The Apple App store has over a million apps. Tens of thousands of these apps relate to health, and many are downloadable for a small fee. A question we are often asked is, “how do you protect your app against competitors?”.
Should you bother? In deciding whether or not it’s worth pursuing IP protection, thought should be given to factors such as:
- the lifespan of the app (as patents can take a number of years to obtain)
- whether the app contains patentable subject matter
- whether the app is simply a front end to a process or system which operates as a ‘black box’ in the cloud, and
- whether the app is associated with a piece of expensive hardware which is protected by patent.
The patent system provides the best protection for apps since it protects the functionality of the app – rather than the specific expression of the idea like copyright does. Copyright in the computer code exists automatically, but is of limited value since an app developer is unlikely to infringe copyright in the computer code if they independently code another app with the same functionality.
In order to obtain patent protection, the app must:
- be novel or new (i.e. are there existing apps, patent applications or other information already published anywhere in the world that disclose the app’s functionality?),
- involve an inventive step (i.e. is not obvious), and
- be directed to patentable subject matter.
Many apps will fall foul of (2) and (3). In Australia, an innovation patent may be filed (which lasts for a reduced term of eight years) which replaces the test at (2) with a lower threshold ‘innovative step’ test. This type of application can be suitable for many apps since they are relatively fast to obtain and set a lower hurdle to achieve a patent.
With regard to patentable subject matter – it essentially comes down to whether or not technology is sufficiently embedded in the functionality of the app to justify the grant of a patent. Simply performing a known manual method on an app using processing power alone is unlikely to be patentable subject matter, there needs to be a technical problem that is solved or a technical advance made. Apps that integrate with or use signals and Designs sensors in the hardware of the device (such as accelerometers or GPS) or interact with external hardware tend to be the sort of subject matter that passes muster with regard to patentability. For example, the Zeo Sleep app would likely be patentable subject matter since it interacts with sensors and or a gyroscope in the phone to determine whether or not you’ve had a good night’s sleep or not.
Designs protect the visual features of the app such as the Graphical User Interface (GUI). Although the validity of registered designs for “GUIs” is untested by the Australian courts, Australian law does allow for the registration and certification of designs for screen displays. Designs may be filed where a patent is not possible, or even in addition to patent protection. Many mobile phone manufacturers are registering designs for screen displays and this strategy has also extended into the digital health space. Janssen Pharmaceutica NV recently filed a number of design registrations for the GUI of their mobile health management app, care4today™.
Trade marks and domain names
Trade marks are another way to protect an app since they can prevent competitors from calling their app by the same or a similar name. While there are any number of imitation Angry Birds apps available – none of them may be listed as Angry Birds. The owner of the Angry Birds app, Rovio Entertainment Ltd, has trade marks around the world for the name ANGRY BIRDS and even the characters within the Angry Birds game to protect its brand. Domain names for the app should also be secured even if the domain name simply points to the app on the app store.
Consider filing for patent protection and/ or design protection in Australia before you launch your app on the app store. While Australian patent law has a grace period for public disclosures, the same does not apply for designs.
POF has a dedicated Electronic, Physics and IT team with patent and trade marks attorneys with considerable experience and expertise in software, mobile devices, business methods and electronic devices.
If you have any questions relating to apps and IP protection, please contact us.