Posted on: 26/07/2018
Apps are a hot topic, and will no-doubt be so for the foreseeable future. This is particularly true in this part of the world, with the broad and deep range of app development specialists, and companies looking to delve into the app space. It is a pity, then, that is very hard or even impossible to protect innovation in and around apps. Or is it…?
1. I want to launch my app. Soon after I launch, I am worried that copycat apps will emerge and they will affect my sales. However, there is nothing I can do to stop them.
Your is app is your intellectual property. A rival app may infringe your intellectual property rights, from your copyright in your code, to any branding rights you may have. You can also apply for patents covering technical features of your app to protect against competitors using similar technical concepts, or trade marks to register branding, or even registered designs to protect certain visual aspects.
2. I’ve never considered a patent because you can’t get patents for software.
Software can certainly be patented, and is a huge area of patent activity. Many aspects of software are technical, and solve problems such as improving data-handling, improving processing speed, and improving data security. Software solving such problems, amongst others, can be patentable.
3. My app provides an improved keyboard interface that makes it easier for a user to control a large number of internet-connected devices using a small mobile phone touch-screen. Is this patentable?
Patent offices can grant patents for aspects of user interfaces that make it easier for users to input control commands.
4. My app also provides some clever new speech-to-text conversion software that can work efficiently even in noisy environments. Would this be patentable?
Software for processing data to compensate for factors such as noise are typically seen as patentable by patent offices, because they solve a technical problem. The same goes for speech-to-text conversion in general.
5. My app also suggests events for a user to attend based on their social media activity. Would this be patentable?
You may struggle.
Patent offices would typically think that you are solving primarily an administrative problem, rather than a technical one. The implementation of this administrative action in software would normally be considered to be ‘trivial’ from a technical point of view, and not inventive.
6. I can file a patent application for an app after I have launched it in on an app store.
Mixture of true and false
In many countries including the UK and Europe you can only get a patent for something that you have not previously publically disclosed. Once your app is on an app store, it is no longer confidential and thus you cannot apply for a patent in those countries.
Other countries such as the US have a limited grace period during which you can file patent applications after you have publically disclosed the app.
Always think about patent filings before you disclose your app.
7. The bulk of the coding was performed by a consultant. Because I have paid for the consultant to do this work, I own all the rights and can do what I want with them. No need for a contract.
For patents, the inventor is usually the first owner, so if you commission work which leads to a patentable invention, you may not own any resulting IP. The consultant will own the work.
It is therefore vital to get agreement in writing in such cases.
8. If I do get my patent granted in the UK, I can stop the app from being sold in the US.
Patents are territorial and only offer protection in countries where they are in force. By not pursuing patent protection in a particular country, you are effectively giving up your potential monopoly rights in that country. It is therefore important that you carefully select countries where you require protection.
9. Just after I have filed my patent application, I can write to any copycat app companies and tell them to stop selling their apps.
You should be wary of making “unjustified threats”. These can complicate any future legal proceedings and any contact with a possible infringer should be managed carefully.
In any event, it could well be that the competitor has his own patent/application which could affect your right to sell your app, or he may have publicised his app before your patent filing, which could affect the scope of any patent you eventually get granted.
10. I have a granted patent for my invention, so I can now go ahead and launch my app with no problems.
A patent gives you the right to prevent others from exploiting the invention, but gives you no absolute right to exploit it yourself, since you may still be infringing other patents. For this reason, a patent is sometimes called a negative right.
You may want to consider undertaking a Freedom to Operate (FTO) analysis before selling any new product/service, to see if you are clear to use or otherwise commercially exploit the new product/service.
About the author
Samuel has particular expertise in medical devices and imaging, and has worked on a number of cases involving technologies such as magnetic resonance imaging (MRI). He also has experience helping clients protect inventions in emerging areas in software such as chatbots, blockchain, and virtual reality/augmented reality (VR/AR).
Prior to joining Appleyard Lees, Samuel worked at a Belfast-based intellectual property (IP) firm where he guided SMEs through the patenting process. Samuel also spent three years working as an electronics/software technology specialist at a Japanese patent law firm. In Japan, Samuel handled several patent invalidation and infringement projects related to telecommunications and digital displays.Go back to Top Ten Tips