What is an app patent? Why should anyone care about patents? If you need one, how do you go about getting it? Almost every product developer will face these questions, so we want to walk you through everything you need to know about app patents and how to get one.
Broadly, one of the central goals of patent law is to protect the ideas and innovations made possible by inventors. Patents provide an exclusionary right to a patent holder to protect their ideas from competitors for a set period of time – only in the country in which the patent is granted. To clarify further, per the United States Patent and Trademark Office (USPTO),
“Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices.”
Naturally, app creators and developers want (and should) have the ability to reap the rewards of a successful app’s innovations and technical processes, just like other inventors. However, not all apps are eligible to receive a patent. Even if they are, there may be reasons to not seek one. We’ll take a look at some of the considerations involved to help make a decision about whether to pursue an app patent, as well as a few extra tips you might not come across elsewhere.
What Is an App Patent?
Fundamentally, an app is a piece of software, which essentially means that filing an app patent will function the same way as patenting any other kind of software. It is important to understand however, that certain aspects of an app cannot be patented, such as app code.
Instead, the technical processes and/or methods that the app relies upon can be patented. If your app is eligible to be patented, this means that you will receive a legal protection that protects your app’s technical processes or methods from being used by others, including competitors. An app patent is intellectual property and as such, it can be sold, licensed to others (for a fee) or as an instrument for royalties.
In the United States, the process of applying for and receiving a patent is overseen by the USPTO, which says that an app may be patented if the following requirements are met:
- The app is novel (or new),
- The app is more than just an abstract idea, meaning there are some processes or methods used that can actually be patented,
- The patent is innovative enough that it would not be obvious to someone with experience in your field.
If an app is novel, involves more than an abstract idea and is non-obvious, then it is possible to file an application for a patent. In simple terms, your app needs to do something that is not obvious and that has never been done before involving technical processes in order to receive a patent. A good example here is how Amazon sought but was denied a patent for its one-click payment option. The court decided the “one-click idea” was “too obvious” to patent.
If this legal requirement applies to what you have created, then here are a few benefits that may make pursuing an app patent worth the time and effort:
Why is it Important to Patent an App?
Arguably, the most important reason to patent an app is that it provides you legal protection against anyone who infringes upon your intellectual property rights. In other words, you can seek damages for patent infringement if another party commits a prohibited act related to your app patent, without obtaining your permission.
Obtaining a patent for your app will provide this legal protection for a fixed amount of time, typically 20 years. Lengthy periods of patent protection can encourage you to take bold strategies with your app, such as entering into licensing deals or enjoying exclusive use of your invention to maintain an advantage over competitors.
Reasons to Consider or Not Consider Patenting an App
Although it is true that patenting an app provides important legal protections, this does not mean pursuing an app patent is necessarily correct for you. For one thing, your app may not be eligible (as outlined in the USPTO criteria previously mentioned). However, even if your app is eligible for a patent, the patent application process is expensive and typically a three to four-year process.
Additional reasons an app patent may not be ideal include but are not limited to:
- The annual fee that must be paid to prevent patent rights from lapsing.
- Legal action may still be necessary to protect your rights as the patent-holder (the patent itself can often serve as a deterrent against patent infringement, but it is no guarantee).
- Filing for a patent makes some technical processes and methods of your app publicly available knowledge, which some companies and inventors may understandably find undesirable.
These factors ought to be weighed against the many benefits of patenting an app. If you decide to pursue a patent, it is extremely important to understand the essentials of conducting a thorough patent search.
It is important to understand the second point. An app patent does not prevent anyone from using your invention or technical processes. It only gives you a very strong legal basis to pursue damages from those who use it without your permission. One major example includes Samsung having to pay Apple $539 million for copying its smartphone features. We also have Match Group, the parent company of Tinder, suing Bumble for infringing on two app features.
No Such Thing as an International Patent
As addressed earlier, there are no international patents. The necessity of seeking a patent in every country in which you intend to do business (and/or to preclude others from copying your invention) can be cost-prohibitive. The matter of patent protection also requires the patent holder to actively watch that their patent is not being used unlawfully. That, too, can be very expensive.
This all adds up to very good reasons to not apply for a patent – simply because there are companies from around the world actively watching what is filed with the USPTO. They can take it and make it available to companies in their home country. This only directly impacts you if you actually have the intention to use your invention as part of doing business in other countries.
