Originally published here.
While analyzing the patentability of mobile applications, such apps have to be considered as software products, and then, corresponding patent eligibility and patentability can be determined by standard methods, such as, for example, conducting a patent prior art search to determine patentability and analyzing relevant search results.
With a view to determine patent eligibility or patentability of mobile applications, it is advisable to consider them as software products and / or computer-implemented inventions. The standard criteria to determine patentability include determining novelty, non-obviousness (inventive step), and industrial application. Subsequently, while drafting a patent application for mobile application, software products and / or computer-implemented inventions, it is a statutory requirement to provide a detailed description of one or more embodiments of the invention that is sufficient to enable a non-inventive person skilled in the relevant field of technology to put it into operation.
As a patent practitioner, it is crucial to ensure that while drafting patent application for computer-implemented inventions, patent claims are specifically defined and claims are not broad, which may lead to an assumption of claiming one or more abstract ideas, mathematical equations, laws of nature or mere discoveries.
A most feasible patent strategy is to file a provisional patent application, usually known as provisional utility patent application in US, which will give a timeline of 12 months to file a non-provisional patent application (referred to as complete patent application under Indian laws).
After the date of filing provisional patent application, the phrase “patent pending” can be used during product promotions.
Generally, patent attorneys and patent law firms provide low cost fee schedule to draft and file a provisional patent application, primarily because drafting provisional patent application consumes quite less billable hours as compared to a non-provisional patent application. This is so because as per requirements of patent laws, non-provisional patent application is required to include a full fledged set of claims, formal figures, corresponding description, whereas a provisional patent can be filed as a general disclosure of invention that may or may not include full set of claims and formal figures. Accordingly, it is common to include snapshots, sketches etc. with the provisional patent application protecting mobile applications.
Before deciding to file a patent for mobile application, it is advisable to consider various factors, such as, for example, but not limited to, budget and cost to file patent to protect a mobile application, patent eligibility of the invention, patentability of the software product, type of patent application to be filed, basics of utility patents, advantages of filing multiple provisional patent applications, and the like.
Generally, patent is a type of Intellectual Property Law which ensures that an idea is prevented from being used without the consent of the inventor’s. It gives the inventor exclusive rights to exclude others from developing or selling the inventor’s idea.
The possibility of patenting a mobile application idea depends on whether it is a component with different methods of interaction. The app code cannot be patented as it falls under the category of regulations covered by copyrights.
The requirements to qualify as a patent or the patent eligibility for the mobile application idea is determined by 3 important points:
The process of the app needs to be categorized as an invention. This is the most important which must be kept into consideration for the app to be granted patent.
It is just that the app must be new and non-obvious. Also, the app won’t be considered if it is not unique and already exists in the market place.
The application must work in theory. It is the restriction that prevents people from patenting such applications that are not useful as it should be. Therefore, it is important to develop a concrete and detailed explanation like how the application works to claim ownership over it.
Mobile App Patent Search
It is advised by USPTO to conduct an advanced search to find its similar items using its various Patent Search Tools. The complete database under the USPTO maintains records on all the pending and published patent portfolios, which helps in reviewing any previous patents that may have been patented by someone else.
Patent Filing Requirements
Patenting an app is not granted to the person who first invents it, rather it is granted to the person who first files the patent. This is the reason why many entrepreneurs and startups prefer filing a provisional patent before disclosing important details. Normally, the patent cost of a specific app idea is distinguishable from the various types of patents for which an individual applies. Though, when it comes to provisional patents, it costs approximately $2000 to $5000, and the provisional patents last a year which would further help in testing the app’s success. The non-provisional patent, costs between $10,000 and $15,000. The most crucial move is to review the patent being applied for and search past patents to ensure eligibility. The patent would then be examined by the USPTO to review the patent and search existing patents for its eligibility. After which the examination takes one to three years.
“PATENT PROTECTION OF MOBILE [SMARTPHONE] APPLICATIONS – ANDROID, APPLE, MICROSOFT & BLACKBERRY APPS”
AUTHOR: ADVOCATE RAHUL DEV
DESCRIPTION:MOBILE APPLICATIONS, WHICH ARE COMMONLY REFERRED TO AS MOBILE APPS, ARE GENERALLY AVAILABLE FOR DOWNLOAD AT VARIOUS APP STORES. COMMERCIAL SUCCESS OF MOBILE APPLICATIONS HAS RESULTED IN AN INCREASING INTEREST TO PROTECT ASSOCIATED INTELLECTUAL PROPERTY RIGHTS (IPR), SUCH AS, PATENTS, TRADEMARKS, COPYRIGHTS, AND THE LIKE.