How to Protect your Mobile App
Authors: Rory Moore; Melody Musoni.
The use of information technology is accelerating in today’s society. Mobile applications (“apps”) are constantly being developed to meet the diverse needs of individuals and businesses. Social media apps are particularly well-known but many others are tailor-made for enhancing business viability or targeting specific interests of consumers. Financial institutions have developed their own banking apps which make online banking possible for every smartphone holder. Government departments make use of mobile apps; in South Africa, for example, the South African Revenue Service (SARS) encourages taxpayers to submit their tax returns online using its mobile eFiling app. There are apps for online shopping, taxi-services, dating, health & fitness, diet monitoring and many other purposes.
Increasingly, developers of apps are approaching Intellectual Property attorneys to find out what protection can be obtained against potential competitors or copiers.
There are several different legal mechanisms by means of which apps can be protected. A multi-pronged legal strategy should be adopted because each of the separate mechanisms has its own advantages and disadvantages. The five main legal mechanisms for protection which will be discussed here are copyright, contractual arrangements, trade marks, trade secrets, and patents.
The software code of an app will be protected under copyright law. In terms of South African law, a computer program is eligible for copyright protection under the Copyright Act (Act 98 of 1978). Features of mobile app software such as the source code, graphics and icons, displays, user interfaces, databases, menus, action screens and general layout are all copyright protected. This protection occurs “automatically” on creation of the work. In other words, the developer does not have to register his or her copyright at an official Copyright Office. Several countries, notably the USA, do make provision for optional registration if the author so desires, in order to “strengthen” his or her claim to the copyright. However, such registration is not compulsory.
It is advisable to apply a copyright notice to a work in order to put the public on notice that the copyright holder reserves his or her rights to the copyright. It is also advisable to get certain documents signed by the author(s) and intended owner(s) of the copyright, and to keep these on file for future use. This can reduce the risk of disputes arising as to the identity of the copyright owner and the existence or otherwise of the copyright in the first place. Such documentation can be invaluable to serve as evidence in the event of litigation. The two most important documents to consider in this regard are a Deed of Assignment and an Affidavit of Original Work. Regarding the first item, the Deed of Assignment, the South African Copyright Act provides that the copyright in a work cannot be assigned1 unless such assignment is reduced to writing and signed. Until that time, the ownership of the copyright will generally vest in the author, who may not be the party who has paid for the work. For example, in the case of an app the author will often be the actual programmer (coder) or the company for which he or she works. In order to retain control over the target market and the distribution of the app, it is necessary to transfer (assign) the copyright to the party who has actually paid for the work. We strongly recommend to our clients that if they conceive of an app and outsource its development to a third party developer, that they make sure a Deed of Assignment is drawn up and signed by the developer so that the copyright in the app is transferred (assigned) across from the developer to the intended owner, the actual “conceiver” of the app.
Regarding the second item of documentation mentioned above, i.e. the Affidavit of Original Work, this is an Affidavit which should be deposed by the author – i.e. the coder, programmer or developer in the case of an app. The main purpose of this document is to serve as evidence, should it ever be required, that the app software was the original work of the author and developer. “Originality” of the work is a pre-requisite for copyright to subsist.
At Moore Intellectual Property we have the necessary knowledge and experience to draw up these types of documents for our clients. Please contact us for further information.
It is advisable to place copies of the source code and any other important aspects of the app (application screens, user interfaces, etc.) with an attorney. The attorney should be asked to date-stamp the deposited works as they are received, to serve as evidence of the approximate date of creation of the software, etc. Developments and additions to the copyrighted work (e.g. new source code, menu lists, application screens, graphics, icons, artwork, user interfaces, etc.) should also be placed with the attorney. We are able to assist in this regard.
One downside of copyright is that it is a relatively narrow form of IP protection; it cannot be infringed unless actual copying of the app takes place. If a competitor develops their own software to achieve a similar outcome as one’s copyrighted program, and creates their own graphics, artwork, user interfaces, etc., then it would be possible for them to escape infringement of the copyright. It is therefore advisable to supplement one’s copyright protection with other types of legal solutions if these can be justified by the available budget and the anticipated commercial potential of the app. In other words, it is advisable to have as many legal “strings to one’s bow” as one can afford.
