IT and intellectual property - how to protect your app

Lionel Sebastien Parisot
European Trademark and Design Attorney working as Trademark and Design Agent at Attorney Tomislav Hadžija in cooperation with Dennemeyer & Associates

In the booming global IT economy many app developers ask themselves what can I do to protect my app and safeguard my intellectual property? This question, however, seams to come only too late. The cause of this problem is mostly lack of understanding of intellectual property law and how can one make it work for them. In the following lines, we hope to help anyone searching for the explanations by providing the most relevant things to understand/know about IP and IT love-hate relationship. So, let’s start with a baseline.

Speaking of an “app”, Techopedia defines it as computer software, or a program, most commonly a small, specific one used for mobile devices. Now, referring to the definition of intellectual property (IP), The World Intellectual Property Organization (WIPO) defines it as creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. There are, of course, various types of IP which can be useful, each in its own way, for protecting your new app, namely copyright, patent, design and trademark.

But the real question is, what does protection means? Copyright will grant you protection regarding your content — source code, images, etc., if it meets certain requirements. These requirements are set out in the Berne Convention for the Protection of Literary and Artistic Works, which has 151 member states. This means that if you meet the conditions in the Berne Convention, you will be protected in 151 states. Although some might find it counter-intuitive that software is protected as literary work, this has been confirmed with Article 10 of The TRIPS Agreement and Article 4 of the 1996 WIPO Copyright Treaty (WCT), stating that computer programs, whether in source or object code, shall be protected by the Berne Convention. The Berne Convention doesn’t require any formalities such as registration or the deposit of copies for copyright protection. Copyright protection is granted from the sole fact of the creation of the content. You can, however, deposit your work to prove more easily your copyright, but that is in no way a prerequisite. Copyright protection extends to any element of expression of the creativity of its author but not to the ideas behind it, procedures, methods of operation, or mathematical concepts as such. Copyright will protect only the computer program in the form written by a programmer, not the algorithm, nor the functionality, the programming language used… Copyright automatically grants protection to the author (programmer), so if you want to have copyright over something you didn’t create yourself, have a good contract drawn up to transfer those author’s rights to you. If you are using someone else’s code (either open-source or under a public license) be sure to closely read the terms of use, otherwise you might end up in legal trouble. “Open-source” doesn’t automatically mean free to use for profit. The benefits of copyright are a long protection time and that no formalities are involved.

A patent could be used to help you protect the function performed by your app, however patenting software can be tricky. Article 52 of the European Patent Convention excludes software from patentability to the extent that a patent application relates to a computer program as such. However, this doesn’t cover “computer-implemented inventions”. The EU’s IPR Helpdesk defines those as “inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one or more features realised by means of a computer program.” If your invention meets the requirements: technical character and inventive step, in addition to being new and undisclosed - it could be patentable. Keep in mind there is no such thing as an international patent, which would grant international protection, in a way the Berne Convention does for copyright. The fact you have a patent in Germany or the UK, does not prevent someone from using it in China, Japan or USA and vice versa. Patent protection will in the end need to be sought at a national level, maintained in force annually in each country, and these procedures are not cheap. The process of patenting can be lengthy and costly, usually several years long. Patenting should be considered only when serious money is involved. Also do not disclose anything related to the invention before filing, because it could ruin your chances for patent protection. For further information, contact a patent attorney to fill you in with the details.

Design can be used to protect the visual part of your app – it’s looks, colour-scheme, fonts… Although if those are new, they are also covered by copyright. A design usually has to be registered (there are unregistered short-term variants – e.g. 3 years in the EU). In Europe a design can be protected for 5-year terms, renewable up to a maximum of 25 years.

Trademark protection is what you need to protect your “brand”, the name of the app, a logo, maybe a slogan, if any of these can be used to distinguish your enterprise from another. Trademark will protect you from others using your registered name/logo. It also must be registered. Trademarks can last indefinitely, as long as you renew them.

As you can see a variety of options are available for protecting your app (code, function performed, appearance, name of the app…). The easiest one is copyright, and the most complicated and expensive being patenting. Design can protect your visual appearance and trademark will prevent others from using your registered name or logo, which makes you recognizable in the market. What you want and need depends on you, but seeking legal counsel is always a good idea, although don’t do it too late in the process or you might have ruined some chances for protection. Always focus on what is your target market and make your decisions based on that. Even if you trademark your logo or patent your invention in every country (which is expensive!), it is still up to you to ensure no one is violating your rights. You are the one who is going to have to protect your rights, if infringed. That’s why a good market analysis is important for an efficient IP protection strategy. Good IP protection always starts early in the process!