Prelude

Many software developers approached me and asked, “I developed a mobile app, and how do I protect it?”

“Well, as a developer, you know that your mobile app needs protection, but what protection your mobile app needs?” I asked back.

“I don’t want others to copy it,” the software developer answered. 

Actually, the vulnerability of a mobile app includes not only the source codes, but also in other aspects, such as the user interface, the screen display, the app’s name, and the business model behind the app. What protection can the law provide? Most of software developers will think of patents first. Other might also have heard of copyrights and trademarks.  What are they, and how do they protect your mobile app?

Constitutional Right Offering Protections

The Article I, Section 8 of the U.S. Constitution, known as the Patent and Copyright Clause, provides that “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The “Writings” is now protected under the copyright law, and the “Discoveries” is covered under the patent law, enacted by the Congress. The US Constitution, however, does not have any clause explicitly directing to the protection of trademark. The current trademark law was a statutory enactment by the Congress referencing to the Commerce Clause of the Constitution.

Patents, copyrights, and trademarks are all enacted to provide protections over intellectual properties, including mobile app, but from different aspects and on different parts of the intellectual property. The protections offered by these laws are not mutually exclusive. More often than not, their protections may be overlaid. Therefore, it is possible to adopt patent, copyright, and trademark tools together to maximize the protections over mobile apps. Below, discussion of the patent law, copyright law, trademark law, and trade secret law is intended to give you a broad view and knowledge about these laws. You shall always consult an intellectual property attorney, not only specialized in patent application, but familiar with all aspects of the intellectual property law to give you a comprehensive plan and strategy suitable for your situation. 

Patent Law

Let’s discuss the patent law first, since most of software developers think of getting a patent for their mobile apps. US patent has at two kinds related to mobile apps: utility patent and design patent.  Design patent protects the ornamental appearance of an article, including shape, configuration or surface ornamentation. Utility patent protects the utility or functionality of the article, such as the process, the structures, and the chemical compositions.

When a mobile app has very inventive appearance, icon, or its graphic user interface, it is possible to obtain a design patent for the graphic user interface. At least 150 design patent applications filed in 2015 have received patents in 2016. Famous design patents for icons and user interfaces, include Google’s location marker (USD0645,052S), Apple’s phone dial panel display (USD075,778S), and Apple’s circular displays on its watch screen (USD0,757,084S). As you might have noticed that the examination time is approximately one year. Therefore, application of design patent is one effective way to protect unique and inventive displays and graphic user interface of the mobile apps.

For utility patent, the patent law states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent . . . .” It can be noted that these specific subject matters do not include “laws of nature, natural phenomena, and abstract idea.” Therefore, a discovery of new mathematic equation, a new physics theory, and a new financial transaction method, for example, is not patentable.

Patent Law – Alice in Software Wonderland

From the literal meaning, a software program, such as mobile app, seems able to be fitted into “process,” since users have to follow certain steps to input on a computer, which further processes the input to realize the usefulness of the software program. However, the judicial interpretation of the “process” is different from the software developer’s understanding.  In a recent US Supreme Court’s decision, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), the Court says that a software program is only “an implementation of mathematical principle on a physical machine, namely a computer. . . .” The computer itself does not add any inventive steps into the implementation of the abstract idea.  Therefore, a software program implemented on a generic computer and on generic computer components, such as “communications controller” and “data storage unit,” without “linking the use of the method to a particular technological environment is not patentable. Simply put, the US Supreme Court did not recognize a software program a patentable subject matter if it is only a computerization of a human process. As a result, US Patent and Trademark Office and all courts in the US followed this decision rejecting many software patent applications or invalidating software patents after the decision was made.

Very discouraging, isn’t it?  Many software patent applications were withdrawn after the Supreme Court’s 2014 decision. By withdrawing the patent applications before the publication of application, the developer of those software programs might be able to keep the idea and the process of their software program in trade secret, which is another method to protect a software program. We will discuss trade secret later.

Post-Alice, CAFC light in the end of the tunnel

Having said that, there is a slight hope in recent other court’s decisions making a little bit twist from the Supreme Court’s decision. In two recent software patent litigations in the United States Court of Appeals for the Federal Circuit (CAFC), which is a court below the Supreme Court but above all other federal courts.  CAFC has a great influence to US Patent and Trademark Office’s patent examination. USPTO always issues memos to its patent examiners when CAFC issues decisions that impact their existing review guidelines. CAFC decided that a software program itself is not an inherently unpatentable subject matter. The court, deciphering the Supreme Court’s 2014 decision, and fashioned a two-step analysis (so called Mayo/Alice Analysis) to give some possibilities to patent a software program. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).  The Mayo/Alice analysis, first, is that “given the nature of the invention in this case, we determine whether the claims in the patent application at issue are directed to a patent-ineligible abstract idea.” If the claims of a patent do not recite “a mathematical algorithm” or “fundamental economic or longstanding commercial practice,” it is not an abstract idea. If a software program is determined not an abstract idea in the first step, the analysis is ended, and the software program is patentable. Second, if it fails the first step, the second step “considers that the elements of each claim—both individually and as an ordered combination—to determine whether the additional elements transform the nature of the claim into a patent-eligible application of that abstract idea.” In other words, “to transform an abstract idea into a patent-eligible concept, the claims must recite "more than simply stating the abstract idea while adding the words 'Apply it.'”