This brings us to contractual arrangements. Service level agreements can be put in place with developers. Sometimes these need to be carefully negotiated. Software authors and outsourced developers can be reticent to part with the copyright in certain aspects of a software project, such as various modules and routines of their code, since those aspects may have the potential to be used for future programs outside of the narrow field of your app. Also, much of a software program can consist of open-source code routines; or the author may incorporate routines which they themselves have previously developed for unrelated projects. It will be appreciated, therefore, that it is often impractical for an author or developer to hand over the entire copyright in a commissioned work. It is therefore important to stipulate precisely which aspects of the software are to be covered by the contractual arrangement and which not.
Trade Mark Protection
Applications for registration of trade marks can be lodged at the Trade Marks Office in order to protect the name(s) of the app, its logo and any associated tag-lines or catch phrases. We have extensive experience in the filing and prosecution of trade mark applications through to registration.
Any know-how which does not need to be released to the public should be kept confidential. Especially during the earliest phases of the app development, non-disclosure agreements (NDA’s) should be put into place with any parties to whom confidential information is going to be disclosed. Although it is preferable to have a professional draw up the NDA, if this is not practical or available then even a short, hand-written undertaking which can be obtained from the receiving party is better than no protection at all.
One of the deficiencies of copyright protection is that it does not prevent others from reverse engineering one’s software to create their own application (as long as they do not copy the product). As a result, app developers also often seek to apply for patent protection. The main challenge with patenting mobile apps in South Africa, however, is that the Patents Act2 excludes a computer program per se as valid subject matter for a patent. However, this provision has not been tested by the South African courts and it is understood that it will narrowly construed when the matter is eventually decided, inter alia because the Act provides that the restriction applies only to the extent that a patent “relates to that thing as such.”
Europe has a similar rule excluding the patenting of computer-related systems, but this has not precluded the grant of patents in that field so long as certain minimum requirements are met. The European Technical Board of Appeal has dealt with several cases relating to software patents and has generally adopted the approach that if a computer program is able to solve a technical problem through a technical solution, such a program can be patented. The EPO therefore submits computer-implemented inventions to a “technical effect” test.3 The requirement for such a “technical effect” is now further understood to mean the following:
- There must be a material effect (a “transformation of nature”).4
- “A computer program claimed by itself is not excluded from patentability if it is capable of bringing about, when running on or loaded into a computer, a further technical effect going beyond the “normal” physical interactions between the program (software) and the computer (hardware) on which it is run.” (T 1173/97 and G 3/08).
- “Likewise, although it may be said that all computer programming involves technical considerations since it is concerned with defining a method which can be carried out by a machine, that in itself is not enough to demonstrate that the program which results from the programming has technical character; the programmer must have had technical considerations beyond “merely” finding a computer algorithm to carry out some procedure.” (G 3/08).
- “A further technical effect which lends technical character to a computer program may be found e.g. in the control of an industrial process or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link.”
- [An algorithm used for encryption would, for example, be considered to have a technical character and would overcome this hurdle.]
- “A computer program implementing a mathematical method that itself makes a technical contribution (see G‑II, 3.3) would also be considered to be capable of bringing about a further technical effect when it is run on a computer.”
Software patents are currently being granted leniently and regularly in Europe.
In the USA and Japan software patents have always been available. However, in the USA computer programs will be unpatentable if they simply constitute mental processes and all the steps could “be performed in the human mind, or by a human using a pen and paper.”5 It is insufficient merely to tie the program to the Internet as an attempt to pass the so-called “machine-or-transformation” test. Adding “mere data-gathering steps” involving the Internet does not change the fundamental nature of the method and make it patentable. In Japan, merely computerizing a well-known business method will not lead to a patent on the method.
South Africa is likely to take guidance from the European precedent when the corresponding provision eventually comes before court. A product, process, or method which may be implemented on a computer and which evidences a “technical effect” would in our view be considered to be patentable provided that the other standard requirements of novelty, inventiveness and utility are also met.
