Intellectual Property Considerations for Mobile Software Applications (APPS) Michael G. Lewis Regional IP Attaché for Mexico, Central America and the Caribbean U.S. Patent and Trademark Office

What is an App

HISTORY OF APPS

HISTORY OF APPS

Explosion of Apps • In 2008, Apple launches the App store and developers rush to create software apps for mobile devices. • The apps economy stats are pretty staggering. In first quarter of 2013 alone, the app downloads amounted to more than 13.4 billion across four major stores – Apple App Store, Google Play, Windows Phone Store, and BlackBerry World – equaling $2.2 billion in revenues

Intellectual Property Protection Considerations for Apps – U.S. Analysis

In the U.S., software can be protected by a patent or a trademark:

Copyright Protection for Software Copyright Protection Scheme •Copyright protection exists in “original works of authorship fixed in a tangible medium of expression; •An authors copyright ownership rights exist without going through the registration process;

•Copyright registration process is inexpensive and less complex than the patent registration process;

Copyright Protection for Software •Software Source Code can be registered as a Literary Work (written code) •Fast Process - Copyright registration takes 4-6 months at the U.S. Copyright Office •Protection term: Life of the author + 75 years

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Copyright Protection for Software Scope of Protection: • Unlike a patent, a copyright protects originality rather than novelty or invention. • Just as a patent affords protection only to the means of reducing an inventive idea to practice, so the copyright law protects the means of expressing an idea; • However, if the same idea can be expressed in multiple ways through computer code, a plurality of copyrights may exist, and no infringement will exist.

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Copyright Protection for Software

It is now well-accepted that copyright protects computer programs and other digital information, whether they are in readable source code form or are an executable program that is intended to be understood only by a computer.

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Copyright Protection for Software

Reverse Engineering Software: a method by which an individual or group study the software and try to deconstruct it in order to find the source code.

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Copyright Protection for Software

Sega v. Accolade – Reverse engineering to determine the functional aspects of computer software is a FAIR USE and does not violate copyright law. 3/6/2015

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Copyright Protection for Software Outside the Scope (Protection for Apps) • Protection does not extend to open source code aspects of the software; • A software development kit (SDK or "devkit") is typically a set of software development tools software development that allows the creation of applications applications for a certain software package.

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Patent Protection for Apps Are Apps Eligible for Patent Protection in the U.S.: YES • Software Patents are issued for process and apparatus, which are determined to be novel and non-obvious - Patents are not granted for abstract ideas. 3/6/2015

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Patent Protection for Apps Patent Eligibility Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.

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Patent Protection for Apps Software Patents can protect innovations, such as: • enabling-automated language translation, • voice recognition, and • video compression All of these products involve major technological advances, all of which can be implemented in software. 3/6/2015

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Patent Protection for Apps Considerations for Patenting Apps •$$$$ Expensive •Time consuming – Average Patent Pendency is approximately 26 months •Speed of innovation outpaces patent protection model 3/6/2015

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Patent Protection for Apps Common Practice for Protecting Apps via Patent Process: • Filing a Provisional Patent Application - provisional application for patent is designed to provide a lowercost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements. • Determining the economic viability of the App before filing for a non-provisional application.

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Patent Protection for Apps Recently the U.S. Supreme Court further defined the patentability of software: Alice v. CLS Bank – in a unanimous decision authored by Justice Thomas the Supreme Court held that patent claims that are drawn to a patent-ineligible abstract idea are not eligible for a patent under Section 101 of the U.S. Patent Law. 3/6/2015

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Trademark Protection for Apps A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

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Trademark Protection for Apps Trade Dress

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Trademark Protection for Apps Trade Dress •The design and shape of the materials in which a product is packaged. Product configuration, the design and shape of the product itself, may also be considered a form of trade dress. •The Lanham Act protects trade dress if it serves the same source-identifying function as a trademark. It is possible to register trade dress as a trademark, but for practical reasons most trade dress and product configurations are protected without registration under 15 U.S.C. § 1125(a). 3/6/2015

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Trademark Protection for Apps Free Flow

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Think Cube

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Trade Secret Protection for Apps • Trade Secret Protection is ideal to protect source code because it simply requires that the developer take reasonable efforts to keep the code a secret, such as having agreements with people who might have access to the code. • No formalities or registration is required to receive protection under state statutes. 3/6/2015

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Trade Secret Protection for Apps Two requirements for an App to function as a Trade Secret: 1. Must have economic value because it is not generally known; 2. Reasonable efforts must be taken in order to maintain the secret.

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