Under this Mayo/Alice Analysis, the United States Court of Appeals affirmed two software patents and rejected two patents. The affirmed patent (US 6,629,135 B1) in the case, DDR Holdings, LLC v. Hotels.com, L.P., involves an ecommerce outsourcing system and method hosting website that will incorporate third-party merchant’s website element back to the hosting website to create a composite webpage so that the visitor will not have to exit the hosting website while visiting the third party merchant’s webpage. The court opinioned that the claims do not recite mathematic algorithm, fundamental economic, or a long standing commercial practice. Instead, it addressed a business challenge particular to current Internet: how to retain website visitor. It does not recite a non-Internet method and implement it on the Internet system. It is to resolve the fundamental issue of the Internet. Therefore, the key to pass the Mayo/Alice Analysis is that the mobile app shall not only “computerize” a longstanding commercial practice. Instead, it must resolve the issues already rooted in the Internet, mobile application systems, and ecommerce solutions in the computer world. For example, if your mobile app is to do a stock exchange, food ordering, or recoding your calorie intakes on mobile app, it might have no chance to pass the Mayo/Alice Analysis. You shall exam your mobile app and make change to the mobile app if not meeting this requirement.

The affirmed patents (U.S. Patent 6,151,604 and U.S. Patent 6,163,775) in the second case, Enfish, LLC v. Microsoft Corp. (Fed. Cir. 2016), feature a self-referential table as opposed to relational model of Microsoft’s pivot table in Excel. CAFC said that the patents involve “the steps of configuring a computer memory in accordance with a self-referential table,” which improves computer capacities not merely to use computer as a tool to implement an abstract idea. The patent overcomes the problems of traditional database by providing faster search times, using smaller memory requirement, and increasing flexibility.”  From this, it emphasizes again that the software itself is not to implement a manual calculation on computer only, but it is to resolve the fundamental problem in a conventional pivot table.

In contrast to those two cases ending in positive results, a CAFC case TLI Communs. LLC v. AV Auto., L.L.C., decided five days after Enfish, LLC, for the patent, US 6,038,295, rendered that the software program in the patent is an abstract idea. The ‘295 patent involves a telephone, a transmission system, and a server. The system described in the patent also records images, analyzes the image, categorizes the image, and then stores the image in the server according to the classification determined by the server. It sounds enough hardware components to escape the “abstract idea” trap. No! CAFC stated that the patent claims describing steps of recording, analysis, and storage of digital images are directed to the abstract idea of “classifying and storing digital images in an organized manner,” which is just an implementation of “well-understood, routine, conventional activities.” So, if you argue that your mobile app is not an abstract idea since it involves hardware components, it is not enough. It is, in the court’s eyes, just a computerized manual process. It does not resolve the issues rooted in the computer world.

Tips to Get Software Patent

USPTO has issued two examination memos to the patent examiners to guide their reviews to find whether a software invention application is a patentable subject matter (of course more requirements to meet after the first hurdle of patentability review). You may want to read them to parallel your thought process with USPTO’s patent examiners. See http://www.uspto.gov/sites/default/files/documents/ieg-may-2016_enfish_memo.pdf

and http://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf.

From above two cases and their patents, it seems to see a little hope to overcome the patentability rejection when the invention is aimed to improve the computer technology itself. Therefore, if a mobile app is only to implement a commercial process on the mobile device, such as payment system, food order system, or health management watching calories, it will unlikely to pass the patentability review. But, if the mobile app targets to improve the mobile system, the flow of the Internet, or the mobile device itself, it might get some chances under current instructions provided by the USPTO memos. Having said that, this hope may be dim since it is all new to the patent attorneys and not many, if not none, USPTO’s examination results following these two memos that were just issued in May 2016 have been published when this article is written (July 2016). Also, if those cases are appealed to the Supreme Court and get reversed, those two memos will be discarded and rewritten again. It needs a close watch. This is why you need to consult or perhaps hire intellectual property attorneys, since we watch and follow the court decisions closely.

Other than the patentability hurdle, drawbacks to seek patent protection for mobile app shall be mentioned. It takes a comparably long process and time, at least 2.5 years, to receive a patent. The high cost, approximately $9,000 to $12,000, to draft a patent application and go through the prosecution process may prevent solo software developers from even giving a try. The protection of a utility patent is 20 year from the earliest filing date.  As the lifespan of a mobile app is now around 25 weeks after launch, the software developer might want to consider the cost effectiveness before seeking a utility patent.

