How You Can (but shouldn’t) Patent an App Idea

Published in

The Startup

17 min readSep 22, 2017

In many cases, attempting to patent a mobile app is ill advised: as a costly, lengthy, and difficult process, it can eat up precious resources whilst distract founders from executing their business ideas and building high growth startups. At the same time, however, successfully patenting an app is not only possible and pursued by the world’s biggest tech startups but it also confers the most robust kind of intellectual property protection within the mobile space. In this article I’ll provide a detailed overview of the fundamental steps involved in successfully patenting a mobile app in 2017.

A Preliminary Caution

It’s important to point out that we here at Appster are of the opinion that it’s often unwise and unnecessary for new early-stage startups to try and patent their mobile apps.

In fact, I’ve written an entire article on the subject.

In that piece, I argued that startup founders should typically focus their time, money, and energy on building real businesses — defining and investigating your monetizable customer pain, determining the size and unique demand(s) of your market niche, validating your product idea, building a minimum viable product, etc. — rather than worrying about the complex process of filing patents.

Amongst other factors, I identified the following as important reasons for potentially avoiding patents:

Patents are very expensive to obtain and many early-stage startups don’t have the disposable capital needed to complete the full application;
The entire filing, examination, and granting process takes several years to complete;
Because startups pivot quite often, it’s possible that patents will be partly or entirely inapplicable (i.e., out-dated) by the time they’re finally granted; and
Only about 56% of patent applications are ultimately successful.

Nevertheless, I recognize that many founders are still extremely interested in why and how mobile app companies should apply for patents

If you arm yourself with a solid comprehension of the purposes, functions, and processes for attaining patents then it’s entirely possible to develop a clear understanding of whether, and if so then when and how, to apply to patent your mobile app.

In this context, then, it’s perhaps less a matter of if you should try and patent your app and more a question of when it’d be appropriate to do so.

Patents are indeed granted to mobile app companies — DropBox, Facebook, and Google (amongst many others) have all successfully acquired patents for (some of) their products and services over the years (see here) — but successful patent applications are virtually never granted to founders who haven’t already established the fundamentals of their products and business models.

Plus, insofar as the mobile startup world seems to be witnessing a bit of a shift from the use of copyrights to the use of patents, it’s important that today’s founders prepare themselves for the IP world of the near future.

Thus, whilst infancy-stage startups should dedicate themselves to building a solid product and attaining product-market fit before pursuing patents, I’d like to present those of you who might be a bit further along in your entrepreneurial journey with a detailed overview of the ins/outs of securing patents in 2017.

Intellectual Property Rights

An intelligent discussion of patents requires that we first familiarize ourselves with some technical terminology and various defining ideas.

To begin, a patent is one form of intellectual property rights.

The World Intellectual Property Organization (WIPO) defines “Intellectual property” (IP) as “creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce”.

Intellectual property therefore refers to “intangibles”, i.e., products of the intellect, that are “owned and legally protected by a company from outside use or implementation without consent” (source).

Insofar as mobile apps — from Facebook and Instagram to Slack and Trello — are all creative inventions, i.e., artistic products of the mind, they clearly fall within the category of IP.

“Intellectual property rights” (IPRs) are specific rights that permit their holder to exercise a monopoly on the use of the item(s) protected by such rights for a specified period of time.

As Businessdictionary.com explains, IPRs are:

“[Rights] that [are] had by a person or by a company to have exclusive rights to use [his/her or] its own plans, ideas, or other intangible assets without the worry of competition, at least for a specific period of time. These rights can include copyrights, patents, trademarks, and trade secrets”.

The protection of IPRs, which is ultimately guaranteed by the courts via litigation (e.g., in the form of suing for copyright infringement), is explicitly intended to encourage innovation.

Creators, from everyday entrepreneurs working away in their garages to multi-national corporations inventing cutting-edge forms of technology, are much more likely to devote the necessary time and energy to constructing innovative products and services when they know that their inventions can be formally protected against theft by others (source).

Patents are one of four types of IPRs, the other three being copyright, trademarks, and trade secrets.

Let’s briefly define these three first and then move onto a detailed discussion of patents in particular.

A “copyright” is a form of protection granted by law for “original works of authorship fixed in a tangible medium of expression” such as poetry, novels, movies, songs and other forms of literary, dramatic, musical, and artistic works.

Copyright covers both published and unpublished works but it does not apply to “facts, ideas, systems, or methods of operation” as such.

A “trademark” is a kind of security that “protects words, phrases, symbols, or designs identifying the source of the goods or services of one party and distinguishing them from those of others”.

Trademarks can be applied to company names, product and service descriptions, taglines, slogans, etc. for as long as a company uses them.

