Peter Adediran is the founder of PAIL Solicitors, a law firm that specialises in mobile app and website projects assisting entrepreneurs and businesses to take their idea through to execution. Subscribe to his free blog on technology, IP and Internet law.
So, you’ve got a novel idea for an app feature and your quick research shows that there are lots of other businesses using the same or similar version of that feature as part of their mobile app. There are at least two important questions you should be asking: Do you just design and develop the feature? Do you try to patent it yourself?
An old tv advert said “There are no easy answers. There are only intelligent choices,” this would be very appropriate in this case. Complex, patent law, business strategy, and budget are at the core of making the relevant intelligent choices when deciding whether or not to patent a proprietary mobile app technical feature. I wrote an opinion piece in October 2016 – How to manage legal barriers to effective e-business? – which touched on preventative measures to avoid patent infringement which is worth reading along with this article.
What is a patent?
A basic generic definition would be, a legal paper conferring on a patentee the monopoly right for a fixed period within a prescribed scope to exclude others not permitted by the patentee to use a novel invention.
Even with patent rights there is no guarantee that a pretender will not try to usurp a novel idea, or that it will not be infringed. Like all intellectual property protection rights, it still must be monitored and enforced which can be an expensive task, fraught with difficulty.
For those who have a patent it only acts as a deterrent not blanket protection from new entrants into a market place. There is no technology that will automatically disable a phone or delete an app that is infringing a patent. Those who knowingly infringe a patent might be willing to take the risk of never being found out, or they might be caught but the patentee may not be able to afford patent enforcement. Sometimes a business might be willing to trade off the costs of a law suit against the market penetration and/or profit that will be made by infringing a patent. Some would argue that this was the case with the Samsung Apple patent wars.
The priority of every new business entering a crowded market should be to differentiate itself from the existing players. Differentiating yourself from the existing competition means copyright, trademarks, design rights and patent protection. Seeing as the digital technology market is saturated with start-ups ranging from healthcare to fashion, a novel idea for an algorithm that can really change the existing technology paradigm and improve people’s lives should be patented. To patent or not to patent is therefore the question?
Not to patent means that even if you think your features are innovative, novel and there are no direct competitors using the same features, you may be wrong. Somebody may have thought of it first. Lots of entrepreneurs and businesses have found themselves on the wrong end of a lawsuit for not making sure that their ideas are not already patented. Not to patent also means that the idea must be patentable in the first place. Before I go into patent infringement in more detail I’ll just explain a little bit more about what can be patented.
Can you patent your feature?
After deciding that patenting a feature in your mobile app is an intelligent choice, the next step is to consider whether your technology can be patented. The first important step before filing a patent, (indeed any type of intellectual property protection) is to search the existing databases and the Internet. Most countries have a searchable online database for looking up existing patents, trademarks and copyright. There are also several premium databases that are not available to the public. They include reported cases – which are cases in which a judicial decision has been reached and unreported cases – which are cases in which there was no decision but are noteworthy. Note that these databases do not include US cases. Examples are Lexis Nexis, BAILII and Justis. There is also the Association of British Industry database; Factiva – Dow Jones; Patent Scope – World Intellectual Property Office (WIPO) database; Trademarks UK Intellectual Property Office; European Union Intellectual property Office; and the US Patent and Trademark Office.
How about software?
Is it possible to patent software? First, it is possible to patent software in the UK, Europe and has always been the case in the US. Without going into the law in detail for any of the features of your mobile app to be patentable they must be an invention that exhibits a technical contribution or technical effect. The Case is T208/84 VICOM .
Lots of the software that have been accepted as patentable have had to do with the manipulation of data. VICOM itself concerned a method of digitally altering data. The UK accepts that software patents are valid and will uphold them. It has done so in several cases.
However, the UK and Europe do not always accept business methods as patentable even though they are in the US. UK and European courts have not upheld several business method US patents. To be specific in T588/05 WEST DIRECT  E.P.O.R a US patent was awarded for a computer assisted telemarketing process that allowed the upsell to a potential customer. It was not upheld in the European Patent Office because there was no specific technical problem. It had no technical effect. It was just a way of improving a business sale.
Before you approach an intellectual property solicitor to advise on the patentability of a feature you will require the following information. A draft specification that sets out a proper description of the invention, the claim or claims and any technical diagram to which the description of the claim relates. You will also require a draft Abstract describing the technical difficulty that the feature is meant to resolve, including a technical explanation of how it works.
Not to Patent?
Why wouldn’t you research the patentability of your idea? Why not protect your concept from somebody else stealing it?
Well for one it takes time to obtain a patent. Once you build your app you want to get it into the marketplace as quickly as possible. Obtaining a patent takes time in every jurisdiction, and there is a time where the patent must be confidential. Effectively the idea must not be disclosed until there is a patent application on file. Can you wait two to five years for your feature to be shown to the public?
The other reason why you should at-least research into the patentability of your feature is the possibility of being sued by a patent holder. In my research, I’ve come across several US technology related patents that are being infringed knowingly or unknowingly by websites and mobile apps worldwide. Some of them are already involved in patent infringement suits. Others like United States Patent No:S8,655,144B2 dated Feb 18, 2014 are in my opinion probably being widely infringed but no patent suits have been brought yet. The alleged breach of patent in this case would be “A system of video sharing to several participants”.
There are 20 claims in the specification. The full abstract reads as follows:
A computer conversation system comprising: at least one server including a processor and memory and configured for communication with a plurality of user computers which each comprise a display; a video recording application configured to record video or receive recorded video from some, and preferably all. of the individual computers of the plurality of user computers; wherein at least one server is configured to send a sequence of recorded videos to the plurality of users, the sequence of recorded videos based on the videos recorded or received from the individual computers and optionally the system is configured to send a file to the plurality of user computers which results in each of the plurality of computers displaying on the display an array of visual indicators in a set order, wherein each of a plurality of the visual indicators corresponds to at least one recorded video to be sent by the server, and the set order of array corresponds to at least one recorded video to be sent by the server, and the set order of the array corresponds to the order of at least part of the sequence of recorded video part of the sequence of recorded video.
Effectively it’s a method for video sharing on various platforms including social media and online TV channels. In my view, this patent could apply to several businesses using social media using a real-time live video app sharing to several participants. In my opinion, there are several elements of the patent that have been infringed. There are of-course caveats to this such as the fact that in the UK it is a complete defence if you were not aware (reasonably) of the existence of the patent; the UK and Europe would have to accept the US patent as valid; and you would need a technical expert to better understand how the claims are being infringed but damages could be worth hundreds of millions of dollars for the patentee. The image below shows a technical drawing of the invention.
Is intellectual property protection affordable?
The general rule here is that it is far more expensive to file patent applications yourself. This is because you are less likely to know whether something is patentable or not before you start the process. A specialist would know, or would have done the appropriate research, therefore saving you wasted fees and related costs.
Filing a patent can cost anywhere from ten thousand pounds to hundreds of thousands including the lawyer’s fees depending on several factors.
Hopefully this article has convinced you to think more carefully about protecting your mobile app before launching. Patents are not the only method of protecting your mobile app features, you may also copyright the expression of your ideas. One thing is for certain if you want to succeed in the digital age you must maximise your strategy to set your business apart from the rest. Setting your business apart in a busy market will require intelligent choices.
To book a face to face consultation for commercial legal advice relating to selling online you should contact a specialist website terms lawyer (charge rates may apply and may vary).