Protecting intellectual property in 2022 is far removed from patenting a new invention such as a lightbulb or ballpoint pen. Although creating a robust brand is now important for even the smallest of businesses, thanks to social media, trademarks are more likely to be applied to an app name, sound, or logo as opposed to a new fizzy drink. Intellectual property management is essential for all technology-based companies. Upon reading this sentence, you may, however, have several questions. Is software intellectual property? Can an app be covered by a patent? What about design rights – do they apply?
Our Intellectual Property Solicitors regularly advise and represent tech companies on intellectual property matters. To help you gain a good understanding of what can be a highly complex area, they have put together the answers to the most commonly asked questions.
What is intellectual property?
First things first – what actually is intellectual property? The World Intellectual Property Organization (WIPO) defines intellectual property as referring to:
“..creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
IP is protected in law by, for example, patents, copyright, and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.”
Can software and apps be protected by intellectual property rights?
An app is essentially a software programme. The source code of any software is automatically protected by copyright law.
If a developer employed by your organisation creates new code for a particular piece of software or app, the copyright of the code belongs to your business unless you sign it over via a written agreement to a third party (most often this is a client who has purchased the software).
If you have instructed a freelancer to develop the code it is vital that you have an agreement in place before work begins stating that the copyright of the code belongs to your company.
Can I protect the design elements of my new app?
The creative parts of an app are not limited to the written code.
The icons, Graphical User Interfaces (GUI), and artwork may also be unique and form an important part of your business’s overall brand.
If the design is new and individual in character you can protect it by registering for a design right. The application for a design right is made at the UK Intellectual Property Office. If registration is successful your design will be registered for five years. You can renew the registration every five years thereafter for a fee, for a maximum of 25 years. If a person or company infringes on your registered design you can apply to the Court for an injunction to stop the defendant from continuing to use your designs and/or compensation in the form of damages for lost earnings or an account of profits made through the infringing use of your design.
Design rights can also arise automatically, and these are known as unregistered design rights. Unregistered design rights can apply to GUIs, however, you must ensure you create an article as per the design and sign and date a document recording the design.
Can software be patented?
To be protected by a patent in the UK an invention must be:
- new,
- involve an inventive step, and
- be capable of industrial application.
Technically, software is not able to be patented because it is not a ‘new invention’. A patent can be obtained for an invention that is implemented by a computer program, however, the test applied is whether the invention makes a technical contribution to what is already ‘out there’ in the market.
Applying for a patent to cover software should be carefully considered as the disclosure of your software in the application may benefit your competitors. An Intellectual Property Solicitor can advise you on your chances of obtaining a patent and whether or not an alternative form of protection such as copyright is more appropriate.
How are trademarks applied to software and apps?
Although trademark law cannot protect the technical elements of computer software, it can ensure aspects of your new app such as visuals, sounds, and logos are safeguarded. Even in the absence of a registered trademark, protection can be obtained via the common law principle of ‘passing off’. The best definition of passing off comes from a mid-19th century case (hence the term ‘man’ instead of ‘person’):
"A man is not to sell his own goods under the pretence that they are the goods of another man".
Successfully applying for a trademark or bringing a claim against another for ‘passing off’ requires the expertise of an experienced Intellectual Property Solicitor. For example, you will need to run a comprehensive search to check whether the ‘mark’ you propose to register has already been trademarked. A simple Google search is insufficient – a Trademark Solicitor will have comprehensive tools to instantly search through UK and international databases, mitigating your risk of your trademark application being challenged.
Wrapping up
Whether you are set to launch your app on the market or plan to partner with a developer to realise the vision you have for your software, you must take immediate steps to protect your intellectual property. Three things you can do right now include:
- Ensure you have the documentary evidence you need to protect an infringement (in the case of passing off, copyright, and unregistered design rights) or apply for a registered trademark or patent. Have all documents related to specs, prototypes, and testing signed and dated.
- Research the different types of intellectual property protection to gain an understanding of which option is best for your business. For example, a patent application costs on average £4,000 and takes around five years to complete. If you are a start-up anxious to get your app on the market, a patent is unlikely to be a suitable option. Relying on copyright and unregistered design rights will be more realistic until your business is established.
- Talk to an Intellectual Property Law Solicitor who can advise you on the best options available to protect your software or app.
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