Should You Patent Your App?

by Shantal Erlich
Blog Post

Here’s a question that comes up every now and then; should I patent my app?

Any decent app has usually been a long-term labor of love. Hours of sweat, tears, debate, and iterations have gone into the final product and sometimes, that product is something quite revolutionary.

Understandably, app owners get antsy at the thought that someone might be able to copy all of that hard work for their own benefit. So is it worth patenting your app? Under what conditions can you do so?

Let’s take a look.

What is a patent?

The term “patent” in the legal sense refers to the right that is granted to an inventor by their government authority to exclude others from making, selling or using the invention for a period of time.

It is part of intellectual property law which also covers laws around copyrights and trademarks, but is not to be confused with those two (they all have their own, independent legal definition). For example, you might trademark your brand or copyright a book you write.

Under US law, there are three different types of patents and in order to be granted one, you must meet the criteria of the statutory law. According to Findlaw, these are:

  1. Utility Patents: The most common type of patent, these are granted to new machines, chemicals, and processes.
  2. Design Patents: Granted to protect the unique appearance or design of manufactured objects, such as the surface ornamentation or overall design of the object.
  3. Plant Patents: Granted for the invention and asexual reproduction of new and distinct plant varieties, including hybrids (asexual reproduction means the plant is reproduced by means other than from seeds, such as by grafting or rooting of cuttings).

So what we can deduce from this is that an app will likely be looking at a utility patent.

What makes an app patentable?

One of the key things that the Patent Office is going to look at is whether anything substantially similar to your mobile app has already been patented. They suggest that you begin with a search of patents as your first step (which can be done on the USPTO Patent Full-Text and Image Database (PatFT).

Their suggestion is that you begin by brainstorming keywords related to the purpose, use and composition of the invention and then look them up in the Index to the U.S. Patent Classification to find potential class/subclasses, and then determining the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification.

Essentially, for an app to be granted a patent it must have features that are clearly patentable (that is, they can’t be deemed an “abstract idea”), those features must be new and they shouldn’t have been obvious to a skilled developer at the time of their creation. The patent office will check whether your app uses any “methods or processes for producing a useful, concrete, and tangible result” that may have been previously patented, used or published. If so, you’re probably not getting a patent.

One thing that you should note is that, even if you’re successful with getting a patent, this doesn’t prevent a company from taking legal action against you for patent infringement. This has been known to happen before, perhaps where a patent shouldn’t really have been granted.

Of course, different jurisdictions will have different rules. For example, in Europe, stricter limits are placed on the patenting of software-based inventions. They make it necessary that the claimed invention provide a technical solution to a technical problem. This means that it might be more difficult to patent a game app as this probably wouldn’t be considered a “technical problem,” however, something like how to edit and store your photos would be considered a technical problem.

Why patent your app?

The primary purpose of patenting your app is to prevent competitors from being able to copy and profit from your invention. Is it worth it to do so? Well, let’s consider:

Say you’ve had an idea, perhaps even built a prototype or beta version of your app. You decide that this is something truly unique and disruptive, so perhaps you should patent it. What you should consider are things like:

  1. How much does the whole patent process cost?
  2. Is this invention popular enough to justify the cost?
  3. Do I have the time that it takes to go through the whole patent filing process? (A typical patent issuing process can take 2 – 5 years! Many apps have grown and been sold to a large company in that time…)

You could waste a lot of time and money pursuing a patent on something that turns out to have no traction in the market anyway.

Billionaire, Shark Tank shark and entrepreneur Mark Cuban has had a lot to say on the idea of patenting any kind of software. In fact, he strongly advocates for patent reforms and the removal of patents for software. On his blog he said:

“If you create a new process, use it. The benefit is from creating the idea and using it in a business to your advantage. Afraid that some big company might steal the idea? That is life. When you run with the elephants there are the quick and the dead. That is a challenge every small company faces. A process patent is not going to make your business successful. The successful execution of business processes will. If we had process patents or the culture of software litigation in the 1980’s as we have today current technology would consist of running terminals on DEC and Wang Computers at the local library for $10 per hour and there probably would not be a world-wide web.”

You’ll be using your valuable time to pursue a patent, so make wise choices. As Cuban is suggesting here, your time may be better spent successfully executing your business processes.

A couple of other thoughts on this; the world of technology tends to evolve at breakneck speed. If you’re waiting 5 years for a patent, is this technology likely to still be relevant? What if your app is no longer in business? What if (especially if you’re a startup), you end up pivoting as many startups are prone to doing? These are all things worth considering before going all out to get that patent.

How to patent your app

Okay, so you’ve considered the pros and cons of patenting and have decided to go ahead with it. Yours is a popular invention in a market that is ripe for disruption and you’re confident that a patent is a good move. (Do consult with a lawyer specializing in intellectual property law to help you reach that conclusion!)

Your next question is, how do I go about patenting my app?

First of all, you’re going to have to pass the “novelty test,” which Angelo Firenze described quite nicely here:

“Just because your software solves a problem doesn’t mean your patent application is assured. Your software solution needs to be new … [I]t needs to solve [an] existing problem in a way that other solutions do not … either with new, non-obvious technologies or by changing the process itself in unique new ways”.

You also need to pass those tests of not being an abstract idea and being non-obvious to a skilled developer. So if you meet those criteria and you’ve begun with that search of existing patents and determined that there are no others like it already, this would be the first step.

Your next step may be to get an attorney who specializes in intellectual property to help you, however, this is going to add more cost to the whole process. It is possible to file them yourself (particularly the “provisional application” which we’ll get into later), but again it’s a matter of time and money.

In the US, you need to know that you have 365 days from the time that you begin publicly disclosing your invention:

“Prior to disclosing, marketing, attempting to license, selling, seeking funding or launching a social media concept and/or associated mobile app, patent protection [must] be considered. In [the U.S.] if the invention is disclosed prior to filing for patent protection, the product and/or business method will be precluded from patent protection. That is, a patent must be filed prior to the product being publicly disclosed, marketed, on sale or even entering discussions with a potential customer”. – USPTO

Provisional and non-provisional applications

You can file a provisional application for patent, which “allows you to file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement” (USPTO). We’d venture to say that this is what most mobile apps begin with because it grants them a whole year to build and refine their MVP. This gives them time to decide whether a product is going to be a success before going ahead and filing for a full (much more expensive) patent.

The provisional application is less demanding than the full one, although it will still take up a bit of time. You should also note that it doesn’t grant you patent rights, although you do have the right to use the phrase “patent pending.”

From then, you have 12 months to file for a “Non-provisional Application for a Patent,” otherwise your original filing date will be lost (giving competitors the opportunity to have snuck in first). This patent filing is very comprehensive and costly. Honestly, if you’re at this point, we’d recommend you have a skilled attorney helping you through it. These lawyers have the experience to prepare and file documentation that is more likely to be accepted.

Final thoughts

There isn’t really a straightforward answer as to whether or not you should patent your app. Every app has a different set of circumstances and, as indicated by Mark Cuban, there are some very valid reasons why you might choose not to patent.

If you decide to go ahead, patents can be somewhat complex in the software world so be prepared for a lot of time and money to go into it. We’d recommend that you find a good patent attorney and take it from there.

Koombea builds beautifully engaging apps for companies. Talk to us about how we can serve you today.

 

by Shantal Erlich
Blog Post