Australia: How to patent an app and protect your IP

Have you developed a mobile application (app)? App development is a fast-paced industry and one that many inventors and app developers alike are keen to enter. When you create something inventive and new, you will need to protect your invention. For this reason, you should consider obtaining a patent for your app to ensure your intellectual property (IP) is well-protected. This article will explain:

• how to seek patent protection for an app;
• the requirements for obtaining a patent for your mobile app;
• the factors to consider in deciding whether it is actually worth it to seek a patent for a mobile app; and
• your alternative protection measures if you choose not to go the patent route.

Standard Patents

To seek patent protection for an app invention using a standard patent, your invention must:

• be novel;
• be inventive in view of the prior art (i.e. any publicly available information); and
• have patentable subject matter.

It is always useful to do some early searches of Google and patent databases to help you determine if your app is novel and whether there is anything similar already on the market.

Patentable subject matter defines what inventions are eligible for patent protection. Not all software inventions will meet these requirements. In general, you may be able to protect some technical aspects of mobile apps, including the:

• server-based processing systems and methods;
• user or mobile interface-based processing systems and methods;
• interaction between the user, mobile interface and device with the server;
• system for processing information partially at the mobile interface end and partially at the server end;
• method and system for generating an output to a mobile device;
• creation of a database on the server or mobile device;
• presentation of information on a tangible means;
• infographics on the mobile device;
• messaging platforms; and
• privacy processes.

It is important to note that patentable subject matter requirements may differ across jurisdictions. Therefore, being able to protect your app in one country does not mean you will enjoy the same protection in another country. A standard patent gives you exclusive rights to make, use and sell the technical aspects you have patented via the standard patent for up to 20 years.

Innovation Patent

The app space is fast moving, which is why you may want to consider an innovation patent for your app. An innovation patent is a great way to achieve enforceable rights in Australia quickly. Further, an innovation patent can be ideal for inventions that you:

• would like to commercialise sooner rather than later; and
• think would have a short market life that might be superseded by newer innovations.

You can only enforce an innovation patent if IP Australia has examined and certified the patent and found it to meet the requirements of the patentability. Some of the threshold requirements are lower for an innovation patent than for a standard patent, because an innovation patent requires an innovative step, rather than an inventive step. However, the patentable subject matter requirement is the same for both standard and innovations patents in Australia. On the other hand, an innovation patent only protects your invention for up to eight years, whereas a standard patent can provide 20 years of protection for your invention.

Deciding Whether to Patent an App

When thinking about whether to patent an app, you should consider:

• what the expected lifespan of the app is;
• whether competitors will be likely to copy your technology easily;
• what the interest, appeal or application of the technology will be;
• what the commercial benefit of protecting your app will be;
• which countries you would like to seek protection for your app in; and
• whether the cost and timeline of a patent will fit in with your business plan for launching the app.

You not only have to make sure that your product meets the requirements to obtain a patent, but you also need to think about whether obtaining a patent will benefit your business. This is an important consideration, because the patent application you file when seeking patent protection must contain a detailed description of the invention. Therefore, your desire or need to have patent protection must balance out the fact your patent application will eventually become a public document.

How Do I Patent a Mobile App?

First of all, you need to know that you cannot patent an abstract idea or software code. Therefore, if your mobile app is only at the conceptual stage, you will not be able to patent it. The patent application must have some proof of concept to prove to the patent office that your invention is more than an idea.

Secondly, the product must be new. That is, it must be something that has not been seen or used in the industry before. It must also be useful. For software, this means that the actual software has an application in the industry and is not just in use to solve a mathematical problem.

Is It Worth It?

The process of patenting can take years and cost thousands of dollars. However, this does not mean that it is not worthwhile. Spending the money on securing patent protection is often commercially effective in the long run. However, with the technology market being so dynamic and with so many apps coming out daily, you should consider whether it is worth patenting your mobile app. Mobile app software can become outdated very quickly, and to protect a process that you will need to replace soon may not be cost-effective.

You should think about:

• your reasons for wanting a patent;
• the commercial benefit of having a patent, and whether the patent would add value to the product or your business;
• the cost and timeline of getting the patent, compared to your business plan for developing and launching the app;
• whether a patent is the most appropriate form of protection, as opposed to a trademark for your app name or logo; and
• the effects of a patent in relation to your business objectives and strategies.

Gaining Protection Without Patenting Your App

If your mobile app is not eligible or suitable for a patent, you should think about other ways to protect your IP. Alternative options include:

• trade marks;
• copyright;
• trade secrets; and
• website terms of use.

Trade Marks

You should consider registering:

• the name of your app;
• your app icon; and
• the name of your brand (if it is different to the name of your app).

For example, the names Angry Birds, Tinder and Uber are all registered trade marks. Their logos are also trade marked.

A trade mark is arguably the most important protection available for mobile apps.

Copyright

Copyright is an automatic right that attaches to the expressed material form of your software code as well as your content, design and layout. It can protect the app in its written form (as a 'literary work') as well the design and graphics.

Copyright protection will exist for the life of the Author plus 50 years.

Trade Secrets

The inner workings of your app, privileged employee information and confidential commercial strategies may be considered trade secrets. To protect this information from competitors, you will need to use non-disclosure agreements when discussing your trade secrets with third parties.

It is also important to have a confidentiality and non-compete clause in your employment agreements, to prevent employees from disclosing trade secrets and becoming direct competitors.

Application Terms and Conditions

Application terms and conditions govern how app users use your app and set out your copyright and intellectual property rights. In the terms and conditions, you can mention how users can use your content and address whether you offer a licence to use the material. For instance, you may permit users to save, copy, print and download your content for personal and educational use only. You are entitled to prohibit commercial exploitation of your website and app content.

Key Takeaways

If you have created an app with mechanisms and functionality that you think are novel and inventive/innovative, you should consider patenting it. Patenting is a complex area of law, and it can be difficult to understand whether your invention is patentable and whether it is worth patenting. It is best to speak to an IP expert who can give you advice about whether you can and should patent your product.