Examples of trademarks include the instantly recognizable logos of Google and Microsoft:

A “trade secret” refers to “any confidential business information which provides an enterprise a competitive edge … [such as] manufacturing or industrial secrets and commercial secrets”.

Popular examples of trade secrets include protected food recipes (e.g., Coca Cola’s drink formula) and hidden business practices and processes (e.g., financial trading algorithms).

Note: regardless of whether your startup engages in the patent filing process or not, we here at Appster strongly encourage our clients to protect their IP by intelligently utilizing copyright, trademark, and trade secret guarantees whereever appropriate.

For instance, we suggest trademarking all key aspects of your brand, including your company name, logos, icons, and slogans/taglines.

Be sure to search the United States Patent and Trademark Office’s trademark database here in order to determine which aspects of your brand you should trademark.

Two additional IP-related measures that we recommend to our clients are:

Creating and signing comprehensive “confidentiality/non-disclosure agreements” — i.e., a “legal agreement between two or more parties that is used to signify that a confidential relationship exists between the parties” — with all employees and co-founders; and
Purchasing, where possible, all primary, secondary, and tertiary domain names in order to prevent domain squatters from sleazily trying to sell you your preferred domain(s) at exorbitant prices at some point in the future.

Let’s now examine patents as such.

What Is a Patent?

In the U.S., the United States Patent and Trademark Office (USPTO) officially issues patents.

(Canadians apply for patents via the Canadian Intellectual Property Office, Australians file through IP Australia, and U.K. citizens utilize the Intellectual Property Office of the U.K.).

The USPTO defines “patent” in the following formal and technical way:

“A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed[.] … The right conferred by the patent grant is the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO”.

As a “limited duration property right” relating to an invention, a patent grants legal protections that formally exclude others from creating, distributing, and/or profiting from the sale of that invention (source).

Patents last for a period of 20 years from the date of filing (the U.S. recently abandoned its longstanding first-to-invent patente standard, joining the rest of the world by officially embracing the first-to-file system in March of 2013).

Whereas copyright provides security for original works of authorship (e.g., written materials, audio productions, and physical architecture) and trademarks protect words, phrases, symbols, and designs identifying the source of a company, product, or service (e.g., logos and slogans), patents protect inventions and discoveries.

What, exactly, is an “invention”?

Whilst it’s true that “there is no international[ly agreed upon] definition of ‘invention’” (source), the USPTO notes the following:

“[A]ny person who ‘invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent’, subject to the conditions and requirements of the law. The word ‘process’ is defined by law as a process, act, or method, and primarily includes industrial or technical processes. … These [above-stated] classes of subject matter taken together include practically everything that is made by man and the processes for making the products”.

More practically, then, a patentable “invention” is one that presents an effective solution to a technical problem.

For software-based discoveries, the inventive solutions identified for protection are typically process-oriented in nature — such as the novel and non-obvious ways in which mobile apps allow smart phones to perform unique operations (sources: 1, 2).

It’s important to note that ideas as such can be neither patented nor protected under any other form of IPRs — as Gene Quinn of IPWatchdog puts it, “without some identifiable embodiment of the idea [in question] there can be no intellectual property protection obtained and no exclusive rights will flow unto you”.

Thus, it’s not the idea behind your mobile app for which you’d seek IP protection but rather the ways in which that idea is connected to, made manifest in, and somehow improves upon one or more pieces of physical matter (e.g., a smart phone or one or more of its inner components) (source).

With these technical definitions and descriptions covered, let’s now consider the primary patent eligibility requirements that must be met to successfully secure a patent for a mobile app.

Patent Eligibility Requirements

As Heleigh Bostwick points out, mobile apps can indeed be patented because they uniquely impact a smart phone’s operations from a processual standpoint:

“Can a mobile app be patented? The short answer is ‘yes’ because it’s a component of the methods of interaction; i.e. the process running on a mobile phone that connects to a remote server containing data that either stores the data or processes it to be used on the mobile phone. In other words, it’s what makes your phone function in a certain way”.

Strictly speaking, then, mobile apps are “no different from other software when it comes to patent eligibility and patentability” (source).

From a technical standpoint, software patents can thus protect “systems, methods and functions within your app, such as user-interface features, editing functions, compiling techniques, or program language translation methods” (source).

Mobile apps are potentially patentable as “utility” patents (rather than as “design” or “plant” patents — see here).

Now, what are the specific eligibility requirements that must be met in order to successfully earn a patent for a mobile app?

Patent eligibility is determined by answering the following 3 key questions:

Is the invention for which the patent is being sought an abstract idea?
Is the invention novel (i.e., new)? And
Is the invention non-obvious? (Sources: 1, 2, 3).

