by Chris SwiecickiWhat is Patent Infringement? And Can it Apply to Apps?
In today’s smart-phone driven world, mobile applications are part of everyday life. Apps are everywhere, enhancing our productivity, communication, and entertainment. For app developers coming up with the next big idea that will disrupt a particular industry, it’s understandable to be protective of their creation and its underlying technology.
Everyone working in the tech world needs to understand the legal landscape around this type of intellectual property. Just like any invention, software and mobile apps can be patented. Patents safeguard intellectual property and give patent holders a definition of what is patent infringement for an app. On the other hand, anyone building apps needs to be careful not to infringe on someone else’s patent—and should be aware of the potential consequences of doing so.
But before getting into those details, I should note here: Handling a patent issue is something that should be done by someone admitted to the patent bar. If you are pursuing a patent case, make sure you have a patent attorney on board first.
While I am not a patent attorney myself, I have been co-counsel for a patent case for an app, and so I’ve seen firsthand the kinds of information that patent attorneys will commonly share with potential clients. What follows is a brief overview for those pursuing this route. (And if you are a patent attorney looking for co-counsel with business experience, I would be delighted to help with your case!)
The Basics of Patent Protection
Patents are issued by the U.S. government and are covered by intellectual property law. A patent grants an inventor—or in this case a software developer—the exclusive right to make or sell their invention for a set period of time.
Copyrights and trademarks are also intellectual property, but are different from patents. Copyrights cover individual written works of authorship. Trademarks protect branding for goods and services.
What is patent infringement? It is using someone else’s idea, either by accident or intentionally, to create your own product or app. A patent by itself does not prevent this from happening. It does, however, give the patent holder the right to make you stop. For a patent holder, this could be as easy as informing the offending party that what they are doing is patent infringement. Other cases may call for business litigation involving patent attorneys.
Getting a Patent For an App
Obtaining a patent for an app follows the same guidelines as any other invention. Applicants must prove that their product is new and unique. Software and mobile apps must provide a novel technical solution to a technical problem. You can not patent abstract ideas or obvious solutions that anyone else in the industry might come up with.
While the methods and processes of app technology are patentable, the underlying code is not. Computer code can, however, be copyrighted. Depending on the nature and technology used to create an app, it might benefit a creator to get both a copyright and a patent.
But is a patent really necessary? That depends. The process of getting a patent is time-consuming and expensive. Developers must decide if the app has the potential to become popular enough to justify not only the cost of the patent but of marketing the product to the public. And it is important to note: The patent application process requires the developer to publish the details of the app. If the application is denied, or if the patent lapses (more on that later), the technology is fair game for a competitor.
The return on investment, and the risk, might not be enough for an individual entrepreneur unless the app is truly unique and marketable. It is best to consult with a patent attorney who can advise on whether it makes sense to pursue a patent.
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What is Patent Infringement For an App?
Patent infringement for an app involves copying and profiting from its methods and processes without the patent holder’s permission.
Once they have a patent, the developer can sell the app (and its patent). Or they may grant permission to use it for a fee by licensing it. Meanwhile, it is the patent holder’s responsibility to determine if patent infringement has occurred. They can seek damages in such cases with the help of a patent attorney.
As mentioned above, the law firm of Swiecicki and Muskett is involved in one such case. The firm, along with another attorney, is representing Gil Bashani, owner of a company called Parking World Wide, in a lawsuit against the City of St. Louis. Bashani owns the patent on a system that determines if a parking space is occupied by someone who hasn’t paid. The app then sends an alert to a parking attendant or law enforcement. The suit alleges that the City’s mobile parking system called ParkLouie uses Bashani’s technology.
This case has yet to go to trial, but is a good example of what is patent infringement for an app. If it can be proven that ParkLouie is using and monetizing Parking World Wide’s processes, the City could be liable for damages.
Obtaining a Patent For an App
Again, any patent attorney will tell you that an app is only patentable if it solves a technical problem with a new and unique technical solution. But how does someone know what is new and what is a patent infringement of an existing idea?
Developers can start by using the Patent Public Search Tool on the U.S. Patent Office’s website (USPTO). This will find apps that are already patented with the same or substantially similar technology. A patent attorney can help with this, and the application process.
There are two types of patents protecting different aspects of an invention:
- Utility patents are granted for unique machines, chemicals, or processes and last for 20 years.
- Design patents protect an object’s unique appearance or design for 15 years.
Apps typically have utility patents, as they are concerned with the technological processes and methods of the software.
Assuming the app is unique, inventors can apply for either a provisional or non-provisional patent. We’ve all heard the phrase “patent pending,” which means there is a provisional patent. Provisional patents last for one year. During that time, developers can refine the details of their product and determine if there is a market for it.
At the end of 12 months, they can either apply for a provisional patent or let the non-provisional patent lapse. Other companies and competitors could then file for their own patents using the same ideas. Remember, part of the patent application process is making the information available for public viewing.
Protection From Patent Infringement—Is it Worth It?
The process of patenting an app takes anywhere from two to five years. Provisional patents cost between $2,000 and $5,000. Non-provisional patents range from $10,000 to $15,000. In addition, there are annual fees to maintain and keep the patent. Plus, it is up to the owner of the patent to discover instances of infringement. And if they uncover illegal use of their ideas, the business litigation fees to seek damages are their responsibility.
That said, successfully suing for patent infringement for an app means collecting damages and forcing the infringement to stop. For an app that is truly innovative and likely to disrupt the industry, getting a patent is well worth the effort.
If you are an app developer who is wondering whether your idea is unique, or if you have an app that you’re considering patenting, the best thing to do is consult with an attorney who has been admitted to the patent bar. They can advise from there.
In the meantime, if you yourself are a patent attorney trying to get your head around a case involving an app, we would love to help out, and perhaps even be co-counsel on the case. Swiecicki & Muskett has extensive experience with business litigation and business law which can be invaluable in such cases. Contact us today to see whether we would be a good fit.
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