Let’s say you’ve developed an interesting new app. But before offering it in the App or Play Store you want to prevent others from using your idea. Is this possible, and if so, how?
There is more than one way to protect your app and its various parts. In this article we will discuss these ways and the various requirements of each.
Most people will think of a patent as the first choice for protecting your app, which makes sense. A patent protects technical innovations, and an app would appear to be just that.
But when you can simply describe your new app as ‘[Amazon/Tinder/PayPal] but for [new application/different audience]’ chances are slim that the patent will ever be granted. In order to be valid, a patent has to be new and inventive. And according to European rules, inventiveness only applies when there is sufficient technical difference with regard to what is called the ‘state of the art’.
Establishing whether a particular feature is sufficiently ' ' 'technical', however, is quite a complicated exercise. By now there is a substantial amount of jurisprudence in which the boundaries of this grey area are starting to emerge more clearly. Since Tinder already exists, there is no technical challenge involved in building a Tinder-like app forfinding matches between pet owners and pet sitters (just to name an example).
But what if during the development of your app you ran into technical problems, which you then solved in a technically clever (and new) approach? Or the app solves a technical problem in a novel way, for example reducing data consumption or preserving battery life? In such cases you’d do well to contact a patent attorney to discuss whether patenting the invention is possible. If you want to protect your invention with a patent, you have to register it.
Generally speaking, if someone with no particular technical skills can come up with the idea of the app and an average programmer can build it without running into significant problems, then it will probably not be possible to patent the app. But despair not; there are other ways to protect it.
We all know the famous icons of apps like Tinder (a little flame) and Twitter (a bird). Both the names of apps and the icons representing them can be protected by a trademark. If you want to protect your app with a trademark, you have to register it.
A name or icon has to meet a number of requirements if it is to be legally protected as a trademark. For one, the trademark has to be distinctive; the average user should be able to distinguish the app from other apps by its name. Another requirement is that the trademark cannot describe the qualities or other characteristics of the app’s use. The name RESTAURANT APP, in which you can reserve a table in a restaurant, will not be accepted as a trademark. The same applies to an image of a table for such an app.
Still, many app names are in fact quite suggestive of the app’s actual use, and the icon’s image is often also very basic. The reason why trademark protection is possible in such cases, is because trademark law has many exceptions to the rules. In some cases these exceptions mean that the name or the icon are still registrable as trademarks.
The (user) interface, the app’s icon, and other (graphic) design elements can sometimes be protected as an industrial design. In principle designs also need to be registered for protection.
In the case of a (user) interface, an example would be Tinder’s swipe interface. In this example it is important that the interface is ‘new’ and has an ‘individual character’. The requirement of novelty means that there are no identical or similar interfaces known to the public, which could be the case, for example, if the app was demonstrated at a trade fair or shown to a group of friends (this is called ‘disclosure’). An individual character withholds that the interface – taken as a whole – should leave a different overall impression with the user than other, already existing interfaces.
Then there is also industrial design protection for an ‘unregistered design’. For such a design the same criteria apply as for a registered design, but the design is not protected until it has been disclosed to the public for the first time, and it is valid for a briefer, non-extendable period of time. This means that you do not need to register the design, but it also means that this protective right is more difficult to invoke when someone uses your design for their own app.
The (user) interface, the icon, and even the software can be protected by copyright. Copyright cannot be registered.
Take, for example, the icon. The icon has to be original, in the sense of showing a certain degree of creativity. At the same time it has to have its own distinctive character, which means it cannot be a part taken from a previous icon. The icon also has to bear the ‘personal stamp of the programmer1, by which we mean that the programmer has had to make certain creative decisions when developing the app’s icon; it has to be a programmer’s own ‘intellectual creation’.
There are cases in which the above-mentioned intellectual property rights provide little or no protection for the (illegal) copying of an app’s external features.
In some of these cases it is possible to appeal to slavish imitation. This offers protection against the imitation of the external features of an app. The criteria for slavish imitation are strict, because there is no direct legal basis to invoke it (it is a form of unlawful act). For a successful appeal to slavish imitation, the app’s programmer should have been able to choose a different path, but by not choosing a different path it creates unnecessary confusion for the public. In principle the programmer can imitate all features, but trivial features or characteristics that are merely aesthetic in nature cannot be imitated when they contribute to the general usefulness or reliability of the copied feature.
When an app collects data, this can involve a database that is protected under database right. According to its legal definition, a database is a collection of works, data, or other independent elements that are ordered in a systematic or methodical manner. In addition there has to have been a significant investment in order to create the database. Database rights, like copyrights, cannot be registered.
As mentioned before it is not always possible to protect a part or the operation of an app through intellectual property rights. It is possible, that you still want to protect a part of the app, or its operation, or the knowledge you obtained during the development of the app, perhaps because you want to protect the app’s novelty (as is the case for patents and designs, for example). After all, intellectual property right registers are public. In other cases it might also be the case that some aspects can only be protected by keeping them a secret, like the recipe for Coca Cola.
In those cases we are dealing with trade secrets or know-how. For something to be considered a trade secret, the information in question has to be secret – i.e. not commonly known or readily available – and it has to have a certain commercial value (because it is secret). It is important to protect trade secrets and key know-how.
A first step to preserving secrecy is to have a non-disclosure agreement (NDA). Our specialists can advise you and draft such NDAs for you.
Although on itself it does not have a great deal to do with protecting your app, it is important that you give careful thought to the data that your app collects. Before you know it, your app could be collecting the personal information of its users, and there are (European) rules and regulations in relation to the collection and retention of such data in order, namely the General Data Protection Regulation (GDPR). For that reason also it is prudent to talk to our specialists to hear their advice on how to deal with the GDPR.
As the above has shown, there are many important aspects to developing an app of which the legal part is of great importance. There are many ways to protect your app and its constituent parts, not to mention the discussion on the holder of these intellectual property rights. The sensible thing to do, therefore, is to talk to a specialist to see what would be the best way, and the right way, to protect your app or its parts.
 Copyright law refers to the ‘creator’ of a certain aspect of the app. This can be the developer, the programmer, the employer or even someone else entirely. In this example we use ‘ programmer’.