Does a Mobile App Patent Meet USPTO Criteria?

App patents are vital in creating and protecting apps. With smart phones now a very large industry, apps for those phones are now a major market. With smart phones continuing to see growth, demand for apps is likely to increase as well.

However, patents remain important for protecting apps from infringement and securing their profitability.

There are three main types of patents, but only two - utility and design, are important for software products. A software patent will be able to protect the app's various features and internal design, ranging from the user interface to language translation, to its compiling techniques.

The app itself is patentable because it’s a specific process for interacting with the server or data on the phone. However, the actual code for the software is only copyrightable, rather than patentable.

A patent is a distinct legal protection. Patents are issued by the U.S. Patent and Trademark Office (USPTO).

The first step in filing for a patent is by determining if it meets the USPTO's requirements. You should begin by looking up keywords similar to the patent's use and thereby classifying it within the USPTO's classification schedule.

You can use the USPTO's search database, "PatFT," that has entire patents stored since 1976 and images for patents since 1790. For mobile apps, the USPTO will also consider whether the app's processes or results may conflict with previous patents.

It is important to note that getting a patent won't prevent all patent infringement lawsuits.

In the past, the patent was given to the applicant that first invented the item being applied for.

However, now the USPTO states that the first applicant to file will receive the patent's rights. Therefore, it is important to be speedy in filing your patent application. It also may be worth consulting a patent attorney.

Choosing a Patent Application (Provisional vs Non-Provisional)

Since apps can take awhile to create, it is often best to submit a standard provisional application initially. This will allow you to get a filing date.

The provisional application is normally cheaper than the non-provisional one. The provisional submission will need you to include a thorough explanation of the product, as well as pictures and sketches to give a full picture of how the app functions.

After filing a provisional application, you will get a one-year reservation on that patent. This should be sufficient time to determine whether you want to file a full application.

During the next few months after filing you will also be able to see whether the app has potential and if you want to continue to try to secure a patent on it.

The app's performance in that time should be closely monitored by the developer, and if you are ready to bring the product to market then it is time to file a non-provisional application.

The non-provisional application begins the USPTO examination process. If filed within a year of the provisional application, it secures your filing date. The filing date remains essential because it determines who owns the patent if there are two concurrent applications for the same product.

A patent application can be expensive, but there are ways to mitigate the expense. Here are the expected costs to prepare a sufficient application:

  • Provisional Application: $2,500
  • Provisional Application (Full): $5,000
  • USPTO Provisional Micro-Entity Fee: $65
  • USPTO Provisional Large Entity Fee: $260

Usually a $2,500 application will be enough to prepare a sufficient application to secure your filing date.

However, by spending up to $5,000, you may be able to build a strong initial application that later can be easily transitioned into the non-provisional application.

It is worth noting that the provisional application cost can be credited against the non-provisional cost, thereby, reducing costs.

After the provisional application is filed and your filing date secured, only then should you begin officially launching versions of the app through either a beta test, or to the public.

Even though the provisional application is an important step, the non-provisional application is the real formal process for securing your patent.

If you need help with filing your app patent, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5-percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law, and average 14 years of legal experience, including work with, or on behalf of companies like Google, Stripe, and Twilio.