[Before you read this post, read the IP Strategist disclaimer]
Well… it depends. Sometimes yes, most times no. Importantly, while people will say the software is not patentable, that is simply not true. Patents on innovations implemented in software are available and can be enormously valuable. But they may also be expensive or otherwise ill-advised in many instances. It is important not to jump in without a good understanding of the pros and cons as they relate to your business value and overall strategy. That said, it is also important to consult a patent attorney early and often to make sure you aren’t missing critical dates and losing rights.
[By the way, “patents” are used in this post to mean utility patents (directed to utilitarian aspects of an app) as opposed to design patents or other forms of protection.]
At least once a week, someone asks me whether they can patent their new app. Almost as often, I tell them that, even if they could patent something, they probably shouldn’t. It’s not impossible; just a poor investment. For 8 of every 10 new app ideas I see, the most value-driven suggestion I can give is:
At this stage, spend your budget to get users. Build a cool app with a great user experience, and market the crap out of it. If your idea gets ripped off, take it as a sign of success. By then, you will either have enough daily active users to be a great acquisition target, or you will at least be able to leverage your experience as a successful software entrepreneur to build support for your next great idea.
A lot has been written on what is, or what should be, the state of software patents. And many have strong views on both sides. That is completely outside the scope of this post, except to say that I think valuable technological innovations should be patentable, and whether software is involved should not be relevant; but I also feel that lots of bad software patents have been granted over the years.
The quick summary (not intended to be legally precise!) is that the Patent Office will consider most non-software inventions patentable, as long as they are novel and not obvious. In legalese, patent examiners have to establish a prima facie case of obviousness and/or lack of novelty to render an invention unpatentable. But with software, the Patent Office tends to take the position that software is inherently abstract and should not get patent protection, unless there is something significantly more that turns it into a patentable idea (of course, it must also pass the novelty and non-obviousness hurdles). A lot of cases in the past few years have found software inventions to be unpatentable. And my opinion is that almost all of those that lost deserved their fate, as they were trying to assert ridiculous inventions that either should never have received patent protection in the first place, were not drafted properly, or were applied in contexts in which they were never intended.
For the vast majority of software applications, it is a stretch at best to find something patentable. Even when there is something, drafting a good software patent these days (one that will have any chance of making it out of the Patent Office with valuable and defensible scope) takes a lot of time and skill. Even if done masterfully, the Patent Office and the market are both highly unpredictable. And, in case you are not accustomed to working with lawyers, “lots of time and skill” means “lots of money,” and “highly unpredictable” means “of dubious value.” In most cases, it costs the same to get the patent as it did to start the entire business. So, if you get copied, it is probably more economical just to move on to the next big idea.
Further, because of huge backlogs at the Patent Office, it can often take at least 2-3 years to get a granted patent. By that time, most software plays have failed, pivoted, or exited.
When you should consider patenting your app.
You could be in the other 20%. And, if you are, patents could have enormous value. So how do you know if you are one of the few?
With the uncertain state of the law right now, there is no crystal ball or formula for software patent success in the Patent Office. However, in my experience, you will be much more likely to find success and value from patents if you are able to answer yes to the following question:
Do you provide a technical solution to a technical problem?
Of course, when operating in a value-driven framework (see the post on A-PLuS approaches), this question should only be asked for innovative distinctions identified as being valuable to protect (particularly with patents).
In my humble opinion, effectively limiting patent protection to innovative technical solutions for technical problems is a good direction for U.S. software patent law, and a direction more in line with Europe and other foreign jurisdictions. If this was a clearer requirement, and especially if it had been clearer all along, I believe we would not be wading through a morass of worthless software patents and would not have the same type of patent troll problem. I have heard plenty of in-house attorneys say they would be much less bothered by patent lawsuits if the patents at issue were of legitimate technical scope and merit.
As an illustration, let’s look at two hypothetical apps (these are completely made up and likely not new –just pretend they are genius new ideas):
PhotoBomb 1.0 is an app that allows a user to easily tag people and places in photos by touching, or clicking on, a location in the photo and entering the tag information. Even if this were a brand new idea, it is not really a technical problem or a technical solution. The problem is more social, helping people annotate their photos. And the solution is more aesthetic, providing a simple user interface for something that people can already do in many other ways with many other applications (including by printing the photo and writing on it with a pen). Any distinctive value would likely be found in the interface, branding, user base, etc.; and it is highly unlikely that any innovations could be protected with patents. Even if patent protection could be achieved, it scope would likely be too small, or its enforceability too questionable, to provide commercially significant scope or value. Further, such an app would likely be relatively inexpensive to develop, such that the relative expense of patent protection would likely yield poor return on investment.
PhotoBomb 2.0 is an app that automatically tags people and places in photos according to a combination of image processing, social networking and calendar information, and GPS and other location data of nearby personal devices (like cell phones) and landmarks. For example, if you take a photo with your phone in front of Mt. Fuji with your friends who also have their phones nearby, the app can process the image to automatically find and tag Mt. Fuji and your friends, as appropriate. In contrast to version 1.0, the problem and solution of version 2.0 are clearly more technical. Here, the problem is how to automatically figure out who or what is likely present in a photo, and to automatically tag that information in a reliable way. And the solution involves specific integration of complex data mining and processing to address that problem.
Great minds may still disagree about whether this is, or should be, patentable. But I am confident that Version 2.0 would be a much better candidate for patent protection (again, assuming it is otherwise novel and non-obvious).
So there are cases in which utility patents can be used to provide valuable protection for innovative aspects of an app. But there are also many cases in which the most valuable distinctions do not fit with utility patent protection or where utility patents would be a poor use of resources. Whether other forms of IP (e.g., trademarks, copyrights, trade secrets, aesthetic protections, etc.) can be used instead of, and/or in addition to, utility patents will be the subject of a future post.