Here’s a question that comes up every now and then: can you patent an app? Most mobile application owners usually ask whether they should patent an app, but they never really stop and question if a mobile app can be patented in the first place. This is something that they should seriously consider before launching their application in the app store.
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Decent software applications have usually been the products of long-term labor. Building one first demands app creators to come up with an app idea and the necessary debate around it before moving on to execution. Next, it requires identifying product-market fit to see if it actually solves a problem for which people are looking for a solution. And even when it has hit the market, it requires multiple iterations before anyone can be proud of the final product. Sometimes, that product happens to be something quite revolutionary.
Understandably, software and application owners alike get antsy at the thought that someone might be able to copy all of the hard work they’ve put into their digital products. So, the idea of patenting an app is not crazy.
In this post we will discuss questions like: Is it worth patenting an app? Under what conditions and how much does it cost? Most importantly, we will discuss the question “can you patent an app?”
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 the respective government authority. It grants app inventors the right to exclude others from making use of their invention for a period of time.
A patent is part of intellectual property law which also covers laws around copyrights and trademarks. However, it 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, but these legal options do not grant a patent over a brand or a book. Similarly, you need to make sure that your patent protects your app from any copyright infringement.
Under the United States patent law, there are three different types of patents when it comes to inventions. In order to be granted one, you must meet the criteria of the statutory law. These invention patents are:
- Utility Patents: The most common type of patent. These are granted to new machines, chemicals, and processes.
- Design Patents: These are granted to protect a manufactured object’s unique appearance or design, such as ornamentation or any overall design aspects of the object.
- Plant Patents: Granted for new plant varieties through asexual reproduction; this includes hybrids.
From this, it can be deduced that an app will likely be looking at a utility patent. But let’s dig further to see if this is true.
Patent Eligibility: What Makes an App Patentable?
An app can be patented. One of the key things that the Patent Office is going to look at when they receive a request for an app is whether anything substantially similar to your web or mobile app has already been patented. They suggest that you begin with a search of patents as your first step. This can be done on the USPTO Full-Text and Image Database (PatFT).
Their suggestion is to get started with the patent application process by brainstorming keywords related to the purpose, use, and composition of the invention. Afterward, you will have to look them up in the Index to the U.S. Patent Classification; there you will find potential class/subclasses. Subsequently, you will have to determine the relevancy of those class/subclasses by using the Classification Schedule in the Manual of Classification.
Essentially, for a mobile app to be granted a patent it should have features that are clearly patentable. That is, they can’t be deemed an “abstract idea”, so those features must be new and they shouldn’t have been obvious to skilled app developers at the time of their creation. The patent office will check whether your app uses any previously patented, used, or published methods and processes. 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, so a knowledgeable law firm can be extremely helpful in your patent search process. 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 Applications?
The main goal of patenting an app idea is to prevent other companies from being able to copy and profit from your invention. Is it worth it to do so? Well, let’s consider:
Imagine a scenario where you had an app idea, and maybe even built a prototype of your web or mobile application. You decide that this is something truly unique and disruptive, so perhaps you should patent it. What you should consider are things like:
- How much does the whole patent process cost?
- Is this app idea popular enough to justify the cost?
- Do I have the time that it takes to go through the whole patent application process?
Take into account that a typical patent issuing process can take 2 – 5 years! Many apps have grown and been sold to a large company in that time. Additionally, 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 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. Ultimately, he argues that companies should embrace competition without fear of being copied, because, after all, not everyone can execute successfully and restrictive measures like patents may slow down innovation.
Remember that, in case you decide to file a patent, you’ll be using your valuable time, so make wise choices. As Cuban suggests, your time may be better spent successfully executing your business processes.
The world of technology tends to evolve at breakneck speed. If you’re waiting 5 years for a patent, is your app idea likely to still be relevant? What if your app is no longer in business? If you’re a startup, what if you end up pivoting as many startups are prone to do? Keep in mind you will need to pay a maintenance fee every 4 years for your patent. 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 filing a patent for your app idea. After consulting with patent attorneys you’ve reached the conclusion that your mobile app is a popular invention in a market that is ripe for disruption and you’re confident that a patent is a good move.
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 as the ability of software not only to solve a problem but to do it in a novel way. This can be done by using new technologies or existing ones in new ways.
You also need to pass those tests of not being an abstract idea and being non-obvious to skilled web and mobile app developers. 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.
Finding a software patent attorney who specializes in intellectual property to help you is key. However, this is going to add more cost to the whole process. It is possible to file them yourself, particularly the “provisional application”, but again, it’s a matter of time and money.
In the United States, you need to know a thing or two about patents. In particular, for the case of applications, that it must be filed before any public disclosure or even before it is marketed to customers.
Filing Provisional and Non-provisional Patent Applications
You can file a provisional patent application, which is an alternative for a formal patent claim. We’d venture to say that this is what most web and 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 and much more expensive patent.
The provisional patent 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 Patent Application,” 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.