The ever increasing competition and scarcity of new ideas mean that chances are high that your concepts will be stolen or copied. The very thought of someone stealing and profiting your brainchild can be appalling. And if you haven’t patented your idea, no one’s going to stop them from doing so.
When it comes to mobile apps, no idea is crazy. The Pou app , which allows you to take care of your alien pet, digitally, earns around US$356K per month. If you are a millennial, the concept of the Pou app may sound familiar.
Pou app’s gameplay. Image Credit: malavida.com
Yes, it is closely similar to one of the biggest fads of the ’90s – Tamagotchi . And just like you, many others also wondered if the creators of Tamagotchi would be able to sue the developers of Pou for copyright infringement?
Tamagotchi’s crossover with Pac-Man. Image Credit: toybook.com
It turns out that the original concept of Tamagotchi wasn’t patented . Instead, the company patented other aspects of their creation, such as the simulation device for fostering a virtual creature .
The gameplay of the My Tamagotchi Forever app. Image Credit: reddit.com
Even though Bandai Namco (the company that released Tamagotchi) released a mobile app My Tamagotchi Forever later in 2018, it failed to win hearts as Pou was already on the top charts of the kids’ games section in both the app stores.
In this article we’ll explain in detail how to patent an app. But here’s the deal. Not every aspect of your app is “patentable” nor should everything be patented. We’ll explain why that’s so in detail as well. Before all that, let’s take a closer look at what patenting an app means.
It is an exclusive right, awarded by the government to the inventors of a product or process, enabling them to legally sue anyone who makes, uses, copies, or sells their invention, without their consent, for a limited period of years.
In general, products or processes that offer a new technical solution to a problem or represent a novel way of doing something is patentable. As a prerequisite, the technical information about the invention must be publicly revealed, along with the patent application.
According to the laws of the US, patents last for 20 years from the date of filing. And patents follow a first-to-file system, rather than a first-to-invent system.
This means anyone who files the patent application first is deemed to be the inventor, even if someone already invented it earlier but didn’t apply for a patent.
First of all, patenting an app idea grants you the right to sue anyone who clones your app. This will ensure that no one steals your downloads or generates app revenue from your idea. Along with that, a patent will make sure you don’t get beaten in your own game. Here’s how.
Imagine, you come up with a well-polished, disruptive idea. You enthusiastically work to transform your idea into a fully-formed app. You publish your app on the app stores.
But soon, you receive a legal notice, which states that you copied someone else’s creation. Of course, the app concept may have been entirely yours, but someone may have stolen your idea and patented it. And the first one who patents an idea is legally the inventor.
This can leave you mentally disturbed, and even financially crippled, especially if you are an indie developer. This is because, anyone who stole your idea and patented it can sue you for copying their idea (technically theirs, but originally yours). This way, by not patenting your app, you can lose your brainchild and face lawsuits as well.
And if the above scenario doesn’t seem too convincing for you, here are some more points to consider.
In the light of mobile apps, there are two types of patents:
The utility vs design patent comparison of an iPhone. Image Credit: thoughtstopaper.com
They are the most common types of patents, granted to new processes or machines.
Design patents are granted for protecting the unique appearance or design of manufactured objects.
If you’re trying to grasp how to patent an app, the first thing you need to be well accustomed with is searching for patents. This is because, only if no one else has patented an invention similar to yours, you’ll be able to file for a patent.
Also, even if you aren’t planning to patent your app, performing patent search before development is crucial to ensure that you aren’t using anyone else’s invention – which is technically illegal and can result in a lawsuit by the inventor.
The first step towards a patent search is to brainstorm as many keywords as possible. Keywords must reflect the processes, composition, use and purpose of your invention.
For example, if you’re developing a mobile app capable of scanning and printing 3D objects, your list can include patent search keywords such as “3D printing app”, “print 3D objects”, and “3D printer”, to name a few.
USPTO patent search portal.
You can perform a USPTO patent search in the USPTO Patent Full-Text and Image Database (PatFT) , which contains the TIFF images of patents issued from the year 1790 and the full texts of patents issued from the year 1976. You can also perform a patent search at Google Patents .
Google lets you search for patents just like in a search engine.
Unfortunately, it means you can’t proceed with the patent application, nor will you be able to use the idea for developing an app, unless you license the patent from the inventor. However, you can study the patent, find ways you can improve it and then tweak your idea to make it entirely different from the patented one.
