Can You Patent an App: Everything You Need to Know
Patenting a mobile phone application is an important part of protecting your intellectual property and allowing you to seek damage for infringement.11 min read
Patenting a mobile phone application is an important part of protecting your intellectual property and allows you to seek damage for infringement. 8 min read
Why Should You Patent a Mobile App?
When asking "can you patent an app," remember that patenting a mobile phone application is an important part of protecting your intellectual property and allows you to seek damage for infringement.
Nearly everyone has a smartphone with mobile applications. Mobile apps are one of the fasting growing segments of the software sector. They have become a major part of the strategy of most businesses to stay connected with customers and maintain a good user experience. This makes many people wonder if they can patent a mobile app. In most circumstances, the short answer is yes, but some limitations do exist around legal protections for mobile apps.
An app can be patented because it is part of the methods of interaction. This means it plays a part in how your smartphone functions. However, you cannot patent the computer code that runs your software. This distinction is confusing to many people.
Bringing your app to market is extremely competitive. The biggest app marketplaces today — the Apple iTunes App Store and Google Play — now offer more than 600,000 apps apiece. The iTunes App Store had about 700,000 apps and Google Play had about 675,000 as of 2012. Needless to say, getting your app noticed in such a crowded marketplace is difficult, if not impossible.
The top three patents issuers are the United States, WIPO, and Europe.
The best way to patent your app is to understand the United States Patent and Trademark Office (USPTO) rules. Criteria laid out by the USPTO will determine if your app is eligible for a patent. For example, if someone has already invented the same app, you will not qualify for a patent. You should do a patent search to make sure your mobile app idea is original.
The USPTO will also look at your app to determine if its processes produce a useful result. If your app's function is similar to an existing app, your patent will be rejected. Also understand that patents are awarded to the first person to file, not the first person to invent.
Choosing the right patent is also important. Most people trying to patent an app choose a provisional patent application (PPA). A PPA is an affordable utility patent that establishes your filing date. Your PPA should include:
- Drawings of your app
- A description of your app
- An explanation of how your app works
An approved PPA gives you patent-pending status for one year. This allows you to gauge your app's success. During this year, you can apply for a full patent. This is called a non-provisional patent application. With it, you still keep the PPA's filing date.
Some app developers choose open source licenses. With open source licensing, people can use your app if they follow certain conditions. However, this provides you with very few protections. A patent is usually a better idea.
Before you start the process of applying for a patent for your app, it's important to have a firm understanding of what constitutes a patent. Smartphone apps can be patented if they meet these three requirements from the USPTO:
- The app is novel or new
- The app is patent eligible, meaning it isn't an abstract idea
- The patent is non-obvious. This means creating your app wouldn't have been obvious to experts in its field. In order to qualify as non-obvious, an app must be inventive enough that someone with skills in the industry wouldn't find it to be obvious. An application could be rejected based on this qualification if the app combines inventions that already exist or is a variation of a pre-existing idea. Rearranging or combining technologies or processes would be obvious, so an app that uses these methods wouldn't be eligible for patent protection.
In order to qualify as novel or new, the USPTO will look at your app to determine whether it has been published or patented in the past. If it has been, the option to apply for patent protection may go away.
The main hurdle to overcome is whether your app is an abstract idea. The Supreme Court case Alice Corp. v. CLS Banks established a two-step test for abstraction:
- Does your patent claim an abstract idea? This can include something like an algorithm or a general principle.
- Does your patent contain an element that could be considered an inventive or novel concept?
One additional question to ask is whether the invention is non-obvious.
If the answer to all of these questions is no, your app can be patented as long as it is also novel and non-obvious. Novel simply means your app is completely new. It does not copy other apps' elements.
You will also need to file for your patent within a year of first disclosing it. The first time you reveal your app to the public, this one-year period begins.
There are also several aspects of your app that you can patent. These include:
- Server processing
- Mobile interface processing
- Interaction with the server
- Combination of mobile and server processing
- Database creation
- Outputting to a smartphone
- Presenting information on a smartphone
- Reporting feedback
- Third-party server involvement
- Interaction between devices
- Third-party mobile transaction
- Security and authentication tasks
- Data privacy
- User identification
- Data pushing
- Messaging services
Can You Patent Medical Apps?
