While you can patent an app, patenting may not always be your best intellectual property strategy.  Before pursuing patent protection, you need to answer two critical questions:

• Is a patent the best way to protect your app?
• And is your app eligible for patent protection?

These considerations are explored in detail below.

Is a patent the best way to protect the app?

Patents can be very powerful as they provide exclusive monopoly rights for the patent owner in relation to the invention covered by the patent.  However, before filing a patent application for an app or software, it is important to consider if retaining the invention as a trade secret instead is a better commercial strategy.

The main reason for considering trade secrets is that patents must contain complete information to allow a third party to implement the invention, and all this information is published as part of the patent application process.  This disclosure is irreversible – once your patent application is published, trade secret protection is no longer an option.

For software and apps, the underlying source code, instructions and data used to run the app are not typically available to end users.  This can make them very difficult for a competitor to reverse engineer.  For example, an app that uses a specific trained artificial intelligence (AI) model might be impossible to reverse engineer without the specific data used to train the AI model.  This is particularly acute for machine learning-based apps where the training data itself represents the core trade secret.

Consequently, for certain software and apps where reverse engineering is very difficult, keeping the underlying invention a trade secret can be a better option than patent protection.  This allows the business to retain the technology for itself indefinitely as long as secrecy is maintained.  In contrast, while a patent will provide protection initially, after twenty years the patent expires and anyone can then implement the invention.

The main downside to trade secrets are that they do not prevent others from independently developing the same technology.  Additionally, it can be difficult to ensure the secret does not leak out of the organisation and once the secret is out, there is no further protection for it.

Is the app eligible for patent protection?

Even if you think a patent is the best way forward for the app, a patent will not be granted unless you can show that elements of the app are eligible for patent protection.

As you may be aware, there are statutory exclusions that prevent patents for inventions which solely relate to:

• a scheme, rule or method of doing business or playing a game;
• a program for a computer; and
• the presentation of information.

So, to obtain a patent it must be shown that there are parts of the app which have technical character and do not simply fall into the above exclusions.

Identifying technical character

The best way to identify features with technical character is to identify a technical problem solved by the app, and then work back to the features which enable the app to solve the technical problem.  The problem itself should be technical and not just a method of doing business or reformatting of information.

Good technical problems can often be found to exist outside the app itself.  For example, a good technical problem could be: how to make an accurate measurement of the size of a room.

An app which then allowed you to do this with a mobile phone is very likely to have features with technical character.

In contrast, an app that simply automates a business workflow – such as scheduling appointments or processing invoices – would struggle to demonstrate technical character, as it is solving a business problem rather than a technological one.

It is worth noting that failure to demonstrate technical character is one of the most frequent reason for software patent rejection. This step is therefore critical in determining if a patent is right for the business.

Novelty and inventive step

Once you have identified technical features, the patent will only be granted if these technical features are both novel and inventive.

Novelty means that the app has elements that have never been publicly disclosed prior to the filing date of the patent application. Inventive step means that these novel elements would not arise from an obvious modification of something publicly disclosed prior to the filing date.

This requirement is particularly important for software: an app might solve a problem elegantly and deliver significant business value, but if the underlying technical approach is already known, even a well-designed user interface will not justify a patent. The innovation must lie in the technical solution itself, not merely in its application.

Conclusion

The strategy for protecting intellectual property in apps is highly fact-dependent, with divergent advantages between patents and trade secrets. Given the complexity of these considerations, it is essential to make the right choice before launching your app. Early-stage consultation can prevent costly mistakes and ensure your protection strategy aligns with your commercial goals.

Whether you are at the concept stage, preparing to launch, or reviewing an existing app, we recommend contacting us to discuss which intellectual property protection strategy best meets your business objectives.

Further information about patents can be found in our article: 5 most frequently asked questions about patents – IP Insights

Download our patents leaflet: Download: Patents leaflet – IP Insights – Wilson Gunn