Still, the patent examiners generally reject patent applications which are similar to pre-existing patents. But if you are positive that your invention is entirely new, giving the patent a shot can be worthwhile.
Generally, your app’s code can’t be patented. This is because the code will come under the category of law that covers copyright. Similarly, components of your mobile app design such as the icons, titles and logos can be copyrighted or trademarked.
Likewise, your app, as a whole, can be patented if it uses any “processes” or “methods” for producing a definite, useful and tangible result. And your app can’t be patented if it has an abstract idea or has been previously patented, published or used.
In general, the following aspects of your app can be patented.
As stated in terms of the United States Patent and Trademark Office (USPTO), mobile apps must meet the following three requirements to be deemed “patentable”. Also, do note that the USPTO requires an inventor to apply for patent protection before publicly disclosing the invention.
This means that the USPTO will check whether your app has been published or patented in the past. If so, it won’t be eligible for patenting. This makes it critical to perform a patent search before you apply for a patent.
To be precise, you can’t patent your app’s idea. Only its processes or features can be patented. While applying, you need to specify all aspects of your app, starting with its data flow and functionality. Ensure you include all the essential information and documentation which will support that your app is practical and useful.
In the light of Alice Corp. v. CLS Bank International , the Supreme Court of the United States initiated a two-step analysis to determine whether an app is patentable.
The first step is to examine if the patent claim doesn’t contain any abstract idea, such as algorithm, method of computation or any general principles. If it didn’t, your app has passed the two-step analysis and will be potentially “patentable” if it adheres to the other two criteria.
If the app does contain any abstract idea, it will be subjected to the second step of the analysis, which checks whether the patent claim includes an element that can be considered as a novel concept or inventive. If it doesn’t, your patent application will be rejected.
This means that your app must be inventive enough so that none of the experts in the industry finds it too obvious. If your app combines already existing inventions or uses a variation of pre-existing technologies, your patent application will be rejected.
In short, your app can be patented, as long as it is non-obvious, novel and doesn’t copy others’ invention to create modified elements. And most importantly, you need to file for a patent within a year of first disclosing your invention. The clock starts ticking from the first time you introduce your invention to the public.
This part may seem a bit tricky. Your app’s concept can be your brainchild. Or, it can be a result of collaboration with multiple co-inventors. If the app idea was formulated as a result of collaborative efforts, then you must make sure that the inventorship document reflects that. Otherwise, you may have to face undesirable situations such as lawsuits in the future.
Another critical thing to consider is the ownership of your app. If you are an employee of an organisation, your terms of employment may restrict you from patenting any ideas that you formulated during your time with the company.
Instead, the company which you work for may have the entire liberty to patent your app. The company may list itself as the assignee and yourself as an inventor (that too rarely). Although an inventor remains the legal creator of a concept, an assignee has the property right to the patent, meaning that only they can decide how the idea subjected to the patent will be utilised.
If you don’t want to submit your idea to your organisation, make sure you don’t perform the ideation during office hours or using their equipment. You must also make sure that the area of innovation is not directly related to your company’s interest.
Image Credit: unsplash.com
You may be tempted to file a patent on your own, considering the expenses a patent attorney can bring about. But if you are entirely new to the app patenting process, it can open a whole new can of worms once you start with it.
The best thing to do – hire a patent attorney with reasonable years of experience. You don’t necessarily have to opt for an app patent attorney. As the terms of patenting are standard for any product or service, hiring any patent attorney with proven expertise will do the trick.
Documenting an Android app. Image Credit: developer.android.com
One of the most critical steps of how to patent an app is fully documenting and disclosing your app invention. Only with proper documentation can the examiner understand the feasibility of your invention.
You can also create a prototype to explain the data flow, functionality and processes of your app to the patent examiners and your attorney. This can also help you discover how else your app will work and to determine whether any other aspect of your app needs to be patented.
As discussed in the previous section, performing an app patent search is crucial to determine whether your invention has already been patented. As a best practice, you must have a list of other apps that may have functionalities similar to your app.
The patent search must be performed at several stages of the app patent process to ensure that you are eligible for a patent and won’t be sued. This is because several companies are known to patent app inventions beforehand, and won’t publicize, commercialize or market it on purpose.
Once a developer uses the idea without taking the effort to check whether it is patented, the real patent holder (known as patent trolls in this case) sends a cease and desist letter by threatening to file a lawsuit. You will be left choiceless but to pay huge sums of money or may have to offer royalty.