The first requirement, i.e., determining whether the invention amounts to an abstract idea, is rooted in two specific facts, i.e., 1) ideas as such cannot be patented and 2) the U.S. Supreme Court recently ruled that something more than a mere concept must be included in a software patent application, otherwise the application will automatically fail.

In the 2014 case of Alice Corp. v. CLS Bank International, the Supreme Court qualified the abstract idea eligibility requirement by creating a new, two-part test:

Does the patent claim contain an abstract idea, such as a computer algorithm, method of computation, or other general principle? If no then the 2nd and 3rd eligibility requirements (to be discussed below) must be considered. If yes then:
Does the patent claim an addition of “something extra” to the idea, wherein the something extra embodies an “inventive concept”? If no then the application must be rejected. If yes then the 2nd and 3rd eligibility requirements must be assessed (sources: 1, 2).

Importantly, the Court held that ordinary and customary use of a general-purpose computer is not sufficient to satisfy this test because “merely requir[ing] generic computer implementation fail[s] to transform [an] abstract idea into a patent-eligible invention” (source).

As Jason Wachter points out, the Court’s ruling means that there “must be an improvement (e.g., improvement in categorization, efficiency, etc.) to what is known” in order for a mobile app company to convince the USPTO that its invention qualifies for a patent.

A significant number of startups have apparently had their patent applications rejected for failing to satisfy this first major eligibility requirement (source).

The second condition of eligibility involves a determination of whether the invention is novel, i.e., new.

Simply stated, an invention can be considered novel is if it is substantially different from everything else that has come before it.

Angelo Firenze puts the matter like this:

“Just because your software solves a problem doesn’t mean your patent application is assured. Your software solution needs to be new … [I]t needs to solve [an] existing problem in a way that other solutions do not … either with new, non-obvious technologies or by changing the process itself in unique new ways”.

Part of ensuring that your invention is genuinely novel involves searching existing patents and patent applications to confirm that similar inventions have not yet been patented or are not currently working their way through the patent application process.

As the associates at Heer Law point out, “there must be no prior public disclosure or patent filed for the invention” in the U.S. in order for you to pass the novelty test.

This link from the USPTO website and this one from Google Patents provide lots of helpful information about, and online directories for, searching existing patents and applications.

Finally, the third eligibility requirement necessitates determining whether the invention is non-obvious.

The folks over at Richards Patent Law helpfully explain the non-obvious stipulation in these terms:

“An invention is patentably non-obvious when it is something more inventive than what would have been obvious to someone skilled in the relevant area of technology at the time the patent application is filed. A patent examiner can reject a patent application for being obvious if it is a combination of pre-existing inventions or is an obvious variation of one or more pre-existing inventions”.

For instance, your mobile app invention will not be granted a patent if it merely combines pre-existing technologies or only slightly modifies something that already exists.

Combining (or otherwise re-arranging) existing technologies would be an obvious method for those working within your industry to try out and so it wouldn’t be able to satisfy this final admissibility requirement.

If you’re confident that your mobile app is indeed 1) more than just an abstract idea 2) novel and 3) non-obvious then it’s time to start the formal patent application process.

Deadlines; Types of Patent Applications

Here’s a very important piece of information of which you must be aware if you’re committed to filing a patent for your mobile app (or any other invention for that matter).

In the U.S., you have only one year from the date that your invention is publically disclosed to file one or more patent applications (sources: 1, 2, 3).

In other words, the USPTO provides only 365 days from the day that the investor begins publically discussing, marketing, or selling his/her invention to then submit a patent application:

“Prior to disclosing, marketing, attempting to license, selling, seeking funding or launching a social media concept and/or associated mobile app, patent protection [must] be considered. In [the U.S.] if the invention is disclosed prior to filing for patent protection, the product and/or business method will be precluded from patent protection. That is, a patent must be filed prior to the product being publically disclosed, marketed, on sale or even entering discussions with a potential customer”.

In other words, you must file your application within one full year of the first date that you publically disclose your invention; otherwise, you will automatically forfeit your right to patent your invention (source).

Timing, thus, is crucial when it comes to the patent process.

For purposes of our discussion, there are two kinds of patent applications that we need to address.

The first is known as a “provisional application for patent”.

This, in fact, is the most common — and virtually always the first — approach that mobile app companies utilize when beginning the patent process.

In technical terms, a provisional application “allows you to file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement” (source).

