Protecting Apps With Patents, Copyrights, Trademarks and Other IP

How to Protect Application Software (“Apps”):

After months of concept work, programming and debugging, you finally have it – a working version of your new desktop or mobile application (i.e., an “app”). You believe this will be the “best thing since sliced bread” – an app bigger than UBER® and SNAPCHAT® combined! You know that there are many programmers who could reverse-engineer your app. You also know that there are scores of large companies that could invest more money than you in marketing and, perhaps, even reach a “critical mass” of users before your app is able to achieve primary market share in its category. You are ready to start beta testing but, before you put your app into someone else’s hands, you wonder if you could do more to protect yourself.

But how do you protect your app? Can an app even be protected? Where do you start?

Fortunately, there are strategies entrepreneurs and programmers can use to protect their apps. In general, different aspects of a desktop or mobile app can be protected using different forms of intellectual property law, namely:

patent law;

trademark law;

trade secrets law.

This article provides an overview of basic strategies programmers and software startups can use to protect the intellectual property rights in an app.

Patenting an App:

With respect to patent law, some apps contain patentable subject matter. Candidly, however, patenting any software in the U.S. is currently something of an “uphill battle” as a result of several Supreme Court cases – but, recently, things have been improving for patent applicants.

Entrepreneurs and programmers should work with a licensed patent attorney to discuss what an app does and how it works in order to evaluate patentability. That being said, in general, recent cases / U.S. PTO practice suggests that the more an app “interfaces” with hardware, the greater the potential for patentability. For example, showing how an app interfaces with: (i) a cloud server; (ii) a desktop computer; (iii) a mobile phone; and/or (iv) other physical assets (e.g., a GPS system in a car); are all possible means of showing such “interfacing.”

Trademarking an App:

With respect to trademark law, the brand name an app is sold under could be protected by a trademark (both a wordmark for the app’s name itself and/or a design mark for graphic or stylized elements of a logo). Additionally, an app icon might also be subject to trademark protection. By way of example, PANDORA® owns trademark rights in the word “PANDORA” as well as Reg. Nos. 5178773 and 4522048 for variations of its app icon, to wit:

and

Prudent entrepreneurs and programmers launching an app startup should seek to secure as many layers of trademark protection as possible – including registering rights in the name of the app, the logo used in connection with the app (e.g., on the app’s startup screen) and even the icon for the app. Inasmuch as trademark rights are territorial, a wise startup should also consider filing applications outside of the U.S. in any country where there are sufficient potential users to justify the expense of filing such foreign applications

Copyrighting an App:

With respect to copyright law, copyright protection could potentially be registered for both the source code of the app and for the overall “look and feel” of the app, i.e., for the graphic user interface output of the app. It may also be possible to copyright stylized / graphical elements in a logo.

With respect to copyrighting the source code of an app, sometimes such code contains important trade secrets. Because copyright applications are public records, filing a copyright application can create issues – allowing competitors access to sensitive information. As a remedy, copyright applicants can choose one of several options in submitting the code to the Copyright Office in order to protect such trade secrets, namely, they can submit:

one copy of the first ten pages and last ten pages of the code (redacting none of the code);
one copy of the first twenty-five pages and last twenty-five pages of the code (redacting any portions containing trade secret material – provided the redacted portions are less than fifty percent of the overall length);
one copy of the first twenty-five pages and last twenty-five pages of the object code for the program, together with ten or more consecutive pages of source code (redacting none of the source code);
if the source code for the entire program is fewer than fifty pages, one copy of the entire code (redacting the portions of the code containing trade secret material – provided the redacted portions are less than fifty percent of the overall length); or
if the source code does not have a precise beginning, middle, or end, twenty to fifty pages that reasonably represent the first and last portions of the code.

By appropriately selecting the copy to be submitted, using allowable redaction, an app can receive all the protections of copyright registration without sacrificing important trade secret protection.

Using Trade Secrets to Protect an App:

Finally, with respect to trade secret law, action can be used to protect both the secrecy of “inner workings” and the “data” related to the app.

As one example, software developers and other employees / independent contractors should be required to sign personnel agreements containing work-for-hire, non-disclosure, non-competition and non-circumvention language. Such agreements prevent developers and other employees / independent contractors from misappropriating critical information such as the structure and operation of an app, envisioned future features of an app, and important user data such as key demographics or user targets.

Similarly, steps should be taken to keep both the “inner workings” and the “data” related to the app secret. For example, user data should be kept confidential and appropriately protected (e.g., using appropriate encryption technologies).

As another example, initial beta testers should be required to sign non-disclosure agreements during the initial development of the app.

By taking such actions, entrepreneurs and programmers can best protect the intellectual property embodied in an app – giving such apps critical protection from competitors and helping to secure market share.

If you or your company are developing an app and need protection, call us today for a free consultation.