Replying to a cease and desist letter sent by Apple Inc. Image Credit: thenextweb.com
Once you have completed the app invention disclosure procedure, you will have a comprehensive list of keywords that will represent any aspect of your app. This will make it easier for you and the attorney to perform the patent search process effectively.
And in case you find an app that may closely resemble your invention, you don’t have to halt the process entirely. Instead, at the least, you can patent other aspects of your app, such as its design components.
And if you or the attorney finds multiple patents that contradicts your app’s novelty, it might be better if you don’t file for a patent. This will help you save a significant sum, which would have been otherwise lost if the patent examiner rejects your application.
You can file for two types of patent applications – provisional and non-provisional. And to decide which one to pursue, you need to consider two things.
If the answer to the first question is “yes” and to the second is “ASAP”, then going for a non-provisional application will be better for you. For anything other than that, it is best advised to go for a provisional patent application. We’ll explain how each works in detail.
First, let’s take a look at what a provisional patent application represents. The provisional application enables you to secure a filing date for your patent, even without a formal patent declaration or an information disclosure statement.
Most developers opt for this application at first, primarily because it is cheap (as compared to non-provisional application) and doesn’t require a formal patent claim. Still, you will need a detailed description of your app invention, along with flowcharts, drawings and other details that show how the app works, preferably.
Drawings submitted for a design patent. Image Credit: techcrunch.com
A flowchart submitted to the USPTO. Image Credit: boldip.com
With a provisional patent application, you can utilise the term “patent pending” on your app and will grant you 12 months to develop a mobile app MVP . Do note that a provisional patent application will never publish your patent and will expire in 12 months unless you file a non-provisional patent application.
As the “first-to-file” is granted the patent, the provisional application will help in securing your idea without spending much. This one-year “patent pending” status will also allow you to identify whether your app idea is worth pursuing.
As previously mentioned, you can either directly file a non-provisional application or file a provisional first and then the non-provisional within a year’s time.
The non-provisional patent application, also known as regular patent application marks the start of the examination process to determine whether your app invention will receive a patent or not.
And most probably, the patent application examiners won’t accept your application on the very first round. In the best-case scenario, your patent application will be reviewed and published within 18 months and patented within two to four years.
For a non-provisional patent, your application must contain the following.
The specification describes how your app is different from other applications in the entire industry. The specification must be clearly presented, in such a way that anyone in the industry can create your app from scratch, without any additional information from your side.
If you also have a better way of developing your app, you need to specify that as well. If you fail to clarify that, your patent rights will be revoked. The specification of your app must contain the following.
Title – It must be accurate and descriptive.
Background – It must include all prior inventions and pertaining theories and clear explanations of how your app is different from any previous invention.
Summary – It must include an overview of the app invention and must address any of the problems specified in the background section.
Description – The description must be crystal clear and understandable, allowing anyone in the industry to develop your app with the given information.
Claims represent the part of your application of which you are claiming the legal ownership. As previously stated, certain aspects of your app can’t be patented or may have been already patented. Make sure you formulate your claims with proper app patent search and discussion with your attorney.
If you are patenting the visual/graphical interface of your app, you need to include drawings that represent them.
You can submit your patent application in two ways – you can mail it or file online . If you are planning to send via mail, consider the following.
Here’s a list of some of the important documents that you may require when filing a patent.
Provisional patents will cost you anywhere from US$2000 to $5000. The non-provisional will cost you between US$10,000 and US$15,000. Once your patent application is approved, you will have to pay an additional US$1000 as an issue fee.
Here’s a list of some of the common fees you will have to pay, apart from the legal costs associated with patenting an app.
If you are planning to hire a patent attorney for the application process, you will need to incur the following fees as well.
To secure your patent, you’ll need to pay anywhere from US$15,000 to US$30,000. Along with that, you’ll also need to pay maintenance fees associated with the patent every four years, which will cost you,
To know more about the cost of patenting an app, check out the USPTO listing .
As previously mentioned, patent applications get rejected, over and over, and will require multiple resubmissions before it gets approved. This process can last up to 1 to 3 years or even 4 to 5 years. For example, it took four years for Dropbox co-founders to get a patent for their innovation with file sharing.
Although patents work like a charm for protecting tangible inventions, it may not be as effective in the case of mobile apps. For example, let’s take the case of Snapchat vs Instagram. Although Instagram Stories was closely similar to the Snapchat Stories, Snap Inc. couldn’t sue Instagram.
