Smart Phone App Patents

Guide to Patents

Patents provide the strongest possible protection for smart phone apps.  Patents protect against reverse engineering and can be used to protect general concepts that might appear in multiple versions of an app.

Some web developers are not sure whether software is capable of patent protection.  There is no question that it is, when an application is carefully drafted by a professional with experience in software patents.

In the past, it was difficult to protect software related inventions using patents.  A history of case law relating to the patenting of software related inventions can be found at: http://patentsusa.blogspot.com/ (a new window will open).  At present, after the Bilski Supreme Court decision, there is no question that software, including web apps, is patentable if there is sufficient novelty and if the application is drafted properly.

There are many who don’t believe that software should be patentable.  However, they often change their opinions after their software has been stolen by others.  In any event, it is irrelevant what one thinks about whether software should be patentable.  It is patentable.  If you have any doubts, just perform a patent search at www.uspto.gov for any famous software company of your choice and see how many patents they have.

Disadvantages of patents include complicated examination proceedings, long pendencies, and high costs.   If your product life cycle is expected to be less than a couple of years, then maybe a patent is not the right tool for you.

The previous Commissioner for Patents equated quality with a high rejection rate, and allowance rates were at record lows.  Sometimes, even if an examiner wanted to allow a patent application, he or she was told to reject it. Luckily, allowance rates are back up with the current Commissioner.  Also, due to the poor economy, and poor allowance rate in the recent past, filings have gone down and so pendency has gone down.  Still, you should plan on it taking about four years, at least, from filing to grant of a utility patent.

But there are strong reasons to use patents instead of or in addition to other tools.  During the evolution of patent law, case law eroded the value of copyright protection. In addition to the fact that copyright protection does not prevent against independent invention, but requires copying, menu structures have been held to be not capable of copyright protection in a case between Lotus and Borland. Still, copyright protection can exist in addition to patent protection so there is no reason not to file copyright registration applications in addition to patent applications.

It is clear that software patents as well as smart phone app patents are here to stay. The law and U.S. Patent and Trademark Office practice regarding business methods, where no computer is required, is not completely resolved. There is no doubt that software can be protected by patent law. Patents provide strong protection in that they prevent against independent invention, and against reverse engineering. Copyright protection protects against copying, but "clean room" techniques can be used to circumvent copyright protection. Such a technique involves one team that decompiles software and prepares flowcharts or a description of how the software functions. A separate team, which is not provided access to the code, prepares independent code based on the flowcharts or description. Copyright protection also does not protect against independent creation. On the other hand, a patent is not subject to a defense of independent development. Anyone making, using, or selling a patented computer program is an infringer, whether or not they had knowledge of the patented computer program. When asked to compare the difference between copyright and patent protection for his PC spreadsheet program, the inventor of Visi Calc was quoted to state "With a patent the only difference would have been several hundred million dollars."

Software patent applications and smart phone app applicationns are typically more complex than patent applications covering mechanical inventions, and are therefore more expensive to prepare. If desired, the actual computer code can be included in the application, though it is not usually included. The more information that is included, the more likely the application will be valid, but more trade secrets will be lost. If the source code will be generally available to the public, and not kept as a trade secret, it may be advisable to include code in the patent application. Otherwise, source code is typically not disclosed in a patent application.  Flowcharts are usually provided instead of code.

Whether you decide to proceed with a patent application is a business decision you must make based on a variety of factors. Before proceeding with an actual patent application, you may wish to consider a patentability search to determine whether the cost of an actual patent application is merited.   You can perform your own basic search at www.uspto.gov.  Most software, including smart phone apps, has so many features that some form of patent protection is available.

While it is fairly easy to obtain software patents and smart phone app patents in the U.S., if properly drafted, case law in other countries is still evolving. For example, it can still be extremely difficult to obtain software patents in Europe, although some cases are indicating increased tolerance towards software patents.

In summary, patents provide the strongest level of protection for smart phone apps, such as iPhone apps or Android apps, though costs are higher than with other forms of protection.  Patents provide protection against independent invention.  A patent can protect against a wide variety of alternative designs.  Most venture capital funds will want to see a patent before they will invest.

Malhotra Law Firm has years of experience in preparing patent applications for software related inventions and in successfully prosecuting them to allowance.  I would be happy to provide you with a fixed fee quote. Please contact me if you wish to discuss your particular situation.