More concretely, a provisional application for patent acts a “placeholder” in the sense that it grants you one full year to build and refine your minimum viable product, assess the demand for and strength of your app by trying to achieve product-market fit, and determine whether it’s worth committing to the full patent application process all the while “keeping your place in line” at the patent office, so-to-speak, by taking advantage of the U.S.’s first-to-file regulations:

“The one-year patent-pending status afforded by having filed a provisional patent application allows the app developer time to see if the product is going to be a success. If it is, then the developer can go ahead and file a [full] nonprovisional patent application, which begins the examination process at the USPTO. Filing a nonprovisional patent application within one year of the provisional filing date ensures that the filing date of the provisional patent remains as the official filing date of the patent application” (source).

Filing a provisional application is thus important for two reasons:

It allows you to assess whether your app is good enough to patent, i.e., whether it works well enough and the market demand is sufficiently strong; and
It allows you to use the date of filing as the same filing date for a non-provisional (i.e., full) application, therefore ensuring that your competitors aren’t granted a “free” 12 months to beat you to the process.

Why else should you submit a provisional submission before filing a full application?

One, because it costs significantly less money to file — more on this shortly.

Two, because it’s less complex (although still quite demanding on the whole) to create and submit in comparison to a non-provisional application.

And three, because, when compiled with adequate attention and care, it can serve as a helpful “starter” application to the full submission that must be created at a later date.

Although provisional applications are not assessed on their merits, i.e., they’re not evaluated, it’s still considered best practice to make these application as complete and detailed as possible, e.g., by including detailed documentation, wireframes, diagrams, flows, etc. (sources: 1, 2, 3).

The one year timeline that the USPTO imposes on inventors following the public disclosure of their invention is mirrored by the agency’s rule that a “provisional application automatically becomes abandoned when its pendency period expires 12 months after the provisional application filing date”.

Mobile app companies therefore have 12 months to file a provisional application after introducing the world to their product for the first time and then an additional 12 months to file a full patent application, elsewise the original filing date is lost.

Note:

There’s no such thing as a “provisional patent”, only a provisional (i.e., first) step towards eventually filing a full patent application;
The provisional application does not grant the investor who files it any actual patents or rights;
It does, however, permit the inventor to legally utilize the phrase “Patent Pending” during the one year’s time for which the provisional patent application is valid.

As mentioned, the second type of patent application is a “Non-Provisional Application for a Patent”.

This is the “full” application that you must submit if you wish to have the USPTO eventually issued you a patent for your mobile app invention.

The application must include:

A written document comprising a “specification”, i.e., specific description and claims;
Drawings (where necessary);
An oath or declaration; and
Filing, search, and examination fees.

The non-provisional application is a complex, lengthy, and costly process that is best handled by a qualified and experienced patent attorney.

Whilst it’s possible to undertake the process on one’s own, we here at Appster recommend that startup founders work with professional patent lawyers who can help prepare and file patent applications that have the greatest chances of succeeding.

Costs and Timelines

Let’s bring this article to a close by briefly describing the costs and timelines associated with filing for patents in the U.S.

The USPTO provides a full listing of the many costs attendant upon submitting an application for a patent — be sure to consult this list for an exact specification of the different costs.

Some of the most common non-legal costs — i.e., costs deriving entirely from submitting patent applications to the USPTO — incurred by investors include:

Basic filing fee: $70–280
Patent search fee: $150–600
Patent examination fee (i.e., to have your application considered): $180–720
3.5 year “maintenance” fee (i.e., to keep a granted patent valid): $400–1600
7.5 year “maintenance” fee: $900–3600
11.5 year “maintenance” fee: $1850–7400.

These cost ranges are based on the fact that the USPTO classifies applicants as large entities, “micro entities”, or “small entities”, with each group having to pay less expensive application fees, respectively (sources: 1, 2).

As for the legal costs typically associated with filing patent applications, Richards Patent Law provides the following data based on their experiences with mobile app clients:

Provisional application for patent preparation: $2,500–5,000
Non-Provisional application for patent preparation: $10,000–15,000
Re-Applications following rejections: $5,000–15,000 over 2–3 years.
“All said, over a course of 3–5 years, the total fees to patent the typical mobile app may be anywhere from $15,000 to $30,000, with the maintenance fees being additional fees over the following 12 years”.

Finally, here are some typical stats in terms of the lengths of time that it takes for different aspects of the patent application process to be completed:

Time required for examiner to consider application for first time: several months to several years
Completion of initial examination stage: 1–3 years
Completion of back-and-forth rejections and resubmissions: 1–3 years
Total time required to receive patent grant: 4–6 years (source).

Looking for an example of patent application timelines?

Facebook’s Mark Zuckerberg waited 6 years before the first patent for which he ever applied was finally granted in 2012, following multiple rejections from the USPTO.

If you enjoyed reading this article then be sure to check out our expert white paper on protecting your intellectual property!

Originally published at Appsterhq.