A common patent enquiry is one that involves the possible protection of an app. Of course, an app is simply a software product, primarily designed to be executed by a smart phone.

The law has changed significantly in the last few years. The authorities are starting to look at the “substance” of an invention. Even though patent claims are directed to technical material, they may still fail to define patentable subject matter because what they are trying to do is to claim, say, a business method, using technical terms. See, for example, this excerpt from the well-known “Myriad” case (D’Arcy v Myriad Genetics Inc [2015] HCA 35 (7 October 2015)):

“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”

Also, in the 2015 case of Commissioner of Patents v RPL Central Pty Ltd (“RPL”), [2015] FCAFC 177, the Full Court of the Federal Court stated the same thing in the context of an invention that was in substance a scheme. At [96]:-

“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed.”

An app is a software product and so does fall within the category of products that can be covered by a patent. But what does the app actually do? As a general rule, if  the app just receives information, re-arranges it and then presents it, then it might be difficult to convince an examiner or a court that the invention is patentable subject matter.

How clever is the app? A patent examiner or a court is more likely to favour an invention in which the mobile device is used to perform some relatively complex or clever algorithms. So, for example, if the app is a directory-type app, it is less likely to attract patent protection than an app that is capable of predicting stock price changes using heuristic algorithms. Even so, such latter applications may still not pass muster if they are, in essence, business methods.

Then there’s the timing. It could take up to 4 to 5 years to achieve patent protection. Some apps have been around for that long and are proving to be very successful. Others tend to fizzle out after a few years, even if they have generated significant cash flow during that time. While it is possible to put competitors on notice once a patent application is published, it might be difficult to obtain a damages award for the period that the patent application was pending. Of course, many investors will require that a patent application is filed. But if that’s not in the business plan, then that time factor does require consideration.

How will the patent be enforced? A patent application must set out a full disclosure of the invention and how it is to be enabled. However, an infringer does not have the same obligation. The app may be of the type that would indicate clear infringement just from executing the copy. But there may be cases in which one simply cannot determine whether or not the invention is being copied, even though market share is being lost.

And never forget the cost. It can be expensive to have a patent application prepared and filed for a software product. Not only that, but the cost of prosecuting the application through to grant of a patent can also be costly. This is a function of the difficulty in writing software patent specifications. It is also a function of the fact that there seems to be a large amount of art out there which is difficult to filter and analyse. While the examiners are improving, it can be difficult to convey an understanding of the invention to an examiner.

So, at the end of the day, careful consideration is required before deciding to file a patent application covering an app. The journey can be harrowing without a generous budget and a product that is relatively sophisticated from an algorithmic point of view.