Can I patent my app?

Although, patenting software or cellphone Apps is not easy; getting a Patent Pending Number for your App could not be simpler.

There are "rules" one can apply to test if software is patentable ("Inclusionary Rules"). However, these rules are so vague, subjective and difficult to apply that they are seldom of much use. Call any patent attorney and see if you get a clear answer.

Fortunately, there are also "comparatively clear" categories for software that are excluded from being patented ("Exclusionary Categories").

We suggest:

• You start by applying the Exclusionary Categories. If your software idea passes through untouched, your software is most likely patentable.
• Then apply the Inclusionary Rule … if only for fun.

Alternatively, shortcut the process and apply our simple software patentability test:

Exclusionary Categories:

The following categories of software / Apps cannot be patented:

• Software that merely processes information and uses this information to generate reports or messages, or to action a trigger. This is also referred to in the US as:

  "merely implementing an idea with a computer"

  (and, by us as: "merely doing "software stuff"")

  Examples:

  A medical diagnosis App that receives a user's symptom inputs, processes the data through its database and provides a report of possible diagnoses.

  An App that checks the weather forecast for the following day and sends the user a message regarding whether to wear a sweater or take an umbrella to work.

  An App that monitors train delays, and automatically alerts you that a train you've booked is running late.

• An obvious combination of existing software

  Example:

  An App that combines an existing train timetable with an existing bus timetable, to facilitate "stitching" of commuter train and bus journeys.

• Automating what was previously a manual process

  Example:

  Accounting software that automatically downloads bank statements and converts the banking entries into T‐accounts for the general ledger.

• A new application for an existing thing

  Examples:

  Creating a linked‐in type platform specifically focussed on job seekers in the plumbing trade.

  Creating an online Amazon‐type store with products specifically tailored for male babies between 0 and 1 years of age.

  Creating an Uber‐type App for delivering ice‐cream.

• The manner in which your App communicates signals

  Example:

  Communication using SMS, GSM, LTE, 4G data and voice call are all obvious alternatives. So, even if this feature of your App is "new", it will not be regarded as "inventive" (i.e. patentable).

• The platform that your App operates on

  Example:

  Use of iOS, Android and Windows operating systems are obvious alternatives. So, even if this feature of your App is "new", it will not be regarded as "inventive" (i.e. patentable).

• Application of existing software on alternative hardware

  Example:

  Use of desktops, laptops, Apple phones, Android phones, Windows phones and tablets are obvious alternatives on which to run software. So, even if this feature of your App is "new", it will not be regarded as "inventive" (i.e. patentable).

• Purely mathematical algorithm / a new mathematical formula


• Method of playing a game (except in the US)

  Example:

  A new "super‐power ball" option for the national lottery.

Inclusionary Rules:

• Software that has a "technical effect"

  European interpretation: the software should make a non‐obvious technical contribution / solve a technical problem in a non‐obvious way.

  US interpretation: The software must result in improvements to another technology / technical field / the functioning of the computer itself.

  Examples of "technical effect":

  reduces memory;

  speeds‐up processing;

  results in better control over something physical; or

  improves reception / decoding of a radio signal.

• A new "step" in a "method"

  Examples:

  Online banking: Consider the One‐Time‐Pin (OTP) when making an online payment: you instruct an online payment via a computer; you receive an OTP via your cellphone; which OTP you must entered into the computer to finalise the transaction. The following combination of "new steps":

  • (i) sending a "unique ID" (i.e. OTP) to a second device (i.e. cellphone); and
  
  
  • (ii) which "unique ID" is inputted into the first device (i.e. computer) to effect the transaction,

  was patentable.

  Uber: In the past, users would phone taxi companies and order a tax. The taxi company would have access to your caller ID, so it would know your general location. The taxi company would then communicate with drivers via radio waves, and a driver would accept the order. If Uber merely automated this, Uber's system would not be patentable. Uber needed to add a "new step". Uber's system keeps track of the GPS co‐ordinates of its drivers. Accordingly, when it receives your order via the cellphone network together with your GPS co‐ordinates (none of which so far is patentable), Uber uses: (i) its database of driver GPS coordinates; and (ii) your GPS co‐ordinates, to send the order only to select drivers within a predetermined radius of your GPS co‐ordinates. This step was new and would likely have been patentable (albeit that Uber ended up patenting something completely different).

