Articles > Startups

Can I Patent My App?

September 20, 2020   Philip EvangelouRaymond Chbib

To simply answer the question – yes you can! However, is it worthwhile?

If you have created or intend on creating an app, it is important to know that apps are able to be patented and it is generally wise to do so. App developers are often confused whether their app can be patented or whether it is worthwhile because essentially registering a patent does not mean that the app in it’s complete form is protected. Basically, they are used to protect the way things work as a patent is a registered right granted by the law for a device, substance, method or process that is new, inventive, and useful. 

What a registered patent will protect is the way the developed software makes the app work/function, given that the software falls within the definition of what can be patented. Therefore, a patent would grant you exclusive rights to commercially monetize the app and its method in the current market.

The Australian patent system allows for two different types of patents – standard patents and innovation patents. Standard patents offer a more robust protection lasting up to 20 years. Innovation patent protection lasts up to 8 years.  

Standard Patent: ‘Novel’ and ‘Inventive’ 

Just because you can patent an app does not mean the application process is easy. The success of a standard patent application is dependent upon your app satisfying the criteria legislated in the Patent Act 1990. The main requirements of ‘novel’ and  ‘inventive’ become high thresholds to meet in the context of apps. 

With nearly over 3 million existing apps, it can be difficult satisfying the standard patent criteria as your app’s functionality ought to be unique and distinguished from others in the service it is intended to provide. Essentially, ‘novel’ requires the app to be substantially different from everything else that has come before it. While the ‘inventive step’ requires the invention to not be obvious to someone ‘skilled in the art’ of the relevant field or industry. A patentability search, which involves searching existing patents,  will assist in ensuring your app is genuinely novel. 

Despite, the difficulty in ensuring your app is clearly distinguished from the millions of apps already out there. If you are confident that your app is indeed novel, inventive and more than just an abstract idea then you should consider starting a formal standard patent application process in order to gain exclusive rights to the usability of your app. Patenting your app will ensure your IP is well protected. 

Innovation Patent 

Alternatively, you can apply for an innovation patent which are designed to protect new inventions that may not satisfy the ‘inventive step’ requirements of a standard patent. Essentially, protecting ‘innovations’ rather than true ‘inventions’. Consequently, the threshold requirement is lower as rather than an ‘inventive step’ it requires and ‘innovative step’. 

While an innovation patent will only operate for eight years, it may be more suitable in the fast moving app space because it is a much timilier process but still complex. 

What will the patent protect?

Different from copyright and trademarks, patents protect inventions and discoveries. Patenting your app will generally protect the systems, methods and functions within your app, such as user-interface features, editing functions, compiling techniques, or program language translation methods. A patent will not protect the app’s icon badge, the name, the aesthetic design or the bare idea. 

Successfully registering a patent will grant you legal protection that formally excludes others from creating, distributing and profiting from the sale of your invention of the app.

Consider timing 

The total fees to patent an app is expensive and a lengthy process spanning over several years. Particularly, for standard patents. 

You should assess whether you have the time and funds to pursue the very expensive process as many early-stage startups do not have the disposable capital needed to complete the full application. 

The fact that only about 56% of patent applications are successful raises questions concerning whether the complex process of filing a patent is worthwhile. Moreover, if the app is still in early development stages or the product idea is not yet final then by the time the patent is actually granted it may be partly or entirely inapplicable due to becoming outdated. 

Therefore, assess whether patenting your app is the most efficient use of time and funds. Also consider whether it is the appropriate time to do so. As a patent application will likely be unsuccessful if you have not established the fundamentals of your product and a legitimate business model. 

It may be better for startups in their infancy stages to focus on building a solid product and attaining product-market fit to properly validate your app idea rather than pursuing patents. 

If I do not patent, what other protection do I have?

There are other avenues that can be pursued to ensure your app is protected so that you can have an advantage over competitors such as copyright. 

A copyright is a form of protection granted by law for ‘original works of authorship fixed in a tangible medium of expression’. As explained in previous blog posts, copyright does not protect ideas but can protect the expression of ideas in the form of computer programs which has extended to include apps. 

Unlike a patent, copyright does not require an official registration consequently making it much easier to obtain. Copyright protection is free as it is an automatic right that attaches to the expressed material form of your apps software code as well as your content, design and layout. 

However, for your app to be copyrighted it must meet a very similar criteria as required by patents. It must be novel or original meaning the idea can share similarities with other apps but it must have a function which makes it unique. This is a much lower threshold than what is required by a patent. 

Indeed, a patent provides greater robust protection for your app but is more difficult to obtain. A copyright may be a better option in the early stages of your app development because obtaining a copyright is more timely, costly and less restrictive. It will also operate to protect your IP for as long as you exist plus 50 years. 

To conclude, the question you should ask when considering how to project your app is not whether you can patent your app but whether it is the appropriate option and if it is an appropriate time to do so. The time and funds you have as well as the novelty nature of the app are critical factors to consider when determining how to best protect your app.  

About Philip Evangelou

phillipPhil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.

About Raymond Chbib

raymond chbibRaymond is a legal intern at OpenLegal, working with our legal content team. He is currently a penultimate student at the University of Technology Sydney, studying a Juris Doctor degree with an undergraduate Bachelor of Global Studies. He is particularly interested in Intellectual Property law and the increasing internationalisation of that area of business.