The Patent Search Process
Given that there are now well over 2 million apps in Apple’s App Store alone, it is fair to say that is unlikely your app is entirely new (novel). Due to this, it is helpful to search for past inventions and patents (known in intellectual property law as “prior art”) to see if any patents exist that are similar to what you have made.
This will help you avoid patent infringement, while also highlighting what it is that makes your app special and new. It will be those novel elements of the app that you cannot find similarities for in a patent search that will be eligible to patent. Due to the importance of patent searches, it is helpful to understand how a thorough patent search process ought to be conducted.
The Two Patent Databases
As with most effective forms of search, keywords will prove instrumental. Think carefully about the purpose and use cases of your app. This should provide you with a list of keywords as a good starting point. Search these keywords via the U.S. Patent Classification (USPC) system to see if there are any categories or subcategories of classification that can help you further refine your search process.
Once you have determined relevant categories and subcategories, proceed to using the USPTO’s Patent Full-Text and Image Database. This database will include all text for patents issued since 1976, more than covering everything related to mobile applications. Images are also included for all patents issued since 1790.
When conducting your search, just make sure to carefully investigate the methods and processes that are already out there, to make sure that your app is truly eligible for a patent. In short, this process is about doing your due diligence for existing applications and granted patents, before rushing off to seek patent approval through the USPTO.
The Patent Application Process
In order to apply for a patent, the first hurdle is cost. The exact cost of filing for a patent will depend on whether you apply for a non-provisional or provisional patent application. A non-provisional patent application is only issued once the app is already out and in the marketplace, which is a far more expensive option than a provisional application.
The Provisional Patent Application – “Patent Pending”
This application is valid for one year and gives the developer time to finish creating their app. At the end of this year, the developer may file for a non-provisional patent. The first advantage of a provisional application is that it gives you the right to use “Patent Pending” in conjunction with your invention. This serves as notice to the public that you are seeking (but have not yet been granted) legal protection for your invention. The second advantage is that your subsequent Non-Provisional Application retains the provisional patent’s date from the previous year. This is extremely helpful if you are competing with another patent and want to be the first to file. Generally, all-inclusive costs for a provisional patent range from $2,000 to $5,000.
Non-Provisional Patent Application
Typically, all-inclusive costs for a non-provisional patent tend to exceed the $10,000 mark. Filing it essentially indicates that you have done your due diligence patent research and you believe it a) meets the criteria for a patent, and b) it is not materially like any other patent. As such, it can make a great deal of sense to test your app’s success with the less cost-prohibitive provisional patent for a year before deciding on whether a non-provisional patent is worth pursuing.
For most, then, a provisional patent application is the ideal first step. In order to submit a provisional application, you will need to provide documentation that effectively demonstrates how the app and its technical processes function. Examples of helpful documentation to include with the application are:
- Flow charts that show the step-by-step processes of the app
- Detailed illustrations showing mobile app functions
- Description of app architecture and how the app is used
Generally, you are going to want to be extremely detailed and comprehensive in your documentation. The more answers you can provide concerning the invention, how it was made, and how it is used, will benefit your application. Our product design services may help provide this documentation.
Eventually, you will need to complete a non-provisional patent application that fully determines whether you will be granted an actual patent for the app in question.
Possible Outcomes for a Patent Application
The app patent application process is a lengthy one, and it is typical for the patent application process to take anywhere from one to three years. In time, your patent application will either be granted for a predetermined amount of time (meaning you have a legal patent and its protections), or it will be rejected.
If your patent application is rejected, you may appeal the decision by using an official form from the USPTO and paying the appeal fee. To appeal, you will need to prepare a written brief that explains why you believe the rejection was not the correct legal outcome.
As you can see, the patenting process is an intensive and complex one that is best navigated with the help of a legal ally who understands the nuances of IP and patent law.
Other Valuable Resources for Intellectual Property
We have no association with it, but the Federal Labs Consortium is a US-based nationwide network of 300+ federal laboratories facilitating technology transfer opportunities. Technology Transfer (T2) involves pushing government-owned inventions into commercial products for the global marketplace – patent licensing being one mechanism to do so. Rather than reinvent a crucial IoT or mobile-related sensor, you may find the hardware or software patents you need for it already available with favorable terms via FLC member labs. They offer a variety of services, but T2 can save money, time to market and open up additional opportunities for big and small businesses alike.
Also of interest is the USPTO’s Pro Bono Program offering assistance and services to inventors and small businesses in filing for a patent as explained in the video below.
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