  Tip: consider additional "new and inventive feedback loops" that improve the quality of data / additional "new and inventive steps" that improve the security of a system.

• A "new and inventive" piece of hardware that is incorporated in the automated system.

Tips to filter out the "noise":

When considering patentability of your software / app, ignore:

• That you are targeting a specific sector of the market ‐ from a patent perspective, they are merely "users".
• The type of information that is provided ‐ from a patent perspective, this is merely "information".
• The type of database that is interrogated ‐ from a patent perspective, it is merely "a database containing information".
• Benefits associated with the outputs / reports ‐ from a patent perspective, you have merely achieved an "output / report".
• "new benefits" ‐ to be patentable, your software / App must have a "new" (worldwide) and "inventive" (i.e. not obvious to an expert in the field) feature / method step. Mere benefits (no matter how great they may be) cannot be patented.

Software patent ‐ countries' specific laws

Europe

The software must have:

"a further technical effect that goes beyond the normal technical interaction between the hardware and software"

Note: Amazon's "one click buy" patent was rejected in Europe, as it failed this test.

US

Until 2014, the US Patent Office merely asked:

"Does the software produce a useful, concrete and tangible result?"

However, now US patent examiners are required to:

• determine whether the patent claim is directed at an "abstract idea". If so …
• determine whether any element in the claim amounts to "significantly more" than the abstract idea itself.

Since implementing this approach, the percentage of US software patents that are granted by the US Patent Office has dropped below 5%. It is therefore misleading to look at software patents granted before 2014 to gauge what is patentable in the US.

Japan

The hurdle for software patents in Japan is comparatively low. According to the official Examination Guidelines for Patent and Utility Model in Japan:

"(1) Where information processing by software is concretely realized by using hardware resources, said software is deemed to be 'a creation of technical ideas utilizing the laws of nature'.
(2) Where (1) above is satisfied, the information‐processing device (machine) and operational method thereof, which work in concert with said software, and the computer‐readable storage medium on which said software is recorded are also deemed to be 'creations of technical ideas utilizing the laws of nature'."

The information processing by the software must be concretely realised using hardware resources (e.g., CPU, memory). Mere use of a computer by software is not deemed as "working in concert." (Admittedly, rather confusing)

However, the invention must exceed "the exercise of ordinary creative activity expected of a person having ordinary" programming or business skill. As such, the software patent must not merely comprise "computerisation of a well‐known business method".

China

China applies the "as such" rule (i.e. "computer programs "as such" cannot be patented". However, an "invention containing a computer program may be patented if the combination of software and hardware as a whole can really improve prior art, bring about technical results and constitute a complete technical solution".

South Korea

South Korea permits software patents if the software is recorded on a storage medium and the combination of software and hardware as a whole represents an improvement over the prior art, has a technical result and constitutes a complete technical solution.

The references to "technical result" and "technical solution" is similar to the EU law.

Russia

Russian patent law appears to exclude "computer software ideas" from being patented.

South Africa

According to South African patent law:

"anything which consists of a program for a computer shall not be an invention for the purposes of this [Patents] Act … [this provision] shall prevent, only to the extent to which a patent or an application for a patent relates to that thing as such, anything from being treated as an invention for the purposes of this Act."

This is similar to "per se" or "as such" exclusions in Chinese and Indian patent laws. It is believed that a "technical effect" similar to European law is required.

Australia

Australian patent law requires the software invention to be "industrially applicable". For example, software that is only a procedure for solving a given type of mathematical problem is not patentable.

India

Indian patent law is very similar to South African patent law regarding software patents.

According to Indian patent law, "a mathematical or business method or a computer program per se or algorithms" cannot be patented.

Top Tip:

Get a Patent Pending Number as long as your App is patentable in ONE country in which you intend to trade. Not only will you be able to secure patent rights in that qualifying country, but your Patent Pending Number will also have a significant deterrence value in all the other 176 countries for at least a year.