11 Apr 2021 - News
Can I patent a mobile app?
What is an app?
A mobile app is software, entirely similar to a generic application in its electronic structure. What differentiates it is a drastic simplification of the features and graphical interface in order to obtain lightness, simplicity and speed, in line with the limited hardware resources of mobile devices compared to desktop computers.
When is an app patentable?
In Europe, rather than software, we prefer to talk about “Computer-implemented inventions” in order to limit the field to only software with a technical character. Computer-implemented inventions are those whose implementation involves the use of a computer, a network of computers or other programmable apparatuses, and which are achieved in whole or in part by means of a computer program.
Therefore, in order to be patentable, computer-implemented inventions must first have a technical character, and then meet the other patentability requirements, namely to be new and involve an inventive step.
Therefore, computer software as such is not patentable, nor are business methods implemented by means of software when they lack a technical contribution.
In order to be patentable, the object for which protection is sought must therefore have a “technical character”, or to be more precise, must involve a “technical teaching”, meaning an instruction addressed to an expert on how to solve a particular technical problem (rather than a purely financial, commercial or mathematical problem, for example) by particular technical means.
Speaking of software in general, a technical effect can be for example reducing the electrical consumption of a device, safer operation of a vehicle’s brakes, faster communication between two mobile devices, better quality in a transmitted voice, the control of a robotic arm, or the control of data storage in different memory units.
If the app (or the software in general) is related to a pure business method, such as an auction site, and makes no technical contribution other than that of using traditional computers and computer networks, it is not patentable (T 258/03 “Hitachi”).).
In the USA, software patentability requirements have traditionally been much more permissive than in Europe, since a technical character is not required for the claimed invention: the software must simply concern a method or process which produces a useful, concrete and tangible result.
US patent law makes no explicit reference to software, and a number of judgements have sought to clarify the boundaries between patentable and non-patentable matter for many new technologies, including software.
The first decisions led to the definition of a patentability test, called a “machine-or-transformation test”, according to which a claim is considered patentable if it is implemented by a particular machine in an unconventional or non-obvious manner or if it transforms an item from one state to another.
This concept was used and clarified by the In re Bilski judgement of 2008, according to which a patent cannot be granted for an abstract idea, as in the case in question where a business method was used to offer fixed-cost energy supply contracts.
The patentability of the software was considerably reduced following a subsequent ruling, In re Alice Corp. This ruling stated that the mere requirement of generic computer implementation cannot transform an abstract idea into a patentable invention. Although no explicit exclusion from patentability has been formulated for software related to business methods, the Alice judgement led to the subsequent rejection of numerous patents related to this topic.
Software can be protected with copyright. For this purpose it is important to indicate, somewhere visible to the user in the graphical interface, the words “© company name – All rights reserved – date of first software compilation – date of last compilation”.
This clearly indicates that the copyright in the software belongs to the author. These rights are generated automatically with the creation of the work, and not following a filing as is the case with patents.
The copyright applies to the code, and is therefore rather soft protection because it does not cover the functionality of the software but its specific formulation. This means that software with identical features but which has been completely rewritten from scratch may not fall under the applicable copyright protection.
To establish a certain date from which to enforce the copyright, the software can be filed with the Italian Society of Authors and Publishers (SIAE) or an equivalent foreign entity. Filing makes sense especially from a negotiating point of view, since it allows to clearly identify the copyright.
It can be advantageous to give an app an attractive name to make it immediately recognisable on the market, for example in app stores. In fact, the success of many apps which are widely used nowadays lies not so much in their technical features, which are very often replicated or even improved by competing products, but in the name that has given the app notoriety and continues to attract new customers. This name can be protected by a trademark. Trademark registration grants the owner the exclusive right to use the trademark or license it to third parties throughout the territory chosen for protection, in relation to the claimed goods and services.