Christopher Juhasz, Senior Associate
Wrays Perth
You can’t do that…can you? You can and they have!
In some areas of patent law, you may find certain things surprising, controversial and some say shouldn’t exist. Things like patent protection for new software applications or “apps” for smartphones and other mobile devices that innovators such as Apple, Inc are obtaining.
For example, Apple now owns US Patent 8,083,643 entitled “Systems And Methods For Accessing Personalized Fitness Services Using A Portable Electronic Device”. A copy of the published patent can be found at [insert link]. In plain English, the invention is an app that allows the user to access information about a fitness centre, gives the user incentives to join the fitness centre, and motivates him/her to use the fitness centre.
Sure, many apps, including this one, do not solve what could be considered first world problems. That doesn’t mean that they can’t be valuable. Apple’s iTunes Store has monthly sales of $200 million upwards!
If something is valuable, or is potentially valuable, competitors will most likely want to imitate it. This is where patent protection becomes most important.
Depending on the commercial circumstances and nature of the app, one approach would be no patent protection at all. For example, your business plan may account for imitators entering the market after you, and such competition is of no concern. Alternatively, you may plan to rely on speed, where you will be the first to market and have enough users adopt your app fast enough that your share of the market is difficult to dilute. In such a scenario, your trade mark(s) and branding will be what assists you in maintaining your position.
Of course, everything may not go to plan.
Shortly after your app is available, competitors may see it, discover how it works, and develop their own app that does essentially the same thing. Their app may go viral or become the product of choice for the industry, whilst yours is largely ignored. Unless they have actually copied your software code or screen shots, or they look the same or very similar to yours, copyright will be of little or no assistance in stopping the app or negotiating a beneficial commercial outcome.
Patent protection provides a mechanism for taking such action, and many innovators are budgeting for at least a provisional patent application for their app invention. Seeking patent protection can be complementary to the approach outlined above. It is the nature of many apps that, once released, it is possible to judge quickly, how successful it will be. The twelve months provisional protection provided by a provisional patent application may be enough for you to determine that the app is a fizzle, or so outrageously successful that your dominant position can become unassailable. In either circumstance, a decision may be not to pursue patent protection beyond the provisional stage.
Alternatively, during the twelve months afforded, a competitor might develop and launch their own version of your app that enjoys outrageous success (and that in fairness should be yours). A provisional application will then provide you with options to deal with the competitor and achieve a desired outcome. This could include selling or licensing the app, or in extreme cases commencing patent litigation (once the application has proceeded to a patent).
In this manner, seeking patent protection can provide a lever for dealing with competitors that would otherwise have nothing to do with you. Whilst it is true that software and business method inventions are a developing area of law, protectable in different countries to differing extents, this uncertainty can act in the favour of those seeking patent protection. It would have been a very bold competitor who carried on providing a fitness app falling within the scope of the claims of Apple’s US Patent 8,083,643 in the belief that “you can’t get patents for apps”.
For more information please contact Chris Juhasz at Christopher.Juhasz@wrays.com.au.