Medical apps are more complicated. You cannot patent ideas related to natural functions. For instance, if your medical app performs a function that a human would normally do, then it probably is not available for a patent. On the other hand, if your app does something innovative, such as turning an organ scan into a three-dimensional model, a patent is possible.
Think about what your medical app does. If it's something a human medical professional could not perform, you should be able to secure a patent.
Most apps are built on at least some form of existing technology. This makes applying for a patent difficult. Before applying for a patent, do a prior art search. This is a search of existing patents that might be similar to your own. You should compare the results of your search to your app. Look for the parts of your app that are distinct. These distinct items are the parts of your app that are available to patent.
How to Conduct a Thorough Search
When searching for existing patents to ensure that your mobile app is novel enough to qualify for protection, start by coming up with a list of keywords that could relate to your app's purpose, composition, and use. Search each keyword in the U.S. Patent Classification to look at any possible classes and subclasses to determine how relevant each is to your app. You can also review the Manual of Classification to find the classification schedule in your search.
Next, use the Patent Full-Text and Image Database on the USPTO's website. This database includes all text included in patents that have been issued from 1976 until today, as well as the images included in patents that have been issued from 1790 until today.
The USPTO will also review whether any aspect of the app uses processes or methods for producing a tangible, concrete, and useful result and have been previously used, published, or patented. Make sure your search process involves looking at existing methods and processes, or you could end up wasting a lot of time and money trying to obtain a patent for something that is already protected.
You must also review all existing patent applications and granted patents to make sure that similar ideas are not in the process of being approved by the USPTO.
How Much Does a Patent Cost?
After inventing your app, you might want to know how much it costs to secure a patent. Patent costs can differ depending on the type of patent for which you apply.
Provisional patents can cost between $2,000 and $5,000. The cheaper application secures your filing date. The more expensive application provides more robust protections. After you've filed your provisional patent, you can release your app. Provisional patents last a year, and you can use this period to test your app's success.
You can also file for a non-provisional patent. These can cost between $10,000 and $15,000. After you've filed your patent, it will be examined by the USPTO. This examination can take between one and three years. Your examiner will fully review your patent and search existing patents to see if your app is eligible. It's normal to have to respond to several rejections before your patent gets granted.
During the examination, you might end up paying as much as $15,000 in fees. After approval, you will pay the USPTO a $1,000 issue fee. Several of the most common fees and costs that are separate from any legal fees include:
- Filing fee (between $70 and $280)
- Search fee (between $150 and $600)
- Examination fee, required to consider your application (between $180 and $720)
You will also need to pay maintenance fees every four years:
- Year 4: $800-$1,600
- Year 8: $900-$3,600
- Year 12: $1,850-$7,400
All told, you can pay between $15,000 and $30,000 to secure your patent for a mobile app. This does not include the previously mentioned maintenance fees, which would be required over the 12 years after you received the patent.
If you choose to hire an attorney to handle the patent application process, the costs can include:
- Preparing the provisional patent application ($2,500-$5,000)
- Preparing the non-provisional patent application ($10,000-$15,000)
- Re-applying if the original application has been rejected ($5,000-$15,000)
Should You Apply for a Patent?
There is some argument as to whether patenting an app is worth the effort. Mark Cuban, for example, does not believe software patents are necessary because they don't contribute to your app's success. Also, your patent only protects how your app interacts with a server, not the underlying code. Software code can only be copyrighted, not patented.
If you are thinking about applying for a patent, consider:
- Your Goal: Why are you filing for a patent? Do you want to protect your idea from theft? Are you hoping to sell your patent for a profit? These are the types of questions you need to answer to decide if filing a patent is right for you.
- Your App's Impact: Smartphone apps have very short lifespans. Most apps' viability is three years. This can be much shorter if your app is a specialty app that won't be used regularly. Consider whether your app will have a major impact on its users. If it has the potential to last more than three years, you might need a patent.
- Value: Not every app is commercially valuable. This is especially true if it's in a niche category. Apps are extremely expensive to patent. If your app will not be extremely profitable, you usually don't need a patent.
- Competition: There are hundreds of thousands of apps available. Only about the top 100 will be noticed and gain any sort of market share. How likely is it that your app will be in this top 100? If your app isn't strong enough to compete, you don't need a patent.
