1. What Is an App Patent?
2. Why Is It Important To Patent an App?
3. What Kind of App Benefits From a Patent?
4. What Is the Process For Submitting an Application To Patent an App?
5. Reasons To Consider Not Patenting an App
6. Reasons to Consider Patenting an App
7. Steps to File a Patent Application

What Is an App Patent?

A patent is protection given by the government to prevent others from using something you invented. You can patent an app through the same process that you patent a piece of software. The key to getting an app patented is to focus on the technical processes of the app such as:

  • Processes that happen on the mobile device itself
  • Processes that happen between the mobile device and the server
  • Processes that happen within the server
  • Processes that happen between mobile devices, helped by the app

If your app does something in a way it has never been done before, you may have the basis for a patent claim.

Why Is It Important To Patent an App?

While protecting your app may sound good, there are some questions to consider:

  • Would a patent add value to your app?
  • Given the amount of time and money it takes to patent an app, does it make sense for you?
  • Would a patent be part of your larger plan to protect the intellectual property included in the app? (This may include copyrights, trademarks, and/or other patents.)
  • Would a patent support your larger business plans?

You should also think about the ways you might benefit from a patent. In addition to protecting your rights as an inventor, an app patent allows you to:

  • Use the patent to raise money
  • Sell your patented material
  • License the patented material to a third party

It is important to understand the difference between patent and copyright protection. Copyright protection gives you the right to decide who can use the copyrighted material and how they can use it. When it comes to an app, you can copyright the code, but you cannot patent it. A patent, however, applies not just to the code, but to what the code makes the app do.

That means a copyright only protects you if someone else uses the same code you created. A patent, however, protects what the code does, even if someone uses different code to do it.

What Kind of App Benefits From a Patent?

You will reap the biggest commercial benefit if your app:

  • Has an expected lifespan of significantly more than three years
  • Has a broad appeal or can be applied generally
  • Presents ample opportunity for competitors to use the technology to:
    • Compete directly
    • Develop new technology that uses what you created

What Is the Process For Submitting an Application To Patent an App?

Figure Out Whether Your App Can Be Patented

The patent application process is long and expensive. You might spend a lot of time and money applying for a patent, only to discover that someone else already has one. First, make sure the thing you want to patent is eligible.

Figure out if someone has already patented something like your idea or invention. You can search existing patents through the United States Patent and Trademark Office (USTPO.) Think of keywords that have to do with what your invention does and how you created it, and use these to search for existing patents. There is also a special Google patent search tool.

Then, do a more general internet search using your keywords. It is not enough to be the first person to patent your invention. You have to be able to prove that you are the first person to come up with it.

To be eligible for a patent, your invention must pass something known as the "machine or transformation test." This refers to a Supreme Court case, Bilski v. Kappos, where the court established this new standard. The "machine" part of the test means that the invention has to interact with a machine in an essential way. The "transformation" part of the test means the invention must transform something into another state or thing.

If your invention passes either part of the test, it is probably (but not definitely) eligible for a patent. If not, it may still be eligible, but it is less likely.

Decide Which Type of Patent To Apply For

There are three types of patents recognized by the USTPO:

  • Utility patent: This is the most common type of patent. It refers to the particular function of the invention.
  • Design patent: This type of patent refers to non-functional aspects of the invention, like its shape or texture.
  • Plant patent: This is a very specific patent type that refers to plants that reproduce asexually. It would be unusual for this type of patent to be used for an app.

Decide Which Application To Submit

Next, decide between the two types of patent applications.

  • Non-provisional patent application: This type of patent can only be issued once your app is on the market. It is also very expensive.
  • Provisional patent application (also referred to as a standard utility patent application): A provisional patent application is valid for one year. This gives you time to develop the app. If after that year you still want to file for a non-provisional patent, you can do so. (The term "patent pending" means that a provisional patent is in place.)

There are two main benefits to choosing a provisional patent application for an app:

  • It is much less expensive than a non-provisional application.
  • If you do decide to apply for a non-provisional patent later, the date that applies will be the date of the provisional patent. That earlier date may be important if someone else applies for a competing patent.

What Do I Need To Submit a Provisional Patent Application?

Because you submit a provisional application before the app is complete, you need to send certain kinds of documentation with the application to describe how the app works. These include:

  • A detailed description of the app's architecture
  • A drawing or flow chart illustrating the overall function(s) of your invention
  • Flow charts and other supporting information showing each step of the app's processes

Keep in mind that patent applications are public information. Be careful not to include anything you don't want someone else to see.

How Long Does It Take?

A provisional patent application gives you one year before you need to have your app completed and available to the market. Once that's done, you can submit a non-provisional patent application.

After your non-provisional application is filed, there may be a waiting period of several months before the USTPO begins its investigation into whether your invention can be patented. This can last from one to three years or more. You may be asked to give more information or respond to questions about your invention. You may get several rejections during the investigation process.

It is sometimes possible to speed the process along, but that will make it more expensive.

How Much Does It Cost?

For most inventors, a provisional patent application costs as little as $65.

A non-provisional patent application is much more expensive. It is a good idea to hire a patent lawyer to help you through the process. Each step of the process costs money, including application preparation, filing, and examination. The more requests and rejections you get, the more it will cost.

Assuming your application is successful, you will pay an issue fee of about $1,000. You also have to pay maintenance fees four, eight, and 12 years after the government issues the patent. These fees range from $800 to $3,700.

In all, you should expect to pay between $15,000 and $30,000 for a patent, not counting maintenance fees.

Reasons To Consider Not Patenting an App

When deciding whether to try for an app patent, consider the cost and time required. If you don't plan to support your app beyond the two to three years it takes to apply for a patent, it probably isn't worth it. Similarly, if the cost of a patent would cut into your profits, you may choose not to pursue one.

In addition to the time and money required by the patent application process, think about what's involved in a lawsuit. Are you are not ready to spend a lot of time and money to sue someone for patent infringement, a patent may not be worth it for you.

Finally, think about the market your app is entering. In 2010, there were about 225,000 apps available for Apple devices. However, the top 100 apps got 55% of all of the app revenue. Those numbers have improved a bit for everyone who isn't in the top 100, but not by much.

The point is that your biggest challenge will be getting users' attention, not fighting competitors. So you may decide that your time and money is better spent on marketing than on a patent.

Reasons to Consider Patenting an App

Ask yourself these three questions when deciding if you should apply for an app patent:

  • Will the technology and function of your app live longer than the time it takes to get a patent?
  • Will your app have wide enough appeal to generate enough profit to make a patent cost-effective?
  • Will your app give competitors a chance to use what you created or build on it for their own patents?

If you answer yes to one or more of these questions, you should consider applying for an app patent.

Another reason you might decide to patent your app is if you plan to distribute it through open source licensing. This means you allow other developers to use and adapt your invention according to certain rules. However, it also means another developer could change and then profit from your work without giving you a share of the credit or money. If you have a patent, you're protected.

Steps to File a Patent Application

Once you decide you are ready to file a patent application, spend some time looking at information and sample forms to help you get an idea of what is required:

If you need help with patenting an app, you can post your question or concern 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.