Copyright Law

As stated in the Copyright Law of the U.S., “copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression.”  Copyright protects only the expression of an idea, not the idea itself since idea itself is not on a tangible medium of expression. The Copyright Law specifically spells out the items not covered under it:  “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”  Therefore, similar to the patent law, the idea of a mobile app itself is not covered by the law.

So, how a mobile app can be protected under the copyright law? The answer is to express the idea on a tangible medium of expression, which includes the source codes on paper, on CD, or a storage medium, the graphic on the device, sound recording of the mobile app, or audiovisual works on an electronic storage device. Furthermore, the look of graphic user interface or the screen display, if original enough, can be protected under copyright.  The duration of a copyright protection is 70 years after the last surviving author’s death. The examination process is relatively short since, unlike the patent examination process, the Copyright Office reviews only the formality matter, not the substance. The cost is also much, much lower than seeking a patent.

One drawback to seek copyright protection is that the registration of copyright requires submitting a copy of the source codes. However, if a portion of source code contains trade secrete material, the Copyright Office accepts the codes containing trade secret to be blocked out. Another drawback is that if the software program is revised after registration, a new registration for new or revised source codes is required.

As previously mentioned, the screen display of a software program is also registerable. It needs a copy of the screen display to be registered under the literary works, visual arts, or motion picture/audiovisual work, depending which type of work predominates. The registration will extend to any copyrightable screens generated by the program, regardless of whether identifying

material for the screens is deposited.

As the fundamental requirement for copyright protection needs “original works of authorship fixed in any tangible medium of expression,” the copyright protection seems to have less protection than a patent. However, in consideration of its low cost ($35 for single author, same claimant, and one work) and short time (8 -12 months in average) to receive registration, copyright protection might be an alternative protection or a backup protection in case a patent application is rejected.

Trademark

Trademark protects the brand name, logos, or slogans used with goods or services. The goal to have a trademark is to allow customer to identify the source of the goods or service. For a mobile app, the name of the mobile app is one of the successful factors. One study shows that a long app name attracts less numbers of download than a mobile app having short, catchy name. Under the trademark law, a proposed trademark must not cause a likelihood of confusion with a registered trademark. Also a registered trademark must not be merely descriptive, such as Toolbox trademark for a business selling toolboxes. Therefore, it is important to perform a clearance of the proposed mark against the registered mark database, and a distinctness analysis of the proposed trademark. 

The registration fee of a trademark is at least $225 per class of goods or services. The time to process a registration is about one year. Since the cost of trademark registration is comparatively low and the time to pass the registration is not too long, a software developer may also consider the trademark protection as the third layer protection of a mobile app.

Trade Secrete

Trade secret includes “a formula, pattern, compilation, program, device, method, technique, or process, that: “(i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”  This is a citation from a Uniform Trade Secrets Act enacted by the Congress. However, trade secret is implemented in state level, which may enact laws having different requirements. A famous trade secrete case is Coca-Cola’s coke formula that has never patented or registered in copyright office, but it is locked in Coca-Cola’s secret vault. If someone breaks into the vault, peeks into the formula, and use the formula to make same soda, then it is called a misappropriation of the trade secret. A misappropriation of the trade secret is actionable in state court and gets damages.

However, if a person takes a publicly sold product, which is made with formula or by process in trade secret, and uses reverse engineering method to figure out the formula, it is not a misappropriation of the trade secret. This is a legal concept opposite to patent or copyright. Copyright and patent laws gives legal protection from to prevent others from making, selling, or using the registered articles or inventions without explicit permission, but they does not prevent others from learning the knowledge of the registered articles and inventions. For trade secrete protection, the owner of the trade secret must prevent others from learning it and keep it in secret.  If a product, such as a simple mechanical invention that can be dissembled to find how each part works, it is not suitable for trade secret protection because the trade secret owner has no way to hide the trade secret than hiding the product from the public. Therefore, if the invention is a chemical composition that is hard to be reversely engineered to know, then it is a good candidate to seek trade secret protection. For mobile app, some reverse engineering tools can do a good job to crack down a mobile app on certain OS, but not all. It is also depending on the complexity of the source code tools. Therefore, as a software developer, you should know better how easy your source codes are subject to the reverse engineering. However, whether it is hard or not, it adds only a fraction of efforts to protect your mobile app by setting up confidential measures and user’s confidentiality agreements to protect the source codes of the mobile app.

Summary

It is imperative to think that your mobile app needs protection from other’s stealing. However, it does not always have to use patent to protect your valuable mobile app or other intellectual property. Intellectually choose the method suitable to the characteristic of your mobile app, and add more layers of protection, if need, may maximize the protection while saving your cost.

Attorney Changi Wu