February 27, 2018
Originally posted 2018-11-19 11:17:40
By Eliana Rocchi | amdlawgroup.com
The billion dollars app boom is far from being over! A recent study carried out by GIGAOM for the European Commission (https://ec.europa.eu/digital-agenda/en/news/sizing-eu-app-economy) shows how apps are going to substantially contribute to the future global economy and how app developers are going to take the global lead. It is important, for app developers, to know how to obtain protection for their ideas at first, and in the end for their developed apps.
Let’s be clear: ideas itself cannot be shielded by the traditional intellectual property means of protection (copyrights, patents and so on) but they still need to be protected from being stolen. For example your app-idea might be exposed when disclosed to a developer. The problem can be addressed by sealing a confidentiality agreement or Non-Disclosure Agreement (NDA) with anybody you plan to discuss your app-idea with. This will enable you to take legal action if the app is disclosed to third parties or publicly.
Once the app has been created, there are three other legal means of protection which you can take advantage of: copyright, patent and trademark protection. Computer software is indeed classified as literary work and thus protected under the scope of the Copyright Act, but it is also susceptible of being patented, if it satisfies certain requirements. Specifically, you should be able to get copyright protection for the software’s code and patent protection for the processes that make the app work (the algorithms, the systems and methods, the program logic). Trademark protection, instead, will cover your app’s name.
Copyright, as we said, does not protect ideas but it does protect the way an idea is expressed. In other words, it will not protect your idea of an app, but it will protect the code of the app once developed, provided that it is original.
The first thing you have to do in order to obtain copyright protection is to put your app-idea into fixed form. You may, for example, write down the code and document the way the app looks and its contents, or you could simply save it as a file on a digital support. By doing so you automatically acquire legal recognition of your authorship and become the owner of the copyrights in the app you created. As copyright owner you will be shielded by the Copyright Act from any unauthorized use, copy, modification, distribution, or download of your app.
In order to let everybody know of your ownership you should add a © symbol to each page of your documentation or include it to the digital version, stating that you are the author and specifying the date of creation. You should also consider registering your app with the United States Copyright Office as registration will make your authorship more easily discernible and it will allow you to take legal action against the infringers of you copyright, making you eligible for statutory damages and attorney’s fees.
Copyright protection usually lasts for the entire life of the author plus 70 years.
A second way to protect your app is to patent it. In order to be able of effectively pursuing a patent application the app you created must be original (it shouldn’t have been published before by you or anyone else) and it should not use any previously patented “methods or processes for producing a useful, concrete, and tangible result”.
So it is important to conduct a patent search to verify the originality of your app and, if it is original, to quickly proceed to filing a patent application, as the United States Patent and Trademark Office (USPTO) now employs a “first-to-file” standard to grant patent protection to app developers (as well as inventors in general).
Unlike copyright protection, though, patent protection is not automatic. It requires an application with the USPTO and it entails a cost in fees and legal support. For that reason it is important to carefully consider if a patent protection is worth pursuing. A possible strategy to minimize the initial investment is to file a provisional utility patent application with the USPTO, which grants one year of protection starting from the filing date, under the status of “pending patent”, and use that time to evaluate the reaction of the market. If the market reacts positively and there is a real chance that the app will be a success it might be worth it to pursue the patent application when the provisional application comes to its deadline.
For a patent application you will need to provide the USPTO with a thorough description and documentation of the app and its workings.
The last useful “tool” that the law offers to app creators to protect the result of their work is the possibility of filing a trademark application with the USPTO in order to obtain protection against unauthorized uses of the name, the logo or the design that identifies the app. Trademark registration should be sought concomitantly to copyright / patent protection, as it protects a different asset: the name your app goes with, which identifies it on the market.
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