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App patents: Dispelling the myths

With sales from apps for smart devices worth more than £4 billion to the UK economy, patents are vitally important for developers and consumers alike, given their importance for protecting investments and promoting innovation.

If you are an app developer, you may be aware that UK and EU laws appear to exclude ‘programs for computers’ from being patented. If so, you could be forgiven for thinking that apps can’t be patented.

But this exclusion should not be taken at face-value. The devil is in the (legal) detail and many software inventions are in fact patentable.

In 2015, the European Patent Office reported the allowance of 2,438 software-related patents, 65 of which originated from the UK. In practice, many jurisdictions grant patents to at least some apps.

What makes an app patentable?

In most jurisdictions, for an app to be patentable, it must solve a technical problem in a novel and inventive way. Non-technical effects such as the names of data fields, the normal physical effects of a program (in the form of electrical currents), and purely financial, commercial, mathematical or administrative effects are unlikely to be sufficient.

However, an app solving a financial, commercial, mathematical, or administrative problem may also solve an underlying problem which may be patentable. The question is whether the underlying problem is technical in nature.

It is difficult to generalise about which technical effects can be patented but examples may include those that:

  • Improve the function of a computer, such as making it run faster, reducing the need for resources, or making it easier to use or programme
  • Cause a computer to operate in a new way, such as changing the architecture of the basic computer in some way, creating a new component or the specific order of a new process
  • Overcome specific technical issues to deliver an app that provides the desired functionality
  • Are outside the computer, such as improving the utility of a device for consumers
  • Would happen, regardless of the type of data being processed. For example, an app may apply a new method of data compression to data relating to financial transactions, but it would also be possible to apply the new method to scientific technical data, despite not being the purpose of the app

App features that may be patentable include:

  • Data encoding, encryption and compression
  • Data storage and retrieval
  • Image, video, and audio signal processing
  • User interface techniques such as gesture recognition

Of course, these may arise in apps where they are not the primary function; a messaging app might conceivably include inventive encryption, image processing and gesture recognition features, therefore being potentially patentable.

Apple’s ‘Photo Bounce Back’ patent

Apple’s European patent EP2059868, also known as the ‘Photo Bounce Back’ patent, is a useful example of technical effects in an app which, perhaps surprisingly, can be patented. The patent relates to the effect used in Apple’s iOS Photos app that means a zoomed-in photo appears to bounce back to its original position when moved around the screen and then released.

The patent was granted by the European Patent Office, which considered that the ‘bounce back’ feature provided a novel method of manipulating a zoomed image. The computer software used to implement this effect was found not to be excluded as it improved the operation of the device.

Although this patent has subsequently been challenged in Germany on the grounds that the invention had been publicly disclosed before filing a patent, no one has successfully challenged the patent on the grounds of it being excluded subject matter.

How a patent attorney can help

Assessing whether your app has a technical effect for patent purposes can be very challenging and it can be easy to miss patentable features. This is where the advice of a patent attorney from an early stage can be invaluable.

Developers have an understandable tendency focus on the end-use of their app. A patent attorney will assess an app with a view to identifying patentable features, to determine whether a patent application will be worthwhile.

They will also assess whether new features are inventive. Developers frequently consider features to be trivial which are in fact inventive for patent purposes. These distinctions can be the difference between the full protection of a patent and none.

A patent can help avoid pursuing an expensive development process only for someone else to profit from your investment.

Adding value to your business

The benefits of patenting apps go beyond protecting future revenue. Patents can add value to your business and assist in fundraising.

In some cases, they also bring tax advantages. In the UK, there is a preferential tax regime in place for profits arising from patents, known as the Patent Box. This enables patent-holders to apply a ten per cent rate of Corporation Tax to profits that fall within certain requirements.

Given the sums potentially at stake, the opportunities which may be being missed, and the complexity of the process, developers should consult a patent attorney early on in the development process.

While this article addresses the issue from a UK and EU perspective, the principles will be similar in many jurisdictions. However, what can be patented varies from place to place and a patent attorney will be able to provide opinions, draft any patent applications for you, and deal with procedural steps on your behalf - ultimately maximising the returns on your investments.

Kate Voller is a Trainee Patent Attorney at Cleveland IP