In addition to these factors, consider how your patent might interact with other protections. If you already have a copyright and a trademark, a patent might be unnecessary. Also, think about the amount of time it will take to patent your app and bring it to market. The time it takes to patent an app can potentially delay your long-term business plans.
It's important to note that obtaining a patent won't necessarily prevent other companies from taking legal action against you for infringing on their patent. The importance of an extensive and thorough patent search is evident in this fact.
How the USPTO Handles Similar Applications
If two or more individuals apply for patents on similar apps or processes, the USPTO used to follow a “first to invent” standard in its decision process. The process has changed and the USPTO now follows a “first to file” standard, which grants the patent protection to the inventor who files their application first. If you wish to file for patent protection on your app, don't wait because you could lose the opportunity to do so or even market the app without infringing on someone else's patent.
Ways to Protect Your App
Patents are not the end all, be all when it comes to securing your intellectual property. In fact, there are many ways to protect your app. Alternative protections include:
- Copyright: A copyright allows you to protect your app's code and your user interface. It is cheaper than a patent. However, it only protects you if someone makes an identical copy of your app.
- Non-Disclosure Agreement: Require everyone who works on your app to sign a non-disclosure agreement (NDA). An NDA prevents people who worked on your app from sharing information with other parties. It also gives you the option to sue if they violate the NDA.
- Non-Compete Agreement: A non-compete agreement is similar to an NDA. When an employee signs a non-compete agreement, it prevents them from working for a direct competitor for a certain time after leaving your company.
- Trademark: A trademark protects the imagery associated with your app. This can include logos, designs, and even your company name. Very inexpensive, a trademark can be one of the best ways to protect your app.
- Be Careful Who You Work With: The best way to protect your app is to work with people who have good reputations. Choose developers with successful track records. Look for people who have no history of patent infringement. Trusting your team will go a long way toward protecting your app.
- Records: Document your app-making process thoroughly. Record even the smallest of details. Complete documentation will help you if you ever need to file an infringement lawsuit.
- Distribution: Be careful about how you distribute your app. Never let the development company upload your app on their own. Always have your own account, and upload the app yourself.
Since many mobile apps take time to develop, it may make sense to start by filing an application for a provisional patent. By submitting this application, the developer can secure a filing date for the app, which can be beneficial in the “first to file” process of approval through the USPTO. A provisional patent application is the standard application for a utility patent.
Filing a provisional patent application generally costs less than filing an application for a non-provisional patent. When filing the application, it must include a detailed description of the mobile app, along with any drawings, illustrations on how it works, and flowcharts. Upon filing the provisional application, the applicant will have one year in which the app will be in patent pending status. This time provides the developer with the opportunity to determine whether the app will be successful.
After going through the provisional patent process, if the developer determines that the app is successful, they can go through the process of filing an application for a non-provisional patent. This step starts the process of examination with the USPTO.
The process of filing a non-provisional patent application must be started within a year of the filing date of the provisional patent application. If it is not done within the one-year period, the filing date of the provisional patent may not be used as the official filing date of the non-provisional patent. Since the USPTO follows the “first to file” rule for similar apps or concepts, this could create a problem with obtaining patent protection.
Can You Patent an App FAQ?
Is it Possible to Patent My App?
Yes. While you can't patent your entire app, you can patent how it functions. The app's code is not available for patent. Instead, it must be copyrighted.
Should I Patent My App?
It depends. Getting a patent is a long, expensive process. If your app is not likely to make enough money, or if it will have a short lifespan, a patent is not needed. However, if your app has a high commercial value, you should consider a patent.
How Much Will a Patent Cost?
Cost varies from patent to patent. A provisional patent can be as much as $5,000. Full patents can cost up to $15,000. In total, expect to pay $30,000 before your app gets approved.
Are There Other Forms of Protection?
Yes. Instead of a patent, you can use copyrights, trademarks, and non-disclosure agreements. These are much cheaper and might be just as effective.
Do I Need an Attorney?
Yes. Securing a patent is difficult. It often takes several years. You might also need to overcome multiple rejections. An experienced attorney can help guide you through this process more easily.
If you need help with patenting an app, 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, Menlo Ventures, and Airbnb.