Because so many people have a smartphone these days, mobile “apps” (applications that run on smartphones) have become big business. And, as the popularity of mobile content overtakes Web content—as it is expected to do in 2014, according to a report from Business Insider—mobile apps are likely to become even bigger.
Not surprisingly, where there’s money to be made, there’s bound to be talk of patents. Can a mobile app be patented? The short answer is “yes” because it’s a component of the methods of interaction; i.e. the process running on a mobile phone that connects to a remote server containing data that either stores the data or processes it to be used on the mobile phone. In other words, it’s what makes your phone function in a certain way. The code that runs the software, however, cannot be patented, but it can be copyrighted. Should you patent your mobile app? Before you do, here are some things to consider.
Does It Meet USPTO Criteria?
First and foremost, it is important to understand what constitutes a patent. The U.S. Patent & Trademark Office (USPTO) has specific criteria it uses to determine eligibility for a patent. For instance, the USPTO looks closely at whether the invention (your mobile app) has ever been patented or published before. If it has, then the option to apply for a patent might end there.
The USPTO suggests starting your patent search by brainstorming keywords related to the purpose, use and composition of the invention and then looking them up in the Index to the U.S. Patent Classification to find potential class/subclasses, and then determining the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification. Patents may be searched in the USPTO Patent Full-Text and Image Database (PatFT), which includes the full text for patents issued from 1976 to the present and TIFF images for all patents from 1790 to the present.
But there’s more. The USPTO also looks at whether your mobile app uses any “methods or processes for producing a useful, concrete, and tangible result” previously patented, published or used. Again, if it does, there’s no patent in your future—at least for that particular app.
Keep in mind however, that obtaining a patent does not necessarily prevent another company from bringing a lawsuit for patent infringement.
All of which highlights the importance of conducting a patent search. In addition, until recently, the USPTO used the “first-to-invent” standard to decide who among two or more applicants with the same invention should receive the patent. Now, it uses the “first-to-file” standard, meaning that the inventor who files first gets the patent. So, if you have an invention worthy of patenting, don’t procrastinate on your patent search or filing.
Choosing a Patent Application
Because it can take time to develop an invention, most mobile app developers choose to file a provisional patent application first, which is the standard utility patent application, to secure a filing date. It’s generally less expensive than a nonprovisional utility patent application. A provisional application requires a detailed description of the invention, and may be accompanied by drawings, flow charts, and details illustrating how the app works.
The one-year patent-pending status afforded by having filed a provisional patent application allows the app developer time to see if the product is going to be a success. If it is, then the developer can go ahead and file a nonprovisional patent application, which begins the examination process at the USPTO. Filing a nonprovisional patent application within one year of the provisional filing date ensures that the filing date of the provisional patent remains as the official filing date of the patent application. This is important because the provisional filing date will be used to determine who was “first to file.”
Open-Source Licensing and Patents
Many mobile app developers opt for distributing their apps through open-source licenses, whether or not they’ve received a patent. Open source licensing refers to a process through which developers make a particular source code or design, for example, available for use by others under defined terms and conditions. The only difference is that without a patent the developer has no control over what apps are distributed via open-source licensing. In theory, another developer could modify and resell your app without giving you any credit…or money.
In the end, it’s a business decision like any other. For an individual or small startup, the costs associated with obtaining a patent might be prohibitive and outweigh any long-term financial gain. And, with all of the mobile apps available today, it may difficult to come up with one that hasn’t already been developed.
Then again, maybe you just invented the next blockbuster.
LegalZoom can help you apply for a patent. You can file a provisional application for patent on your own or have your application reviewed by a USPTO-registered patent professional. You can also have us conduct a comprehensive patent search or help you file your corresponding nonprovisional utility patent application. If you just have patent-related questions, you can speak to an attorney through the business legal plan.