Legal

PATENT PROTECTION OF MOBILE PHONE APPLICATIONS; WHAT YOU SHOULD KNOW

In the recent past, particularly the last ten or so years, Kenya has seen an incredible rise in mobile phone technological advancements (this extends to computer technology) and of course, the star of this incredible advancement is, undoubtedly, mobile money transfer which has transformed the lives of many Kenyans. Thus, the mobile phone, in Kenya, has moved from being a luxury item, now it is now a necessity. With the introduction of smart phones, mobile phone technology has been changing, with applications being at the forefront of this change in terms of usability and convenience and therefore has made the mobile phone a device to be used for business and pleasure.

There have been a lot of innovative mobile phone applications which have come to make the use of mobile phone devices easy and enjoyable. The people that are responsible for the development of these applications need to protect the intellectual property in mobile phone applications. Specifically, with regard to patents, the question that is raised is; what in an application is patentable?

Patent protection

For one to have patent protection, there has to be an invention. The Industrial Property Act 2001 specifically Section 21(1) defines an invention as “…solution to a specific problem in the field of technology”. Simply, there must be a pre-existing problem or challenge that limits ease of functioning and the invention may be geared towards solving that problem. The invention may include a product or a process (Section 21(2) of the act).

In addition, section 22 of the Industrial Property Act (as read together with sections 23, 24 and 25) provides the following, “An invention is patentable if it is new, involves an inventive step, is industrially applicable or is a new use.” This provision of the law gives the criteria for a product or a process to have patent protection and if the product or process does meet the criteria as set out in section 22 of the Industrial Property Act then patent protections shall not be given. To shed more light on a new invention, the Industrial Property Act (2001) in section 23(1) states “An invention is new if it is not anticipated by prior art.” This means that the invention is not so obvious to the person who is skilled in the art.

The need for protection has to be identified, that is, what exactly needs to be safeguarded from being stolen, and also the sort of impact that is intended to be made in the lives of the end user and as well, and whether you really need patent protection.

 Patentability of an Application/ Software

Advancements in technology have reached a point where it is not only physical or tangible objects that are the only level of innovation. Innovation has moved from only being the hardware bit of technology, but also to the area of software, including, mobile phone applications.

Mobile phone applications simply are programs that are meant for the enjoyment and use of a mobile device, that is, they are software running on hardware. Depending on the functionality, a mobile phone application can be limited for gaming, internet access, a library or a source of information among other uses. The desirability of an application and the compatibility with the mobile phone device is what attracts a user to download the mobile phone application, thus, the user is able to hand pick what is suitable.

In looking at mobile phone applications, we have to consider what the “invention” in the application is, or, the unique aspect of the application, what is so new about it, whether it is industrially applicable and the inventive step thereto. The invention may include the system, algorithm, the network, and the way of processing data among other considerations.

Therefore, we can deduce that the only aspect of an application that can be patent protected is the process of the application or in simple terms, the workings of the application. There are arguments that protection is granted to the “mathematics” of the software. This process has to meet the criteria as set out in section 22 of the Industrial Property Act (2001) and is not anticipated in the market as stated in Section 23(1) of the Act. Not only should it be new or innovative, it must be considerably unique from what is currently in existence. Therefore in having patent protection, a mobile hone application, the underlying invention of the application will be protected.

In Kenya, the process of patent application is done at the Kenya Industrial Property Institute. The application process is complex and long (from drafting the application to when the patent is issued. This can take between 3 to 5 years). The application is to be detailed and should be without any mistake to avoid a loss of claim of the patent. It is important to know that the process involves examining whether the application is eligible for patent protection and this presumes that there must a working prototype that is available because the idea is not what is patented but the end product itself.

Before a mobile phone application developer and/or owner can seek patent protection for the application, the following have to be considered;

  1. Does it meet the criteria as set in section 22 of the Industrial Property Act (2001)?
  2. Would the application owner be willing to release it to the general public before the application is considered and accepted and a patent is issued giving your competitors a free ride on your invention?
  3. What happens to the patent when the purpose of the application ends?
  4. What happens to the patent when the application is rendered obsolete due to advancements in technology?

If the above are considered the criteria has been met, then there is no reason not to seek intellectual property rights through a patent

Now you know!

  References

  1. “Does Your Mobile App Need A Patent?” (2015) by Rahul Varshneya https://thenextweb.com/insider/2015/05/07/does-your-mobile-app-need-a-patent/#.tnw_0M6XlqbY
  2. “Patenting Software” –World Intellectual Property Organization http://www.wipo.int/sme/en/documents/software_patents_fulltext.html
  3. “Patent a Mobile App” – AB Mobile Apps http://www.abmobileapps.com/patent-mobile-app/
  4. “Mobile Application (Mobile App)- Technopedia https://www.techopedia.com/definition/2953/mobile-application-mobile-app
  5. “United Arab Emirates: Protection Of IP Rights For Mobile Apps”(2015)  by Manel Ben Said http://www.mondaq.com/x/407048/Trademark/Protection+Of+IP+Rights+For+Mobile+Apps
  6. “Patent Protection For Software-Implemented Inventions” by Ania Jedrusik and Phil Wadsworth, WIPO Magazine February 2017.