And if you ask why, it’s because Snapchat Stories wasn’t eligible for a patent as it isn’t novel or non-obvious. And even if Snapchat had copyright protection in place, it will only protect the source code of the application. So as long as Instagram (or any other entity) “differently” codes the app, they are free from any form of infringement.
The point we mean to highlight is that app patents aren’t easy to obtain as compared to tangible inventions. Also, since many of the solutions that apps offer are digital imitations of real-world problems and solutions, it may make the least sense to patent them. Here are some more points for you to consider.
App development has advanced so gracefully that anyone and everyone can become a mobile app developer . Also, almost 96% of the apps you see contain open-source elements in them. Even if several open-source components are combined to form new functionality, at the most basic level, they are someone else’ creation.
So, if you’re to patent an app that contains open-source components in it, your application will be undoubtedly rejected. Also, even if you wrote the code for a specific feature, all by yourself, there’s a high chance that it is present in some repositories, even if coded differently.
It can be nearly impossible to find a developer or a startup that sticks to an original concept throughout its journey – untampered by changes in perspectives. For example, in 2010, mobile developers may have never thought that augmented reality apps would be a thing.
Likewise, with rapid changes in technology (which happens quite often), startups tend to pivot or even adopt an entirely new set of plans. As patent applications take years to be processed, by the time a patent is approved, it can be outdated or let alone be useless with respect to the current priorities of an organisation.
As previously mentioned, patents take a significant amount of time to be processed and approved and can be extremely costly in most cases. In the best-case scenario, you will have to spend at least US$30,000 for the patent process, along with other legal costs that may come up.
If you are an independent developer or a small scale startup, such expenses will most likely cripple your financial standing. When considering the app revenue generation potential of the app invention, the costs of patenting may not be justifiable.
Even if you succeed in completing the processes of the patent application, it doesn’t necessarily mean you’ll be eligible for a patent. Researchers state that only 56% of the patent applications are eventually successful.
Patent protection and violation terms are highly specific. This means that a small loophole in your protection can allow individuals to utilise your invention without causing any infringement.
For example, suppose you patent an app process that converts colour images to black and white. Any developer can create an app that uses an entirely different scheme of tints to create a monochrome effect and still cause zero infringement to your patent rights.
More than thousands of apps are published on app stores every day. But how many of them do you use? Probably a hundred, at max. Even if an app looks great in theory, it may not attract the needed commercial attention to make it profitable.
If you straightaway get into patenting an app invention, you’ll be investing a hefty sum, even though you are far away from generating app revenue from it. However, if your app’s concept is entirely new and unheard of, and can justify the costs of patenting, then you must undoubtedly proceed with the patent application.
Patents aren’t the end to protecting your intellectual property. There are several other (most likely less expensive) ways you can do it.
A copyright protects your application’s source code and also its user interface. It is significantly cheaper than a patent but will protect you only if someone entirely copies your app. This means if someone clones your app with an entirely different code, you’ll most probably not be able to file a copyright claim.
A trademark protects the visual segments of your application, such as its logo and design. It is inexpensive as compared to patents.
A non-disclosure agreement (NDA) restricts the people who worked on your app from disclosing any of its information with other entities. In case if someone violates the NDA, you have the right to sue them for the damages caused.
A non-compete agreement restricts employees from working for competitors for a specific period of time. This will ensure that none of your “trade secrets” are used by the competitors.
Along with the means listed above, being cautious of the people you work with can be an excellent way to protect your app. If you are outsourcing app development requirements , make sure you partner with only trusted organisations.
Ensure that you document even the smallest details regarding your app development process. This will be beneficial in case you have to file a lawsuit against someone in your team. Also, always monitor the level of access you provide to each team member.
The answer to the question “how to patent an app” may seem simple, but it will take years for your app to be patented.
Now the big question is whether your app really needs a patent?
If you are introducing a disruptive concept, never heard before, then a patent can be one of the best investments you make. If otherwise, patents can be a time-consuming and expensive process, that may not complement your revenue model.
And do note that applying for a patent never guarantees that you secure the patent. Even if you are 100% confident with the app invention, the examiners may come up with several valid reasons that put its novelty in jeopardy.
Even though patenting an app is an intricate process, it’s a great way to protect your intellectual property and ensure that no one illegally benefits from your invention. With numerous clone apps ruling the app market, a patent is a solid form of protection that clearly defines what is legally yours.
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