters:

Hossein Pourmand, Assistant Director for Physical Sciences & Engineering Technology Advancement and Licensing, USC 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. He 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.

Anurag Bist, PhD, Founder 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. He is also a member of the Pan-IIT Leadership Council 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, and copyright 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.

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CLP and CLE Credits Available
Please review your State Bar’s policy on distance learning credits prior to submitting the non-refundable application fee. We submit CLE applications (excluding NY, NJ, IL, LA & PA) for an additional $50 (unless otherwise specified upon checkout). Approval times vary per state and cover all attorneys in attendance. Application is not a guarantee of approval and attendance forms must be submitted following the program.

CLP Credits are also available.


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