The rules for filing a patent can be tricky when it comes to software. In my previous article, How Intellectual Property Rights Can Hinder Rather Than Help Your Business, I discussed some reasons why patents might not be the best way to protect your mobile app.
Today, I want to discuss the other side of the coin. When is a patent a good idea?
First and foremost, your software app must fulfill the requirements to qualify for a patent. The rules governing the issuance of a patent are stringent and demanding. Many software apps don’t check all those boxes.
Requirements to Patent a Mobile App
Here are the four main criteria your mobile app needs to satisfy before filing a patent application:
1. It has to be an “invention.”
Patents are designed to protect inventions. According to the World Intellectual Property Organization (WIPO), “Firstly, a patent is granted for an invention, which may be described, in general, as a solution to a technical problem. So far, there is no international definition of invention, and indeed, each national law would give you a different answer to the question as to which subject matter falls under the term patentable invention.”
Since software is not a physical object, the invention here is categorized as a process. Just as with an invention, that process should solve a problem. Unfortunately, what constitutes a valid, patentable process is still under debate in U.S. courts today, as seen in this IPWatchdog article on a recent Federal Circuit Court ruling.
The greatest challenge in determining whether your software can be patented is finding the patentable processes within it. Hiring an experienced software patent attorney is an important step in discovering whether your software qualifies for a patent and how to present it on your application.
2. It has to be new and non-obvious.
Just because your software solves a problem doesn’t mean your patent application is assured. Your software solution needs to be new and non-obvious. In other words, it needs to solve the existing problem in a way that other solutions do not.
Legal website Finnegan explains why software patents are still obtainable and enforceable in the wake of the groundbreaking 2014 ruling, Alice Corp v CLS Bank Int’l. It also explains how “new” means more than simply automating an existing process. Computers are such a huge part of our world today that the courts are no longer looking at general automation of processes as new. Instead, to qualify as new and non-obvious, software must also be innovative in the way it solves problems – either with new, non-obvious technologies or by changing the process itself in unique new ways.
3. It has to be tied to a machine or have industrial use.
To qualify for a patent, your software will need to do more than just solve a problem in digital space. It needs to be anchored to some sort of physical component, too. That could be a new product, or it could be software installed on a chip that controls an electronic device.
While this does eliminate some apps from contention, in practical terms most software can be connected back to a physical “real world” device at some point. IP Watchdog explains the machine requirement like this: “The requirement that the process be tied to a particular machine is not really much of a limitation if you really have a computerized process, but it is there to make sure that whatever protection you do ultimately obtain will not extend to so-called “pure business methods.” In other words, you cannot patent a process done in your head, but if that process leverages a tangible machine, such as a computer, now you have something that is patent eligible and which will receive a patent if it is described properly and is unique.”
4. It needs to provide a real solution and not be an abstract idea or concept.
You can’t patent a generic idea or concept, there needs to be a real output. This is somewhat of a restatement of the first step, where a patent requires an invention. According to the United States Patent and Trademark Office (USPTO): “A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine.”
For instance, a software subroutine that would enable a generic form of voice-activated navigation could not be patented. But you could patent the software (assuming it solves voice-recognition in a new and non-obvious way) in a form where it’s physically installed on a chip to enable voice-activated navigation in a drone.
Timing Your Patent Application
Let’s assume your mobile app checks all those patent requirement boxes. When should you apply?
Not right away.
Why Intellectual Property Rights for Your Mobile App are the LAST Things You Should Be Thinking About discusses what you should be doing FIRST.
Before you embark on the significant time, money, and effort chore of applying for a patent, you need to make sure you’re patenting the right thing. Once you start filing for a patent, you’re locking in what that software is going to do – and what it’s going to be. And that can be like putting the cart before the horse, especially when you haven’t received any real and credible feedback from users yet.
If you determine that you need a patent – and your software app idea qualifies for it – your best bet is to start with some trademarks and confidentiality agreements that timestamp your idea and claim to that intellectual property. Then, once you have a few rounds of feedback… once you have a much better idea of what your software should ultimately be… once you’ve validated that customers will pay for your solution… that’s when you should start the patent application process.
And, as always when legal matters are concerned, make sure you consult with an attorney specializing in intellectual property laws for software. Your perception of what your invention is might not match how the courts will view it.