In view of the exclusions mentioned above, it is very important that a clearly identified new technical feature be present in an app and its related systems. If you conceive of an app you should consult a patent attorney prior to making any non-confidential disclosure of the proposed invention. An assessment can then be made as to whether a technical advance can be identified, in which case it may be advisable to consider filing at least a provisional patent application. Thereafter, during further development of the app an eye should be kept on the progress thereof so that, if a new technical step surfaces, it can be added and claimed as subject matter of the complete patent application, or by way of a further provisional patent application. The new step should be kept confidential until that is done, otherwise the inventor and/or owner may lose their rights.
Note: Since software apps often provide business solutions, it should be pointed out that the South African Patents Act also excludes methods of doing business as such from patentability.6 Again, however, the Act requires that this exclusion be interpreted narrowly.
South Africa has a depositary patent system, meaning that the South African Patent Office does not examine the validity of a invention (i.e. its novelty and inventiveness). This means that as long as the patent application meets formal requirements, a patent for a mobile app will be granted despite the above concerns. However, it must be appreciated that any granted patent may be susceptible to attack and revocation in court.
Prior to embarking on any extensive patent filing programme it is advisable to get an international novelty search carried out. These can be obtained for approximately the same price as a provisional patent application and can save money in the long run by giving an indication of the likely scope of the invention, or if indeed any invention is to be found at all in the proposed app. Our advice would be to have a search conducted prior to the filing of one’s first patent application, if time permits and there is no immediate and urgent need to apply for the patent. However it is critically important to keep one’s invention strictly secret whilst such a search is underway and up until after the date of filing of the first patent application at least, otherwise one’s rights may be lost. If time or circumstances do not permit that a search be conducted prior to filing we would certainly recommend getting a novelty search done as soon as possible after the filing of the provisional patent application. The reason for this is to get an assessment of the viability of one’s proposed invention well in advance of the time at which significant costs become payable, typically the costs for foreign patent applications. We have a well-established infrastructure for carrying out comprehensive international novelty searches.
The commercial potential of an app should always be considered before embarking on a patent programme. Whilst some apps have been highly successful financially, the vast majority are not. If the likely financial return from an app is not expected at least to cover at least the cost of filing, prosecution and maintenance of patents, then it makes no financial sense to embark on a patent programme and it may be preferable to rely on copyright, trade mark and trade secret protection, bolstered by establishing a lead in the market and by maintaining that lead through ongoing innovation.
In assessing the commercial potential of an app, the following factors may be taken into account:
- The vision for the app. How many people or businesses are likely to download and use the app?
- Is the mobile app a necessary tool that people would actually want to use in the long run? Many apps offer little more than a diversion. Initial interest can wane quickly if an app offers nothing more than a fleeting distraction or piques the interest temporarily.
- Does the app provide a solution to a problem which is not offered by other avenues, or which is simpler than the pre-existing solutions?
- Is there a new technical feature that the app provides or is it simply regurgitating an existing written process in electronic form?
- Are there any other mobile apps closely similar to the app? If there are, is the app more advanced than the competitors’ apps?
- What is the likely “shelf life” or expected lifespan of the app? Will the app have a lifespan exceeding 3 years? A business idea with a short lifespan is arguably not worth patenting. In several countries and regions, patents can take 3 to 5 years to be granted (if indeed they are granted at all).
Contact Moore Intellectual Property for further advice on how to protect your app.
- Act 98 of 1978; Section 22 (3)
- Act 57 of 1978; Section 25 (2) (f)
- European Patent Office Guidelines for Examination; http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_6.htm
- Dhenne, M. (2016). Technique et droit des brevets. L’invention en droit des brevets. France: LexisNexis. pp. 82 ff. ISBN 9782711024100.
- CyberSource Corp. v. Retail Decisions, Inc., 2009-1358, 2011 WL 3584472 (Fed. Cir. Aug. 16, 2011).
- Act 57 of 1978; Section 25 (2) (e)