So You Want to Patent an App . . .

Originally posted 2018-11-19 11:19:59

By Alana Ballantyne – Edited by Irina Pomestchenko

Apps, short for “Applications” are a relatively new concept. Not long ago, the idea of having high-quality games, television shows, or movies at the tips of your fingers was a pipedream. Now, there seems to be an app for everything.

How do you protect your great app idea? The following is a step-by-step guide to help you protect your valuable IP.

Step number one? You need to patent your idea. First, you have to file what is known as a “utility patent’. This means that you are patenting the idea of a ‘useful’ product, which most inventors believe their invention is; useful. Luckily, Apps are commonly treated as patentable software inventions, like Microsoft Word or Firefox. SAAS or “software as service” applications are typically patentable. Software as a service is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. Apps generally fall into this category. However, may app inventors run afoul of the“abstract idea” exception to patentability. If your idea is too abstract, or just an idea, it may not be patentable.

In order to file a successful utility patent for your app, you will need to determine several things.

First, make sure that your app falls into one of the categories defined by Section 101 of the Patent Act. Namely, is your app a process, machine, article of manufacture, or composition of matter? Case law has identified three different exceptions, namely abstract ideas, laws of nature, and natural phenomenon. Apps fall into the “abstract idea” exception.

Second, is your idea novel? This is the difficult part. You have no doubt heard the old maxim that there are no original ideas anymore. This is truer than ever now that we live in such an interconnected and digitized world. The novel requirement is where many ‘app’ patent applications may have difficulty. Essentially, in order to pass the novelty test, someone knowledgeable in the area of the app would have to consider it unique. If the app uses third party services then it is less likely to be considered “novel”.

The third requirement for a successful utility patent application is the non-obviousness requirement. The obviousness determination is based on four factual inquiries: (1) the differences between the prior art and challenged claims; (2) the level of ordinary skill in the field of the pertinent art at the time of plaintiff’s invention; (3) what one possessing that level of skill would have deemed to be obvious from the prior art reference; and (4) objective evidence of obviousness or non-obviousness. Be sure to conduct research into what may be considered “prior art”.  Prior art is any evidence that your invention is already known. Prior art does not need to exist physically or be commercially available. It is enough that someone, somewhere, sometime previously has described or shown or made something that contains a use of technology that is very similar to your invention.

Finally, is the invention useful? This is one of the easier requirements. You must only demonstrate that the app has a purpose and but also serves a function.

The second patent that you must file in order to protect your app is a design patent. According to the USPTO, a design patent is “the visual ornamental characteristics embodied in, or applied to, an article of manufacture…may…relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”

Once you successfully file these patent applications- congratulations! You are the new owner of two new “app” patents.